Domain Names and Infringement Issues
While each website on the Internet has a unique Internet protocol (“IP”) address, a domain name is the more common way to identify the website. A domain name includes the name of the website and an appropriate suffix — for example, “atrizadeh.com” is the domain name used to identify the website for the Law Offices of Salar Atrizadeh. The Domain Name System is the database that governs all domain names. A domain name is then a part of the website’s URL address. Generally speaking, each domain name must be unique.
Businesses can inexpensively expand their marketing efforts by registering their domain names. An online presence allows businesses to offer services to a body of consumers, even in areas where the business does not maintain a physical presence. The marketing implications are especially beneficial where the domain name is identical or similar to the business name because it is easier for consumers to locate the website through a simple web search. Before registering the domain name, it is essential to exercise due diligence to ensure that the domain name is not likely to infringe on a third-party trademark. Federal trademark laws under 15 U.S.C. § 1114 prohibit domain names that create the likelihood of confusion among consumers or that are substantially similar to a registered trademark.
In order to register a domain name, an owner must contract with a registrar authorized by the Internet Committee for Assigned Names and Numbers (“ICANN”). Authorized registrars are required to comply with ICANN rules in order to protect consumer rights and interests. Owners may search the registrar’s website to determine whether the desired domain name is available. The website will also contain the required procedure for registering domain names. After selecting a domain name, it is also a good idea to register variations of the primary domain name, or secondary domain names. This helps customers who do not remember the spelling of the primary site and also discourages Typosquatters that register misspelled domain names with an intent to sell it back to the rightful owner later for a higher price. After registering a domain name, it is important to continue to exercise due diligence to prevent loss of the domain name, which occurs if the owner fails to pay renewal fees or update contact information.
A domain name owner may bring a claim for domain name infringement under ICANN’s Uniform Domain Name Dispute Resolution Policy ("UDRP"). A domain name owner may also bring a claim under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), which is codified under 15 U.S.C. § 1125, if the underlying claim involves trademark infringement.
A UDRP claim initiates binding arbitration under ICANN’s authority. In order to establish a valid UDRP claim, a domain name owner must assert and prove that: (1) the domain name at issue is identical or confusingly similar to a trademark right, (2) there are no legitimate rights or interests in the domain name, and (3) the domain name at issue is registered and used in bad faith.