FAQ: What is the relationship between a domain name and a registered / unregistered trademark?

People often confuse the relationship between a domain name and a trademark.

With most domain name arbitration schemes the first thing you have to prove is that you have trademark rights in a name which is identical or confusingly similar to the domain name. The domain name suffix is disregarded. For example, we have registered the word ADLEX as a trademark. This would be regarded as identical to the domain name adlex.com. And confusingly similar to say adlexsolicitors.com. (That’s not to say that we’ll win the case, just that we’ve reached first base!)

Let’s say we hadn’t got around to registering ADLEX as a trademark. We can still rely on the fact that we have been providing legal services under that name for some years such that it has acquired a certain reputation and goodwill. We would then base our domain dispute arbitration case on ADLEX having become an unregistered trademark (also known as common law rights). This would suffice in some domain dispute schemes such as the ICANN Uniform Dispute Resolution Policy or UDRP (for gTLD domains such as .com) and in Nominet’s DRS for .uk domains. That said, we would need to be careful to submit sufficiently detailed evidence of reputation / goodwill in support of our claim to an unregistered trademark as many complaints fail for that reason.

Alternatively, we might decide not to use a dispute resolution service but instead to go to court. If say another law firm registered adlexsolicitors.com and diverted it to their own site at xyzsolicitors.com, we would argue that the other firm is infringing our registered trademark ie they are using a mark similar to ADLEX for the supply of legal services - just as if they opened an office next door to us and put up a sign saying "Adlex Solicitors". If we didn’t own a registered trademark, then we could still sue and invoke the UK legal cause of action known as passing off which can protect names that have acquired reputation / goodwill through use.

So having registered or unregistered trade marks is a likely to be a pre-requisite to undertaking domain dispute arbitration as well as (in the UK at least) legal proceedings.

A separate issue is whether an internet domain names themselves (eg ADLEXSOLICITORS.CO.UK) are registrable as a trade marks. In the UK the answer is "yes". But we would have to show that the domain name is not merely functioning as an address enabling people to communicate with us - like a postal address or telephone number. Rather we would have to show that, as with say "Amazon.com", the domain name has become distinctive as a "badge of origin" ie a source of particular goods or services.

For a free initial chat and more information about domain name trade mark legal issues, call Adam Taylor of Adlex Solicitors on +44 (0) 207 317 8404 or email.

Other FAQs:

What is domain name law?
What exactly are domain name disputes?
What is cybersquatting?
Someone has registered my domain name - how do I go about domain name recovery?
What does your domain name audit involve?
What should I look for in a UK domain name lawyer / solicitor?