tcguy — 2011-10-17T11:23:08-04:00 — #1
I own a domain name that is pretty valuable, in my opinion. I sometimes think that my domain name could potentially be stolen one day through malicious use of my domain account, and/or some error that could occur with technology. I've been the rightful owner of this domain for many years, and would hate to lose it through no fault of my own.
My domain name is a .com that consists of 4 dictionary words put together. I once inquired with a law firm about trademarking the 4 words, but was told they would not likely be candidates for a trademark. This is because when put together, the words are "clearly descriptive," according to the firm.
I am now thinking about trademarking the entire domain, not just the 4 words. So I want to trademark "www.word1word2word3word4.com", and maybe other variations of it.
If I were to somehow lose the domain name, would owning such a trademark allow me to get it back?
ted_s — 2011-10-17T19:53:58-04:00 — #2
To start things off, I'm not a lawyer thus this is purely speculation for discussion. There are a few attorneys who roam the forum but you are always best getting your own counsel for legal advice, especially when it concerns IP where a slight differance in words means a whole lot.
Trademark law is long, complex and has many details. I've studied bits of it but can't even start to recreate it here.
Trademarks protect names but it's not absolute. Prior usage negates strength and of course an overly generic name just can't be protected -- unless it's famous. Fame [within a niche] is difficult to establish but grants far more power and is what you see with companies like Apple and Disney.
As far as using a mark to stop theft of your name. That's an interesting approach but it won't be simple. Keeping the name locked with a safe registrar is far more prudent than trying to sue someone if they take your name. That said, adding a trademark to a name significantly increases your sale value as you are offering that strength too.
There's been a lot of cases over domains and they've shaken up trademarks significantly from the days where names could be local [region use to be a major factor in determining marks]. The TLD is not a factor in the name and does not impact the trademark although with the growth of TLD types who knows if that will change.
dave_zan — 2011-10-17T20:57:26-04:00 — #3
Ted S pretty much covered it. The Uniform Dispute Resolution Policy (UDRP) had two cases where allegedly hijacked domains were transferred back to their respective owners AFAIR, but both needed to at least demonstrate trademark rights in order to satisfy the conditions laid out by UDRP. (and at least $1500 for each case, though I don't know the exact figure...)
Just keep your domain account and email secure, especially the latter since that's what caused some hijacking cases.
ted_s — 2011-10-17T23:12:54-04:00 — #4
I believe a UDRP case is $3000 but for a hijack dispute who knows what the process would be. Best to do everything possible and avoid it in the first place.
Since I didn't mention it before, WIPO, the entity that oversees domains also policies complaints and while it's not the end of the line, it's a cheaper and often faster route for battling over names. More complex cases may not go this route but there's been many strong rulings for trademark owners retaking squatted names. Just remember, a trademark does not overrule prior use.
attorney_jaffe — 2011-10-19T13:31:38-04:00 — #5
Trademark law has to do with branding, use and public perception. Trademark law is very concerned with public confusion over the origin of goods.
You can begin the trademark process by putting a superscript TM on the first use of your domain name on your site (i.e. "www.word1word2word3word4.comTM. This is called a common law trademark because the common law will protect your trade name -- in this case, the domain name.
Once your domain name has been clearly established as a trademark for your site, you might then be able to get a registered trademark.
ted_s — 2011-10-19T15:05:27-04:00 — #6
As always Jaffe thank you for the clarity on the topic!