Registration of a Name with a Domain Registrar, such as NSI, GoDaddy, 000Domains or Register.com, Does Not Itself Confer any Federal Trademark Rights on the Registrant.Sunday, November 21st, 2010
It was mid Monday morning. We had just wrapped up a staff meeting and everyone was focused on their assigned projects and tasks. The entire office was quiet; so quiet that you could hear a pin drop. All of a sudden the phone rang. It was loud and it made me jump. I hoped that this was not a bad omen. The receptionist picked up. I heard her mumbling something. She put the phone on hold, and rang me. I picked up the receiver. “What is it?” I asked. She answered, “There is a really nice lady on the phone, but I cannot make heads or tails out of what she is saying. She is really upset. I cannot even understand her name.” I asked her to transfer the call to my office.
The lady was truly upset. Her words rushed and churned out of her mouth like the water in white water rapids. I listened carefully and helped her organize her jumbled thoughts, so that and little by little I pieced her story together, groaning inwardly. Once again I was dealing with a start-up entrepreneur who had not been fully informed or worse still may have been misinformed.
Early that morning, she had received a letter demanding that she immediately cease and desist from using her domain name in connection with her company’s website and business. The cease and desist demand identified the sender to be a large intellectual property law firm representing a client from California owning a domain name that was similar to hers; not identical but similar. Their client also owned a number of trademarks incorporating their domain name, all registered with the United States Trademark Office. The letter demanded the she immediately cease and desist from using her domain name and transfer her domain name to their client in California because her domain name looked the same, sounded the same, and conveyed the same commercial impression as their client’s domain name and trademarks.
“How could this be happening?” she asked. “When I incorporated my business six months ago, my accountant informed me that the name was available for incorporation. After that, I checked with one of the domain name registrars and determined that my own company name was available to use as part of a domain name. So, I went ahead and registered the domain with my company’s name. Granted my name is kind of similar to the California Company’s domain name and trademarks, but it is not identical! After all both my accountant and the domain name registrar said that it was available. And, we are in different states. So I took it. Since then, I have spent a lot of money building a website, and publishing and distributing marketing materials and products bearing my company’s name. Now, all of a sudden, I get this letter? Where does this law firm come off telling me that I am supposed to give up my domain name and transfer it to their client, after all that I have invested?”
So really, where did this law firm come off telling this woman that she was supposed to give up her domain name and transfer it to their client, after all that she had invested?” And how would you feel if all of a sudden you found yourself in the shoes of this caller?
By law, the term “domain name” means “any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.” 15 USCS § 1127. “The Internet (or “World Wide Web”), in turn, is a network of computers that allows a user to gain access to information stored on any other computer on the network.” Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 492 (2d Cir. Conn. 2000). “Information on the Internet is lodged on files called web pages, which can include printed matter, sound, pictures, and links to other web pages. An Internet user can move from one page to another with just the click of a mouse. These web pages must be designated by a domain name if they are to be accessed at all.” Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 492 (2d Cir. Conn. 2000).
In other words, a domain name is nothing but a portal by which information on another computer can be accessed. A portal that is provided to anyone who pays the fee and enters a contract with a domain name registrant. Consequently, “Registration of a domain name does not itself automatically confer any trademark rights on the Registrant.” OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 180 (W.D.N.Y. 2000); Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp. 2d 488, 491 (E.D. Va. 1999). “Anyone may register any unused domain name upon payment of a fee. Of course, this registration in no way trumps federal trademark law; registration of a mark or name with [Network Solutions, Inc.] does not itself confer any federal trademark rights on the Registrant. Accordingly, the mere registration of a domain name with a domain name registrar, by itself, is simply insufficient to confer trademark protection under the Lanham Act. Newborn v. Yahoo!, Inc., 391 F. Supp. 2d 181, 190 (D.D.C. 2005). Thus, a registered domain name does constitute any intellectual property at all.
So, it is clear from the above, that if an entity (individual) contends that someone has infringed its domain names, such a claim is wholly without merit, if the basis for such entity’s contentions, is solely the registration of the domain names by a domain name registrar. If however, the basis is the registration of the domain name coupled with a U.S. Trademark Registration, then the claim is a whole other story. Such claim may be totally meritorious.
And that is what happened in my callers’ case above. The California law firm was not making a contention based on just its client’s registration of its domain name with a domain name registrar. Rather, it was contending that its clients also owned, not one, but a number of trademarks incorporating its domain name, all registered with the United States Trademark Office. Clearly, then their claim were totally meritorious and their cease and desist demand had to be heeded carefully.
Regretfully, I explained all of this to my caller. Needless to say my words did nothing to alleviate her pain and unhappiness at the situation. Her anger and disappointment were palpable right through the phone. “Please don’t shoot the messenger,” I thought. Then I said, “But this is where the law stands, and the best that we can do right now is try to work together to make things better in a manner that makes the most sense under your circumstances.”