Have you ever been involved in a domain name dispute?
September 23, 2008
Chris McElroy aka NameCritic has been involved
in domain name appraisals, domain name disputes, and brokering domain names
Visit the Chris McElroy aka NameCritic Blog here, to learn more about domain names.
has written 2 articles for DomainInformer.
|View all articles by Chris McElroy ...
A lot of people do not understand the relationship of
trademarks and domain names, including most intellectual property attorneys. IP
Attorneys BELIEVE they understand it, but some of the cases they file and some
of the things they say in forums show a clear misunderstanding of domain names.
At one time, IP attorneys tried to get generic domain names
banned altogether. Their argument was that it was unfair to big corporations
that someone who paid a few dollars for a generic domain name could compete
For instance. They said that it would be unfair that GM or
Ford shelled out millions of dollars to advertise their cars, but someone could
just pay $35 or less to register cars.com and still compete with those
Fortunately, they lost that battle and generic domain names
are legal. But that shows that IP attorneys did not have a clue about domain
What is a Domain Name
Your website is actually located at a numbered address, much
like a phone number. Example; 255.32.01.255. Domain names were created so you
do not have to remember a number when you want to go to a particular website.
They were NEVER meant to represent trademarks. It was NEVER
the intent to associate domain names with trademarks or the commercial rights
So, a domain name is more like a phone number. You've seen
ads that say call 1-800-movingyou, 1-800-callmenow, etc. Domain names are
similar since it can be represented by numbers that are associated with
What is a Trademark?
A Trademark does not mean you own the words in the
trademark. A trademark does not mean you own all of the uses of the words in
When you apply for a trademark, you have to choose a
classification for that trademark, such as; clothing, TV entertainment,
beverages, etc. If granted a trademark, it grants you the right to use those
words, in the order you registered them, in commerce, within the classification
That means two people can hold the same words as a trademark
as long as each of them registered it in a different classification. So there
could exist "Mumbo Jumbo" cookware and "Mumbo Jumbo"
Guitars and neither would be in violation of the others trademark.
How do you violate
If you went out and registered mumbojumbo.com, you would not
be violating the fictitious trademarks above. Neither of the two trademark
holders own all rights to those two words.
However, if you sold cookware or guitars on a website at
mumbojumbo.com, you would be in violation of their trademarks. If you even link
to someone who sells cookware or guitars, you would still be in violation of
But if you taught magic tricks at mumbojumbo.com, you would
not be in violation of either trademark. However, IP attorneys for those
trademark owners may still try to force you to turn your domain name over to
What is Reverse
Domain Name Hijacking?
That is when IP attorneys send emails out to people who have
a domain name that is similar to their clients’ trademark and claim that you
are in violation of their client's trademark. They try to get you to turn over
the domain name to them by threatening to sue you.
They use scare tactics. The scary thing is that big
corporations can afford to file these false legal actions and many domain name
registrants feel they cannot afford to defend their domain names even though
they have full rights to own the domain name in question.
So many registrants simply give them the domain name in
question to avoid any legal fees. Reverse Domain Name Hijacking goes on all the
time. It's worse than cyber squatting since these attorneys generally go after
innocent generic domain name registrants that are not violating anyone's
trademark under the law.
If you want to learn more about
previous domain name disputes and decisions, you can visit The National Arbitration