Is it infringement if someone buys a URL, with my company?s trademark?

Posted by BHARAT BUTTAN on September 27th, 2018

Yes, it is. Let us dig a little into the answer. Trademark infringement means if some person, company or enterprise, uses a trademark which is identical or similar to a trademark owned by another person, company or enterprise, in relation to products or services which are identical or similar to the registered product or service.

If someone has bought a URL with your company’s trademark, the trademark infringement will depend on several factors:

Who used the domain name for commercial purposes first?

Which goods or services are being sold under that name?

Answer 1: Whosoever started using the name first, will have superior trademark rights.

Answer 2: Trademark infringement is based on the likelihood of a customer’s confusion. If the site that has bought URL with another company’s trademark, is offering goods and services different from the former, a confusion is unlikely to occur. But similar domain names may create confusion. They may end up buying goods or services from a source, different from the one they intended to. For example, a customer may by mistake type makemetrip.com instead of makemytrip.com. He will land on to some other website in his unawareness and may be guided fraudulently.

In theoretical terms, choosing a domain name may sound simpler than other business agendas, but is actually a massive task involving legal botheration. These legal conflicts are tackled under trademark law. Trademark is a name that identifies the source of products or services in the market. To keep this identification unique, some basic principles governing the trademark law:

A trademark that is clever, descriptive and memorable can be protected under such law.

Trademarks having a sales value among the consumers achieved through advertisements or high sales figures can be protected under such law

Trademark dispute can arise if it is likely to create customer’s confusion about the source of goods or services.

The first commercial user and owner of the trademark is the winning party of such legal disputes.

The losing party, in such cases, will have to probably stop using the trademark and may even be penalised for trademark owner damages.

Such cases occur quite frequently since most of the registration services are digitalised. No trademark research or ownership check can be done until the exact name is already recorded. It becomes very easy to steal the business and misrepresent an already associated domain name. In today’s competitive environment, it would be prudent to protect your business before establishing its brand value. Here are some thumb rules to apply:

Register your trademark – A legitimate trademark listed in government registry is the best way to protect the uniqueness of your company.

Maintain a proper domain ownership–Usually, companies continue their domain ownership by the name of the IT employee hired to prepare it or any other technical person. It is a detail noteworthy to be transferred to senior management or by the name of the company itself. One can also buy variations of the registered domain name or get more than one extension to ensure no legal violations.