Domain Name Laws
Q: What laws are there for similar sounding/meaning domain names?
[Ken Showalter, Onthenet@advocacy-net.com]
- You need to carefully consider a few things. First, how close are the marks? This is
figured out by comparing how the marks look and sound, and considering the meaning, if
any, they convey. Second, how strong is the other person's mark? Does it describe his or
her products in some way (weak) or is it completely made up (strong)?; is it the only mark
like it out there (strong) or are there a bunch like it (weak)?. How close are the
services you offer or the products you sell through your Web site to those the other
person sells under his or her mark? The closer they are the more risk to you. Do you
target the same customers? If so, you could be in trouble, if not this could be a good
argument a lawyer could make on your behalf. So the bottom line answer is it depends on
Of course, if you're not selling anything (in the broad sense of the word)
through your Web site your risk decreases dramatically, and could be eliminated.
[Michael Adlin, email@example.com]
- The legal standard for trademark infringement is whether your trademark (e.g. domain
name) is so close to another trademark that it creates a "likelihood of
confusion" about the source of your goods or services, in the relevant market. The
application of this standard is highly fact-specific. Michael Adlin's comment points out
some of the many factual elements that courts have considered in applying the standard.
you operated a search engine at www.yohoo.com, you'd run the risk of a lawsuit. However,
if you were a chair manufacturer showing your wares at the same address, there might be no
Netpreneurs can do a lot of useful legwork themselves, but there are at least two
points in selecting and registering trademarks where consulting an attorney is especially
- Determining whether your proposed use is too close to existing trademarks for comfort. A
good trademark attorney will have a gut reaction based on both court precedent and years
of empirical experience, and can advise you about what will fly and what won't. Doing the
search is only half the job--accurately interpreting the results and assessing the risk of
adopting a new trademark often requires extensive experience.
- Applying for registration seems easy on its face (just fill out the form) but writing a
description of goods or services that will avoid pitfalls is an art. Consulting a
trademark specialist at this stage can save you money and trouble in the end.
I'd recommend consulting a trademark specialist about the specific domain name you want
[Evan Smith, Sixbey, Friedman, Leedom & Ferguson, P.C.,
- I used to work for Thomson & Thomson, who performed about 70% of the world's
trademark and copyright searches. We often performed domain name searches in addition.
While the domain name might remain available, it behooves you to follow up with the
trademark to prevent someone else with trademark rights kicking you out of the domain
Unfortunately, if your classification of goods for that trademark remains close
to the same type of goods of the sound alike company, they might contest your PTO
application on grounds of confusion and similarity. If your name, however, remains in a
different classification of goods (e.g. Cadillac for dog food versus Cadillac for Cars)
you stand a much better chance of scrutiny, provided the mark passes the PTO
classifications for a successful mark (i.e. not descriptive...)
[John Mackinnon, firstname.lastname@example.org]
Domain Name Rights Coalition
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