Of Domainers and Trademarks: Is it Time to Rethink the Bias Against Trademark Rights?

For years, domainers have been, from their perspective, abused and persecuted by trademark law and holders of trademark rights.  Even a one word descriptive domain such as “apple” can, as we all know, have trademark rights.

With all the talk of developing domains, it is time for domainers to start thinking about using trademark law to their advantage.  Yes, domainers can have trademark rights too.  We live in a world where intangible property continues to become more important and more valuable.  Domainers need to not only consider removing parked pages from their most valuable domains but otherwise assessing their risk across their portfolio.  Some parking companies do allow you to remove particular categories from the PPC ads being offered up.  Domainers should understand what trademark rights may exist there on a domain by domain basis and exclude those category offerings from their PPC ads.  For their most valuable domains, removing PPC ads altogether becomes the only reasonable approach.  For those domainers willing to take the next step, development can actually create trademark rights in the domain.  Those trademark rights can be transferred with the domain, adding value to the overall sale.

It no longer makes sense to continue to gripe about trademark law.  Any shrewd businessperson finds a way to turn the law to their advantage.  Domainers need to start going on offense when it comes to trademark issues.

Comments

[Trademark Attorney; Domain Name Attorney; Internet Lawyer]

It's all a matter of rights. While a trademark owner may have rights in a particular mark, that does not mean that a domainer can not have rights in a domain name incorporating that same mark. Trademark owner's rights are limited, in most cases, to a defined list of goods and services. Clearly a domainer using a domain name incorporating that trademark for a noninfringing, legitimate use can have rights in that domain. Do these domainers know how?

Whether you want to label the person a trademark lawyer or a domain name attorney, the best of the best need to have experience in both areas. What better way to avoid claims of cybersquatting and trademark infringement than by working with an attorney who knows the defenses and can ensure the domainer is working within those in order to reduce his or her legal and financial exposure in connection with the registration and use of a domain name.