What if someone buys a domain name or URL for my trademark?

The 3-minute answer

What if someone buys a domain name or URL for my trademark?

You’ve finally made it! You’ve created a product, launched a business, and trademarked your brand. Now, you are planning on rolling it out. So you come up with a great domain name for your brand. It’s simple, clever, and the centerpiece of your brand. But when you go to register the name you find out it’s already taken! And now questions begin to flood your mind.

What do you do? Do you stand a chance of getting the domain name through a trademark infringement case?

Well, like with most trademark disputes, there are a lot of grey areas to consider.

So, join us by reading this post as we explore more on trademark laws and domain names. In this post, we will look at some of the things you can do if someone registers a domain name for a brand you had already filed a trademark for.

Let’s get started!

First things first

Before we even talk about what you need to do, we always encourage new entrepreneurs to register their domain names before they file for a trademark. It’s wise to lock in your domain name or URL first since they are fairly inexpensive before you embark on a much expensive and laborious trademark registration process. The last thing you want is to get a trademark for a URL that is already taken, right?

But what if you forgot? Or maybe someone registered a slight variation of your URL after you registered your trademark?

Well, your next course of action will depend on a few things. We’ve listed them below.

When did they buy the domain? Did they buy the domain name after you registered your trademark? If the answer is yes, then you can sue them if you have enough evidence to prove your case.

But if they bought the domain before you registered the trademark, then you might hard time proving their intent was to infringing your trademark.

What are they using the URL for?

Typically if someone buys a domain name and does nothing with it or uses it for something unrelated to your brand name or company then you’ll have a hard time proving they are infringing on your trademark.

So if someone else happens to have your domain name, ask yourself:

Are they offering similar goods or services similar to ours?
Could their site divert business away from our site?
Is their domain name so similar that our customers might end up on their website by mistake?

If the answer to these questions is yes, then there’s an opportunity for a legal challenge.

Have they reached out to you to try and sell the domain to you?

Sometimes there are people just looking to profit off the goodwill of your company. So they will try to hold domain names for “ransom” in attempts to profiting from you.

So if someone has reached out to you with the intent of selling a domain name to you, then that might be a clear indication that they registered that domain name with the sole intent of selling it to you.

If that’s the case, you have two primary options:

Reach out to the person who owns that domain name and try to informally resolve the domain name dispute. You can either buy it or inform them of the legal liability if you sue them.
File a complaint with the ICAAN. In most cases, anyone who’s trying to sell you a domain similar to your brand will want to sell it to you for a large sum of money. So buying might not be an option for you. Filling a complaint with ICAAN is the most effective way to get your domain back and fight off anyone who’s trying to sell you a domain name.

Key takeaways

To ensure that your company’s chosen or desired domain name is not purchased by someone else, make sure you or your attorney performs a comprehensive domain name search (including names of similar domains). This will help you ensure that no one has your domain name or a similar domain name that might cause confusion for your customers or cause a trademark dispute in the future.

If you have any questions on this topic or any other topic reach out to us at miller IP law will be happy to strategize and talk about it. Good luck with your business!

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Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.