Metro Detroit trademark attorney Elizabeth Brock discusses the similarities and differences between trademarks and domain names in building brand equity in a white paper report published by Clarivate.
“When a trademark is registered, [generally] there will be an examination and the application is published for opposition. On the domain name side, that’s not the case. If the domain is available, the registrations will issue,” says Brock, noting that trademark rights arise from common-law usage or registration, while a domain registration is a contract between the registrant and the registry/registrar.
The scope of trademark rights is limited to specific goods and services categories and jurisdictions, meaning the same mark can be used by different owners for different goods and services, or even the same goods and services in different jurisdictions. On the domain name side, only one owner enjoys exclusive use of each unique domain name worldwide.
Likewise, there are both similarities and differences with respect to disputes, cancellation or termination of trademark rights and domain ownership.
“On the trademark side, when we’re dealing with infringement, we are usually dealing with a likelihood of confusion standard. How likely is it that consumers are going to confuse the trademarks? On the domain side, after establishing that the domain itself is similar to a trademark, we’re really looking more toward the actions of the respondent in registering the domain name. Was bad faith involved?,” Brock explains.
Both trademarks and domains offer the potential for perpetual renewal. For trademarks, use of the mark may be required to maintain registrations, while there is no such requirement for domain name registration.