Is Your Domain Name A Trademark Infringement?

I recently received an email from a concerned, fellow Internet
business owner, asking for my opinion on an issue that could
literally destroy his Internet business and the business of
several other domains involved.

He had received legal notice from a prominent company, stating
that he needed to relinquish his use and rights to his web
site domain name because it contained three letters that
infringed upon their trademark and their domain name. This
same company also contacted several other Internet business
owners and made similar demands.

Should a company that registers a specific trademark have the
ability to destroy numerous businesses that legitimately
registered domain names? Should a company that registers a
trademark have the responsibility of ensuring that a domain
name registration agency doesn't issue domain names that may
be a trademark infringement? Or should an Internet business
have the responsibility of making sure a potential name
doesn't Infringe upon a registered trademark? Where does
the responsibility lie?

Ultimately, the responsibility lies with the domain name
registrant, as the trademark laws that apply in the hard
copy world also apply on the Internet.

Any company that registers a trademark has the right to
protect their trademark and has the right to notify you that
your domain name is infringing upon their trademark. Why? If
your domain name has the potential of confusing the public
into thinking the trademark holder is somehow affiliated with
your web site, they may bring infringement claims against you.
The courts would have to make the decision based upon the
trademark laws and if your domain name, in fact, has the
potential of confusing the public.

Domain name registrants can protect themselves as well. If
you have a registered domain name that doesn't infringe upon
any trademarks, you too may be able to register a trademark.
Registering a domain name as a trademark isn't easy, but it
can be done. Although you can't register the http://www.or
the .com, if the use of your name fits the laws criteria,
it can be registered. You should consult with an attorney
familiar with the Internet, trademarks and the laws prior
to registering your domain name as a trademark.
For a complete explanation, visit:

http://www.uspto.gov/web/offices ac/notices/guide299.htm

As stated by the United States Patent and Trademark Office,
http://www.uspto.gov/ "A mark composed of a domain name is
registerable as a trademark or service mark only if it
functions as a source identifier. The mark as depicted on
the specimens must be presented in a manner that will be
perceived by potential purchasers as indicating source and
not as merely an informational indication of the domain
name address used to access a web site." In other words,
the use of a domain name must not be used simply as an
address to direct customers to your web site, but must be
used to identify the products or services of the business
claiming the trademark, which provides products or services
via the Internet.

If you're in the market for a domain name, you may want to
consider searching the Trademark Electronic Search System,
http:/ ess.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk
prior to registering a domain name. By researching the
trademark regulations and knowing your rights, whether you
hold a trademark or a domain name, you may be able to avoid
the possibility of litigation.