For 99.99 percent of all names, using a name in a domain name will not constitute trademark infringement.  Of course, it is only the .01 percent of names with commercial value that are often the target of cyber squatters. 

One of the problems with names is they are almost never unique.  The Internet is worldwide and the chance of someone, often many, also having your name is high.  This means only one person will have the .com domain for the name.  But there are other options for you, such as .net, .org, .name, the use of hyphens, and so on.  Just because you do not have the “dot com” for your name does not mean someone is infringing on your rights or preventing you having a domain.

For example, one would think my name, Brian Kindsvater, is unique.  I wish, but it is not.  Not only is it not unique, there was another Brian Kindsvater in my own town!  Unbelievably, at one point this other Brian Kindsvater was making a business proposal to my girlfriend’s dad.  Definitely confusing.  What are the odds there would be two Brian Kindsvaters, they would be in the same location, and they would both be in contact with the same family but for different reasons ?!?

 

Here the trademark rules for personal names in domains:

For UDRP disputes, which govern trademark claims for most domains worldwide, the general rule is using a personal name does not constitute trademark infringement.  You can use personal names in domains at-will for any purpose.

However, if the name is (1) otherwise protected by trademark and (2) is used in commerce, then it can be protected.

For example, Justin Bieber, the famous (or infamous) singer meets this qualification.  His name is his business, it is famous, used in commerce, and qualifies as a trademark.  In fact, it is a trademark registered with the US Trademark Office.

But that does not mean Justin Bieber the singer automatically gets the justinbieber.com domain.  What if Justin Bieber in Australia had already registered the domain for his personal blog?  Or for his local auto repair business?  Those are appropriate uses of the name in a domain.  It is only if someone without rights to the “Justin Bieber” name uses it, and uses it for an improper purpose such as trying to cash in on the famous singer’s name, that there is a trademark issue.

Thus, if Fred Thomas registers justinbieber.com for the purpose of selling Justin Bieber t-shirts, that is infringing and he will lose the domain.

 

Another example: Peter Bober is an attorney and someone else registered peterbober.com.  He filed a UDRP action to obtain the domain.  He lost, quickly, and the arbitrator did not even need to reach the issue of whether the person who registered the domain had any right to the name or was using the domain legitimately.

Bober’s law business was incorporated as Bober & Bober P.A.  Since the company name was not Peter Bober he automatically lost.  He was not using the name “Peter Bober” commercially for his business and did not have a trademark in the name.  Rather, it was just his personal name.

 

The Anticybersquatting Consumer Protection Act (ACPA) also allows federal lawsuits for trademark infringment in domain name, and it refers to personal names.  It is, however, almost never used for several good reasons.

It is only a US law and thus of fairly limited scope when it comes to worldwide domain registrations.

It is very expensive and time-consuming to litigate in federal court.  Proof requirements of trademarks and consumer confusion can be difficult.  Compared to a quick UDRP action with no discovery, there is little reason to file a federal lawsuit.  In a UDRP action you will most likely not be required to prove consumer confusion and other facts like you will in federal court.

Then, as a practical matter, the federal law only protects names if they are otherwise trademarks being used in commerce.  The standard is essentially the same as in UDRP actions.

Unless you have an obvious commercial trademark in your name, such as Justin Bieber, and are worth a lot of money, and the defendant is located in the US, the federal law is not a viable option.  Worse, the publicity of filing a lawsuit can backfire with public criticisms about why you were not smart enough to register your name in the first place.  Even if a case is viable, a UDRP action is faster and cheaper – and everyone uses it.  Don’t expect a federal judge to be amused by your lawsuit on his or her desk that should have been filed in UDRP arbitration.

 

Bottom Line:

Unless you have a trademark in your domain, and are using it commercially, there is no possible trademark infringement in using a personal name in a domain.  Your name needs to be famous and your name cannot be different from your business name.

Even if you meet the trademark requirement, that only gets your foot in the door for being able to file a claim.  It does not mean someone using your name is infringing on it.

Does the other person have any rights to the name, such as they have the same name?

Is the domain being used in a manner that creates public confusion about who is responsible for it?  If you sell flowers and someone else is using the name to sell tires, there is no public confusion and thus no infringement.

Is the domain being used commercially to make money from your name?  Unless the other person is actually making money from it there is likely no claim.

 

How to Get the Domain

Presuming you do not have a viable trademark claim to obtain the domain, which is most likely the case if you are reading this, how do you get the domain?

Send a polite offer to buy the domain for a fair value.  You need to make an initial monetary offer.

Simple as that.  Act the same as you would if you were interested in buying any other domain.  At some point, almost everyone has a price.

On the other hand, if you start off threatening and mentioning things like trademark infringement in an attempt to intimidate someone, what is more likely to happen is you never get the domain no matter how much you eventually offer.  Or, by being a prick you cost yourself money as the other person inflates the price in response.  You may also be publicly ridiculed and your correspondence posted online.  This frequently happens.

 

 

 

 

 

 

 

 

 

 

Filed under: Internet TaxUDRP

Like this post? Subscribe to my RSS feed and get loads more!