Domain Name Trademark Infringement

How Can Domain Names Result in Legal Liability?

A domain name can be as important as a storefront. It is often the first impression many customers will have of your business. Trademark infringement occurs when a website address (a domain name) uses another party’s trademark or service mark in a way that confuses consumers on the internet about the source or affiliation of the site. A domain name is essentially the online “address” of a website and often incorporates a company’s name or brand. Under U.S. law, using a domain name identical or confusingly similar to another’s registered trademark can violate the federal Lanham Act. Trademark owners have exclusive rights in their marks, and U.S. courts generally hold that a domain name containing a trademark is likely infringing if Internet users might think the site is “used, approved, or permitted” by the trademark owner.

For instance, one court explained that adding generic terms or minor words to a domain name does not avoid infringement if the protected mark is still recognizable. Thus, domains like ford-trucks.com or 4fordparts.com that incorporate a trademark (e.g. FORD) without clear distinction have been held confusingly similar. The key test is whether an ordinary Internet user would be confused about the source of the goods or services offered on the website linked to the domain.

Why Trademark Rights Matter Online

Domain names are essential business assets in the modern digital economy. In fact, they commonly serve as the domain name owner's most important brand asset. A web address can also function as a trademark or service mark, if consumers come to recognize it as identifying the source of the company’s products or services. The domain URL can become closely tied to a company’s brand identity and acquire exclusive trademark rights over time.

U.S. trademark law makes clear that a domain name registration is not just a technical step with a domain name registrar. Courts have repeatedly held that use of a web address in commerce can constitute trademark use under the Lanham Act. This means that a business owner who establishes trademark rights can rely on them to prevent others from using confusingly similar registered domain names that could mislead consumers or dilute the company’s brand reputation.

A trademark owner has the ability to enforce its trademark when another party uses a domain that is identical or confusingly similar to the trademark through a lawsuit or administrative proceeding, such as a Uniform Domain Name Dispute Resolution Policy (UDRP) petition. The principle is straightforward: if the domain name registrant of another site uses the same name or a mark that is confusingly similar to your trademark, and this could mislead internet users into believing that there is an affiliation with you, it may amount to trademark infringement. This is particularly important for protecting a company’s trademark from unauthorized use in online infringement through advertising, fraudulent websites, or cybersquatting schemes.

At the same time, owning a domain does not automatically or “necessarily establish trademark rights.” Cases like US Patent and Trademark Office, et al v. Booking.com B.V., 140 S. Ct. 2298 (2020) have established that a domain name itself can become a trademark or service mark. In order for a domain name to be registrable and establish trademark rights, it must function in commerce to distinguish the company’s brand from others, not merely serve as a technical internet address. Once that threshold is met, however, a domain name can carry all the benefits of registered trademarks and give the brand owner access to powerful legal remedies under U.S. law.

What Is Domain Name Trademark Infringement?

Domain name trademark infringement occurs when a domain name is identical or confusingly similar to a trademark or service mark owned by another party, in a way that causes consumer confusion about the source of goods or services. Under the Lanham Act (15 U.S.C. § 1114, § 1125), trademark infringement includes use of a mark that is “likely to cause confusion, mistake, or deception” among consumers.

Federal trademark law (the Lanham Act, 15 U.S.C. §§ 1051–1127) protects registered trademarks or service marks and also unregistered common-law marks against unauthorized uses that cause confusion. Under 15 U.S.C. § 1114, anyone who uses a registered mark in commerce without permission can be liable for infringement, and § 1125(a) covers “false designations of origin” (unfair competition) with unregistered marks. A trademark is generally a word, symbol, or name used to identify the source of goods or services, and a business’s exclusive trademark rights accrue from its use and (if obtained) federal registration. Registration is not strictly necessary to have rights, but owning a registered trademark (on the Principal Register) provides presumptions of validity and nationwide priority.

Domain name rights themselves are not limited to trademark registries; they are assigned on a first-come, first-served basis by registrars like GoDaddy, Network Solutions, etc.. Historically, registrars have required applicants to attest that a domain registration “does not infringe upon or otherwise violate the rights of any third party,” including trademarks. Nonetheless, many domain disputes arise after registration. If a domain name registrant (the person who owns a domain) uses a domain in a way that violates some other party’s trademark rights, the trademark owner can sue under the Lanham Act or challenge the registration through alternative dispute policies.

Initial Interest Confusion Doctrine

Initial interest confusion occurs when a competitor or other party draws a consumer to their website, social media, or other online presence through the use of adwords, keywords, or domain names that are the same or confusingly similar to a trademark owned by another. In an early example, West Coast Entertainment had registered the domain moviebuff.com and used it for a website offering a movie information database, which conflicted with Brookfield’s registered trademark “MOVIEBUFF” for its own film database product. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). The Ninth Circuit found that Brookfield had a valid, protectable trademark in “MovieBuff,” and that use of moviebuff.com by West Coast Entertainment to offer similar services would cause a likelihood of confusion. In other words, consumers might be diverted to West Coast’s site thinking it was affiliated with Brookfield’s MovieBuff product. The court enjoined West Coast from using moviebuff.com, and the case is important for recognizing “initial interest confusion” online. Generally, even if consumers realize their mistake before a purchase, the improper use of the trademark in a domain can unfairly draw them in.

Other Types of Domain Use Violations

Certain problematic uses of trademarks in domain names frequently lead to infringement claims:

Cybersquatting

Registering another’s trademark as a domain name with the intent to profit from it, typically by selling the domain back to the trademark owner or exploiting the name’s traffic. Cybersquatting is explicitly addressed by the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d). For example, buying up a domain like bestnikeproducts.com and then offering to sell it to the brand owner (Nike) at an inflated price is cybersquatting. This bad-faith exploitation of a trademark in a domain can lead to liability under the ACPA.

Typosquatting

Registering confusingly similar misspellings of a famous mark or domain to divert traffic. For instance, someone might register gooogle.com (with an extra “o”) to catch users who mistype google.com. Even though the spelling is slightly off, it is designed to be easily mistaken for the real site. Typosquatting is a variety of cybersquatting; it can confuse consumers and siphon off web traffic, and it likewise infringes the mark owner’s rights.

Unauthorized Use in Online Advertising

Using a trademark within a domain name to attract potential customers to an unrelated or unauthorized site, often monetized through ads or affiliate links. For example, a domain name like, e.g., bestnikeproducts.com could be used to draw in users looking for Nike products and then redirect them to competitors’ ads or counterfeit sales. Such use of the mark in a domain can mislead consumers into thinking the site is sponsored or approved by the trademark owner, which constitutes infringement or unfair competition.

Dilution of Famous Marks

Even if consumer confusion is not immediately likely, using a famous brand name in a domain can impermissibly weaken or tarnish the brand’s distinctiveness. U.S. law provides that famous marks have protection from dilution (15 U.S.C. § 1125(c)). For example, using a name like bestnikeproducts.com without authorization could be seen as taking unfair advantage of the famous mark’s recognition. Such uses can erode the uniqueness of the famous mark (called blurring) or harm its reputation (tarnishment), and the trademark owner can take action to stop it even if customers aren’t outright confused about source.

In one of the first cybersquatting-related cases, a known domain squatter (Dennis Toeppen) registered the domain panavision.com and tried to sell it to Panavision for $13,000. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). The court held that this bad-faith registration of Panavision’s name violated trademark law under the Federal Trademark Dilution Act, as it diluted the value of the mark and constituted a commercial use of the trademark for profit. This case helped spur the adoption of the Anti-Cybersquatting Consumer Protection Act (ACPA) by illustrating the harm of someone “extorting” a brand by holding its domain name hostage.

The Role of Bad Faith

Under the ACPA, bad faith intent is a key element in determining whether a domain name use constitutes cybersquatting. In other words, the law looks at the registrant’s intent and purpose in registering the domain. ACPA lists several factors that courts consider to evaluate “bad faith intent to profit” from a mark in a domain name. These include, among others, whether the domain name registrant:

• Offered to sell the domain for profit to the trademark owner: If the registrant does not have a legitimate business purpose for the domain, the offer to sell is considered an indication of a bad faith attempt to trade on the trademark owner's own goodwill. This is a strong indicator of cybersquatting, essentially treating the domain as ransom for the rightful brand owner.
• Provided false or misleading contact information: Using fake names, addresses, or other contact information to hide one’s identity suggests an awareness of wrongdoing and an attempt to evade accountability, which points toward bad faith.
• Registered multiple domain names corresponding to others’ trademarks: A pattern of acquiring domains that incorporate various brands, often a practice of serial cybersquatters, indicates bad faith intent to profit from selling them or otherwise exploiting those marks. This is particularly the case where distinctive or famous marks are incorporated into or imitated without any legitimate reason.

These and other factors, such as whether the registrant has any legitimate rights in the name, or is diverting consumers for commercial gain, help the court determine if the domain was registered in bad faith. No single factor is dispositive, and courts will weigh the overall circumstances. In essence, a good faith registrant might be someone who unknowingly registers a domain corresponding to another’s mark for some legitimate purpose or shares a name, etc., whereas a bad faith registrant is deliberately trying to exploit the trademark value of a name in which they have no rights.

Uniform Domain Name Dispute Resolution Policy (UDRP)

Trademark owners often use the UDRP, a dispute resolution policy established by Internet Corporation for Assigned Names and Numbers (ICANN), to challenge infringing or squatting domains without filing a lawsuit in court. The UDRP is an administrative process that applies to most generic top-level domains (e.g., .com, .org, .net) and some country domains. A UDRP complaint allows a brand owner to seek a quick remedy if certain criteria are met, such as transfer or cancellation of the domain registration. To succeed under the UDRP, the trademark owner (complainant) must prove all three of the following elements:

1. The accused domain name is identical or confusingly similar to the complainant's mark. For example, deltaflyer.com vs. the trademark Delta Airlines. Minor differences like adding “.com” or other generic terms are generally ignored in this comparison.

2. The respondent (domain owner) has no rights or legitimate interests in the domain name. For instance, the domain is not the person’s own business name or being used for any fair or noncommercial use. Basically, the respondent has no legitimate reason to have that term as a domain.

3. The domain name was registered and is being used in bad faith. This often means the domain was acquired primarily to exploit the trademark’s value, e.g., to sell it to the trademark owner, to block the owner, to disrupt a competitor, or to confuse/divert consumers for profit.

If the complainant proves these elements, a UDRP panel can order the domain be transferred to the trademark owner or for the registration to be canceled. Notably, UDRP proceedings do not award money damages. The only UDRP remedies are domain cancellation or transfer. The UDRP process is generally faster and cheaper than litigation, often taking a few months or less for a decision. It’s a favored tool for small businesses because it avoids the cost of a full lawsuit. However, if either party is unhappy with the UDRP outcome, they can still take the dispute to court for a definitive resolution.

Distinguishing Between Business Names and Domain Names

Owning a business name or registering a company name does not necessarily establish trademark rights. It is often assumed that registering a business entity in a state, obtaining a business license and DBA, and/or obtaining a domain registration, generates exclusive rights to use a name, but that’s not the case. Only use in commerce as a source-identifier secures enforceable trademark rights. A party using a business name in commerce can enhance and solidify their trademark rights by pursuing trademark registration with the USPTO, if they are engaged in interstate commerce. However, neither a business name registration, nor a domain name registration, by themselves, establishes enforceable rights in a trademark or brand/business name. Using a trade name or business name in commerce can develop common law trademark rights only if it functions to identify your goods or services to consumers. If it’s just a corporate name on paper and not used publicly as a brand, it will likely not establish trademark rights. Likewise, the U.S. Patent and Trademark Office advises that merely registering a domain name with a registrar does not confer any trademark rights, and you might later have to surrender the domain if it infringes someone else’s mark.

Small business owners should not assume that prior registration of a company’s name with a state or securing a matching domain will prevent another party from claiming trademark ownership over a corresponding name. Trademark rights depend on who used the mark first in commerce and whether consumers associate the name with a particular source. It’s quite possible, e.g., for two different businesses in different states to register the same company name or domain name. If one of them has actually been using the name as a brand in commerce and is issued a federal trademark registration, that party’s rights can trump a mere business filing or domain registration of the other. In practice, if you launch a business and grab a domain without checking for existing trademarks, you could discover that someone else already has trademark rights in that name, and you might be forced to change your branding or give up the domain.

Risks to Brand Reputation and Consumer Confusion

Domain name infringement can significantly harm a company’s brand reputation and customer trust. If internet users are misdirected to another company’s website or a malicious site due to a confusingly similar domain name, the trademark owner can suffer several harms:

• Lost Traffic and Sales: Potential customers who intended to find your business might end up on a competitor’s site or a domain that has nothing to do with your company. This diversion can lead to lost sales opportunities.
• Damage to Goodwill: If the infringing domain hosts inferior products, scam offers, or negative content, consumers may associate those poor experiences with your brand. For example, a phishing site at a deceptive domain (like a misspelling of your company’s name) could steal user information, causing people to lose confidence in your legitimate business. Even less malicious scenarios like a domain that critiques or parodies your brand can tarnish your image if consumers stumble on it believing it’s official.
• Dilution and Brand Weakening: Particularly for famous marks, allowing others to use similar domains can weaken the distinct association your brand has in the public’s mind. If numerous websites pop up using variations of your trademark in their domain, the uniqueness of your brand can be diluted. Customers might not immediately tell which domain is the “real” one, eroding the clear connection between your mark and your goods/services.
• Customer Confusion and Frustration: When consumers can’t easily find your official website because of copycat domains, it creates confusion and frustration. A frustrated customer may give up or think your company is disorganized for “allowing” the confusion to occur. In worst cases, they might unwittingly do business with the infringer, thinking it’s you, and only realize later they were misled. The resultant confusion can take substantial effort to reverse, and some disappointed consumers might never return.

In short, domain name trademark infringement isn’t just a legal technicality, it has real-world business impacts. It can intercept customers on their way to your site, redirect them to competitors or bad actors, and ultimately undermine the hard-earned goodwill of your brand.

Tools for Business Owners to Avoid Infringement

Preventing domain name trademark issues in the first place is far better than fighting over them later. Small business owners can take proactive steps to avoid infringing others’ marks and to protect their own:

• Trademark Search Before Choosing a Name: Before you register a domain name or even name your business, a thorough trademark search should be performed. This means checking the USPTO’s TESS database for any federally registered trademarks that match or resemble the name you want to use. State trademark databases and unregistered common law usage should also be searched because it is not only federally registered trademarks that pose a potential risk to your business. The goal is to ensure your prospective domain and brand name are not likely to conflict with any existing trademark rights. This due diligence at the outset can save you from legal trouble and having to rebrand later. There is significant skill in finding and analyzing potential trademark issues. We recommend seeking the assistance of an experienced trademark attorney.
• Domain Name Availability Search: Check domain registrars for the availability of your desired domain and related variants. It’s wise to use domain search tools (at GoDaddy, Google Domains, etc.) to see if the name is free or already taken. If someone else has already registered the .com you want, that’s a red flag: investigate who owns it and what it’s used for. If it appears to be an active business in a similar industry, you may have a trademark conflict. If it’s parked or unused, there’s a chance it’s being squatted upon. Also consider securing multiple extensions (like .net, .org, or relevant country codes) for your chosen name so nobody else can grab them and potentially cause confusion.
• Consult Legal Counsel: An intellectual property attorney can provide an opinion on whether your proposed domain name might infringe someone’s mark. Especially if the name is close to another name in your industry, a lawyer can assess the risk and advise you on how to proceed. It’s better to spend a little on legal advice upfront than to face a lawsuit or forced domain transfer later. An attorney can also help strategize modifications to a name to make it less risky.
• Register Your Trademark: If you’ve settled on a business name or brand and plan to use it in your domain, consider filing for a federal trademark registration with the USPTO. Owning a registered trademark gives you stronger protection against others, including a legal presumption of your exclusive rights nationwide. It can deter would-be infringers from using similar domains once they see you have a registered mark. If you want additional protection of your online brand, your main domain (e.g., your .com domain) can be used and registered as a trademark like booking.com. Furthermore, if a conflict arises, having a registration will make it easier and cheaper to recover a domain: UDRP panels and courts give deference to trademark registrations as proof of rights. Remember that to register a domain name as a trademark, it must be used in a trademark capacity, identifying your goods or services (not just as a URL).
• Monitoring Services: After establishing your brand, you should keep an eye out for new domains that could be infringing. There are online monitoring services that alert you when domains similar to your trademarks get registered. You can also set up Google Alerts for your brand name to catch mentions or suspicious uses on the web. Early detection of a potentially infringing domain lets you act before the site gains traction.

By using these tools and practices, a small business can significantly reduce the risk of both infringing someone else’s trademark with its domain and of others infringing its trademark. In the online world, being proactive about trademark clearance and protection is part of smart business strategy.

Best Practices for Domain Name Registration

When registering domain names for your business, keep the following best practices in mind to avoid legal issues and strengthen your brand’s position:

• Choose a Distinctive Domain Name: Ideally, pick a domain that is unique to your company and not easily confused with others’ trademarks. Avoid using famous brand names or common industry terms that could overlap with competitors. The more distinctive your name, the easier it is to claim and protect. For example, a coined name like XyloTech.com is less likely to infringe someone’s mark than QualitySoftware.com. Distinctiveness not only helps avoid infringement but also makes your own brand stronger.
• Avoid Confusing Similarity: Steer clear of domain names that are just minor variations or plural/singular forms of another business’s trademark. Even if you think a slight change (adding “-inc” or changing one letter) will get around a trademark, it usually won’t. For instance, registering macbooks.com (plural) would clearly conflict with Apple’s “MacBook” trademark. A good practice is to search for the exact name and similar variations before you register, to ensure you’re not accidentally copying an existing brand’s domain.
• Register Defensive Variations: Once you have your main domain, consider registering common variations and other key extensions. This might include plural or singular forms, obvious misspellings, and other top-level domains (TLDs) like .net, .org, or country-specific domains if you operate internationally. For example, if your main site is GreatName.com, you might grab GreatName.net and GreatNameCompany.com, or other versions an opportunist is likely to target. While you can’t possibly cover every permutation, securing the most likely ones may prevent cybersquatters from exploiting them. Owning these variations also helps funnel all traffic to your official site.
• Reflect Your Business: Your domain name should ideally hint at your company’s products or services or at least be consistent with your brand identity, without copying another’s brand. Generic terms like licensedlawyer.com or autosales.com do not distinguish your business and may not generate trademark rights at all. Also, descriptive and indistinctive domains like skillfulattorneys.com or qualityautosales.com do not assist your branding and may generate weak trademark rights, if any. Aim for a domain that customers will recognize as you, and not mistake your business for another. If your exact business name is taken or too similar to a trademark in use, consider a creative alternative or rebranding rather than registering a confusingly similar domain.
• Maintain accurate domain name ownership records with domain registrar: When you register a domain, you must provide contact information. Ensure that this information is accurate and up to date with your registrar. Beyond the practical need to receive important notices, there’s a legal reason: providing false contact info can be evidence of bad faith in a dispute. ICANN rules and many national laws require truthful domain registration details. If you move offices or change administrators, update the records. Inaccuracy could jeopardize your control of the domain, and also weaken your position if you ever face a challenge.

Think of domain registration as part of your overall brand strategy. It should be done carefully, with an eye toward both marketing and legal protection.

Conclusion

Choosing the right domain name is critical to building and protecting a company’s brand online. But failing to consider trademark law can expose you to costly disputes and loss of domain ownership. By conducting trademark searches, registering your marks, and avoiding confusingly similar domains, you can safeguard your company’s intellectual property and avoid legal pitfalls. If you need assistance with trademark and domain selection or other trademark matters, contact our office for a free consultation.

© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.