Cease and desist!
It can be scary. You get an email or a letter in the mail from a lawyer. That lawyer tells you that your domain name is infringing on their client’s trademark.
You must immediately cease and desist (or else!), the letter claims.
You worry. You shake. You wonder what’s going to happen.
Calm down. You’ll get through this.
What is Trademark Infringement?
As it relates to domain names, trademark infringement is registering a domain name in bad faith with an intent to profit from the goodwill of a trademark.
People who register domain names in bad faith to try to make money thanks to the brand are called cybersquatters.
If you register a domain name with Nike in it and show a bunch of ads related to shoes, that likely qualifies as cybersquatting and trademark infringement.
You Might Not Be Infringing
Just because a lawyer sends you a letter doesn’t mean their claims are correct. In fact, the lawyer might be trying to scare you to get the domain for their client. Or they might have simply made a mistake.
Many lawyers and intellectual property protection companies use automated tools to find infringers. These tools identify possible infringement, but lawyers need to review them before sending them out. They might have false positives.
For example, an automated system might flag a domain name with the word “moniker” in it because it includes the trademark “nike”.
But a domain name with the word ‘moniker’ in it is not likely infringing on Nike’s trademark.
There are also situations in which it’s okay to use a trademark in your domain name. Both U.S. courts, as well as panelists for the Uniform Domain Name Dispute Resolution Policy (UDRP), have found that people in the U.S. can register “gripe domains”.
Registering something like WalMartSucks.com to criticize Wal-Mart is perfectly legal. It’s a free speech issue. However, registering WalMartSucks.com for a website you make money from is not okay.
Some UDRP panelists have also found that it’s acceptable to register domain names containing trademarks when creating a site about those products. For example, a company that does Ford repairs can register a domain with Ford in it to promote their Ford repair business in certain situations. (But be careful—some companies won’t allow such domains. For example, the WordPress Foundation will go after anyone who uses “WordPress” in their URL.)
What to Do When You Get a Letter
The first thing to do when you receive a legal threat is to take a deep breath.
It’s just a letter. A company or person wants to resolve the issue, not get entangled in a long legal battle. They might want control of the domain, or they might just want for you to stop using it in an infringing way—assuming that you are actually infringing with the domain name.
Even if you are sued, it can all be resolved.
One person who was the defendant in a (very valid) trademark infringement lawsuit suit told me he later realized he should have taken it step-by-step rather than freaking out. “Nothing is going to happen immediately,” he told me.
Here are some things to do and not do when you receive a legal threat:
- DO evaluate the claim. Is the person or company correct? Are you really infringing their trademark or is there a misunderstanding?
- DON’T do anything right away. Making a change to your website or taking it down can give the other party ammunition to suggest that you did indeed do something wrong by registering the domain name.
- DON’T write back offering to sell the domain name. This can be used as evidence that you registered the domain name in bad faith in order to sell it to the trademark holder.
In most cases, the safest thing to do is to call a lawyer before you take action—and not just any lawyer. Call one that specializes in domain name disputes.
Lawyers that don’t handle domain name cases will need to learn about cybersquatting rules and laws. Even some trademark attorneys don’t understand the nuance of cybersquatting claims.
Many domain name attorneys will evaluate your case for free. They might say “Yes, this is infringing and you should offer to give them the domain” or “You have a good defense here.”
Receiving a threatening letter from a lawyer can be scary. But it’s not the end of the world. Contact a competent attorney to determine if you are actually infringing on the trademark.