Trademarks vs domain names
This chapter shows the commons and differences between trademarks and domain names.
- To verify trademark infringement in a domain dispute, two conditions are checked: the similarity to the point of confusion and unfair use
- Domain names have become a means of performing the function of a trademark
- Domain names containing trademarks or trade names have commercial value
- The right holder has the exclusive right to use the trademark on the Internet
- Similarity to the degree of confusion between a trademark and a domain name is established by visual comparison
- The domain name is identical or confusingly similar if it is a transcription of the word that is the trademark
- The same font in a trademark and a domain name may show their connection
- In case of a conflict between trademark and domain name rights, the name and content of the site are analyzed
To verify trademark infringement in a domain dispute, two conditions are checked: the similarity to the point of confusion and unfair use
When addressing the question of whether the violated the plaintiff’s right to a trademark when use by the defendant domain name, the court checks for two conditions: first, the presence of similarity to the degree of confusion of the domain name with a trademark, and second, unfair use of a domain name in relation to goods or services, for individualization of which the trademark is registered.
Domain names have become a means of performing the function of a trademark
When choosing domain names for the Internet, owners of information resources stop at the maximum simple and logical names (word, group of letters, etc.), which are usually associated with consumers directly with a specific participant in the economic turnover or their activities. Domain names have actually been transformed in the means performing function of the trademark which gives the chance to distinguish respectively goods and services of some legal entities and individuals from similar goods and services of other legal entities or individuals.
Domain names containing trademarks or trade names have commercial value
Domain names that contain trademarks or trade names have commercial value.
The right holder has the exclusive right to use the trademark on the Internet
The plaintiff as the right holder has an exclusive (priority) right to use own trademark in any manner not contrary to the law, including on the Internet.
Thus, it should be noted that the plaintiff as the right holder has an exclusive (priority) right to use its trademark in any manner not contrary to the law, including the Internet.
Similarity to the degree of confusion between a trademark and a domain name is established by visual comparison
Thus, the court, assessing the evidence, concluded that the visual comparison of symbols are located in domain names “higer.ru” and “хайгер.рф”, with the trademark of the plaintiff, the similarity to the extent of confusion of its individual elements is the place to be, which is a violation of the exclusive rights of the plaintiff.
The domain name is identical or confusingly similar if it is a transcription of the word that is the trademark
Domain name “higer.ru” and trademark are made of some letters of the alphabet and their reading, and it develops a strong belief about their close relationship, at the same time, the domain name “хайгер.рф” at its core is a transcription of the word ““HIGER” translated into Russian, which is not disputed by the parties in the case and is obvious.
Domain names MIRAX.ME and MIRAX.TV, registered by the defendant, include the word “MIRAX” in English language, completely identical to the degree of confusion to the trademark MIRAX, as well as the trademark “МИРАКС” in Russian language, which corresponds to the degree of confusion of the English transcription of the word “MIRAX”.
The same font in a trademark and a domain name may show their connection
The disputed designation of the domain name and the protected trademark are executed by one font of the Latin alphabet, and at their reading it develops a strong belief about their close relationship.
The disputed designation of the domain name and the protected trademark are executed by one font of the Latin alphabet, and at their reading it develops a strong belief about their close relationship.
In case of a conflict between trademark and domain name rights, the name and content of the site are analyzed
The Plaintiff owned trademarks and the domain name “bolshoi.me” are similar to the point of confusion, that follows from visual examination of the symbols. The name of the website and its content are used for the realization of theater tickets, i.e. in the same field of activity as the right holder.
