Using registered words - trade mark (TM) in the domain

Started by alexfernandes, Jul 24, 2022, 08:41 AM

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alexfernandesTopic starter


With knowledge of the unfortunate consequences faced by those who register a domain that incorporates a trademark without possessing the necessary documentation, there is a growing fear of such actions. It seems that the owner of the trademark would take legal action against you, and attempting to defend yourself in court would be quite costly without any assurance of success.

However, it may be possible to transfer the domain without having to go through the court system if you have sufficient evidence in the form of documentation proving trademark ownership. Therefore, utilizing a product name, brand or game name as a domain for a worthwhile project may seem like a far-fetched idea due to the potential risks involved.


The success of a business can greatly hinge on the strength of its brand name.

I received a brief email from lawyers representing a trademark that is currently involved in a lawsuit. The email accused me of selling their trademark and demanded that I immediately transfer the domain to them. When I responded by suggesting that I would transfer the domain for a fee, they did not reply and disappeared.


The issue at hand is that a trademark holds the status of intellectual property, while domain names do not have this designation according to the law. The Intellectual Property Rights Court has stated that domains are simply a technical means of address, and as a result, trademarks are the focus of judicial protection during disputes rather than domain names.
Unfortunately, courts do not take into account the amount of investment made in promoting the domain or the costs associated with relocating and rebranding.

In some cases, domain name owners are able to defend themselves against such lawsuits if it is proven that the trademark was registered unlawfully. However, this matter would require separate legal action, with domain name owners having to file applications with the Chamber for Patent Disputes, the Federal Antimonopoly Service, or another court.