Trademark & Domain Name Disputes

Under Texas law, a domain name dispute could potentially lead to a trademark dispute. A trademark is, “a word, name, symbol, device, slogan, or any combination thereof that, whether registered or not, has been adopted and used by a person to identify his or her goods and distinguish them from the goods manufactured or sold by others.” A person commits trademark infringement if, without the registrant’s consent, he uses a reproduction, copy or imitation of a registered mark in selling or advertising goods when such use is likely to cause confusion with the likely source of the goods. A person may also bring suit against a party for actions likely to dilute the distinctive quality of a mark. Texas courts have determined that a domain name can violate the statute prohibiting trademark dilution.

Courts applying Texas law have determined that “dilution arises when a subsequent user uses the trademark of a prior user for a product so dissimilar from the product of the prior user that the subsequent user will lessen the uniqueness of the prior user's mark.” To recover, the owner of the tradmark must show that it owns a distinctive mark and dilution is likely. Distinctiveness can be proved by showing uniqueness of the mark or that it has acquired a secondary meaning. A secondary meaning means that the public has come to associate the trademark with a given entity.

For example, in a 2001 Texas case, the owner of the trademark “Ernest and Julio Gallo” sued a domain name owner who had registered ernestandjuliogallo.com. The court held that the name was distinct and it had a secondary meaning and further found that the value of the trademark was likely to be diluted because the defendant owning the domain name denied the plaintiff of the ability to use its mark to serve as a unique identifier for its goods. The defendant’s website used Gallo’s trademark in a way that diverted potential customers to a website containing disparitive remarks about Gallo, tarnishing its trademark. A domain name dispute can become an issue of trademark infringement if the holder of the name denies the holder of the trademark of the right to exclusive use over their trademark. Because the domain name denied Gallo the right to exclusive use over their trademark and confusingly directed customers to a website harmful to them, potentially weakening their trademark, the court applied Texas law and determined that a violation of the dilution statute had occurred.

So, under Texas law, a domain name dispute could lead to a trademark infringement suit if the trademark is distinct and has a secondary meaning, and the owner of the domain name denies the owner of the mark of exclusive right over their trademark and/or uses it in a way that will dilute or weaken the trademark.

** This article was prepared by Zachary Popovich and edited by Sarah Berry.