Licensing Trademarks? Think about Domain Names, Too

The December 2009 issue of les Nouvelles, a publication of Licensing Executives Society International, has an interesting article about the interplay between domain name disputes and trademark licensing.

“WIPO Domain Name Cases Offer Trademark Licensing Lessons,” by Hee-Eun Kim, an LLM student in Munich, Germany, starts by describing the Uniform Domain Name Dispute Resolution Policy (UDRP) and the role of the World Intellectual Property Organization (WIPO) in resolving disputes under the UDRP.

Based on WIPO decisions arising from a variety of contractual relationships among UDRP parties, the article offers recommendations for both licensors and licensees of trademarks.

For trademark licensors:

  • Devise a domain name strategy for your trademarks – which top level domains, which combinations and variations of marks, which languages, etc.
  • Regulate domain names in trademark license agreements.
  • Recognize that domain name registrations may make trademarks more attractive.
  • Monitor domain names for trademark infringement.

For trademark licensees:

  • When registering a domain name, make a good-faith effort to avoid infringing anyone’s trademark rights.
  • Acquire a domain name that incorporates a licensed trademark only if you can satisfy the following criteria: (i) you are offering the goods or services in question, (ii) you are using the website to sell only the trademarked goods or services (not your own goods or services or those of a third party), (iii) the site discloses your relationship to the trademark owner, and (iv) you are not depriving the trademark owner of the opportunity to acquire a domain name that reflects the mark.
  • If you want to bring a UDRP complaint against a third party based on the licensed trademark, obtain the licensor’s consent to or involvement in the complaint.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.