Trademark claims require the identity or similarity in names used and the products and thus the likelihood of confusion. This applies to the examination of the likelihood of confusion between domain names and trademarks initially the same criteria as for the testing of other types of injury. The starting point is the overall impression of all the circumstances, but take into account is always the degree of similarity of the terms used in particular in terms of sound. In this context, however, some special considerations, which result from technical factors:
On one hand, only combinations of letters with letters of the alphabet are international so far at least possible. Also uppercase and lowercase letters are not distinguished in domains. On the other hand, there are word/picture trademarks, the word element lacked distinctive alone is not capable of protection for themselves.
Moreover questions but always value questions to be decided case by case, depending on the circumstances. Thus, for example, not a lump sum to answer whether for assessing the similarity of words is being confined to the second-level domain (and in some cases the third-level domain) or whether the top-level domain is considered. Clearly the problem is of domains in which the ending part of the protected term is such as in www.preuss.ag or www.justdo.it. The question of whether, for example, Spaces or dashes to exclude the likelihood of confusion, is a simple answer escapes. Although the average Internet user knows that only the correct entry of the domain name leads to the desired site, but can be intercepted by choosing a similar sounding domain prospects who just do not know the proper domain of the other.
With regard to the assessment of the identity or similarity of the products offered, it depends on the offered goods or services and not just to the media.
The domain name registration takes place as already shown by the principle of “first come, first serve of”. An examination in view of earlier priority rights is not carried out. Since the registration of a domain but can already take place a mark moderate use of protected items, a corresponding search should be made in advance. In particular, if a likelihood of confusion between the intended domain and protected marks of third parties exists, could be asserted trademark law claims.
If trademark owners argue among themselves about the authorization of a particular domain, because they use for their various products for a long time a homonymous term, the priority (if no likelihood of confusion) is not critical. In these cases, as in the cases of homonymous company names or company KeywordsPlacesAuthors you will be able to grant any of the two indicators owner a better right or overriding interest in the sought by both domain. For the solution of concrete cases it will certainly arrive to the interests of the parties involved.
Sign up for a variety of domains for the sole purpose of excluding the holder of the use to go to the (expensive) to offer him the purchase domains, has been viewed as so-called “domain grabbing” as inadmissible. The reasoning arises in these cases from the fact that a formal legal position is utilized quite abusive.