Using a competitor's trade name as a domain name or in an AdWords campaign, is it allowed?

In "What is ruling?" we gauge the legal intuition of business owners. This time: may you use a competitor's trade name as a domain name or AdWord? Watch the video in which four business owners and Valerie Lipman, corporate law, intellectual property & ICT and privacy attorney, share their views.

Trade name or trademark in domain name

In practice, a trade name or trademark is often used as (part of) a domain name. Because there are several possible extensions (.nl, .com, .net, and since 2013 many more) it can happen that different parties use almost the same domain name. This may be the case, for example, because parties use the same brand or trade name for completely different products or services. In that case, the two almost identical domain names can in principle simply coexist. It is different when two parties use the same trade name or trademark side by side for the same products or services and also both use them as part of a domain name. In that case, it will be considered who first used the trade name or first registered a trademark right. The party with the oldest right may then be able to prohibit the use of the trade name or trademark by the other party.

Your trade name or trademark in someone else's domain name

However, a competitor may also decide to register a domain name containing his competitor's trade name or trademark, while he himself uses a completely different name. The domain name then points to his own website, on which his own products or services are offered. As long as it is clear to a visitor to the website which party is being referred to, this is in principle permitted. It is important that the impression is not created that there is a commercial relationship between the domain name holder and the trademark holder. It may also be the case that the trade name or trademark is used in a domain name of a reseller. This is permitted, provided that the reseller actually sells the products and also makes clear the relationship with the trademark holder.

Advertising on a competitor's (brand) name

A competitor's brand can also be registered as a keyword in Google's advertising service. For example, NIKE can register ADIDAS as a keyword, and then show an ad with NIKE products when someone searches for ADIDAS. This is also allowed, provided the ad makes it sufficiently clear who the provider of the products or services is. What matters for the assessment is, for example, whether the name of the advertiser is mentioned in the ad text and whether the competitor's brand is also mentioned in it. If the advertisement does not make sufficiently clear who it comes from, there may be trademark infringement.