Guide To Internet Domain Disputes: Protecting Your Trademark And Your Domain Name

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Guide to Internet Domain Disputes:

Protecting Your Trademark
And Your Domain Name!

Due to the boom in online commercial activity and the conflict between the freedom of the internet and the territorial nature of trademark law, it is likely that many businesses and domain name registrants will become involved in domain disputes. The majority of domain disputes center on trademark owners’ interest in preventing others from using domain names containing the name of their company or their trademark (a “domain trademark”).

By becoming familiar with the basics of trademark and domain name law and taking appropriate steps to protect their property, trademark owners and domain name registrants can reduce the likelihood of conflict over domain names.

This publication

sets forth the basics of trademark and domain name law and
identifies simple steps trademark owners and domain name registrants can take to protect their interests.

Internet Domain Disputes: Domain Name Basics

A domain name is an Internet address. In the domain name www.sharkeylaw.com, com is the top-level domain, Sharkeylaw is the second-level domain, and www is the subdomain. Domain disputes concern the second-level domain. In order to register a second-level domain, a registrant must make a request to the registrar that has the power to assign names for the top-level domain in which the second-level domain is to be registered. All registrars assign domain names on a first-come, first-served basis, regardless of the registrant’s trademark rights in the name.

Learn which forms of your business name and/or trademark name you should register in Guide to Internet Domain Disputes.

Internet Domain Disputes: Trademark Basics

A trademark is a word, symbol, or phrase used to identify and distinguish goods. A servicemark is a word, symbol, or phrase used to identify and distinguish services. To serve as a trademark or servicemark, and to be subject to protection under the law, a mark must be distinctive, or capable of identifying the source of a particular good or service. Words or phrases that simply describe the product or service with which they are used are not protectable marks. For example, “Domain Name Attorney” would not be protectable as a servicemark for a UDRP lawyer or cybersquatting attorney. Rather, the domain name lawyer would need some fanciful, arbitrary, or suggestive term to serve as his or her mark.

The federal trademark law, the Lanham Act, entitles a trademark or servicemark owner to bring a civil cause of action for infringement against any party that uses its mark. In addition to infringement actions, the Lanham Act provides that the owner of a famous mark may bring a civil cause of action for dilution.

Discover the elements that must be proven to succeed on these types of claims, and the defenses thereto, in Guide to Internet Domain Disputes.

Claim your FREE copy of

Guide to Internet Domain Disputes:

Protecting Your Trademark
And Your Domain Name!

Internet Domain Disputes: Trademarks in Domain Names

There are a variety of ways in which a registrant can use another’s trademark in connection with a domain name. “Cybersquatting” refers to the purposeful registration of a domain trademark in order to sell it to the mark owner for a hefty price. “Typosquatting” involves the registration and use of a domain name that contains a common misspelling of a mark. “Cybergriping” is the incorporation of a mark into a domain name at which a website critical of the owner is posted.

Historically, the domain name attorney of a corporation who wished to take its domain trademark from another user, lacking specific domain name law, filed a trademark lawsuit. He alleged that the use of the domain trademark infringed upon or diluted the corporation’s trademark. The traditional principles of trademark law, however, were developed without the Internet in mind. For this reason, it was often difficult for the domain name lawyer to present a strong trademark case for the domain trademark.

To address this shortcoming in the law. Congress passed a domain name law, the Anticybersquatting Consumer Protection Act (ACPA). ACPA makes it easier for companies and individuals to take over domain names that are confusingly similar to their names and trademarks. In addition, most accredited domain name registrars require that registrants submit to an arbitral proceeding, governed by the Uniform Domain Name Dispute Resolution Policy (UDRP), to resolve domain disputes.

To succeed on a claim under the ACPA, the plaintiff’s cybersquatting attorney must establish several things: (1) that the plaintiff is the owner of a distinctive or famous mark, (2) that the defendant used, registered, or trafficked in a domain name that is identical to, confusingly similar to, or dilutive of the plaintiff’s mark, and (3) the defendant had the bad faith intent to profit therefrom. Where the cybersquatting attorney succeeds, relief may include injunction, damages, profits, costs, or cybersquatting attorney’s fees. Courts and cybersquatting attorneys use traditional trademark rules and standards to determine if the mark at issue is distinctive or famous, and to determine if the defendant’s domain is identical or confusingly similar thereto.

To succeed in a claim heard under the UDRP, a UDRP lawyer must establish three elements (1) the disputed domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights; (2) the current domain name registrant has no rights or legitimate interest in the domain name; and (3) the disputed domain trademark has been registered and is being used in bad faith. Most often, a UDRP action proceeds in writing. A UDRP lawyer submits a single page complaint, setting forth the factual and legal arguments on behalf of a mark owner. Then, the domain trademark registrant, or his UDRP lawyer, has twenty days to submit a written response.

Advice: Once you have established rights in a mark, police the internet for others’ use of it. When communicating with registrants of domains containing your mark(s), use appropriate tone. If the registrant is fairly using the mark, the only way to obtain the domain is via agreement with the registrant, no matter how good your domain name lawyer is. Pick up additional tips for avoiding and handling disputes under the ACPA and the UDRP in Guide to Internet Domain Disputes.

Internet Domain Disputes: Reverse Domain Name Hijacking

While the ACPA and the UDRP have filled the gap in protection left by traditional trademark law, many domain name attorneys use them as swords against legitimate domain name registrants. For example, some domain name lawyers routinely file claims each time they see their client’s name or mark used on the Internet, without investigating the lawfulness of the use. Other domain name attorneys send threatening cease and desist letters to every single person who uses their client’s name or mark, even where the use is permissible. As a result, many legitimate registrants are at risk of losing their domain names. Domain name law, however, provides a means for these registrants to defend themselves.

Under both the ACPA and the UDRP, a registrant’s domain name attorney or UDRP lawyer can allege “reverse domain name hijacking.” To succeed on a claim for reverse domain name hijacking under the ACPA, the registrant’s domain name lawyer must show: (1) that the plaintiff is the domain name registrant, (2) that its registered domain was suspended, disabled, or transferred under the registrar’s policy, (3) that the owner of the mark who prompted the domain to be suspended, disabled, or transferred is on notice of the action, and (4) that the plaintiff’s use or registration of the domain trademark is not unlawful pursuant to the Lanham Act. Similarly, a UDRP lawyer will prevail on a claim for reverse domain name hijacking if he or she shows that the complainant knew of the registrant’s right or legitimate interest in the domain or its clear lack of bad faith but brought the complaint anyway.

Claim your FREE copy of

Guide to Internet Domain Disputes:

Protecting Your Trademark
And Your Domain Name!