Here is a quick preview of what David Mazur is going to
discuss at tonight’s Law Talk:
Trademarks and the Internet
Domain Basics
- Computers accessible by the internet are
identified by a numeric identifier called an “IP” or “Internet Protocol”
address.
- To make this more easily accessible, the “Domain
Name System” was devised to help match names people would remember to
numbers. You are familiar with
many standard top level domains (.com, .org, etc) just from browsing the
internet.
- The Domain Name System is currently administered
by a non-profit public benefit corporation named ICANN
Rights in Domain
Names
- The process of registering a domain name results
in an agreement that the registrar will take certain actions on behalf of the
registrant in exchange for a fee.
- Your rights in a domain name are purely contractual, and can be
extinguished if you breach your contract with the registrar. Registration is an administrative
process that does not confer intellectual property or trademark rights on a
registrant.
Basic Trademark Considerations
- As discussed, trademark law addresses the needs
of a business to identify their products and services to potential customers,
but an individual can obtain a domain name for a number of reasons separate
from commerce.
- One common question is whether a business can
obtain a trademark to a generic (and otherwise non-trademarkable) word by
adding a “.com;” they cannot.
- Initial Interest
Confusion
- Trademark law principles provide protection
against “initial interest confusion,” which occurs when a competitor
capitalizes on the goodwill associated with a business to lead customers to
their goods and services: There
will be a violation if there is a “bait-and-switch.” If the customer makes an informed
choice, there will be no violation.
- Examples
- Software
which loaded pop-ups for competitors when a browser was directed at a well
known site that “crowded out” the desired website.
- Displaying
a competitor's trademark in Adwords ad copy
Cybersquatting
- “Cybersquatting” is registering, selling or
using a domain name with the intent of profiting from the goodwill of someone
else's trademark. It generally refers to the practice of buying up domain names
that use the names of existing businesses with the intent to sell the names for
a profit to those businesses.
There are 2 primary sets of rules under which one can address
cybersquatting in the US.
·
ICANN’s Uniform Dispute Resolution Policy (UDRP)
o A
privately administered proceeding
o Filed
with an arbitrator (usually WIPO)
o Mostly
a “mail-in” paper-based process
o Only
relief available is cancellation or transfer of the offending domain names
o Trademark
owner must show both
- that the registrant has no legitimate interest in the domain name
- and that the domain name is being registered in bad faith.
o Only
mark owners can start a UDRP proceeding.
- To establish rights in a domain, a domain holder
must go to court for a protective restraining order or declaratory judgment.
o Prior
rulings under the UDRP can be used to persuade arbitrators but are not binding
o Trademark
owners who file complaints in bad faith are said to have engaged in “Reverse Domain Name Hijacking.”
- It is considered an abuse of the administrative
proceeding and the Panel can enter such a finding in the record to warn others
about such a trademark owner.
-
The Anticybersquatting Consumer Protection Act
(ACPA)
o Authorizes
a trademark owner to sue an alleged cybersquatter in federal court and obtain a
court order transferring the domain name back to the trademark owner.
o In
some cases, the cybersquatter must pay money damages.
o Trademark
owner must prove all of the
following:
- The domain name registrant had a bad-faith intent to profit from
the trademark
- The trademark was distinctive at the time the domain name was first registered
- The domain name is identical or confusingly similar to the trademark, and
- The trademark qualifies for protection under federal law
o If
there was a reason to register the domain name beyond selling it to the
trademark owner or otherwise profiting, the registrant will have a defense
Twitter-Squatting
- In May, Tony Larussa (coach of the St. Louis
Cardinals) filed a suit against Twitter in response to someone using the
service to register a Tony Larussa twitter stream, post an unauthorized photo,
and impersonate his through “tweets” – Twitter status updates
- The suit alleged cybersquatting under the ACPA
among other causes of action, but the suit was ultimately settled and
withdrawn.
