1 / 2

Trademarks and Domain Names

IP Legal Services
www. ipprocure.com
Tel: 1-866-387-5386
The intersection of intellectual property and the Internet has raised interesting questions and issues with regard to ownership rights. This chapter is split into two sections: (1) the registrability of domain names as trademarks and (2) remedies of trademark owners against registrants of domain names containing their trademark.
A domain name, for example, www.abc.com is essentially part of a web address (a Uniform Resource Locator or “URL”) and is comprised of several parts. In general, a domain name is typically preceded by “http://www.” which includes the protocol used to transfer information (“http://”) and the graphical interface for information exchange (“www.” also known as the “World Wide Web”). Additionally, the domain name will end with a top-level domain (TLD). There are a number of different TLDs in existence but the most commonly known are the generic TLDs (gTLDs) which are designated for use by the public. These include .com, .net, .org, .edu, .biz, etc. In addition, there are country code TLDs which are available for use by individual countries. For example, .uk for the United Kingdom or .ca for Canada.
Unlike the trademark system, registering a domain name is on a “first come, first served” basis. Given that a domain name in most instances acts as a portal to online business, registering a domain name that corresponds to a trade name or mark is very important. It should be kept in mind, however, that acquiring a particular domain name, for example, tmlbooks.com, does not mean you may preclude others from using TML Books for services or products. It only means that as registrant has the right to use that particular Internet address.

A domain name will only serve as a trademark if it is used in connection with the sale of goods or services and consumers associate the name with your particular business. To be protectable as a trademark, the domain name must meet the same requirements as all other applications for federal trademark registration. Likewise, it is susceptible to rejection on the same statutory bases as any other term submitted for registration, i.e., descriptiveness, generic subject matter, etc.

In particular, a trademark composed of a domain name is registerable only if it functions as a source identifier for potential purchasers or customers, and not simply the identification of the location on the internet where the applicant’s web site appears. It must itself separately identify and distinguish the applicant’s goods or services. It must be something more than an address at which the applicant can be contacted. Advertising one’s own products or services on the Internet is not considered a service for purposes of registrability.
In the matter of In re Eilberg, 49 USPQ2d 1955 (TTAB 1998), the Trademark Trial and Appeal Board (TTAB) affirmed the rejection a service mark application for WWW.EILBERG.COM because the specimens submitted did not identify the use of the term in connection with the applicant’s legal services, but only served to identify the location on the Internet of where the applicant’s web site appeared. The TTAB set forth that though the matter presented for registration did not function as a mark, “(t)his is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or [service marks]. For example, if applicant’s law firm name were, say, EILBERG.COM and were presented prominently on applicant’s letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registerable.”
The statutory bases for refusal of registration by an examining attorney of a domain name is not unlike that for any other potential term submitted. For trademarks, refusal may be based upon Trademark Act §§1, 2 and 45 and 15 U.S.C. §§1051, 1052 and 1127. For service marks, refusal may be based on Trademark Act §§1, 2, 3 and 45 and 15 U.S.C. §§1051, 1052, 1053 and 1127
As set forth above, registration of a domain name does not by itself confer rights with regard to any particular use. Problems arise when a domain name legally conflicts with an existing trademark. There are several legal remedies available to a trademark holder who discovers that its trademark has been registered by another as part of a domain name. These include actions taken under ICANN’s Uniform Domain Name Resolution Policy and the federal Anti-Cybersquatting Consumer Protection Act.
At the time of this writing, there are approximately 183 million domain names registered world wide , the majority of which still contain the TLD .com. Indeed, there are presently over 1,000 domain name registrars worldwide. The one thing all have in common is that they all must be accredited by the Internet Corporation of Assigned Names and Numbers (ICANN), a private nonprofit corporation set in Southern California. In order to be accredited to register domain names, a registrar must include in each registration agreement a provision mandating a registrant to submission to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).
The UDRP is global in perspective and provides one manner in which a trademark owner may attempt to effect transfer or cancellation of a domain name. In order to prevail under the UDRP, a trademark owner must prove that (1) the domain name is identical or confusingly similar to a trademark in which it has rights; (2) that the registrant has no legitimate rights or interests in the domain name and (3) that the domain name was registered and has been, or is being, used in bad faith.
The UDRP is meant as a remedy for transfer or cancellation of an offending domain name from a cybersquatter to a trademark holder. The process involves the filing of a complaint before one of the three ICANN approved resolution providers which are essentially arbitration forums. Once a complaint is filed, the fact intensive dispute is expedited and a decision by the arbitral panel can be expected in less than 90 days. (See Time line attached as Exhibit 2) This type of alternative dispute resolution process which is in the nature of arbitration is considered a fairly cost effective manner in which to resolve a trademark dispute involving a domain name. The arbitral decision rendered under the UDRP is subject to judicial review pursuant to the terms of the UDRP itself. Uniform Domain Name Resolution Policy, Paragraph 4(k).
Another legal avenue which might be pursued by a mark holder is the Anti-Cybersquatting Consumer Protection Act (ACPA). The ACPA is a U.S. federal law meant to protect trademark holders from cybersquatters. It was enacted in 1999 and is codified at 15 U.S.C. §1125(d). In addition to requesting cancellation or transfer of a domain name, a trademark holder may also seek monetary damages. The elements to be proven are a bit different than those required under UDRP and because such an action is undertaken in federal court, this type of litigation is much more expensive in terms of fees and costs.
In order to prevail, a trademark holder must prove the following elements:

  1. The domain name registrant has a bad faith intent to profit from the mark;
  2. The domain name registrant has registered, trafficked in or used a domain name that is identical or confusingly similar to or dilutive the trademark holder’s mark.
The key element to be proven under ACPA is that the domain name registrant has a bad faith intent to profit from the trademark holder’s mark. Since there is much more at stake than the loss of the domain name as is the case under UDRP, there is a higher level of proof involved on the part of the trademark holder. Indeed, unless, for example, a registrant has offered the domain name for sale to a trademark holder or is found to be deliberately diverting Internet traffic from the trademark holder for profit , bad faith intent will not be found. In fact, if the court determines that the registrant believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful, bad faith intent will not be found.
However, if bad faith intent is found, ACPA authorizes a court to transfer or cancel a domain name to the owner of the mark. Additionally, damages will be awarded which can be substantial. In lieu of actual damages, a trademark holder may elect statutory damages under 15 U.S.C. §1117(d), which gives the court discretion to award damages of not less than $1000 and not more than $100,000 per domain name, as the court considers just.
Interestingly, ACPA provides for the possibility of in rem jurisdiction, where a trademark holder cannot locate the domain name registrant or where the registrant is not subject to in personam (personal) jurisdiction of U.S. courts. 15 U.S.C. §1125(d)(2); see, e.g. Alitalia-Linee Aree Italiane, S.p.A v. Casinolitalia.com, 128 f. Supp.2d 340 (E.D. Va 2001)(in rem case may be brought if in personam jurisdiction cannot be obtained in the United States) Under the in rem clause of the ACPA, the law suit is filed against the domain name itself. Jurisdiction is such cases is typically in the district court where the registrar is located. When the in rem clause of ACPA is invoked, the plaintiff is required to meet publication requirements to perfect service of process and then establish the registrant’s bad faith. If successful, the court will order the offending domain name be transferred to the plaintiff, but cannot assess monetary damages.
(As the importance of the Internet in terms of commercial viability and presence has grown, it has become vital that trademark holders monitor domain name use in connection with its marks and take all reasonable steps to vigilantly protect its interests. As with all other areas of use, trademark owners must be sure that their trademark rights are not being infringed or becoming diluted or generic. It must always be kept in mind that trademarks can be lost through abandonment when the owner does not take action to maintain control of his mark. See, e.g., 15 U.S.C. §1115(b)(2), §1127, as well as, Abdul-Jabbar v. General Motors Corp. (9th Cir. 1996) 85 F.3d 407, 411 (“the law ceases to protect the owner of an abandoned mark. … Accordingly, courts have held that an unused mark may not be held in abeyance by its original owner.”)
An argument might be made that the failure to register the mark as a domain name with a particular Top Level Domain is tantamount to abandoning the mark with respect to that Top Level Domain. Thus, one strategy for consideration is for trademark holders to register their mark as a domain name in all of the commercially available generic Top Level Domains and other ICANN approved Top Level domains. Doing so will avoid confusion, dilution and possible abandonment of the mark. Additionally, it may be prudent for a mark holder to register misspellings and/or hyphenated versions of the mark so as to avoid potential harm from typosquatters, those who register trademarks in forms containing typographical errors
Avatar of adm