Trademarks in the land of Domain Names.
In an earlier series of Recipe for Protection, Anyone? posts, the different types of Intellectual property were identified. Here we zero in on certain issues peculiar to one form of IP, trademarks and in particular its relationship to domain name registration.
With the advent of the internet, electronic commerce knows no geographical boundaries and therefore there is the need to also protect domain names. These can also be registered with the United States Patent and Trademark Office but must be used as a trademark.
The domain name must identify the “what” as in, the source of the goods or services and not limited to identifying the website of the business. The domain name being trademarked must be the same or similar for trademark rights to apply. For example, pierone.com is a trademark because the company sells products under the name pierone.com. Trademarks trump domain registrations such that the owner of a trademark may be able to force the domain name owner to transfer or stop using the domain name.
As a precautionary measure it is advisable to register similar variations of the name as well so as to avoid the cost and time required in fighting with an unscrupulous Internet scammer. See Jacobson, Domain Names, Trade Names, and Trademarks.
A registered trademark used outside of the U.S. (e.g., Internet sales) allows for filing of applications for foreign registration based on the U.S. registration. This helps prevent the importation of goods using a mark that is confusingly similar to your mark by registration with U.S. Customs.
Prior existing trademarks and Domain name Registrations
AntiCybersquatting Protection Act (ACPA)
Uniform Dispute Resolution Policy (UDRP).
AntiCybersquatting Protection Act (ACPA) provides remedies to a trademark owner against defendants who obtain domain names “in bad faith” that are identical or confusingly similar to a trademark or service mark. It prohibits the registration and use of a domain name that is confusingly similar to an existing TM.
This would suggest not only is it an existing trademark but that it existed before the registration of the “alleged infringing” domain name.
A trade mark owner may bring an “in rem” action against a domain name, where the defendant cannot be located if
(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office
or protected under subsections (a) or (c) of Section 1125; and (ii) the court finds that the owner (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action;
or (II) through due diligence was not able to find a person who would have been a defendant in a civil action.
Remedies available under ACPA are a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. Although money damages are not granted in an in rem judgment, under the ACPA, a lawsuit seeking money damages may be filed.
“ The man armed with knowledge has a better chance of survival than the man who is simply the fittest. Knowledge is the true strength. Muscle is where the myth is.” – Suzy Kassem
Other remedies may be sought under the ICANN’s Uniform Dispute Resolution Policy (UDRP) in which an arbitration panel can issue an order in favor of the TM owner that the domain name be cancelled or transferred to the trademark owner.
Although the ACPA lawsuit route allows for money damages it is also more expensive than a UDRP arbitration option.
Prior existing registration status is to a mark owner’s benefit. It places such an owner in a better position to take full advantage of all the remedies at their disposal which is encouraging to anyone seeking protection for their business assets.
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