Posternak, Blankstein & Lund, L.L.P.

100 Charles River Plaza

Boston MA 02114

(617) 973-6123

dwestebbe@pbl.com

Trademark law and the technology behind domain names were each developed independently, and were each developed for very different purposes. Trademarks (and service marks) exist to identify the origin of goods and services. The law of trademarks was developed to preserve the rights of those who owned the marks, and to prevent confusion among consumers as to the origin of the goods and services associated with the mark. Domain names, on the other hand, exist to unambiguously identify a certain device which is connected to a computer network, and were developed to serve as a simple mnemonic proxy for a long string of numbers.

When the internet was in its infancy (up until about 5 years ago), except for a few engineers, nobody was terribly concerned about domain names. Some of them infringed upon existing trademarks, but they were invisible to the general public. It was not until graphical browsers became available that the internet was used for commercial purposes, and only then did the business community and the general public become aware that domain names even existed.

Under trademark law, many different entities can share the same mark for different classes of goods and services. The United States Patent and Trademark Office currently recognizes over 40 different classes of goods and services, and with limited exceptions, allows the same mark to be used in each. Life Cereal and Life magazine are an example. Although each one uses the mark "Life", there is no consumer confusion as to the origin of the goods.

However, only one entity can use a particular domain name. Entering www.life.com into a browser will bring the user to one, and only one web site. There have been many proposals as to how to allocate these scarce resources, and there has been much abuse of the domain name registration system.

Currently there is very little law on the subject. Judges are struggling to craft rules, without the benefit of statutes, and with much second-guessing by affected parties. However, this is rapidly changing. This presentation will cover two such attempts to bridge the gap between these two worlds, one by Congress, in the recently enacted Anticybersquatting Consumer Protection Act, and one by the United States Patent and Trademark Office, in its recently promulgated Examination Guide to Marks Composed, in Whole or in Part, of Domain Names.

1. The act was recently passed by Congress and signed by the president. It is intended to give a clear cause of action of owners of trademarks which are registered by third parties as domain names.
2. Under the act, a person is liable in a civil action by the owner of a trademark if:
1. That person has a bad faith intent to profit from the mark, and
2. Registers, traffics in or uses a domain name that:
1. In the case of a mark which is distinctive at the time of registration of the domain name, is identical or confusingly similar to the mark; or
2. In the case of a famous mark which is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of the mark; or
3. Is a trademark, word or name protected by special legislation protecting the American Red Cross and the Olympic Committee.
3. The act also allows a court to order the forfeiture or cancellation of the domain name, or for the transfer of the domain name to the owner of the mark.
4. In the event that the plaintiff cannot find the party who registered the offending domain name, or in the event that personal jurisdiction cannot be established, the plaintiff may commence an in rem action against the domain name itself.
1. However, the remedies in an in rem action are limited to forfeiture or cancellation of the domain name, or transfer of the domain name to the plaintiff.
3. Several elements must exist for the owner of a mark to bring suit: (1) a distinctive or famous mark owned by the plaintiff, (2) a bad faith intent to (3) profit on the part of the defendant, and (4) registration, trafficking or use of a domain name by the defendant which is (5) identical or confusingly similar to the mark.
1. What is a distinctive mark?
1. The distinction of a mark can be placed on a continuum. There is much overlap between the categories, and it is often debatable which category a mark belongs in. The more distinctive the mark, the more protection is afforded by the law.
1. Coined and fanciful marks are the most distinct: they are terms which have no independent meaning, such as KODAK or EXXON. They have no relationship to the product or service whose source they identify.
2. Arbitrary marks are also very distinctive. They are marks composed of common words, where the word has no relationship to the product or service, such as Amazon.com for (originally) the sale of books, or Life for a brand of breakfast cereal.
3. Suggestive marks are also inherently distinctive, but are less protectable than coined, fanciful or arbitrary marks. These marks suggest a quality of the product or service, but do not describe it. Examples include Fantastic for a cleaning fluid. These marks are protectable as soon as they are used.
4. Merely Descriptive marks describe a quality or characteristic of the product or service. These marks included geographic terms, like Back Bay Market or Beacon Hill Dry Cleaners, and include names used as trademarks, such as Joe’s Deli. These marks are generally not protectable, as anybody who is named Joe should be able to identify their business, and anybody who operates in the Back Bay should be able to do likewise.
1. However, descriptive marks can become distinctive over time, with use, if they acquire a "secondary meaning". McDonalds is a good example of a merely descriptive mark which has become extremely distinctive, even famous.
5. Generic terms describes the genus of the product or service. They are not protectable, as they must be free for all sellers to use, and are therefor not distinctive. For example, the word "table" would not be protectable as a trademark for tables, given that it is a common word used to describe the product by all sellers of tables.
2. What is a famous mark?
1. Famous marks are marks which are so well known that any use in any context would lessen the ability of the owner of the mark to distinguish the owner’s goods or services. Examples include Chrysler and Wal-Mart. Any use of these names, even in fields unrelated to automobiles or discount retailing can be enjoined by the owner of the mark under a 1996 amendment to the Lanham Act, commonly referred to as the "Federal Trademark Anti-Dilution Act". There is no need to show an likelihood of confusion.
3. What is "bad faith intent to profit" on the part of the defendant? There are several factors listed in the statute which may be considered by a court. No one factor is determinative by itself, and the bill makes clear that the list is not exhaustive; other factors may also be considered. The factors include the following:
1. The trademark or other intellectual property rights of the defendant in the domain name.
1. The remedies provided by the act are unavailable against a defendant who has equal or greater rights in the mark. Many, many businesses can use the same mark to identify the origin of different classes of goods. For example, Life Cereal and Life Magazine share the identical name, and both have federally registered trademarks. The act is inapplicable to such situations.
2. The extent to which the domain name consists of the name which is commonly used to identify the defendant.
1. Thus, use of one’s surname as a domain name might not be considered bad faith, even if one has a name which is used as a distinctive or famous mark.
3. The defendant’s prior use of the domain name in connection with a bona fide offering of goods or services.
1. Use of a domain name, even if identical or confusingly similar to a distinctive or famous mark, might not be actionable under the act, if the use was prior to commencement of the suit, and was bona fide.
4. The defendant’s bona fide noncommercial or fair use of the mark as a domain name.
1. It is questionable whether sites which comment upon the business practices of the mark holder are liable, as they would not be using the mark in "bad faith". This provision was placed in the legislation to provide balance, and was intended to protect "the rights of Internet users who would make fair use of other’s marks or otherwise engage in protected speech online", according to Orin Hatch, one of the sponsors of the bill.
2. The act specifically provides in a later section that bad faith shall not be found where the court determines that the defendant reasonably believed that its use of the domain name was a fair use or otherwise lawful.
5. The defendant’s intent to divert consumers from the mark owner’s site to the defendant’s site, which could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.
1. Arguably, this factor is inconsistent with the prior factor, in a situation where the defendant rests upon its first amendment right to tarnish or disparage a source of goods or services, and uses a common misspelling of the mark in its domain name, or adds additional text to the mark to form its domain name. Additionally, the act specifically provides that it will not affect a person’s right of free speech. It will be interesting to see what happens to sites such as www.PepsiBloodbath.com.
2. Interestingly, there seems to be no need for the defendant to profit monetarily from the domain name in order for bad faith to be established. An intent to tarnish the plaintiff’s mark may be sufficient to show bad faith, so long as a likelihood of confusion has been created by the domain name. This factor would come into play in situations where an identical or confusingly similar domain name is used, for example, as a porno site to inspire the holder of the mark to buy the domain. Recently, according to one of the bill’s co-sponsors, Gateway paid $100,000.00 to a cybersquatter who placed pornographic images on a site with the domain name www.gateway2000.com.
6. The defendant’s offer to transfer the domain name to the mark owner (or a third party) for financial gain without having used or without having an intent to use the domain name in a bona fide offering of goods or services, or the defendant’s prior conduct, if it indicates a pattern of such conduct.
1. This is the traditional "Cybersquatting" scenario, where a person warehouses distinctive or famous marks with the intent of selling them to the owner of the corresponding trademark. There is no need for a plaintiff to show that the defendant actually attempted to sell the particular mark in question, so long as the defendant has engaged in a pattern of such behavior.
7. The defendant’s provision of material and misleading false contact information when applying to register the domain name, or the intentional failure to maintain accurate contact information, or the defendant’s prior conduct indicating a pattern of such conduct.
1. Trying to hide one’s identity may clearly indicate bad faith.
8. The defendant’s registration or acquisition of multiple domain names which the defendant knows are identical or confusingly similar to distinctive marks, or which are dilutive of famous marks, without regard to the goods or services of the parties.
1. Again, a classic cybersquatting scenario.
9. The extent to which the mark incorporated into the defendant’s domain name is or is not distinctive or famous.
1. Thus, there is little or no protection under the act for marks which are not distinctive or famous, as registration of such marks as domain names does not indicate bad faith by the defendant.
4. Note that many of these factors are far from clear-cut, and it will be many years until the courts have given guidance sufficient to make the meanings clear. One suit has already been filed by the NFL, and many believe that it will be only the first of many.

1. USPTO Examination Guide Re: Marks Composed of Domain Names
1. Applications for marks composed of domain names are subject to the same requirements as all other applications for federal trademark registration.
2. The domain name must function as an identifier of the source of goods or services.
1. Thus, a domain name used merely as "an informational indication of the domain name address used to access a web site" cannot be registered, for the same reasons that a street address or a telephone number cannot be registered. They are merely information about how one may contact the provider of goods or services.
1. On the other hand, if the domain name is used as the means to identify the source of goods or services, such as Amazon.com, registration of the domain name will not be refused upon this ground.
2. Advertising one’s own products or services is not a service in itself.
1. Therefore, with certain exceptions, businesses which create a web site for the sole purpose of advertising their own products or services cannot register a domain name used to identify that activity.
3. Domain names consisting merely of a surname and a top level domain name ("TLD") will be refused registration.
1. See the discussion above regarding merely descriptive marks. The addition of a TLD will not change the analysis.
4. Likewise, domain names composed of merely descriptive terms combined with a TLD will be refused registration, on the ground that the mark is merely descriptive.
5. Domain names composed of generic terms for goods or services will also be refused registration.
6. Domain names composed of geographic matter will be examined in the same manner as any other application for registration of a mark which contains geographic matter. Generally, registration is refused on the grounds that such marks are merely descriptive.
7. Addition of a TLD to a mark which is likely to cause confusion will not allow registration.
1. For example, if one were unable to register the mark "M1cr0s0ft" due to it being confusingly similar to "Microsoft", then changing the mark to "M1cr0s0ft.com" will make no difference.
2. Likewise, one would not be able to register Amazon.net for online retail sales, despite using a different TLD within the mark.