May It Please the Mozzers,
Happy Legal Monday!
Fuel up on that caffeine because today I want to discuss how trademark law plays out in the course of a domain name dispute. We're going to compare and contract the Anti-Cybersquatting Consumer Protection Act with I-CANN's Uniform Domain Name Dispute Resolution Policy.
As I see it, there are generally three kinds of domain name disputes. They are as follows:
Note: This is post is part of a mini-series I’m doing on trademark law. If you’re confused about the trademark issues discussed in this post, consider checking out my previous posts on trademark basics and what happens when two people are using the same trademarks. Of course, you can also email or private message me too.
Happy Legal Monday!
Fuel up on that caffeine because today I want to discuss how trademark law plays out in the course of a domain name dispute. We're going to compare and contract the Anti-Cybersquatting Consumer Protection Act with I-CANN's Uniform Domain Name Dispute Resolution Policy.
As I see it, there are generally three kinds of domain name disputes. They are as follows:
- Cybersquatting: You own a trademark and someone without a right to the mark is exploiting your mark in bad faith.
- Two trademark holders, one domain name: You own a trademark, but someone else owns the same mark too and there is only one domain name.
- No one owns the trademark, but everybody wants the brand: Not all domain names are trademark protected, but people inappropriately attempt to use trademark law to resolve domain name issues.
Note: This is post is part of a mini-series I’m doing on trademark law. If you’re confused about the trademark issues discussed in this post, consider checking out my previous posts on trademark basics and what happens when two people are using the same trademarks. Of course, you can also email or private message me too.
We’re going to go through each of the prototypical domain name disputes described above. However, before we do, let's set the mood (oh la la) with a refresher on two important trademark law principles:
Basic Principle #1: Not all brands are trademarks. Remember that there are limits on what you can trademark. Many things are brands, but not trademarks. For example, SEOmoz is our business name, our brand, and our trademark. It’s distinctive and we use it to identify our products and services. However, “Canadian SEO” could be a brand, but not a trademark because it is purely descriptive and not distinctive. Thus, the domain SEOmoz.org includes a trademark, but CanadianSEO.com does not include a trademark. Both, however, are brands.
Basic Principle #2: It is entirely possible for two businesses to own the same mark. For example, several companies own the mark “Delta:” Delta Airlines, Delta Faucet, Delta Dental. They are all legitimate owners of the mark “Delta.” There is no legal conflict because they operate in different industries and markets. Thus, there is no risk of customer confusion.
Is it all coming back to you now? Okay. Back to our Archetypal Domain Name Disputes...
Archetypal Domain Name Dispute #1: Cybersquatting
You own a trademark and someone without a right to the mark is exploiting your mark in bad faith.
For example, the Dell conglomerate owns the mark “Dell” in conjunction with electronics and financial services. However, Dell does not own the domain “Dellpay.com.” Classic story. If you go Dellpay.com, you’ll “find something interesting,” mainly links to other sites offering bill pay services and shopping aggregators selling Dell’s products. The site owner, OnlineNIC, does not own a Dell mark, especially not for computers or financial services. The site owner is using this site to capitalize off Dell’s branding and goodwill in order to make money through the advertising and links on its site. This is a prototypical cybersquatting case.
Faced with a situation like this, the trademark holder has several options.
1. First, the trademark holder could decide to do nothing. Companies have limited resources and it doesn’t make sense to go after every single person abusing your mark. For example, it's unlikely that very many consumers are being diverted away from Dell’s products by this one little website. Thus, Dell may decide not to do anything at all and instead focus on frying bigger fish. Or, Dell could try the minimalist approach, which is to send a letter threatening further action unless the site owner transfers the site.
2. Second, the trademark holder could file a lawsuit in U.S. federal court against the site owner under the Anti-Cybersquatting Consumer Protection Act (“ACPA”). If successful, the trademark holder would be granted a Court order requiring that the domain be transferred back to the mark owner. By filing a lawsuit, the trademark holder gains the right to require the defendant to turn over relevant documents and to interview the defendant under oath. This process of investigation is called "Discovery" and it can be essential to proving your case. If the trademark holder wins, it's possible that the cybersquatter would also have to pay monetary damages. If you bring an ACPA suit, your attorney will probably also bring other trademark law claims as well, such as violations of state trademark laws and federal trademark laws. The cybersquatting law, ACPA, is just one of many trademark law claims.
→ What do I need to prove in order to win an ACPA suit?
To be successful in an ACPA lawsuit, the mark owner must prove (1) that the mark is valid; (2) the website owner registered the site in bad faith in order to profit from the mark; (3) the mark was distinctive when the site was registered; and (4) the domain is identical or confusingly similar to the mark.
→ What if I can't find the Cybersquatter to start a lawsuit?
Under ACPA's liberal jurisdiction rules, you don’t have to personally serve the defendant. This makes it possible to bring the lawsuit even if you can’t find the defendant. This was necessary because so often WhoIs data is inaccurate or defendants are located far away in a foreign country.
→ What are the drawbacks of an ACPA Lawsuit?
The downside, of course, is that lawsuits are extremely expensive, time-consuming, stressful and uncertain. You need an attorney and it can take years to get a resolution. Also, you can only bring this lawsuit in the United States because ACPA is a U.S. statute. You don't have to be a U.S. citizen, but you or your business needs to have substantial ties to the U.S. in order to bring a lawsuit in U.S. courts.
3. Third, the trademark holder could initiate an ICANN-approved arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). If the mark holder succeeds in its arbitration proceeding, the arbitrator can order that the domain name be cancelled or transferred to the trademark owner. However, the mark holder cannot conduct "discovery" or obtain monetary damages.
→ What do I need to prove in order to win an UDRP Arbitration?
In order to prevail in UDRP arbitration, the mark owner must prove three things: (1) the domain name is identical or confusingly similar to the trademark in question; (2) the registrant has no rights or legitimate interests in the domain name, and (3) the domain name was registered and/or is being used in bad faith.
→ What are the advantages of UDRP Arbitration?
UDRP Arbitration is much cheaper and faster than a lawsuit. On average, proceedings are concluded within two months. Prices vary depending on how many domain names you are challenging and whether any of the parties elect to have a three-person panel hear the case instead of a single arbitrator. According WIPO’s UDRP site, for “resolution of a case involving one to five domain names, with a single panelist, the current cost is US $1,500; for three panelists, the total cost is US $4,000. For six to ten domain names, the current cost is US $2,000 for a case involving a sole panelist and US $5,000 for a case involving three panelists.
Also, you don’t need a lawyer to initiate UDRP Arbitration, although many people feel more comfortable with one.
Great news for our international friends! Because it’s based on I-CANN’s policies, and not on U.S. law, anyone can avail himself or herself of this quick and inexpensive dispute resolution process. (FYI, for .UK domains, there is a special dispute resolution policy administered through the .UK registrar Nominet. If ccTLDs are involved, you need to follow the dispute resolution policies specific to each country. They are often similar to URDP. You can find a list of dispute resolution organizations by country here.)
→ How do I initiate UDRP Arbitration and what's the process like?
First, you must use one of the three Approved Providers. These organizations will oversee and administer the arbitration. They include (1) the Asian Domain Name Dispute Resolution Centre; (2) The National Arbitration Forum; (3) and the World Intellectual Property Organization. These organizations, in turn, have lists of qualified and approved arbitrators from around the world to hear and resolve cases.
Each Provider has their own specific rules, but they are very similar. You start off by electronically filing a written complaint with your Provider of choice and paying the filing fee. They have a complaint form you can use. They review your complaint to make sure it's complete and then send a copy to the contact information on file with the registrar. The respondent has only a matter of days to respond, usually about 20 days. The response must be in writing. The Respondent can choose to have the matter heard before a three-person panel, if desired. However, this makes the proceeding more expensive and the Respondent must share in the added expense if he elects a panel instead of a single arbitrator.
Most often, the arbitrations take place purely online and there are very seldom in-person hearings. After reviewing both the complaint and the response (if any was filed), the arbitrator/s issue a written decision. The accredited domain name registrars - which have agreed to abide by the UDRP - implement a decision after a period of ten days, unless the decision is appealed in court in that time.
Over 80% of cases are decided in favor of the complainant, usually the trademark holder. Records of the outcomes are made available online by the Providers. To pass the time, try plugging in popular terms and brands (“sex,” “music,” “Dell”) into the National Arbitration Forum’s database of cases. I heart data. They’ve also got all kinds of cool statistics.
→ What are the drawbacks of an UDRP proceeding?
There is no possibility of monetary damages in a UDRP proceeding. That is probably the major reason some people prefer to take their chances with a lawsuit. Also, there is no opportunity for investigation, like there is in a civil lawsuit. Finally, it's possible that the arbitration won't be the end of the dispute.
→ Are URDP arbitrations final and binding?
The arbitrator's decisions are mandatory in the sense that accredited registrars are required to take the necessary steps to enforce the decision, such as transferring the name concerned. However, under the UDRP, either party retains the option to take the dispute to a court for independent resolution. Thus, it's possible the dispute won't end at arbitration. However, in practice, the matters are rarely taken to court after arbitration.
→ What if I own a Domain that includes someone else’s trademark?
Unfortunately, you are vulnerable to a lawsuit or a UDRP proceeding if you have been operating a website that infringes on someone's trademark. For example, let's assume that you startup your internet marketing business in 2007 at TrojanSeo.com. And you go along your merry way providing search marketing services. Unbeknownst to you, there is an SEO firm called Three Trojans SEO that federally registered its name as a trademark in 2005. Bad news for you, my friend! You should have done your due diligence before picking your business name. While maybe you didn't intentionally act in bad faith to take business from Three Trojans SEO, you may have a difficult time convincing a court or an arbitrator that is true. It's best to get out of this situation as gracefully as possible. Consider negotiating to pay Three Trojans a modest fee in order to have use of the site for an additional six months so that you can re-direct traffic to your new, renamed SEO firm. They may be amenable to a situation like this for the right price.
If you own the site, but haven't been using it to run your business, you still have some exposure. It's like momma said, "Avoid even the appearance of evil." Whatever you do, don’t be seen as wanting to make a profit by selling the site to the trademark holder! This will get you labeled as a cybersquatter. You will be accused of having registered the domain in “bad faith.” That opens the door to monetary damages and all kinds of drama you don't need. You should either just let it the domain expire, hold onto it forever without using it, or offer to sell the domain to the trademark owner for “cost.” Coincidentally, the going rate for a domain name that includes a trademark is about the exact amount it would cost to initiate UDRP arbitration ($1,5000 to $2,000). Funny how that works, isn’t it?
For example, the Dell conglomerate owns the mark “Dell” in conjunction with electronics and financial services. However, Dell does not own the domain “Dellpay.com.” Classic story. If you go Dellpay.com, you’ll “find something interesting,” mainly links to other sites offering bill pay services and shopping aggregators selling Dell’s products. The site owner, OnlineNIC, does not own a Dell mark, especially not for computers or financial services. The site owner is using this site to capitalize off Dell’s branding and goodwill in order to make money through the advertising and links on its site. This is a prototypical cybersquatting case.
Faced with a situation like this, the trademark holder has several options.
1. First, the trademark holder could decide to do nothing. Companies have limited resources and it doesn’t make sense to go after every single person abusing your mark. For example, it's unlikely that very many consumers are being diverted away from Dell’s products by this one little website. Thus, Dell may decide not to do anything at all and instead focus on frying bigger fish. Or, Dell could try the minimalist approach, which is to send a letter threatening further action unless the site owner transfers the site.
2. Second, the trademark holder could file a lawsuit in U.S. federal court against the site owner under the Anti-Cybersquatting Consumer Protection Act (“ACPA”). If successful, the trademark holder would be granted a Court order requiring that the domain be transferred back to the mark owner. By filing a lawsuit, the trademark holder gains the right to require the defendant to turn over relevant documents and to interview the defendant under oath. This process of investigation is called "Discovery" and it can be essential to proving your case. If the trademark holder wins, it's possible that the cybersquatter would also have to pay monetary damages. If you bring an ACPA suit, your attorney will probably also bring other trademark law claims as well, such as violations of state trademark laws and federal trademark laws. The cybersquatting law, ACPA, is just one of many trademark law claims.
→ What do I need to prove in order to win an ACPA suit?
To be successful in an ACPA lawsuit, the mark owner must prove (1) that the mark is valid; (2) the website owner registered the site in bad faith in order to profit from the mark; (3) the mark was distinctive when the site was registered; and (4) the domain is identical or confusingly similar to the mark.
→ What if I can't find the Cybersquatter to start a lawsuit?
Under ACPA's liberal jurisdiction rules, you don’t have to personally serve the defendant. This makes it possible to bring the lawsuit even if you can’t find the defendant. This was necessary because so often WhoIs data is inaccurate or defendants are located far away in a foreign country.
→ What are the drawbacks of an ACPA Lawsuit?
The downside, of course, is that lawsuits are extremely expensive, time-consuming, stressful and uncertain. You need an attorney and it can take years to get a resolution. Also, you can only bring this lawsuit in the United States because ACPA is a U.S. statute. You don't have to be a U.S. citizen, but you or your business needs to have substantial ties to the U.S. in order to bring a lawsuit in U.S. courts.
3. Third, the trademark holder could initiate an ICANN-approved arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). If the mark holder succeeds in its arbitration proceeding, the arbitrator can order that the domain name be cancelled or transferred to the trademark owner. However, the mark holder cannot conduct "discovery" or obtain monetary damages.
→ What do I need to prove in order to win an UDRP Arbitration?
In order to prevail in UDRP arbitration, the mark owner must prove three things: (1) the domain name is identical or confusingly similar to the trademark in question; (2) the registrant has no rights or legitimate interests in the domain name, and (3) the domain name was registered and/or is being used in bad faith.
→ What are the advantages of UDRP Arbitration?
UDRP Arbitration is much cheaper and faster than a lawsuit. On average, proceedings are concluded within two months. Prices vary depending on how many domain names you are challenging and whether any of the parties elect to have a three-person panel hear the case instead of a single arbitrator. According WIPO’s UDRP site, for “resolution of a case involving one to five domain names, with a single panelist, the current cost is US $1,500; for three panelists, the total cost is US $4,000. For six to ten domain names, the current cost is US $2,000 for a case involving a sole panelist and US $5,000 for a case involving three panelists.
Also, you don’t need a lawyer to initiate UDRP Arbitration, although many people feel more comfortable with one.
Great news for our international friends! Because it’s based on I-CANN’s policies, and not on U.S. law, anyone can avail himself or herself of this quick and inexpensive dispute resolution process. (FYI, for .UK domains, there is a special dispute resolution policy administered through the .UK registrar Nominet. If ccTLDs are involved, you need to follow the dispute resolution policies specific to each country. They are often similar to URDP. You can find a list of dispute resolution organizations by country here.)
→ How do I initiate UDRP Arbitration and what's the process like?
First, you must use one of the three Approved Providers. These organizations will oversee and administer the arbitration. They include (1) the Asian Domain Name Dispute Resolution Centre; (2) The National Arbitration Forum; (3) and the World Intellectual Property Organization. These organizations, in turn, have lists of qualified and approved arbitrators from around the world to hear and resolve cases.
Each Provider has their own specific rules, but they are very similar. You start off by electronically filing a written complaint with your Provider of choice and paying the filing fee. They have a complaint form you can use. They review your complaint to make sure it's complete and then send a copy to the contact information on file with the registrar. The respondent has only a matter of days to respond, usually about 20 days. The response must be in writing. The Respondent can choose to have the matter heard before a three-person panel, if desired. However, this makes the proceeding more expensive and the Respondent must share in the added expense if he elects a panel instead of a single arbitrator.
Most often, the arbitrations take place purely online and there are very seldom in-person hearings. After reviewing both the complaint and the response (if any was filed), the arbitrator/s issue a written decision. The accredited domain name registrars - which have agreed to abide by the UDRP - implement a decision after a period of ten days, unless the decision is appealed in court in that time.
Over 80% of cases are decided in favor of the complainant, usually the trademark holder. Records of the outcomes are made available online by the Providers. To pass the time, try plugging in popular terms and brands (“sex,” “music,” “Dell”) into the National Arbitration Forum’s database of cases. I heart data. They’ve also got all kinds of cool statistics.
→ What are the drawbacks of an UDRP proceeding?
There is no possibility of monetary damages in a UDRP proceeding. That is probably the major reason some people prefer to take their chances with a lawsuit. Also, there is no opportunity for investigation, like there is in a civil lawsuit. Finally, it's possible that the arbitration won't be the end of the dispute.
→ Are URDP arbitrations final and binding?
The arbitrator's decisions are mandatory in the sense that accredited registrars are required to take the necessary steps to enforce the decision, such as transferring the name concerned. However, under the UDRP, either party retains the option to take the dispute to a court for independent resolution. Thus, it's possible the dispute won't end at arbitration. However, in practice, the matters are rarely taken to court after arbitration.
→ What if I own a Domain that includes someone else’s trademark?
Unfortunately, you are vulnerable to a lawsuit or a UDRP proceeding if you have been operating a website that infringes on someone's trademark. For example, let's assume that you startup your internet marketing business in 2007 at TrojanSeo.com. And you go along your merry way providing search marketing services. Unbeknownst to you, there is an SEO firm called Three Trojans SEO that federally registered its name as a trademark in 2005. Bad news for you, my friend! You should have done your due diligence before picking your business name. While maybe you didn't intentionally act in bad faith to take business from Three Trojans SEO, you may have a difficult time convincing a court or an arbitrator that is true. It's best to get out of this situation as gracefully as possible. Consider negotiating to pay Three Trojans a modest fee in order to have use of the site for an additional six months so that you can re-direct traffic to your new, renamed SEO firm. They may be amenable to a situation like this for the right price.
If you own the site, but haven't been using it to run your business, you still have some exposure. It's like momma said, "Avoid even the appearance of evil." Whatever you do, don’t be seen as wanting to make a profit by selling the site to the trademark holder! This will get you labeled as a cybersquatter. You will be accused of having registered the domain in “bad faith.” That opens the door to monetary damages and all kinds of drama you don't need. You should either just let it the domain expire, hold onto it forever without using it, or offer to sell the domain to the trademark owner for “cost.” Coincidentally, the going rate for a domain name that includes a trademark is about the exact amount it would cost to initiate UDRP arbitration ($1,5000 to $2,000). Funny how that works, isn’t it?
Archetypal Domain Name Dispute #2: Two trademark holders, one domain name
In this archetypal domain name dispute, you have two trademark holders that both have legitimate rights to the same mark. When this happens, it’s basically a race to the domain name first. After all, with domains, it’s first-come, first-serve baby.
Let’s use my favorite example, “Delta.” Delta Airlines, Delta Faucets, and DeltaDental all have “Delta” as a registered trademark in their different industries and markets. Delta Airlines was lucky enough to get Delta.com. There is nothing that Delta Faucets or DeltaDental can do about it. (Well, that’s assuming that Delta Airlines doesn’t decide to start peddling plumbing supplies and dental insurance on its site. In that unlikely event, fire up the war machines!) You’ll notice that while Delta Airlines got Delta.com. Delta Faucets is doing fine with DeltaFaucets.com and DeltaDental didn’t make out too bad either. None of these companies can bring an ACPA or UDRP proceeding against the other ones. Each is within its right by using a mark within its market. And clearly, there is no bad faith or consumer confusion. All's well that ends well.
Let’s use my favorite example, “Delta.” Delta Airlines, Delta Faucets, and DeltaDental all have “Delta” as a registered trademark in their different industries and markets. Delta Airlines was lucky enough to get Delta.com. There is nothing that Delta Faucets or DeltaDental can do about it. (Well, that’s assuming that Delta Airlines doesn’t decide to start peddling plumbing supplies and dental insurance on its site. In that unlikely event, fire up the war machines!) You’ll notice that while Delta Airlines got Delta.com. Delta Faucets is doing fine with DeltaFaucets.com and DeltaDental didn’t make out too bad either. None of these companies can bring an ACPA or UDRP proceeding against the other ones. Each is within its right by using a mark within its market. And clearly, there is no bad faith or consumer confusion. All's well that ends well.
Archetypal Domain Name Dispute #3: No one owns the trademark, but everybody wants the brand
In the event that no trademark is involved at all, then it’s just first come, first serve. Not all domain names are trademark protected. Sometimes, it’s all about who can afford those beautiful, generic domains. It's all about the deep pockets here. If someone wants it bad enough; they're just going to have to pay for it.
I hope this post has given you a better understanding of the mechanics of domain name disputes and how trademark law operates on each of them.
If you believe someone is infringing your trademark in bad faith, consider bringing an UDRP Arbitration. Resolution is quick, cheap and may not require an attorney. Alternatively, if you know you're going to have a difficult time proving "bad faith," you can bring a lawsuit in federal court under various state and federal trademark laws, but make sure you have a war chest to pay the lawyers fees, court costs, experts, and investigative fees. Litigation should always be the last resort.
If you're being accused of violating someone's trademark, don't panic until you've carefully reviewed the facts. Do you operate in a different industry? If yes, it's possible that you both have legitimate rights to the mark. Did you start using the mark before the other company? If so, you may have a defense. Are you using the site for a legitimate use (satire or criticism) in way that does not lead to customer confusion? Asking the right questions may reveal that you have the right to keep your domain.
As always, I look forward to your questions and comments. Thanks for reading!
Very truly yours,
Sarah Bird
Conclusion
I hope this post has given you a better understanding of the mechanics of domain name disputes and how trademark law operates on each of them.
If you believe someone is infringing your trademark in bad faith, consider bringing an UDRP Arbitration. Resolution is quick, cheap and may not require an attorney. Alternatively, if you know you're going to have a difficult time proving "bad faith," you can bring a lawsuit in federal court under various state and federal trademark laws, but make sure you have a war chest to pay the lawyers fees, court costs, experts, and investigative fees. Litigation should always be the last resort.
If you're being accused of violating someone's trademark, don't panic until you've carefully reviewed the facts. Do you operate in a different industry? If yes, it's possible that you both have legitimate rights to the mark. Did you start using the mark before the other company? If so, you may have a defense. Are you using the site for a legitimate use (satire or criticism) in way that does not lead to customer confusion? Asking the right questions may reveal that you have the right to keep your domain.
As always, I look forward to your questions and comments. Thanks for reading!
Very truly yours,
Sarah Bird
CyberSquatting Cases: https://www.internetnews.com/bus-news/article.php/479311
https://blog.copywrite.org/category/trademark/cybersquatting-cases/
https://www.circleid.com/posts/79133_microsoft_files_cybersquatting_cases/
https://www.allbusiness.com/legal/intellectual-property-patent/797831-1.html
Just thought some of these would be interesting to read. The Armani one especially since they lost the case.
*note to the web people, I set each of these links to open in a new window but they don't* :-)
Hi Sarah,Great post! I deal with this stuff a lot at work, so I appreciate how invaluable this info is for a lot of Mozzers. I thought it might be of interest to some people on here to mention the issues regarding retroactive use of trademarks in domain disputes. I hope you don't mind me taking up some space on your comments wall! ;o)As Sarah said, if you are dealing with cybersquatters, having a trademark can be a very valuable thing. The problem is, a registered trademark is only effective from the date of registration. So, although your trademark can come in very handy when challenging domain registrations made after your trademark was registered, unfortunately it's not always that helpful in challenging domains that predate your trademark rights. For example, imagine you're a company that has come up with a great new brand. You manage to get your hands on greatbrand.com, and register yourself a swanky new greatbrand trademark. (For simplicities sake, imagine they're all registered in the UK - you'll see why in the next sentence). Things are looking up! (Ok, it's in the next sentence.) But all of a sudden, someone turns up with greatbrand.co.uk (there it is!); a domain that they registered a couple of years ago, before you even came up with the greatbrand idea. As their domain was registered before you got hold of your greatbrand trademark, that's going to cause a few problems as a trademark isn't retroactive. It can only be used to challenge infringements that occur after it is registered (as before then there are no rights to infringe!). As Sarah pointed out, for an ACPA action to be successful, you need to prove that your mark was distinctive when the domain was registered. Proving this could be tricky if you didn't have a trademark back then! Similarly, for UDRP it's going to be pretty difficult to prove the requirement that the domain was registered in bad faith, if you didn't have any trademark rights! So, generally, you can't go round waving your swanky new greatbrand trademark telling people who have older greatbrand domains to hand over the goods.
Fortunately, though, the UDRP procedure recognises this potential flaw and gives a concession against the requirement for a domain to have been registered in bad faith, and allows a challenge to be brought if the domain is being used in bad faith.
This was good news for MySpace in their recent Nominet UK Dispute Resolution case against the owner of MySpace.co.uk - a domain registered around six years before MySpace was even founded.myspace.co.uk was registered back in 1997, and had been hosting random ads for a few years (earning off each click). In 2003 MySpace was founded, and the owners of myspace.co.uk saw the market opening up before them and started placing ads for MySpace and other social networking sites on the myspace.co.uk domain. At around the same time, MySpace registered their trademark, and as the MySpace brand grew, myspace.co.uk were getting richer and richer. The owners of myspace.co.uk offered the domain to MySpace for a small fortune, but MySpace saw this as a bit of a p1ss take, so brought the owners of the .co.uk before the panel. Although the panel acknowledged that the myspace.co.uk domain had not been registered in bad faith (as the MySpace trademark didn’t exist back then), they recognised the rights MySpace had acquired through their trademark registration. The panel saw the activity on myspace.co.uk is as an exploitation of the popularity of MySpace and an infringement of the rights that MySpace had acquired. MySpace's complaint succeeded, and the panel ordered the transfer of the domain to MySpace! The moral of the story? - While a trademark is a useful weapon in domain name protection, it's generally not retroactive. However, even if a domain was registered before you got your trademark, if the activities on the site subsequent to your trademark registration amount to use in bad faith, the UDRP route might still be available!
I hope that's useful! Sarah, any comments (or corrections?) you may have would be gratefully received!!
Has the case-law in the ACPA route allowed the development of any similar concession?
I look forward to next week's post!!
T
Sorry... not sure what's gone on with the formatting there. I hope it's still readable!
Looks fine to me Mr T :)
oh and methinks you need an avatar :)
Definately of interest, only last week at the Facebook developers Garage they had a legal eagle in to talk about copyright (Scrabulous was the example) and there was a huge amount of interest - to the level that she only had time for half her slide show due to the amount of questions!
And whilst I dont think SEO (indeed i think that may need a rethink considering we're branching into Social, Usability etc) needs full legal knowledge, its the bleeding edge nature of our business that we must look fully at these legal aspects and either acknowledge them - or being SEO genius's ;) use them to our advantage :)
Either way - great post Mr T! Look forward to seeing either Sarah's reply or your contribution to her future articles!
Great post. I think it is worth noting several addtional points:
Anyway, I hope this helps provide some additional color. Again, very useful post.
Great post that leaves me with some thoughts. Someone in my area is doing what is said cannot be done (or at least how I interpret it).
They are claiming to have tradmarks on multiple location based terms (like Los Angeles Dentist) and have been sending cease and desist letters to those using the terms in adwords campaigns.
I was of the understanding this could not be done but a number of people have told me hey have stopped using the terms in advertising just in case. Should play out to be an interesting discussion if the party claiming trademark is found to have no right to the terms.
Yeah that is pretty interesting. You can't really register vague phrases like "Los Angeles Dentist" as a trademark, so I doubt they actually hold it. If they do it could probably be challenged in court if someone decided to defend their right to use a phrase like that.
It's another classic Legal Monday post. Thank you Sarah.
My question is (again) about international issues. You mentioned the case of two companies having the same trademark in different business areas - but what about in different geographical areas?
Supposing there was another Delta airlines in the UK (airlines actually being a bad example because they fly from country to country so this would be tricky, but bear with me here). Would they have rights to delta.co.uk over and above delta airlines US? What about the .com - is that automatically the US trademark holder or could a UK trademark holder justify owning that?
Great to meet you at SMX, btw. Thanks for being as engaging and fun in person as we knew you would be from your writing.
While I am certainly no legal expert, I have dealt with this issue before for several clients and here are the few facts I know...
1. Many countries cooperate via membership in the World Intellectual Property Organization: https://www.wipo.int/members/en/
2. If you can find a link to the United States (often the squatter will use a fake US address in the whois), you can get jurisdiction in a United States Court.
3. If the squatter uses fake domain whois information, they will most likely never receive the summons.
4. When they do not receive the summons and, subsequently, miss the court hearings, you will get a summary judgement by the courts.
5. That summary judgement is a quick ticket w/ ICANN to get domains moved into your posession.
Every case our clients have had ended this way. Domain squatters don't realize that by using fake whois information they are shooting themselves in the foot. And, even if they do use international information, their countries often participate in WIPO which means they are beholden to many of the same legal restraints as in the US
I am sure Sarah, though, can answer your question more thoroughly.
Hi Will!
Another terrific question from the Willster. It was great to meet you at SMXWest. Only sorry we didn't get to grab a drink together.
I'm going to rephrase your question to make sure I have it right. I think you're wondering what happens in a domain name dispute when two companies, both legitimate trademark owners, operate in different countries...
1. UDRP is out because both parties are using their trademarks and domains in good faith. Remember that UDRP is only designed to oust cybersquatters quickly and efficiently. It's not designed to settle all kinds of trademark disputes. Thus, if there isn't any bad faith, then you won't succeed at UDRP.
2. This leaves a lawsuit as your alternative. Let's assume that each party has a valid trademark registered in their native countries, but that neither party has internationally registered the trademark. If the U.S. Delta company tried to haul a U.K. Delta company into court for violations of ACPA, the case would likely fail because again the U.S. company can't demonstrate bad faith. The U.S. company could try and bring other trademark claims (infringement and dilution), but the Court would (somewhat awkwardly) go through its usual infringement analysis. I believe that the Court would hesitate to find any kind of infringement, unless either party was willfully marketing beyond their usual scope.
For example, if U.S. Delta tried to buy-up Delta.co.uk, I think there is a chance that a Court would order transfer of the Delta.co.uk to the U.K. company, but only if the U.S. company was trying to encroach on the U.K company's market. If the U.S. company could somehow argue that they were not trying to encroach on the U.K market with that domain, then perhaps it would have a chance--but could you imagine trying to make that argument? I think it would be pretty difficult.
On the same note, I think that the U.K. Delta has a better chance of arguing that it is not attempting to infringe/confuse consumers in the U.S. market merely by purchasing a .com. Again, not an easy case, but easier. The court would analyze the U.K. company's website and customer lists very carefully.
3. Note that the outcome could be different if either company had registered its trademark internationally. If the U.S. Delta company had internationally registered its copyright back in 1995, and the U.K. Delta came up in 2000, the U.S. Delta company could purchase the .Uk. domain without any trouble. They were the first in time and they have a valid right to do business there. Internationally registering your copyright puts other countries on notice that you are protecting your right to expand into that area at a later date. Thus, in our global marketplace internationally registering your trademarks is a wise decision.
I'm going to do a post on trademark registration in the future, so stay tuned.I hope this helps! Again, the process is much easier to resolve if the other party is clearly cybersquatting because you can take advantage of URDP and ACPA. But if the other company is a legitimate user, it's much more complicated and difficult to predict. It's simply hard to know sometimes whether a judge would think that consumers are being misled etc etc.
Happy Monday Will!
BTW, I heard on the radio this morning that the UK is having miserable weather. Be safe and keep warm!
Thanks Sarah. I think that's roughly what I thought. As for the drink, we were briefly in the bar at the same time, but just gives us more excuse to catch up next time. Thank you for handling all the questions so competently ;)
On the weather front, London is wet, but safe. Save the worrying for anyone on the coast (esp. Cornwall!).
So in other words, a person infringes on your rights and in most cases has nothing happen to them other then get the domain name taken away, but the complainant gets to incur the cost to defend against the infringement which they wont recoupe. This is why people continue to infringe because they know that most people wont sue or even go through arbitration because they have to pay $2000 at least to get something that is legally theirs and there is no way to get that back without suing and they probably will spend more than they can recover. It is frustrating, I have someone infringing on my rights by squatting on the domain name for my company for 6 years. They don't have a website up, they are justr holding it for no reason, even after I have told them its against the law. Clearly they are calling my bluff and although I know I can legall pursue this, I can't bring myself to spend money because someone else is breaking the law. Why aren't they cracking down more on these people? They should at least fore people to pay half the costs so that there is some incentive for the offenders to resolve it. Obviosly its a money making thing, as most people would resolve before arbitration hence no $2000 fee.
Hi Sarah,
Thanks for this - super helpful!
Who do you think would be the most screwed here?
Over time multiple companies have been using the same name for the same purposes, let's call the brand "Special Sauce" used by marketing companies. (Not the real name.) Though many companies have been using it, a simple TESS search at uspto.gov reveals no registrations for the mark.
Company A has controlled the domain speciallsauce.com since 2001 but only began building a website with it and using it for business since 2014 (coincidently ever since company B called up and asked to purchase it in 2014.)
Company B has been using the name since 2013 but with a foreign registration - say specialtsauce.co Their address is obfuscated by a privacy service in the whois database but they have been doing business with US customers since their inception, though the address listed on their website is not in the US.
Company C, Incidentally, has the domain name thepecialsauce.com, however they recently changed their name to Saucy so the domain forwards to saucy.com (again these are made up so apologies to the real domain owners.) So they don't count for much in this fight except that their domain does well in search rankings.
So, now I assume it is a race to register the mark between A and B. Assuming A gets to it first, then is it all over for B- since A would have both the .com and the ®? Or, what if B register's first? Would B have a case for compelling A to stop using the mark and possibly the domain as well?
Thanks!
Thank you for the explanation and useful actions to take.
Our company became a victim of this issue. The owner hired a contractor, the domain name was registered originally registered under the owner's account in 2004. In 2009, having access to the account, the contractor pushed the registration of the account to his name. The owner is a senior, therefore does not know anything about technology. When the contractor was fired, he sabotaged our website. We didn't realize we don't own it. He put false and fraudulent information on our website, disabled our email, and he has access to all emails from client, prospects and suppliers. We have spent so much money advertising in nationwide and citywide magazines. We escalated the issue to business bureau but nothing happened. Reported to police, the police cant find him. Up to now, the website is up and still fighting over it. We created a new website but it takes time to build up the ranking. It was a very painful experience. For 2 months, we have no phone calls and email.
I will share this post in our facebook, twitter and linkedin accounts.
Thank you!
Hello Sarah, thank you for such useful article.
In your favorite example “Delta” - Delta Airlines, Delta Faucets, and DeltaDental all have “Delta” as a registered trademark in their different industries and markets and there's Delta Airlines was lucky enough to win Delta.com.
But what will happen in this case:
Who has rights on the domain now? Will the student to be legitimate Delta.com owner in further even in a case of lawsuit?
I might add that they have also sent me a Deed of Undertaking that I cancel my application to register Arcaneschool.com with IP Australia and transfer both domain names at my expense or else legal action will ensue in 2 days
Hi Sarah, this is a very good post regarding the confusion and difficulties between discerning a .com and a trademark granted by the US Patent Office. Many people don't understand that just because you own a domain name that you also one the trademark name. Going through the trademark process is long and can be expensive. I would recommend any site owner that plans to be in the internet business for the long haul to apply for a trademark so your domain and business name can receive the "R" Registered symbol. One suggestion, don't try to do it yourself; hire a good patent attorney that know the system and understands the process as there are a lot of little details that must be followed or the Patent Office will continue to send your application back for revisions. Also, expect to pay $5-7k for the process from start to finish and expect it to take at least 8-14 months for final approval best case.
I have the following scenario:
I own a News/Publishing/Media website with 3 years of content and branding. The website is currently set to the topicincityname.com. This year I want to rebrand to a friendlier organic name which is citynametopic.com. However the owner of the domain(A local realstate company in the same city) is not responding to emails or does not want to sell it.
The real estate company purchased the domain name citynametopic.com in 2005 from a seller. Using waybackmachine, I research that the domain never hosted a site or anything was done with the domain. Looking beyond 2005 the seller as well never did anything with the domain. Today, the domain still does not load to any server, IP, email records, ect, so I am quite confident that the realestate company purchase the domain just to hold it.
I have been wanting to do something with the citynametopic domain and was able to acquire .info, .org, .co, and .net. I also want to Trademark the name to create a brand. I research with UPSTO that if I wanted to try to register the citynametopic trademark, that no one else has attempted to do this.
I want to register the citynametopic domain and ultimately set the new website with the .co TLD (knowing that this might confuse visitors and send traffic to the .com).
My site would also have realestate classifieds, a city directory and such.
Does anyone think that the realestate company might have the ability to remove my trademark rights and domain if they ever pursue that they also once wanted to do the same (have a News/Publishing/Media site with realstate listings) since they purchase the domain back in 2005? Now from reading this article and comments I am learning that because these are two different markets I may be able to fight it in court.
Would trademarking the brand name help protect the realestate company from launching a similar site? In any case I feel they will win traffic from .com visits to there actualbusinessname.com site if they eventually point to it and if there is no strong marketing with .co in my case.
Any suggestions?
* Realestate company name has no relations or keywords in the citynametopic name, aside that it is located in the same city.
My initial idea was to do Arcane School a favour. But they didn't see it that way. Then my idea was to see if I might operate my own version of Arcane School for psychology services which is a different trade mark category than theirs... they have registered Arcane School for education but they want to ensure I either don't succeed or otherwise pay a heavy price to win
This is an excellent primer on trademark law/UDRP/sybersquatting. What I appreciated the most was the practical perspective employed by Ms. Bird. Rather than merely set out the law in a vacuum, good practical examples are employed.
At first impression I would never have thought it a good idea to upset Arcane School because I thought they were well established with a good reputation... until I tried to join the school. I Googled it & arrived at a Tesol website where Arcane School.com was up for sale for around $600 so not wanting the domain name to fall into the wrong hands I bought it & also bought Arcaneschool.com.au then afterwards found that Arcane School did in fact exist but under the prefix Lucis Trust. So I told Lucis Trust what I had done & that I intended to assist Arcane School. But Christine Morgan from Arcane School had her lawyer David Fixler send a letter of demand that I transfer both domain names to her at my expense because Arcane School is trade marked & she viewed me as a threat. So I attempted to delete the .com.au domain but deletion is not authorized. Meanwhile it seemed to me that Christine Morgan was not real person but only acting as a legal appendage of Arcane School. So I applied to register Arcaneschool.com with IP Australia under Atmoss category 44 (information on psychology) thinking that IP Australia would make a ruling to decide if I could use the trade mark for a different purpose. They would make the ruling but only after David Fixler had taken me to Court. Is it worthwhile going to Court since they could claim I am injuring their reputation?
Sarah - What if you found out that when registering for your mark that another company had applied for a similar mark (confusingly similar) 6 months before you but you have been using the domain for several years prior to either company registering for a mark?
Since you have been using the domain for several years prior to another company applying for a similar mark to yours, does this protect you from the new company potentially taking your domain?
Truman,
Depending on where your competitor is in the trademark process, you may be able to pretty easily challenge their right to the mark. After applying for a trademark, there is usually a waiting period in which those opposed to the mark can argue that it shouldn't be trademarked. This is the post-examination, but pre-registration period.
Check out the rules for filing a Notice of Opposition.
I can't give you legal advice and I don't know your full story, but your success is going to depend on whether you're in the same industry and market, among other things.
Challenging the validity of a mark gets more onerous and expensive further down the application-to-registration road. Thus, you should probably talk to a qualified attorney right away if you're serious about protecting your mark.
Best of Luck!
Sarah,
Another very useful and interesting legal post.
Where do you find the time and or the energy to do all this research?
Were you a laywer or paralegal in another life time?
Comes right at the time when I am dealing with few of these. Thanks for the post
Extremely interesting... thank you very much! it is bookmarked this will be forwarded for sure :-)
Sarah's scimitar flashes again!
These are worrisome issues for me. My domain is <MyBusinessName>.com. There exists a .cz equivalent. The other guys sell merchandise, sponsor and promote events and a race team, and offer professional services. (I only do the latter, but have grand ambitions.) They appear to limit their activities to their country; I coach athletes wordwide, thanks to the magic of the web.
I watch them; doubtless they watch me.
Mark
If you legitimately sell a product for a specific brand name eg. doors for nissan cars, can you register nissan-doors.com and be safe? I have seen where people register domain names like that and have them re-direct to a non-trademarked domain name like carparts.com. But I don't know if that is just because they sell other brands of parts as well.
Is it cool to use the trademarked name without forwarding it? Or is forwarding it the only safe way, or is that even sketchy?
I really appreciate your help. I was planning to start reselling accessiories for a well know electronics brand and don't want to get in trouble with trademark-accessory.com name.
Thanks
Hello guys, I know this is a old posting but I was wondering if we could get some advice,
We own around 500 fully w3c vallidated domains most are active, we are not cyber squatters, we got a letter last week from a very big company claiming we were using both a dot com and dot co dot uk against a uk trade mark but as most of you know tracking down UK trade marks is next to impossible there was 3 names in the domain name that was fully generic and the main name of the trade mark was not used other than in the website title!
Question can a trademark holder go out of their way to hide their marks and is there a defense for this, as soon as the letter came in we knew nothing about the said UK TM and took off both sites at once, within hours and put them back to their respective hosts 1 in the UK, 1 in USA, they have since refused to talk to us.
As SEO experts we can turn any site into something else, would it be better to use the domains or just sit on them till they expire and did we do the right thing by taking them off line as after reading your comments am not so sure as the site was talking about their said products but was in fact a free information site, selling nothing?
Rather than handing it back can we ask for detagging from our end or is it better just holding on to them instead?
In the end we would not have went after TM as we better we just cant understand how they got a generic 3 word TM its obvious that money talks but this is crazy?
Bye the way all domains are in fact hosted in Germany...lol
Kind regards.
Sarah,
Great post summarizing the different scenarios one might encounter.
There are, however, a few countries where there is no dispute resolution available - such as Germany and Russia. The only option is to file a complaint in national court under national law.
Can you expand upon this? Maybe which countries this applies to, process and potential costs?
Exceptionally good post, Sarah, as always.
One quick question, if I own site1.com domain who owns site1.co.uk, site1.com.ua, etc domains? And what's the procedure. It seems impossible to register all regional variations to protect yourself...
Sure Sarah will correct me if I'm wrong, but I believe that unless you have a trademark on site1, owning .com makes no difference to your rights to own .co.uk etc.
I think so too (and always did)... but
I got a strange email recently from a Chinese registrar saying that someone was going to register site1.cn - and as I am the one who owned site1.com, I had the right ro register it first (and this right extended for three days after the notice).
So I was thinking, if that a regular procedure (I haven't come across the one before) or the company was just trying to get me pay money for their service...
That's right Will. Unforunately, merely owning a site doesn't give you any protection in the event someone else registers the .uk or .ca or .biz or whatever.
The best way to protect your interests is through trademark law. If your domain is trademarkable, you should set out to register it. You should also consider registering it internationally.
I think this is one reason choosing a business name can be so challenging. It is tempting to have a dame that markets itself by describing quickly and clearly what you do (like "Best SEO). However, having a generic name limits the control you have over your brand. It's a very difficult decision.
Thanks for your question Ann!
Oh, BTW, I read your post about thumbing last week and really enjoyed it! Well thought out and fun to read!
Doesn't this prevent people from making money by buying expired domains and parking them for profit? How is one to know what names are part of an actual registered trademark. If my name was Della Price and I bought the domain name DellaPrice.com, I might have a problem with Dell.
I think the company should not be able to bring a suit against the owner until they have first asked the owner to sell them the domain and the owner has refused. That gives the domain owner a way to get out of being sued.
For a lot more news about all kinds of cases of Alternative Dispute Resolution. The National Arbitration Forum is one of the world's leading providers of alternative dispute resolution services, including arbitration and mediation. If you are interested in domain name disputes, them have handled a lot of cases. It's worth checking them out.
Awesome job on this post Sarah! You did a nice job with the formatting of the post to include FAQ's along with answers. Very easy read and nicely presented.
Also if anyone is interested, I am willing to build a war chest to fund worthwhile legal battles ... not that I claim the disagreement with Arcane School is worth pursuing further. I would help build the war chest on condition that someone would also help me to make it happen. It would be a war chest for legal battles & also to pay for administration of a game I am developing, which is the opposite of "Monopoly". Whereas the goal of Monopoly is to bankrupt your opponent, this game intends to build a new hybrid economic system as well as a new society based on Fritjof Capra's "Holism" as defined in his book "The Turning Point". Interested persons would get an income of between $50,000 and $200,000 per year from the game so long as they contributed a small capital input ... earned the income by contributing to the game ... & found 6 others to also join. Also by "game" I mean to use the term within the context of "Lila" which means "divine play". In other words ... "all of life is a game...you either awaken & play or you are being played" . Ifyou want to find out more my phone is 0439667116 Australia or email [email protected]