Articles >
Master of Your Own Domain?

- - - - - - - - - - - - - - - - - - - - - - - - - - -

Consider two scenarios:

1) Sally registers the domain name, "Platypus.com." She has an entrepreneurial background, and she believes that she'll eventually think of a lucrative business she can marry to such a catchy name. Meanwhile, visitors to her site see a "coming soon" page. Then one day she receives a certified letter from a law firm commanding her to cease-and-desist use of the domain name, and to transfer it to Platypus Corp. forthwith.

2) Saul decides to take his off line business, Saul's Deli, online (he plans to FedEx Pastrami sandwiches to underserved areas). He checks to see if "SaulsDeli.com" is available, and finds to his chagrin that one of his best customer's 18-year-old son has registered the domain in his (the son's) name, and the domain currently points to a "coming soon" page. Saul contacts the boy, and he offers to sell the domain to Saul for $10,000.

What can Sally and Saul do?

The answer to that question would have been quite different had the scenarios played out in early 1999 rather than 2001. Until recently, the principal vehicle by which businesses could try to recover domain names that were similar to names of their products or services was conventional trademark law. Trademark law would offer little promise to the trademark owners in either of our two scenarios, however, because trademark law applies only if the allegedly infringing mark has been used "in commerce."

In our scenarios, as in many cases of alleged "cybersquatting," the alleged wrongdoer essentially does nothing with the domain. Because it is hard to conceptualize doing nothing with a domain name as using it "in commerce," traditional trademark law offered relatively little support for aggrieved parties. (That is not to say that some courts did not find a way to shoehorn cybersquatting into traditional trademark law concepts; for instance, some courts held that offering a domain name for sale constituted the necessary use in commerce.)

Last year, both Congress and the the Internet Corporation for Assigned Names and Numbers (ICANN), a quasi-governmental body that sets domain name policy, enacted laws to address the perceived shortcomings of trademark law with regard to cybersquatting. Congress enacted the Anticybersquatting Consumer Protection Act (ACPA); ICANN promulgated the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

The ACPA and the UDRP contain similar standards for determining whether use of a domain name constitutes cybersquatting. Both laws require a plaintiff to show that it has trademark rights in a distinctive or famous word or phrase, and that the defendant has registered or is using a confusingly similar domain name in bad faith. Neither the ACPA nor the UDRP requires a traditional use in commerce, however. Thus, these laws can reach persons who merely warehouse domain names in the hopes of selling them to trademark holders.

It is important to note that trademark law and the ACPA/UDRP are not concerned with the same kind of confusion. Trademark law conditions a finding of infringement on a finding that a defendant's use of the mark in question creates "a likelihood of confusion" as to the source or affiliation of goods and services associated with the mark. Thus, for instance, it is not trademark infringement for one company to sell cars under the mark "Cadillac" at the same time an unrelated company sells dogfood under the same mark. Because the marks represent very different products sold in very different venues, consumers are unlikely to be confused as to the products' source or affiliation.

By contrast, the ACPA and the UDRP permit liability to be found if the defendant has registered a domain name that is confusingly similar to a plaintiff's trademark, even if the defendant does not use the domain name in a manner that creates a likelihood of confusion as to the source or affiliation of goods or services associated with the domain. This creates an incentive for trademark owners to move fast. For example, assume there are 20 owners of a given mark, each using the mark for a different type of business, and that a cybersquatter has registered every conceivable variation of the mark in the hopes of selling the domains to one or more of the trademark holders. It is possible that the first of these owners to the courthouse with a valid claim may recover every one of these domain names, thus preventing the other trademark owners from reflecting their marks in a domain name. In a real world example, Caesar's world, the owner of the Las Vegas casino, filed suit under the ACPA to obtain nearly a dozen domain names that incorporated words arguably similar to "Caesar's." The domain names included “caesarsonline.com,” and the .com, .net, and .org variations of “casares.” A quick search of an Internet directory reveals that there are hundreds of businesses across the country with the term "Caesar's" in their name, and at least 14 businesses with the term "casares" in their names. All that gives Caesar's World priority over the other users of the Caesar's and Casares marks is that Caesar's World got there first.

As noted above, however, confusing similarity between trademark and domain name is necessary, but not sufficient, to enable a trademark owner to recover a domain name. Unlike conventional trademark law, the ACPA and the UDRP also require the trier of fact (i.e., judge, jury, or arbitrator) to determine whether the domain name registrant has acted in "bad faith" and lacks a legitimate interest in the domain name. The bad faith standard requires the trier of fact, in effect, to enter the mind of the domain registrant to see if her use or intention for use of the domain should be deemed worthy.

In Part II of this article, we will look at the factors the ACPA and UDRP provide to help the trier of fact to decide whether a domain registrant is guilty of bad faith. We will revisit Sally and Saul, and I will use their predicaments to give you a better sense of your rights as a trademark or domain name registrant and how you can protect those rights.


Click here if you would like to comment on this page.

Your use of this site is governed by our disclaimer and terms of use.




about  |  cyberlinks  |  articles  |  home  |  blog

818 Connecticut Avenue NW, Suite 250
Washington, D.C. 20006
(202) 552-1420
Fax (202) 478-1791

© Law Office of Jonathan Bender, P.C.