A T T O R N E Y S
A T
L A W
E-Commerce: Trademarks and Domain Name Issues
Anat Hakim Foley & Lardner 150 E. Gilman Street Madison, WI 53701-1497 (608) 258-4980 ahakim@foleylaw.com
TRADEMARKS
What are they?
Words,
designs, graphics or other markings which distinguish for consumers the source of particular goods or services. 15 U.S.C. §1127.
Sources of Trademark Rights
Generally
arise
out of use in commerce
Federal
State
Common
law
Trademark Infringement
What
The
is it?
use of someone else’s trademark or service mark, or a confusingly similar one, to confuse consumers as to the origin of a product or service.
Trademark Infringement … cont.
How
does it arise on the Internet?
Most
often, viewers of a Web site may be confused about whose site they are viewing or the origin of the goods or services being distributed or marketed on that site.
Trademark Dilution
What
The
is it?
lessening of the capacity of a famous mark to identify goods or services. 15 U.S.C. §1127.
Sources of Rights Against Trademark Dilution
Federal law
Lanham Act
State law
State statutes WI law –there is no WI dilution statute
Common law
WI law –not clear if courts in WI recognize a cause of action for common law trademark dilution.
DOMAIN NAMES
Domain Names
growth in domain name registrations Can be tremendously valuable
Astonishing
Sex.com
Gary Keremen v. Stephen Cohen, No. C 98-20718 JW, N.D. Calif., April 3, 2001.
New TLDs Authorized by ICANN
Unrestricted
“.biz” “.info.”
TLDs
Restricted
“.aero”
TLDs
(airline groups) “.coop” (cooperatives) “.pro” (professionals) “.museum” (museums) “.name” (personal Web sites)
Unrestricted country code registrations open to all (Cocos Keeling Islands) “.tv” (Tuvalu) “.ws” (Western Samoa) “.nu” (Niue) “.to” (Tonga)
“cc”
Registration of Domain Names in Non-English Languages
Solutions, Inc. plans to implement during 2001. Between November 10, 2000 and December 19, 2000, NSI received over 700,000 domain name registrations in Chinese, Japanese and Korean.
Network
Domain names are ripe area for disputes names often incorporate trademarks New TLDs, unrestricted country code registries and non-English language registrations - - new opportunities and new problems.
Domain
COMMON TRADEMARK AND DOMAIN NAME ISSUES ENCOUNTERED ON THE INTERNET
Cybersquatting Meta-tagging Linking
and Framing Cybergriping Contributory ISP liability for Trademark infringement
Cybersquatting
What
You
is it?
have a trademark but someone has already registered your trademark, or a similar word/phrase, as a domain name.
Types of Cybersquatters
Direct
copiers
Typo-squatters Combinations Reverse
Cybersquatters
Weapons Against Cybersquatters
ACPA
UDRP
Anti-Cybersquatting Consumer Protection Act of 1999 (ACPA)
Civil liability for persons who register, traffic in or use domain names that are confusingly similar to your trademark or dilute your trademark if the use is in bad faith. Must have “bad faith” intent to profit from the domain name. Liability may lead to forfeiture, cancellation, or transfer of the domain name, actual damages, or statutory damages of up to $100,000.
Barbiesplaypen.com
Mattel,
Inc. sued the operator of a pornography site with that domain name.
Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q.2d 1620 (S.D.N.Y 2000).
Ernestandjuliogallo.com
Gallo
Winery sued registrants of that domain name. Court finds defendant registered domain name in bad faith.
E & J Gallo Winery v. Spider Webs, 129 F. Supp. 2d 1033 (S.D. Texas 2001).
ICANN Dispute Resolution Procedures--Uniform Domain Name Resolution Policy (UDRP)
ICANN’s
registration agreements require all registrants to comply with UDRP.
UDRP
… cont.
Requirements:
Domain
name must be identical or confusingly similar to a trademark in which complainant has rights. Registrant has no legitimate interests with respect to domain name. Domain name has been registered and used in bad faith.
UDRP
… cont.
Remedy
is Arbitration. No appeal from arbitration panel’s decision.
Meta-tagging
What
is it?
Meta-tags
are hidden text in a Web site that search engines use to identify sites matching a search request.
What is the problem?
a problem when competing Web sites include your trademark in the “metatags” for their site. “Initial interest confusion”
Is
“Using
another’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s store.
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).
Linking and Framing
Example:
v. MicroSoft, CV No. 97-3055 RAP (C.D. Cal. 1997, complaint filed April 28, 1997). Hyperlinking case.
Ticketmaster
Linking and Framing
Example:
Washington Post v. Total News, CV No. 1190 (S.D.N.Y., complaint filed Feb. 20, 1997). Framing case.
The
Cybergriping
YouSuck.com
Web
sites that are critical of your business generally do not infringe your trademark, as long as sites are not used for commercial purposes.
Cybergriping … cont.
Ballysucks.com.
Criticism Defendant Ballysucks.com, devoted to criticism of Bally’s fitness centers.
Pure
Bally Total Fitness Holding Corp. v.Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998).
Cybergriping … cont.
Walmartcanadasucks.com.
Criticism Similar result under ICANN UDRP.
Pure
Cybergriping … cont.
Peta.com
People Eating Tasty Animals
People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp. 2d 915, (E.D. Va. 1000).
ISP Liability for Trademark Infringement by ISP Customers
Gucci
America Inc. v. Hall & Associates 00 Civ. 549 (RMB), 2001 U.S. Dist. LEXIS 2627 (S.D.N.Y. March 14, 2001).
Remedies
under Lanham Act or common law theories of trademark infringement and dilution. Sue under state laws against infringement, dilution, false advertising and/or other deceptive or unfair trade practices.
Sue
Remedies
Sue
under the Anti-Cybersquatting Consumer Protection Act.
the ICANN dispute resolution procedures.
Use
Lessons Learned
Adopt
a strategy to build and protect your Internet brand identity.
trademarks.
Register
Monitor
the Internet for other’s use of your brand.
Lessons Learned
Register
… cont.
all of your domain names that are important for online brand protection. Consider registering brands across all possible top-level domains (TLDs), including .com, .net, .org and possibly country-code TLDs. Stay on top of new developments and opportunities in domain name registrations.
Lessons Learned
Consider
… cont.
registering slight variations of your trademark.
domain name registrations as well as trademark records before selecting new product name or company name.
Check
Lessons Learned
Go
… cont.
after cybersquatters. Consider using the ACPA or UDRP, if necessary.
the law.
Know