Stop being a Sissy domainer!

Time and time again, I hear oh that is a trademark violation!  Well, guess what not every word is a trademark violation.  The bigger word here is infringement.  If you happen to hand register a domain name and you are not sure if it has been trademarked well you can go here to find out for sure: Trademark.com.  Merely enter the word and READ the description of the mark and see if it is really TOTALLY marked.  Can you trademark the word, “Milk?”  I don’t think so!  Can you trademark, “Gun?”  I don’t think so!  Can you trademark, “Ad?” I don’t think so!  If it is a generic  word then you should be fine.  And even if you do happen to register a trademarked word does not mean that you have infringed.  It is important you understand it is what you do with the domain name that matters.  Any trademark violation must include damage, in other words, the owner must be damaged.  So then, if you sell similar products, copy images, copy content or have a similar website then perhaps you are in violation.  Make sure you read the description in the trademark and find out if it is with specificity to the domain name you registered.  Stop being scared out of your wits and being a sissy!  This is America, of course if you happen to be in America! lol…    My main objective here is My objective is to educate you on trademarks and what it really means to be in violation.  Hopefully, you can see where I am going with this.

Legal Remedies:

When a dispute over a domain name occurs, such as those described above, the parties can always turn to the courts. While courts and judges have the authority to award control and ownership over domain names (just as they have authority to award control and ownership over any other property), the judicial process is notoriously slow. Consequently, many parties have avoided the courts and turned to the domain name dispute policies of the domain name registrars (see the following section for more information on these policies).

Companies that do bring a court action must present legal arguments on why a domain name registered to someone else should be cancelled or transferred to an organization who wasn’t fast enough to register the name first. Historically, these arguments were based on trademark law or dilution law  It was sometimes difficult to present a strong case under the traditional principals of trademark law, especially when the party seeking to obtain a domain name either could not prove a likelihood of confusion (which is required under trademark law) or was a famous individual who never technically established trademark rights in their name.

In response to intense lobbying from trademark owners and famous individuals, Congress passed the Anticybersquatting Consumer Protection Act in November of 1999. This act made it easier for individuals and companies to take over domain names that are confusingly similar to their names or valid trademarks. To do so, however, they must establish that the domain name holder acted in bad faith.

One portion of this Act related to famous individuals. This portion allows individuals to file a civil action against anyone who registers their name as a second level domain name for the purpose of selling the domain name for a profit.

The more general portion of the statute protects companies against persons who, in bad faith, register a domain name that is the same or confusingly similar to an existing trademark. The statute the lists the following factors as elements that a court can consider to determine whether the domain name was registered in bad faith.

  • Does the domain name holder have trademark rights in the domain name?
  • Is the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
  • Has the domain name holder made use (prior to the dispute) of the domain name in connection with a bona fide sale of goods or services?
  • Is the domain name holder using the mark in a bona fide noncommercial or fair use way at a web site accessible at the domain name?
  • Is the domain name holder attempting to divert consumers from the trademark owner’s web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
  • Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
  • Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
  • Did the domain name holder provide false information when applying for the registration of the domain name (or do so in connection with other domain names)?
  • Has the domain name holder registered domain names of other parties trademarks?; and
  • How distinctive and famous is the trademark owner’s trademark?

Domain Name Dispute Policies:

The best alternative to pursuing a domain name dispute through the courts is to take advantage of the domain name dispute policies that have been developed by the organizations that assign domain names. Disputes prior to December of 1999 were handled under the domain name dispute policy created by NSI.

Under this much maligned policy, NSI created a procedure under which a third-party can challenge the right of a domain name owner to use a particular domain name. If the challenge were successful, the domain name would be suspended. This policy only protected parties that had a nationally registered trademark identical to another party’s second level domain name (i.e., Microsoft in “www.microsoft.com”). An owner of an unregistered trademark could not initiate an action under this policy, nor could an owner of a trademark that was confusingly similar (but not identical). If the date that the trademark was first registered predated the domain name registration, the domain name owner had to supply their own trademark registration for the second-level domain name. If the domain name owner could not provide such a trademark registration, NSI would suspend all use of the domain name. This is true even if the challenging party could not properly prove a claim of trademark infringement

This policy has now been replaced with a Uniform Domain Name Dispute Resolution Policy created by ICANN and used by all accredited registrars. Under this new policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to prevail, the trademark owner must show:

  1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
  2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
  3. that the domain name was registered and used in bad faith.

If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.

Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:

  • use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute;
  • that the domain name owner has been commonly known by the second level domain name; or
  • that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue

A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including by showing that the domain name owner:

  • registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
  • engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
  • registered the domain name primarily to disrupt the business of a competitor; or
  • is attempting to attract users to a web site for commercial gain by creating a likelihood of confusion with the trademark owner’s trademark.