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How are trademarks and service marks different from Internet domain names? Someone has already registered my trademark as an Internet domain name. Is there anything I can do to get the domain name away from that person or company? What are the pros and cons of pursuing a claim under the Anti-cybersquatting Consumer Protection Act? What are the pros and cons of using the Uniform Domain Name Dispute Resolution Policy? Are there other ways to challenge a domain name registrant other than by using the ACPA or UDRP? How are trademarks and service marks different from Internet domain names? While a trademark or service mark must be used to identify the source of goods and services to consumers, the primary function of an Internet domain name is to identify the location of one particular computer server on the World Wide Web - much like a telephone number identifies one specific telephone line. Furthermore, since likelihood of confusion concepts for trademark infringement necessarily involve an evaluation of the relationship of the goods and services of the parties, it is possible that in situations where the goods or services of two or more trademark owners are unrelated, then the same mark can be used by different owners. Since Internet domain names can only identify one specific computer on the Internet, it is not possible to have multiple users of the exactly the same Internet domain name. Note that the key word is "exactly" the same. Any minor variation in a domain name, such as a hyphen, phonetic variation or differing top level extension (e.g., .COM, .ORG, .NET, .BIZ, .INFO, .CC, .WS, etc…) makes the domain name distinguishable to a computer searching for a particular address. The trouble is that such variations may not be distinguishable to humans who input the search request into a search engine or web browser and then have to interpret the results. Since many consumers instinctively use trademarks and service marks to search for those companies on the Internet, some unscrupulous competitors often use very similar domain names to siphon away traffic meant for the trademark owner's website. Return to Top Someone has already registered my trademark as an Internet domain name. Is there anything I can do to get the domain name away from that person or company? The short answer is that it depends on the intent of the domain name registrant. If the domain name registrant registered your trademark as a domain name in "bad faith," then you may be able to take advantage of either the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Anti-cybersquatting Consumer Protection Act (ACPA) to get the domain name away from the infringer. In determining bad faith either under the UDRP or the ACPA, the domain name registrant must not have had any legitimate rights of its own in the domain name, there must have been an improper reason for registering the name, such as either selling it to you or a competitor of yours for a substantial profit, or primarily for the purpose of disrupting your business, or to unfairly compete with you by causing consumer confusion. If, however, the domain name registrant has legitimate rights in the domain name, such as it is also the same as a trademark in which they have rights, or the domain name registrant meets the requirements of "fair use," such as using your mark as a domain name for a consumer complaint website about your products or services, or if the domain name is the same as your personal name and their personal name (e.g., you are both named JOHN BROWN) then your only alternatives are to either to purchase it from them for whatever price you can agree on or adopt a variation of the domain name such as using a hyphen, adding a generic word or registering in a different top level extension. Return to Top What are the pros and cons of pursuing a claim under the Anti-cybersquatting Consumer Protection Act? The ACPA is a federal statute which provides for a number of remedies if someone is found to have registered your trademark or service mark as a domain name in "bad faith." You can get an injunction against the cybersquatter to immediately cease using the domain name; you can get an order requiring them to transfer the domain name to you; you can recover either your actual out of pocket damages from the infringement or, if actual damages are difficult or impossible to prove, you can recover "statutory" damages which can vary between $1,000 and $100,000 per domain name; and you may be able recover your attorneys fees and court costs in bringing the lawsuit. In cases where the domain name registrant is either unknown or is located in a foreign country, you can bring an "in rem" action against the domain name itself. However, in an "in rem" action you are limited only to an order requiring cancellation or transfer of the domain name. Damages or attorneys fees are not available for in rem actions. The most significant downside is that the ACPA can only be invoked by filing a lawsuit and you will likely encounter significant up front legal fees which will have to be paid in order to pursue such an action. However, if you are suffering substantial harm from the infringing website, such as it is pornographic in nature, then a lawsuit in which you seek immediate relief in the form of a temporary restraining order or preliminary injunction may be unavoidable. Return to Top What are the pros and cons of using the Uniform Domain Name Dispute Resolution Policy? The UDRP is a form of alternative dispute resolution. It involves having impartial arbitrators review your complaint, any attached evidence, and the domain name registrant's response and any attached evidence. Unlike a civil lawsuit, there are no discovery procedures, no depositions, no hearings, no trials and no juries. Each side gets to file one statement with the arbitration panel. There is no right to a series of replies or responses unless the information is specifically requested by the arbitration panel. Virtually all domain name registries in the United States and many from other countries participate in the policy. The UDRP is a more simplified process which is typically cheaper than filing a lawsuit and in many cases provides quicker results. However, the tradeoff is that the domain name registrant can continue to use the domain name during the pendency of the UDRP proceeding. That means if there is substantial damage to your business going on through the infringing website, then it will likely continue during the UDRP proceeding. Your only remedy if you are a complainant and you win the dispute is for transfer of the domain name to you or cancellation of the domain name. You have no right to damages or attorneys fees. UDRP proceedings will take a minimum of 60 days and possibly as much as 120 days to resolve. If you are a respondent in a UDRP proceeding, your only remedy in the event you lose is appealing the decision within 10 business days of the decision to a federal court in the district where your domain name registry is located in order to stop the automatic transfer. If you are a respondent and you win the UDRP dispute, your only prize is that you get to keep the domain name. You cannot get damages or attorneys fees from a complainant simply for winning the dispute. The UDRP does not supersede or replace the ACPA. Complainants can use both processes and just because the respondent wins the UDRP proceeding does not mean that the complainant can not turn right around and file a lawsuit against the respondent under the ACPA. Return to Top Are there other ways to challenge a domain name registrant other than by using the ACPA or UDRP? In some instances a domain name registrant who is actively using a domain name for a website which is similar to a trademark or service mark you own could also be liable for trademark infringement, unfair competition and in some cases, if the mark is a famous and distinctive one, trademark dilution. A court could issue injunctions against the domain name registrant stopping the infringing or dilutive use, it could order a transfer of the domain name and, while not automatic, damages and attorneys fees could be awarded if the domain name registrant has acted with willful disregard of your trademark rights. Return to Top |
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