Preview of Tonight’s Law Talk…

Here is a quick preview of what David Mazur is going to discuss at tonight’s Law Talk:

Trademarks and the Internet


Domain Basics

  • Computers accessible by the internet are identified by a numeric identifier called an “IP” or “Internet Protocol” address.
  • To make this more easily accessible, the “Domain Name System” was devised to help match names people would remember to numbers. You are familiar with
    many standard top level domains (.com, .org, etc) just from browsing the
  • The Domain Name System is currently administered by a non-profit public benefit corporation named ICANN

Rights in Domain Names

  • The process of registering a domain name results in an agreement that the registrar will take certain actions on behalf of the registrant in exchange for a fee.
  • Your rights in a domain name are purely contractual, and can be extinguished if you breach your contract with the registrar. Registration is an administrative
    process that does not confer intellectual property or trademark rights on a

Basic Trademark Considerations

  • As discussed, trademark law addresses the needs of a business to identify their products and services to potential customers, but an individual can obtain a domain name for a number of reasons separate from commerce.
  • One common question is whether a business can obtain a trademark to a generic (and otherwise non-trademarkable) word by adding a “.com;” they cannot.


Initial Interest Confusion

  • Trademark law principles provide protection against “initial interest confusion,” which occurs when a competitor capitalizes on the goodwill associated with a business to lead customers to their goods and services: There will be a violation if there is a “bait-and-switch.” If the customer makes an informed choice, there will be no violation.
  • Examples:
    • Software- which loaded pop-ups for competitors when a browser was directed at a well known site that “crowded out” the desired website.
    • Displaying a competitor’s trademark in Adwords ad copy


  • “Cybersquatting” is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses.
  • There are 2 primary sets of rules under which one can address cybersquatting in the US.

ICANN’s Uniform Dispute Resolution Policy (UDRP)

o A privately administered proceeding

o Filed with an arbitrator (usually WIPO)

o Mostly a “mail-in” paper-based process

o Only relief available is cancellation or transfer of the offending domain names

o Trademark owner must show both

      • That the registrant has no legitimate interest in the domain name
      • and that the domain name is being registered in bad faith.

o Only mark owners can start a UDRP proceeding.

  • To establish rights in a domain, a domain holder must go to court for a protective restraining order or declaratory judgment.

o Prior rulings under the UDRP can be used to persuade arbitrators but are not binding

o Trademark owners who file complaints in bad faith are said to have engaged in “Reverse Domain Name Hijacking.

      • It is considered an abuse of the administrative proceeding and the Panel can enter such a finding in the record to warn others
        about such a trademark owner.

The Anticybersquatting Consumer Protection Act (ACPA)

o Authorizes a trademark owner to sue an alleged cybersquatter in federal court and obtain a court order transferring the domain name back to the trademark owner.

o In some cases, the cybersquatter must pay money damages.

o Trademark owner must prove all of the following:

  • The domain name registrant had a bad-faith intent to profit from the trademark
  • The trademark was distinctive at the time the domain name was first registered
  • The domain name is identical or confusingly similar to the trademark, and
  • The trademark qualifies for protection under federal law

o If there was a reason to register the domain name beyond selling it to the
trademark owner or otherwise profiting, the registrant will have a defense


  • In May, Tony Larussa (coach of the St. Louis Cardinals) filed a suit against Twitter in response to someone using the service to register a Tony Larussa twitter stream, post an unauthorized photo, and impersonate his through “tweets” – Twitter status updates
  • The suit alleged cybersquatting under the ACPA among other causes of action, but the suit was ultimately settled and withdrawn.