Originally Posted: October 20, 2010 at ClevelandBusinesslaw.com
Experienced Internet users understand the value of a simple, distinctive and memorable domain name. Web addresses such as www.kodak.com andwww.ford.com are easy to find, easy to remember, and lead where one would expect them to. So for businesses considering an online presence, the choice of a domain name is not one to be made lightly. There are also legal issues involved in choosing a domain name, the most important of which is trademark infringement.
Most businesspersons understand that it is both legally dubious, and generally frowned upon to create a logo, business name, or other service mark that is too similar to that of a similar business. With the rise of e-commerce, similar principles have come to apply to web addresses as well. In the early days of the Internet, so-called “cybersquatters” could inexpensively buy up dozens of unclaimed domain names resembling the names of celebrities or businesses, and then attempt to sell them to the original parties for a profit. Some considered cybersquatting the online equivalent of a “land grab.”
To curb the practice, Congress passed the Anticybersquatting Consumer Protection Act (ACPA) in 1999. 15 U.S.C.A § 1125(d). The ACPA amended existing trademark law by allowing trademark holders to sue the owners of domain names that infringed or diluted their trademarks. The Act only applies when the domain name owner has made a “bad faith” attempt to profit from use of the trademark. What constitutes a “bad faith” attempt is subject to interpretation, but the statute itself provides some reasonably clear guidelines, and there is a substantial body of case law on the issue as well.
Claimants under the ACPA can sue for either trademark infringement or trademark dilution. Infringement claims are brought against domain names that are either “identical,” or “confusingly similar” to a registered trademark. Trademark dilution claims arise from uses of a trademark that are less egregious, but the plaintiff must also prove that its trademark was famous when the domain name was registered. For both types of suits, however, there are numerous possible defenses.
So what should businesses consider when shopping for a domain name? At the very least, a quick bit of research is warranted to make sure that you’re not infringing on someone else’s trademark. More complicated cases arise when a businessperson discovers a suitable domain name and discovers someone “squatting” on it, or when a site with a confusingly similar domain name begins encroaching on the trademarks of an established business. Depending on the resources, patience and other concerns of the business owner, cases like these may call for a consultation with a competent intellectual property attorney.