Cybersquatting, Cyberpirating and what’s in a Domain Name

 

In 1999 as an adjunct to the Trademark act of 1946 a cyberpiracy prevention section was added to cover bad faith intent domain name registrations. A domain name in and of itself is nothing more than an electronic address, similar to a phone or fax number, except that a domain name is converted to letters from numbers (that the computer uses) to make it easier to identify and remember. However, the difference between domain names and say a fax or phone number comes in where the domain name represents a website that typically offers goods and services, thus functioning as a trademark. Although in a limited sense even in the pre internet era the use of phone numbers whose corresponding letters formed a name to identify with, such as 1-800-LAWYERS could be associated with various goods and services functioned much the same as current internet domain names.

 

The difference with the Internet and domain names was the rapid proliferation of websites, currently up to over a billion and counting, and the way that domain names are registered. Before the internet getting a telephone number to read into a word was not easy as the number required to make the word was not always available and given each number in a phone number usually corresponds to three letters, there is not a definite word correspondence to a phone number. However, domain names are registered on a first come first serve basis, wherein any name was available as long as it was unique, even if only by one letter, and there is no examination as to whether a current trademark is infringed at all. Thus, the domain name registration process practically guaranteed trademark conflicts.

 

Another complication was that traditional trademark law allowed similar or like trademarks to co-exist on closely associated goods and services in different geographic areas, or similar trademarks to be used on dissimilar goods and services, as in either case there was minimal potential for consumer confusion. However, the Internet with no geographic boundaries and only one unique name available worldwide for a given domain level, practically eliminated this ability for like trademarks to co-exist on similar or different goods and services.

 

This lead to the opportunity for individuals to register domain names exactly or very similar to existing trademarks some of which were very well established and famous. Note that, the mere “naked” domain name registration of a famous or non-famous trademark is not a per se violation of trademark law, if the domain name is only registered and not being used in a trademark sense, i.e. being associated with any goods or services. Of course given this, who would register a well-known trademark as a domain name and do nothing, there always has to be some reason, and that reason would be to either benefit from the goodwill of the well-known mark or to make money by selling the domain name to the mark owner.

 

The mark owner’s rights in these cases vary, if the domain name registrant is actually using the domain name in a trademark sense, i.e. associated with goods or services, mark infringement or dilution are avenues of legal action against the domain name holder, wherein the mark is either used to confuse the consumer as to source or origin of the goods and services, or the mark is blurred or tarnished by the domain name. Please see “infringement and dilution” under “trademarks” for more information. This is called Cyberpirating and allows even a celebrity with a famous name, that is not a traditionally registered trademark to bring an action under dilution.

 

Cybersquatting on the other hand is registering a famous name as a domain name with the only intent of selling the domain name registration to the mark owner of the same of similar name for an unreasonable amount of money, essentially holding the domain name registration for ransom.

 

Cybersquatting was originally a big problem for mark owners as the domain name registrant did not use the domain name in a traditional trademark sense i.e. associated with any goods or services, with traditional trademark law being of little use, as there was no infringement or dilution to speak of.

 

This finally brings us to the Cybersquatting Act, which was narrowly tailored to prevent “bad faith” domain name registrations. The key issue is the bad faith requirement, as opposed to good faith registrations, which are legal. The following are considerations in determining bad faith of the domain name registrant:

 

1. Does the domain name registrant have any trademark rights in the domain name.

 

2. Does the registrant intend to divert consumers from the trademark owner’s official website.

 

3. Does the registrant intend to sell the domain name registration.

 

4. Does the registrant have a past history of acquiring domain name registrations incorporating other’s trademarks.

 

5. The strength of the trademark at issue.

 

Another troublesome issue with domain name registrations is that with existing trademark registrations several users of a given or similar mark can use the mark for different goods and services, or alternatively with common law marks several users can use the same mark in different geographical areas. However, with only one domain name available for a given level, and without the existence of geographic distinctions on the Internet, for a domain name that matches a particular mark, there can be only one domain name. Thus, among multiple like or similar legitimate mark users, there can be only one domain name. One solution is to have the parties strike a compromise on different domain names with disclaimers on each website to prevent confusion.

 

General Guidelines for Domain Name Dispute Resolution

 

Under the most recent ICANN (Internet Corporation for Assigned Names and Number) rules of October 24, 1999 the following summary is given for requirements to initiate the dispute resolution process:

 

1. The registrant originally represented and warranted that to their knowledge the domain name they are registering does not infringe the rights of any third party.

 

2. A dispute arises from the registrant’s domain name being confusingly similar to an existing trademark.

 

3. The registrant has no other rights in the domain name.

 

4. The domain name is registered in bad faith, as partially guided by the aforementioned factors.

Defenses to a bad faith domain name registration are:

 

1. The registrant had a bona fide offering of goods and services associated with the domain name.

 

2. Is the registrant generally known by the domain name, even if there are no trademark rights.

 

3. The registrant is making a legitimate non-commercial or fair use of the domain name with no intent to divert consumers, blur, or tarnish the trademark at issue.

 

Meta tags

Meta tags or search keywords can also cause trademark infringement, wherein a site owner will use others trademarks for Meta tags to improperly direct Internet traffic to their site.

 

Linking and Framing

When website links are made deep into other sites, bypassing the home page that typically identifies the site owner and a “frame” is put on the deep linked page, a misrepresentation can occur as to the origin of the linked content. This can suggest improper sponsorship or affiliation of the original site to the deep linked site and can result in trademark and copyright infringement.

 

Flaming or Electronic Roasting

When gripe sites are created by a disgruntled employee or customer, or even sites from adoring fans of some entity, this can raise dilution issues related to the blurring and tarnishing another’s trademark. One strategy is for mark owners to buy domain name registrations that are profanity or slurs of their own marks or names and then just hold the registrations to prevent others from using them as domain names.