Trademarks in the cyber world

Can domain names be registered as trademarks?

Yes, if they otherwise qualify as marks. To qualify as a mark the domain name must be more than an internet address. The domain name must be used to identify the goods or services (provided via the internet) of the mark owner. The name must be used in advertising and marketing so that it is used by a consumer to identify the source of the goods or services. Popular examples might be Priceline.com or Amazon.com.

When choosing a domain name that you may wish to trademark, it is best to select unique names. Descriptive or non–unique marks are more difficult to register.

Can my domain name infringe someone else’s trademark?

Yes. If someone else has registered a mark that is similar to your domain name and claims that (1) your domain name has the potential of confusing the public as to the origin of the products/services and (2) creates an implication that the mark’s holder is somehow involved with your website. Another claim that may be made with “famous” marks is that your website dilutes the value of their registered mark.

If I register a domain name first, don’t I get first rights in the domain name?

Not always. A trademark owner may be able to successfully prevent your use of that domain name.

Is it enough that I disclaim any connection with the trademark owner or my webpage?

It is unclear. The test is likelihood of confusion, but the decisions have many diverse outcomes. Some courts recognize different genres of consumer confusion: point of sale confusion, initial interest confusion, investor confusion and post–sale confusion.

It appears that a potential infringement claim may exist even if the consumer’s confusion is eventually dissipated before a sale is made and thus, a disclaimer may not be a sufficient defense. If a consumer is initially confused and drawn to the junior user believing it was the senior user’s website the courts may find a type of “bait and switch” of the manufacturers/distributors that impermissibly allows a junior user to get a “foot in the door” by confusing consumers.

Some courts have found that internet users are more easily confused than consumers at “brick and mortar” stores because of the mere “one click” to enter the website. Yet other courts have found that internet users are “inured to false starts and excursions” and if consumers immediately recognize they have not reached the site they were looking for, they click on other sites in their search results.

Why register my mark?

If you want to protect it in the cyberworld, it is one factor that will be considered in the analysis of whether there was bad faith. Bad faith under the UDRP means:

  1. Domain name acquired primarily for the purpose of selling or renting it to a trademark owner or competitor (cyber squatting), or
  2. Domain name registered to prevent trademark owner from protecting trademark as a domain name (blocking), or
  3. adopting a domain name to disrupt a competitor’s business, or
  4. intentionally attempting to confuse consumers to go to your website.

The domain name owner can defend itself by showing that it has legitimate rights to use the domain.

If I register my mark, do I really need to also register a domain name mark?

If a trademark owner does not aggressively protect its rights in the mark, allowing others to infringe upon or dilute the mark, it risks losing the mark through abandonment. Trademark owners have an increasing burden to protect their mark in the cyber world lic. with so many top level domains “.com”, “.net”, “.gov”, “.edu” “.biz”, “.info”, etc. Domain name registrations may be challenged under federal trademark law in federal court or under UDRP in arbitration hearings. Each of these forums differs in terms of cost, speed, jurisdictional issues, effectiveness of remedies, and relief.

Proactive approaches include preemptive registration of all possible combinations of your mark as a top level domain.

We can complain about the equities and inequities of the current legal system, but it won’t change the reality of the legal landscape. It is prudent to recognize the reality and govern your conduct accordingly.

What are meta tags?

Meta tags can be the difference between your website being unknown in cyberspace or searchable by search engines. Meta tags are html tags that insert text onto an html (web) page that is not visible to the user viewing the page through a browser (Netscape, Mozilla FireFox,) but provides information that describes the content of the webpages. The meta tags were intended as a way for web crawlers to index websites. In other words, they were intended to help browsers to identify key content on a website and optimize searching capabilities for the user and access for the website owner. However, meta tags quickly became unreliable as they were used to “spam” and trick web crawlers into thinking the page was relevant to a search request.

There are many types of meta tags: abstract, author, copyright, description, distribution, expires, keyword, language, refresh, revisit, robots and the like. The use of meta tags may be a practice of the past, but it is instructive to understand their interplay with trademark law. Where a meta tag diverts traffic from a website owned by a registered trademark owner, it may infringing on the trademark.

Use of Key Words in Websites

Website owners, web designers and search engine placement firms should have written agreements that assign risk and responsibility for keyword creation and placement. The website developer or owner may become a defendant in an infringement action.

Mark owners may claim that use of their mark by the alleged infringer as a key work diverts traffic from the mark owner’s website to the alleged infringer’s site. A related claim is consumer confusion as to whether the alleged infringer’s site is related to the mark owner’s site.

The law is still developing in this area and the direction is not always predictable. The cases provide guidance about what may or may not be held infringing. For example, courts found that pop–up ads that used trademarks in the directories that determine when such pop–up would “launch” were not an infringing use.

In another case, a former Playboy playmate who used the terms “Playboy” and “Playmate” in her meta tags was found not to be infringing those marks since she was actually a Playmate and her site contained an express disclaimer that it was not endorsed by Playboy magazine. In short, the court found no consumer confusion. Be aware, however, that other courts may have ruled differently.

Complaints Under Uniform Domain Name Dispute Resolution Policy (UDRP)

A complaint under UDRP alleges that the domain registrant has no legitimate interest in the domain because the domain infringes the trademark of the complainant. The registrant may rebut the allegations by showing that, without prior notice that the use of the domain was contested,:

  1. The use on preparation for use was in connection with a bona fide offering of goods or services, or
  2. The registrant has been commonly known by the domain name even if no trademark rights have been acquired, or
  3. The registrant is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the mark.