Domain Names and Trademark Legal Issues

First session! Joe Laratro is moderating this session with speakers John W. Dozier, Jr., Esq., Dozier Internet Law, P.C. and Clarke Walton, Walton Law Firm. Thank heavens for that coffee because I’d be in trouble otherwise. When it comes to legal stuff, my brain doesn’t compute. But hey, it follows nicely on the keynote, right? Right. Stephen Sturgeon got snowed in and couldn’t make it.

Clarke Walton starts us off because it’s his hometown. He’s going to be sharing some basics about internet law and then going over a case study.

Three things to get from this presentation:

  • Differences between UDRP and ACPA.
  • Register your trademark and stay away from the trademarks of others.
  • You can’t hide — Domain privacy services won’t protect you.

UDRP is the Uniform Domain Name Dispute Resolution Policy. It was enacted in 1999 and was created by ICANN to help resolve domain name disputes. It’s a binding form of arbitration. Less formal. Benefits: fast (30-60 days), works well internationally, has a fixed cost– filing fee is less than 1500 and the attorney fees are 2500-5000. Downside: all you get back it the domain name, no damages or fees.

ACPA is the Anti-cybersquatting Consumer Protect Act. Also from 1999, it’s part of copyright law. It’s federal court, very formal. Benefits: Get domain name, recover damages (up to 100000 per domain name), recover court costs and attorney fees. Allows for temporary restraining orders and preliminary injunctions to protect the domain. Downsides: takes long and is much more expensive.

Three likely outcomes with ACPA: Settlements (80-90 percent of the time), Default Judgement (10-20 percent) and a verdict at trial (less then 1 percent of the time.)

He goes into the case study on PartnerWeekly to recover PartnersWeekly (note the S). I’ll hit the highlights: You need to have something to prove trademark. File early so that you have something to prove if you need to.

Step one: Cease and Desist letters. It’s cheap and fairly quick.
Step two: Choose between UDRP and ACPA. They went ACPA for the temporary restraining order protection and the chance to recover damages.
Step three: File for restraining order, temporary injunctions.
Step four: Serve the defendant with the suit. This can be difficult for slippery people. If all else fails, you can take out a print advertisement in the classified section in order to serve the summons. (Takes five weeks of publication)
Step five: Ask for what you want out of it.

Took 6 months from start to finish. Be aware that other domain names can be at risk as assets in a judgment.

John Dozier Jr is next. He says that if you use the UDRP again a big company and you win, you’re probably going to find yourself in court. Awesome.

His first helps people protect their domain portfolios. He’s going to give ideas on monetizing other trademarks. Um. He mentions that it’s risky and some people might not be comfortable with it.

When you acquire a domain name that is the trademark of a company, it doesn’t mean you can’t use that domain. Unless they’re famous (Coca-Cola), they only have rights in their industry. Caesar’s Palace might not be able to stop you from opening a non-gambling/hotel/entertainment related business.

You can’t lose a UDRP or lawsuit if you have a legitimate interest in the domain name. So savvy domainers grab a close but not exact name to a trademark and then look at ways of establishing rights to it. After long enough, you can establish a common law trademark. The shorter version is the registration of a trademark but it still takes a long time. You can get your trademark in a state trademark or international trademark. State trademarks can take less than 30 days. Once it’s registered, you can go to the search engines and ask them to protect it from bidding.

Build your business up for a while before you go head to head with a trademark holder.

AdSense on a parked domain names–you don’t choose the ads so your close to someone else’s trademark might show their competitors. If you’ve established rights to that name, you have a strong argument that your parked site isn’t infringing.

The third exception is that you can protect domain names under the freedom of speech part of the constitution. Instead of monetizing it, you can use it to voice an opinion about a company or set up a forum. Depending on the arbitrator (UDRP), you could win or lose, depending on how they interpret free speech. Why do this? At some point the owner of the close trademark is going to want your site. Hopefully you can come to a mutual beneficial solution.

International issues: Who gets precedence? Where do you file? What happens if something is trademarked in another country but not the one you filed for a trademark in?

Final point: Demand letters you’d like to think are the first step to dealing with it. When you send a demand letter to someone, you’re inviting that person to take some steps so that you’ll never get the domain name. You’re giving them an early warning. They’ll transfer it away to someone else–you can’t prove bad faith on the new owner so you’ll never win. He doesn’t suggest that you not send cease and desists but he does say that his firm doesn’t usually send them. [Has anyone else seen the Legally Blonde musical? I’ve got one of the songs in my head now. Lisa, stop making that face.]

Joe wants to know which side each represents:
Clarke: Defense cases are more fun but he does about half and half.
John: We represent more domainers than businesses (more defense.)

Is time relative if a domainer sets up a domain before a business registers their trademark

Clarke: yes. Let’s say someone registers (he picked it because he figured no one had it. Guess he’s not a World Cup fan.) Later you want to start this business Zizu. After you build up the business, you want the domain but the law says, no, you can’t have it.

John: You see it in mergers a lot. So people buy both domains and then once the merger goes through, they’re a new business and someone else has the domains.

Should you be looking for someone to register so you can prevent it?

Clarke: Trademark rights are the first user in commerce. If they’re already using it or have an intent to use filing, it’s too late. (Adsense counts as commerce.) You can only protect it for the class of goods and services that you’re using it in.

John: If you buy a domain name and someone else launches a business, you’re a lucky guy. They can’t get your domain name. There’s also something called trademark infringement. You might own the rights to the domain but they can still sue you for trademark infringement.

Clarke: Let’s say you’re going to use for apparel and starts doing apparel first, you can’t use .com for apparel or their trademark will be infringed even if you owned first. You can still use for something else.

Do we file the suit in our city or where the domainer might be?

Clarke: Depends on the case. I got jurisdiction because it was an active web site but if it’s passive you might have to go to them. If they’re not in the US, it might make more sense to file UDRP proceeding.

John: Some grant jurisdiction on a tort. Other states don’t.

Trademarked 1997 in Arizona, someone else filed in Federal after him. is he in trouble?

Clarke: I think state trademarks are worthless. Not worth the paper they’re printed on. They don’t go through any examination. In Federal, so long as you’ve been using it longer, you can file a petition to cancel their registration because you’ve established common law rights.

Is there a difference from Google’s standpoint on state vs federal trademarks?
John: as of last week, no, they don’t. They might now that they’ve heard this.
Clarke: Google does pay attention to state registration. They’ll listen to a common law arguments too. I think they’re going in the direction of Federal trademarks. (Gets that per a speech from Google’s general counsel last year.)
John: Google doesn’t understand how complicated it is yet.
What about

Clarke: Totally protected in the US. Don’t monetize. If it’s just a gripe site, you’re okay.
John: If you can prove economic motivation, you might not get free speech. Economic motivation could be a refund even. 90% of gripe sites aren’t legitimate. They have economic motive.
Clarke: Adsense on the site? You definitely have a problem.

Can personal names be trademarks?

Clarke: They can, it’s hard but they can. All the same rules apply if it does happen.
John: Yes, you can buy people’s names. California has very very broad protections on this, you have to be careful. But Springsteen lost his case in the 1990s.

What if your name is more generic like

Clarke: Trademarks have different levels of strength. Fanciful are the strongest. Generic are the weakest. Descriptive and suggestive like Chairfinders are in the middle and harder to protect. Depends how much you’ve put into the brand.
John: You might think it’s fanciful here in the US but it might be a word in another language and you’ll never know it. Be careful of that.

What’s the registrar’s role?

John: the best are going to stay out of any situations that are disputable.
(from the audience, Registrars are not supposed to play judge or jury. We’re supposed to follow protocol and procedure. We put disputed names that we’ve been notified on in a special category. If there’s illegal activity and spam, then we can do something.)

Is it either or with UDRP or ACPA?

Clarke: You can appeal UDRP with a federal

Clarke: Not trademarked. They’re never going to get it.

if they had?


John: what you’re really asking is how close can you get to a trademark without a problem? No one knows really. You just know it when you see it. Let’s assume got it. Could you get Hotelsss? Maybe not. Maybe.

Do the judges understand the nuances of internet law?

Clarke: In Nevada, they really do because of the casinos. But it depends on what jurisdiction you’re in.
John: The judges can handle the law, it depends on understanding the facts. So they turn to their internet savvy first year law clerks. Be careful where you’re bringing your lawsuit.

I published my book on my Web site and then I took it down later. Someone else has it up with someone else’s name

Clarke: Sounds like a copyright problem. The best solution is probably a DMCA takedown notice. Section 5.12F.

Basic tips? Should we register misspellings?

John: There are articles on our Web site. Misspellings, also all possible spellings of your company names, dashes, underscores. Then all your negatives YourCompanySucks, etc.
Clarke: Check your log files and buy the domain names that match how people are finding you. Especially misspellings. Also .com, .net, .org.
John: I think you should go deeper. Used to be .biz and .info were spammer TLDs but not so much anymore.

Can a third party buy a domain name that was established BEFORE it became someone else’s trademark and have that protection?

Basically they agree that they can if it’s done properly.
Clarke: Bad faith could apply to the third party.
John: I think there’s an argument that equity could be built up and transferred.

(There is a lady behind me who is WAY excited by this question. She’s practically at ‘Preach it, brother!’ stage.)

Can you sue again if you’ve gone to court once and lost? (as per Springsteen)

John and Clarke both think Bruce Springsteen could sue because his first case was a UDRP proceeding.

Susan Esparza is former managing editor at Bruce Clay Inc., and has written extensively for clients and internal publications. Along with Bruce Clay, she is co-author of the first edition of Search Engine Optimization All-in-One Desk Reference For Dummies.

See Susan's author page for links to connect on social media.

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One Reply to “Domain Names and Trademark Legal Issues”

This is a great summary of some very key issues in Internet and trademark law. Thanks for the primer!


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