• Protecting Your Trademark Rights in a Domain Name
  • April 30, 2003 | Authors: Kristan B. Burch; Stephen E. Noona; Stephen E. Story
  • Law Firm: Kaufman & Canoles A Professional Corporation - Norfolk Office
  • Beyond the traditional avenues for enforcement of trademark rights -- actions for infringement, unfair competition or trademark dilution -- two primary mechanisms for resolution of domain name disputes have developed, the Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP).

    The ACPA was enacted on November 29, 1999 and provides trademark owners with a civil remedy against "cybersquatting," whereby a court can order the cancellation or transfer of an offending domain name and also allow trademark owners to recover statutory damages up to $100,000. The ACPA applies to those persons who register, traffic in, or use, with a bad-faith intent to profit, a domain name that is identical or confusingly similar to another party's trademark. The central issue in ACPA litigation is the determination of "bad faith." The ACPA sets forth nine factors to be considered in the bad faith determination, including the registrant's legitimate rights in the name; non-confusingly similar uses; attempts to sell for profit; fraudulent registration information; other registrations held; and the distinctiveness of the trademark at issue. Thus, even if you own a federal trademark registration for a mark, it may be that you cannot obtain the transfer of a domain name that includes such a mark if bad faith cannot be shown.

    Separately, the Internet Corporation for Assigned Names and Numbers (ICANN) instituted the UDRP, which is an administrative dispute resolution process to which all domain name registration services, such as Network Solutions, are bound. The UDRP was instituted in late 1999 and allows for quick proceedings for the cancellation or transfer of offending domain names where it is shown that the registrant has no legitimate rights to the mark used within the domain name and the domain name has been registered and is being used in bad faith.

    Thus, the ACPA and UDRP mainly deal with a situation in which a domain name has been registered in bad faith. This leaves an entire universe of domain name disputes that are not readily resolved by either of these avenues. Most common is the situation where multiple users can obtain trademark rights in the same mark but for different goods or services, and because there can be only one domain name, certain trademark owners may be dismayed to learn they cannot obtain the domain name which matches their valuable trademark.

    It makes good sense for businesses to "register early and often" to avoid many of the pratfalls that await the unsuspecting. By registering within the available "top level" domain names (.org, .com, .net) for your business's trademark (or your intended marks), as well as related variations thereof, you may ultimately end up with the desired exclusivity of your preferred domain name and save substantial inconvenience and attorneys' fees. The costs are relatively minor (registration of a domain name costs approximately $35 per year), in comparison to the legal fees that can be incurred in enforcing your rights after the fact.