Domain Names and Trademarks

Follow these links for Frequently Asked Questions on the <!--GET FAQLink 9--> (Uniform Domain Name Dispute Resolution Policy) or <!--GET FAQLink 10--> (Anti-cybersquatting Consumer Protection Act).

The quickest way is to use the global lookup tools such as Geektools, SamSpade, or uWhois multi-registrar WHOIS services. These are not authoritative directories, however, because they merely link to the databases of other directory services.

To verify actual registration data of a particular domain name, use the Whois tool hosted by the registry for the top level domain in question. UniNett keeps a list of links to all top level domain registries.

Under federal law (Lanham Act Section 32), an infringer shall be liable in a civil action by the registrant for certain remedies provided in the Act.

One such remedy is an injunction, where a court orders a person who was found to violate the Act to stop its infringing activities.

A trademark owner/registrant may also be able to obtain lost profits or damages against a defendant in a civil action only if the acts were committed with knowledge that such imitation was intended to be used to cause confusion, mistake, or to deceive. The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name.

Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation.

The court can order the cancellation or transfer of a domain registration.

In the case of a willful violation of Lanham Act section 43, a court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of a defendant bearing the registered trademark shall be delivered up and destroyed.

Not all identifying names and phrases can be protected by trademarks. Protection depends on a mark's strength, which is determined by how it is categorized. There are four categories (in descending order of strength):

1. arbitrary
2. suggestive
3. descriptive
4. generic

An arbitrary mark receives the most protection since the name bears no relationship to the product -- it implies imagination and thought. Kodak is an example of an arbitrary mark because the name itself suggests no connection to film or camera equipment. We learn this association only after the name has been used and becomes associated with the source of that product. A descriptive mark receives protection if it has secondary meaning in consumers' minds. A generic mark rarely receives protection because it is naturally associated with something in consumers' minds. An ordinary description is not special enough to warrant protection. However, if consumers connect the mark and its source in a way that would not exist without the mark's use in commerce, then the mark can be protected.

Alphabet letters, initials, abbreviations and acronyms may be entitled to protection if they are so original that they constitute an arbitrary mark (e.g., NICAD for nickel cadium). Otherwise, they may be protected only if they had acquired a secondary meaning which means that consumers have come to recognize the mark and associate the goods with a particular manufacturer (e.g., IBM and BMW).

False or fictitious domain registration information is a basis for finding "bad faith" registration or use of the domain name and this can cause the domain holder to lose his/her domain under the Anticybersquatting Consumer Protection Act (<!--GET CatLink 10-->) and under the Uniform Domain Name Dispute Resolution Procedure (<!--GET CatLink 9-->). See the topic on <!--GET CatLink 13--> for arguments in favor of protecting online anonymity.

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws.

Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic.

The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused.

In .com, .org and .net, which are "open" to any kind of registrant, the policy is first-come, first-served, as long as you have registered and used the domain name in good faith or have legitimate interests in the domain name. However, you have no right to violate trademark law, or ignore your Registration Agreement, or engage in cybersquatting just because you registered the name first.

Furthermore, in the newer domains such as .biz and .name, there are additional registration requirements that must be met because some of these domains are restricted. Trademark owners may also have advance registration rights. Check individual registry requirements. See list of generic top-level domain registries at http://www.internic.net/faqs/new-tlds.html.

Intellectual property refers to the rights one has in the product of one's intellect. This includes copyright (rights in creative expression)and patents (rights in inventions, discoveries, methods, compositions of matter, etc.) which are granted by article I, section 8 clause 8 of the US Constitution which gives Congress the power to "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

Related rights include trademark (rights in the names one uses to identify one's goods and services), trade secret (confidential business practices), unfair trade practice, passing off, trade libel, false advertising, misappropriation. Laws protecting most of these rights exist at both the state and federal level. "Proprietary rights" is just a general term meaning "one's own rights."

No. Even if the Trademark Examiner refuses registration of a mark on the grounds of likelihood of confusion, that does not mean use of the term infringes a trademark. Only a court can rule as a factual matter that the likelihood of confusion amounts to trademark infringement.

A domain name is a name associated with a particular computer online. In the domain name www.lumendatabase.org, .org is the top-level domain ("TLD"), lumendatabase is the second-level domain name, and www is a subdomain. Domain names are looked up on name servers in the DNS hierarchy to resolve them to numerical IP addresses.

A domain name registration, like a telephone directory listing, is simply a service by which the domain registry agrees to list your domain name and the corresponding IP address in its domain zone file (such as the .com zone file). The routers that forward data bits around the Internet must consult these zone files to know which machine you're using. If the registry removes the domain name from the zone file, then routers (and users) will not be able to address mail or see your website if they use your domain name. They can, however, still reach you by using your IP address.

There are over 250 top level domains (like .com, .us and .uk). Each has its own procedures for handling registrations and trademark disputes.

WHOIS is a searchable database maintained by registries and registrars that contains information about domain name registrations in the com, net, org, edu, and ISO 3166 country code top-level domains. Also, the protocol, or set of rules, that describes the application used to access the database.

Registrants involved in malfeasance will often provide false information for their listings on WHOIS. So will registrants concerned with privacy who do not wish to make their home addresses, telephone numbers, or email addresses public.

A person can gain rights in a trademark merely by using it. If the mark is not an outright adoption of the original mark, but merely close enough to it so that the question as to whether or not the first mark has been infringed is no longer an open-and-shut issue, the second user can sometimes get rights in the mark just because the second user used the mark, and the first user never objected to it. This is called the "unchallenged use" doctrine. If your site has been up and running for a while, and there has been a significant length of time between you using the mark and them contacting you about it, that can be a powerful argument in your favor that in fact your use of the mark does not infringe theirs. For this reason, a Cease and Desist letter will often have a statement in it to the effect of "We found about about what you are doing as soon as was reasonable."