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Protecting Your Trademark or Service Mark From Infringing Domain Names

Written by: Mark A. Wright

September 9, 1999

In today's economy, an Internet website has become an essential element of a company's advertising and marketing strategy. Whether a website is a success may depend in large part on the accessibility of its Internet address, otherwise known as the domain name. Consumers browsing the web typically look for company websites by entering the name of the company ("abccompany.com"), often assuming that the company's domain name will mirror its corporate name. Such intuitive domain names can be extremely valuable assets to a company.

So what happens if someone else registers your trademark as a domain name? Courts are increasingly faced with this question as businesses race to establish websites and find that their trademarks have been taken. In response, there is a rapidly growing body of law which recognizes trademark rights in cyberspace based on traditional principles of trademark dilution and infringement.

Courts have been quick to denounce efforts by cybersquatters that have registered existing trademarks as domain names and then attempted to extort payment from the rightful trademark owner for the domain name. In Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), the Ninth Circuit Court of Appeals considered whether Dennis Toeppen violated trademark law and California laws prohibiting unfair competition when he registered the domain names "Panavision.com" and "Panaflex.com," both registered trademarks of Panavision, and then attempted to sell the domain names to Panavision. (Toeppen had also registered domain names for other companies such as Delta Airlines, Neiman Marcus and Eddie Bauer.). The Court found that by registering "panavision.com" and "panaflex.com," Toeppen had diluted the "Panavision" and "Panaflex" trademarks by diminishing "the capacity of the Panavision marks to identify and distinguish Panavision's goods and services on the Internet." The Court observed that "potential customers of Panavision will be discouraged if they cannot find its web page by typing in 'Panavision.com,' but instead are forced to wade through hundreds of websites." The Court sent a clear message in Panavision - cybersquatting is unlawful - and provided trademark owners with a strong remedy in the form of a claim for dilution.

Trademark owners may also bring claims of trademark infringement against those who use domain names that are similar or identical to their trademarks. A claim for trademark infringement may be possible when a domain name is so similar to the trademark that it is likely to confuse consumers about the source of the products or services sold under the trademark. Whether the domain name will likely cause confusion - and thus infringe your trademark - is based on the following eight factors:

  1. Similarity of the domain name and the trademark;
  2. Relatedness or proximity of the two companies' products or services;
  3. Strength of the trademark in question (e.g., is it fanciful, arbitrary, or descriptive);
  4. Marketing channels used to sell the products or services in question;
  5. Degree of care likely to be exercised by purchasers in selecting goods;
  6. Intent of the alleged infringer in selecting the domain name;
  7. Evidence of actual confusion between the domain name and the trademark; and
  8. 8. Likelihood of expansion in product lines.

Courts applying these eight factors have found that many domain names infringe valid trademarks, and have prohibited further use of the domain name. For example, in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), the Court held that West Coast's use of the domain name "moviebuff.com" infringed Brookfield's registered trademark "MovieBuff." The Court applied the eight factor test, and found many of the factors favored Brookfield's claim that the domain name would likely be confused with its trademark. Specifically, the Court found that Brookfield's mark had been infringed since "moviebuff.com" and "MovieBuff" were similar in sound, appearance and meaning; Brookfield and West Coast both offered products and services relating to the entertainment industry generally and their principal lines of business both related to movies; both companies advertised their products and services over the Internet, and thus confusion could result among consumers; and, finally, that Brookfield's trademark, "MovieBuff," was a suggestive trademark and thus entitled to protection. Since Brookfield successfully demonstrated likelihood of confusion, the Court prohibited West Coast from using the domain name "moviebuff.com." Other examples of domain names that have been found to infringe trademarks include the following: "energyplace.com" infringed "Energy Place"; "post-it.com" infringed "Post-It"; "plannedparenthood.com" infringed "Planned Parenthood"; and "washingtonspeakers.com" and "washington-speakers.com" infringed trademark "Washington Speakers Bureau." Based on this growing body of law, trademark owners can prohibit use of domain names that infringe their valuable trademarks.

There are also administrative remedies available to attack infringing domain names. Network Solutions, which registers domain names, enforces a Domain Name Dispute Policy. Through this Policy, Network Solutions will place a domain name on "hold" where the domain name infringes a federally registered trademark that is identical to the domain name in question. Once on hold, the domain name is no longer available for use by the infringer.

In sum, should you discover that your company's trademark has been converted into a domain name, your legal remedies may be substantial. You may be able to prohibit use of the domain name through claims of trademark dilution and trademark infringement, as well as disable the registration of the name itself through administrative channels. Consult with an intellectual property attorney to help you evaluate your potential claims and remedies.

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