Domain names on the internet are creating problems for trademark owners who do not own the domain name for their trademarked name. Trademark law gives a person the exclusive rights to use a particular name. The general purpose of trademark law is to prevent one person from passing off his goods or business as the goods or business of another. 47 AMJUR POF 2d 643. Domain name owners that do not have any connection to the trademarked name are causing exactly the opposite of what trademark law is supposed to protect. Website names are being purchased because of the popularity of the name and the likelihood that that name will draw people to the website. The problem is that when the website appears with goods or services that the trademarked name is not associated with then the true trademark owner is losing the strength and recognition of his trademarked name.
Cybersquatting is the term used to describe this trend on the internet. A person willdraw people to their own website for personal gain by utilizing another person or company’s trademark. Cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. http://www.nolo.com/legal-encyclopedia/article-29778.html.It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses. nolo. Cybersquatting originated with regular URLs but expanded within the last year when the popular website Facebook began allowing users to purchase their Facebook URL and put their name within it. law. Previously, Facebook web addresses only consisted of numbers so it was not a problem. Now, the name in the URL is a real name and cybersquatters looking for an advantage are using well known names to draw people to their page which are taking away from the exclusivity that a trademark is supposed to provide.
Courts are now aware of the problems that many domain names are creating for trademark owners and are ruling on cases to set precedent that will stop trademark infringement by domain names, Facebook URLs, and other internet mediums that cause the same problem through similar concepts. For famous trademarks that are well known and distinctive the Trademark Dilution Revision Act of 2006 provides protection. Its purpose is to protect trademark names and symbols from being used in commerce that causes false or misleading representations of fact. It’s main goal is to stop cybersquatting that causes confusion over an association of a person or symbol that misrepresents the nature, characteristics, qualities, or geographic origin of another person’s goods, services, or commercial activities. 15 U.S.C.A. § 1125 15 U.S.C.A. § 1125. Trademark owners are permitted to forbid others from using that mark in a way that would lessen its uniqueness. In Panavision International v. Toeppen, the defendant purchased the domain name panavision.com and began using it to show real views of his neighborhood instead of the products that Panavision carried. Panavision International v. Toeppen, 945 F.Supp. 1296. When Panavision discovered this and asked for their domain name the defendant refused and said that Panavision could give him $13,000 to purchase the name from him. Id. The court ruled in favor of Panavision saying that Toeppen’s use of panavision.com was improper because the Panavision marks are famous, his use was a commercial use of the mark, his use through the domain name diluted the mark, and it interfered with Panavision’s potential business advantage. Id. Through trademark dilution, courts are likely to rule in the trademark owner’s favor against cybersquatters stealing trademarks for domain names or Facebok URLs.
For less famous marks trademark owners may have more difficulty having their name protected from being used as a domain name or Facebook URL by a nonassociated person. There have been instances where companies will pay search engines to have specific keywords bring the searchers to their website. Even if the keywords are trademark names, there is no trademark infringement if the word is descriptive or a common word in the English language because you cannot do a search with a trademark behind it. Playboy Enterprises, Inc. v. Netscape Communication Corp., 55 F.Supp.2d 1070. Trademark dilution is not an answer in these situations either because the words may not be famous or they may not dilute the association between the trademark and what it represents. Id. In Playboy Enterprises, Inc. v. Netscape Communication Corp., advertisers paid the search engine to have their website come up when “playboy” or “playmate” was entered into the search box. Id. Playboy® said that their mark had been infringed upon and diluted. Id. The court disagreed and ruled in Netscape’s favor holding that the plaintiff failed to show that the defendant used the trademark in interstate commerce, “playboy” and “playmate” were common English language words, that the necessary likelihood of confusion was not shown, no trademark dilution was shown, defendants’ use of search words were protected by the First Amendment, and the doctrine of fair use covered defendants’ utilization of words. Id. A search engine is not the same as a domain name or Facebook URL but if future rulings follow this example for words that are considered common words when they are used in domain names or Facebook URLs, trademark owners could possibly struggle more to succeed in a trademark infringement suit.
Trademark law in the area of domain names and Facebook still has much farther to go until there are more definite answers. It does seem that courts are trying to protect trademark owners in these situations as they arise. As a preventative measure, the best thing a trademark owner can do at this point is make sure that they personally own the domain name and Facebook URL for their trademark so that no one else can take advantage of their mark. Navigating this new area of law only goes to reemphasize the need to have an informed and competent attorney on your side.
by Angelica Campanaro, legal extern