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Domain Games: Trademark Protection in the Digital Age

Author: Braden Wayne

Trademarks are critical to a company’s success. And while registration of a trademark affords a company significant protections against infringement from third parties and competitors, it does not protect against every unauthorized use of the trademark. The internet, as a forum for consumer complaints and cyberbullying, has become ground zero in the battle between trademark protection and fair use of trademarks.

The unauthorized use of a trademark or likeness in a domain name is referred to as cybersquatting and is generally prohibited where it can be shown that the cybersquatter has the intent of profiting from the use of the trademark. One particular manifestation that continues to hinder businesses is the “gripe site” – where an angry consumer registers a domain name that incorporates a business’s trademark along with a pejorative or provocative term before or after the trademark. This is generally allowed, although anti-cybersquatting legislation codified in 15 U.S. Code § 1125(d) prohibits the use of another’s trademark with the intent to profit from the use of the mark. The statute provides a private cause of action for trademark owner’s harmed by such bad faith use of their mark. Alternatively, a victim of cybersquatting can use the international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN) to mandate cancellation of the infringing domain name or transfer of the domain name to the trademark owner.

Both remedial strategies generally revolve around three showings: (1) the domain name in question is identical or confusingly similar to the registered trademark, (2) the registrant of the infringing domain has no legitimate rights or interests in using the domain name, and (3) the totality of the circumstances suggest bad faith use of the trademark. Due to the fact intensive nature of these cases and the delicate nature of free speech, a clear line has not been drawn as to what actions constitute cybersquatting in gripe cases. However, overall evidence of bad faith and deception has been consistently found in the following circumstances:

  • where there is an intent to seek profit from a registered party’s trademark;
  • where there is registration of multiple domain names using the protected mark;
  • where no prior use of the domain name in connection with the bona fide offering of goods or services in commerce;
  • where insertion of a single descriptor is meant to cause confusion to ordinary customers;
  • where use of a mark dilutes a company’s goodwill; and
  • where slight alterations to the domain are used to exploit typographical errors of consumers trying to reach the business’s website.
For the most part, courts and arbitrators favor trademark holders, siding with unauthorized users only when there is no clear commercial purpose. Such protected uses are typically for websites that focus on consumer commentary and criticism rather than commercial gain.