Domain Names

Domain Names

The Internet is an integral part of most clients' business models, and quality legal representation in areas of electronic content and domain name protections is a critical need.

Domain name governance arises out of several doctrines of law, including the United States "anti-cybersquatting" statutes, the World Intellectual Property Organization rules, the Uniform Dispute Resolution Policy ("UDRP"), and rules established under the Internet Corporation for Assigned Names and Numbers ("ICANN"). Domain name protection works hand-in-hand with trademark protection. Under the Lanham Act, trademark holders have a cause of action against anyone who, with a bad faith intent to profit from the goodwill of another's trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to a distinctive mark, or dilutive of a famous mark, without regard to the goods or services of the parties.

The following factors are considered in determining whether a domain name has been registered in bad faith:

  • If the registrant has any trademark or other intellectual property rights in the name;
  • If this is the legal or nickname of the registrant;
  • The registrant's prior use of the domain name in connection with the good faith offering of goods and services;
  • Lawful noncommercial or fair use of the mark in a web site under the domain name;
  • Intent to divert to a site that could harm the trademark owner's goodwill - either for commercial gain or with intent to tarnish by creating likelihood of confusion as to source, sponsorship or affiliation, or endorsement of the site;
  • Offer to sell the domain name without having used, or having an intent to use, it in the bona fide offering of goods or services, or a prior pattern of such conduct;
  • Intentional provision of misleading contact information in the domain name registration application or the history of such conduct;
  • Warehousing of multiple domain names known to be identical or confusingly similar to distinctive marks or dilutive of famous marks, without regard to the goods or services of the parties;
  • The extent to which a mark is distinctive or famous.

In addition to traditional trademark remedies, plaintiffs may elect statutory damages ranging from $1,000 to $100,000 per domain name. Anti-Cybersquatting Piracy Act (ACPA); Lanham Act.§ 43(d); 15 U.S.C. §1125(d).

McHale | Slavin regularly represents clients in the quasi-judicial arbitration actions established for the redress of domain name conflicts. Under typical circumstances, owners of trademarks and personal names are entitled to bring suit against parties who register, traffic in, or use a domain name that is identical or confusingly similar to the trademark or personal name with a bad faith intention to profit from that mark or name. Persons who have been victimized by bad-faith opportunists that register domain names with the intent of profiting from, or diverting consumers from, the authentic source represented by a given trademark, need legal counsel specializing in this constantly evolving area of law. Contact us for additional information or to schedule a consultation.