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Our law firm receives a lot of calls from people and companies who are being threatened with an Anti-Cyber Squatting Consumer Protection Act claim because they registered a domain name identical or similar to a trademark held by someone else. Inevitably, we hear the words “Network Solutions allowed me to register the domain, so there is no way someone can say that I did anything wrong.”

Of course, Network Solutions and the other registrars do little to ensure that a person registering a domain has legal right to do so. In reality, the responsibility of ensuring that you do have a legal right to the domain is in your own hands. About the only thing registrars do is make each person who purchases a domain affirm that they are not interfering with some else’s legitimate trademark rights. Simply having the ability to register the domain is no reflection of your legal right to it, and it doesn’t mean that you won’t get sued for having done so under federal law.

The ACPA is a federal law that took effect in November 1999, in order to preclude bad faith registration of domain names. This new domain name dispute law is intended to give trademark and service mark owners legal remedies against defendants who obtain domain names “in bad faith” that are identical or confusingly similar to a trademark or service mark.

When it comes to litigation under the ACPA (cases like these are commonly referred to as “cyber-squatting”) plaintiff must prove that defendant has a bad faith intent to profit from the mark that is identical or confusingly similar or dilutes plaintiff’s mark. The key element in any case is the “bad faith” intent on the side of the defendant, who intended to profit from the mark.”

What this means for the “good faith” registrants, is that merely registering the domain, and keeping it non-commercial, will make it very difficult, if not impossible, for plaintiff to prove bad faith and have the domain transferred. Typically, intent to profit is shown by the use of the domain as a commercial site which sells goods or services. For an alleged domain violator who does not develop a website, bad faith intent to profit is often shown when the defendant tries to sell the domain name to the trademark holder. Any transfer of the domain for consideration will typically satisfy the profit test.

Another bad faith factor is if the registrant provides false contact information to the registrar or fails to maintain correct contact information moving forward. Because of this bad faith factor, it is important for all domain name owners to check their domain registrations regularly in the Who’s database to determine if their contact information is correct.

If you should decide to file an ACPA lawsuit, you have a variety of remedies which are available to you under the act. The most important one is potential forfeiture or cancellation of the domain name or transfer of the domain name to the plaintiff. In lieu of actual damages, the plaintiff may elect statutory damages and has discretion to award between $1,000 and $100,000 in damages for bad faith registration. Attorney’s fees are also available for a bad faith registration.

Sometimes, the domain owner cannot be found or served with a Summons and Complaint because they have provided false information or are not located within the United States. In these instances, a trademark owner may bring in “In Rem” action against the domain name in the judicial district in which the domain name registrar, domain name registry or other domain name authority that registered or assigned the domain name is located. Money damages are not available in an “In Rem” lawsuit. Typically, the trademark owner is more focused at having the domain name transferred to them than received damages.

One recent Sixth Circuit Court of Appeals case, Interactive Products, Corporation v. A2Z Mobile Office, No. 01-3590 (6th Cir., April 10, 2003), was not good news for trademark holders in our jurisdiction. The Court held that the “post-domain path of a URL (the sub-file directory). . . does not typically signify source (of goods or services). The post-domain path merely shows how the website’s data is organized within the host computer files.”

Accordingly, the Sixth Circuit held that the presence of plaintiff’s trademark in the path of the domain name of a competitor was unlikely to cause consumer confusion, and not a breach of their rights. Interestingly, the Court reached this result even though the defendant, A2Z, was selling competing products. While this is a step away from the rights of the trademark registrant, it should be noted that the Circuit Court did not exempt the use of another’s trademark in the top-level domain, the website itself or the meta tags, from ACPA liability.

Each ACPA case turns on the particular facts presented. It should also be noted that the Interactive Products plaintiff did not present any evidence that the presence of its trademark in the post-domain path caused actual confusion or was likely to cause consumer confusion. If such evidence existed and was presented, the outcome could have been different. The ACPA in an important weapon for trademark holders in protecting their intellectual property in the online world. If you do not protect your trademarks, you may lose rights in those marks altogether. Besides, if you don’t protect your marks, who will?

I started buying and selling domain names in 1995. Domain speculation began sometime in 1994. I did appraisals and was one of the biggest advocates for registering generic domain names rather than made-up names or those that violated trademarks.
I made a good income from my domains because I did not just sell domain names, I sold domain names that had a business plan and a website while others were just trying to sell their domain names with no traffic, no business plan and no website.
Today many are still doing it that way. Although now they park them at SEDO or Go Daddy or somewhere to try to make adsense revenue while they list them for sale. So my background in domain names is good enough that I can dispel a few myths.
First TLD stands for Top Level Domain. .COM, .NET, .ORG are all examples of TLDs. The domain name most people refer to is what goes before the dot. The TLD is what comes after the dot.These are some Common Myths about Domain Names;.TV is for television or multimedia websites. Pure myth. Any domain name in any TLD can work for television, video, or multimedia. The TLD .TV does not give you any special tools for creating multimedia-rich content. .TV does not stand for television. It is the ccTLD or country-code TLD for Tuvalu Island. An island in the pacific that had no real use for owning a TLD so they sold the rights to sell domain names on their TLD to a company that leads people to believe it stands for television. It works. People buy them and use them and associate them with television and that is ok. It’s just a myth that .TV was created to mean television.Another Domain Name Myth: If you want to build websites that people can access by their cell phone or PDA you need to get a .MOBI domain name. Just like dot tv does not give you any special capability for television or multimedia, dot mobi does not give you any special tools for mobile-capable websites. Any website on any TLD can provide content to cell phones and PDAs if it is made compatible for them. Many will lead you to believe that dot mobi somehow gives you the advantage when it comes to cell phones and PDAs. it doesn’t..ME Domain Names Myth: Coming soon to a domain registrar near you. Soon domain names will be marketing for the TLD dot ME. They will market them as great domain names for personal websites. They may be. But it was not created as such. It is the Country-code top-level domain designated for Montenegro..PN Domain Names: I own Blogs.pn. I would love to tell you it stands for Publisher network or something like that but it doesn’t. It is the Country-code top-level domain designated for Pitcairn Island. Another pacific island that did not have much use for a TLD so someone was authorized to sell dot pn domain names.
Soon ICANN will be allowing more TLDs to be created and domain names will be marketed in these new TLDs. More and more countries will also offer domain names for sale in their ccTLDs. So the market will be opening up and it may be confusing to some. The truth is what comes before the dot matters most. Getting a domain name in a TLD that makes sense to users can help you though.Shorter Domain Names are better than Long Domain Names Myth: Only in certain circumstances is a shorter domain name better than a long domain name. Many domain gurus disagree. I don’t care. They talk about people being able to remember your domain name. Truthfully more traffic comes from people clicking links in search engines, on other websites, and on social bookmarking sites than comes from people who type in the domain name.
What is more important is that the domain name help you capture a phrase you want to target in the search engines. I can give you a ton of examples where having the exact phrase you want in the domain name has helped get a top position in Google and other search engines. So if the phrase is longer, do not abbreviate it just because you heard shorter domain names are better. Get the phrase you want to target.
If you are planning to advertise your domain name OFFLINE, in advertising on TV, radio, or even magazines and newspapers, shorter domain names ARE better. Offline, people have to be able to remember your domain name.The best of both worlds: If most of your traffic comes from the web, shorter means very little. To cover both, get a domain name that matches your key phrase and put your website on that domain name. Then get a second domain name that is short and catchy and redirect or point it to the same website. Use the shorter-easy-to-remember domain name for your offline marketing and the domain that matches your key phrase for the search engines.Anything other than a dot COM is worthless Myth: This is a favorite myth spread everywhere. It is based on the same myths about shorter domain names. If people have to remember it, then yes, they do remember dot com more often. If you are doing offline marketing, use a dot com.
Online your website can be on any TLD. People are clicking links. So again, get the domain name that matches your key phrase for your website whether it is on .com, net, org, tv, pn, cc, ws, or whatever. Start with dot com, try your phrase. If it is taken, move to the next TLD and try your phrase again. If it is taken, repeat your attempts to register until you find a TLD that your phrase IS available in and register it in that TLD.These are some Myths about Trademarks and Domain Names;Domain Name VS Trademark Myth #1: If I own a trademark I need to register my trademarked name in every TLD. Pure Myth and a worthless, time-consuming strategy promoted by Intellectual Property Lawyers who need to justify what you are paying them.Domain Name VS Trademark Myth #2: When you register a trademark, you have to choose a classification for that trademark such as “entertainment television”, “clothing and apparel”, “beverages”, etc.
You do not own the phrase you trademark. You are being allowed to use that trademark in commerce within the classification you chose. Someone else can register the same exact trademark and choose a different classification.
In addition to that, the geographical area you registered your mark in only covers that area. Someone could have the same trademark in the same classification in a different geographical location.
So again, you do not own the phrase you trademarked, so no need to register every TLD in existence. It could even be construed as anti-competitive business practice to do so.Domain Name VS Trademark Myth #3: If you chose the trademark, “goofball lawyer stuff” and chose the classification “clothing and apparel”, I could still register the domain name http://goofballlawyerstuff.com or net or org or whatever.
As long as I do not sell clothing or apparel, link to anyone who sells clothing and apparel, or try to confuse people into believing my website is owned by you, I have not violated your trademark rights. Get over it.
I hope this helps you dispel a few of the most common domain name and trademark myths you may have been reading about.