Trademark Law and Domain Names
A trademark is a distinctive sign or indicator used by an individual, business organization or entity to identify a product or service to consumers, protect consumers from being confused as to goods or services, and to distinguish its product or service from other products or services. A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.
The Lanham Act (15 U.S.C. 22) is the body of legislation that applies to trademark law in the United States. Subchapter I sets forth the requirements that a mark must meet in order to receive registration. It also sets forth the right of a trademark owner to attain a federal registration of his/her marks. Subchapter III, §§42, 43 set forth the remedies what can be sought following a trademark infringement.
Like traditional words and phrases, a domain name has become an extremely valuable mark and has become a source of many new issues not foreseen by the original Lanham Act. As a brief example, the Anticyberquatting Consumer Protection Act (ACPA) was enacted in 1999 to deal with “cybersquatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party.
An issue that the courts faced was the clash between new technology of the Internet and domain names with preexisting trademark rights. The primary reason why issues weren’t quickly or effectively resolved was because the courts, who were not entirely familiar with the Internet at the time, tried to address the issues within the framework of traditional trademark law. Since the courts saw a website itself not as a product being purchased, then there was no actual consumer confusion. Eventually, in place of customer confusion, the courts looked at the “initial interest confusion,” which refers to customer confusion that creates an initial interest in a competitor’s website.
There have been a few high profile cases that have dealt with the concept of initial interest confusion. In Brookfield Communications v. West coast Entertainment, the court found that initial interest confusion could occur when a competitor’s trademarked terms were used in the HTML metatags of a website, which would result in the site appearing in the search results when a user searches for a trademarked term. The court in Playboy v. Netscape found that initial interest confusion could occur when users typed in a trademarked term into a search engine, resulting in the display of banner ads that would take the user to a competitor of the owner of the trademark. Also, in Lamparello v. Falwell, the court stated that a finding of initial interest confusion is contingent on financial profit from the confusion. Essentially, the court stated that if a confusing domain name, similar to a registered trademark, is used for a non-trademark related website, the site owner will not have infringed if he does not seek to profit on the goodwill of the trademark.