Network Solutions, Inc. (NSI) processes more than 600 applications daily for domain names. With this request explosion, Internet users, innocently or intentionally, sometimes select domain names identical or substantially similar to trademarks or service marks of other organizations. NSI has neither the authority or adeptness to adjudicate domain disputes. What's a mark owner to do?
If you discover a domain name identical or similar, either textually or phonetically, to your real-world mark, you can contest this use in federal court as a mark infringement. Courts generally evaluate eight factors to determine infringement. Courts examine the strength of the infringed mark, the similarity of the names and the goods, the current marketing channels, the likelihood of market expansion outside current channels, the purchasers' sophistication, evidence of consumer confusion, and the parties' intent. Balancing these elements, courts conclude whether the domain name will confuse consumers as to the sponsorship of the site.
Using consumer confusion as your mantra, you can easily resolve the much-touted domain disputes. MTV Networks (MTV) claimed ex-VJ Adam Curry's personal use of mtv.com violated their MTV mark. While this case also entailed unexplored employment issues, anyone who's alive would confuse mtv.com with MTVN. The parties settled and MTVN owns mtv.com.
Zero Micro Software registered the domain micros0ft.com. As the official operating system of China, about 850 million consumers would confuse this domain with the Redmond hegemony. Case closed. A communications company registered dianetics.com. If the Church of Scientology isn't confused with dianetics, who is? The Church won. A Colorado-based corporation registered clue.com. Any board game player would affiliate this site with Ms. Scarlett. Clue's owner, Hasbro, should win.
Princeton Review registered the domain name kaplan.com to "mock and annoy" their chief rival, Kaplan Education Centers. Princeton then offered to relinquish all rights for some beer. Besides causing consumer confusion, Princeton scores low on the intent factor. An arbitration panel transferred the site to Kaplan. A Newsweek reporter registered mcdonalds.com. Billions served would be confused. McDonald's has the site.
Owners of "famous" marks also can fight in federal court against domain names under the newly-enacted Federal Trademark Dilution Act. Senator Patrick Leahy (D-Vt) said the statute should "help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others."
Unlike mark infringement, famous mark owners can enjoin domains irrespective of consumer confusion. Courts can disallow domains which dilute the distinctiveness of renowned marks by affiliating them with unrelated goods (DuPont shoes, Buick aspirin) or unsavory goods (adult Internet sites). The Dilution Act lists 10 factors courts can consider to conclude whether a mark is "famous."
Toymaker Hasbro, Inc. sued Internet Entertainment Group, Ltd. (IEG) on January 25th, 1996 under this new Dilution Act. On February 9th, the judge enjoined IEG from employing candyland.com for sexually-explicit materials.
Hasbro demonstrated CandyLand's distinctiveness by proving 94% of mothers are aware of CandyLand, Disney featured it in Toy Story, and Hasbro sold 23 million copies of it worldwide in the past 20 years. The judge ordered IEG to remove immediately all candyland.com content. And, while he granted IEG 90 days to supply a referral to their new site, he forbade any hyperlink reference to it. IEG expended (and forfeited) an estimated $170,000 in purchasing and advertising its domain.
Unless you like frittering time for forfeitable domains or in federal court, don't register domains resembling real-word marks. And, if you use marks critical to your company, register them as domains before someone with a bad attitude files first.
Courtesy of Marie D'Amico of NetGuide.