Issue: control over domain similar to mark

1
Issue control over domain similar to mark

• Exxonco.com
• Registrant sporting goods company
• Registrant to sell to oil companies
• Theory?
• Claim TM Infringement
• Prove likelihood of confusion
• Remedy Issue recover name or not?
• Claim cybersquatting
• Register names of TM owners
• Resell Use
• Issue if content is not confusing, should I
  still be able to control it?

2
Resources

• TM infringement
• ACPA Section 1125(d)
• TM owner
• Defendant has bad faith intent
• Registers identical or confusingly similar
• Without regard to goods or services
• UDRP Administrative procedure
• Parallel, but not identical
• Assume user of Houstontexans.org
• Runs a service for touring the city of Houston
• Does nothing there

3
UDRP

• Non-binding arbitration
• Transfer/ cancel as remedy
• Domain name is identical or confusingly similar
  to a trademark in which the complainant has
  rights
• Domain name ownerhas no rights or legitimate
  interests in the name and
• Name has been registered and is being used in bad
  faith

4
UDRP standards

• (i) the domain name is identical or confusingly
  similar to a trademark or service mark in which
  the complainant has rights and
• (ii) the domain name owner has no rights or
  legitimate interests in respect of the domain
  name and
• (iii) the domain name has been registered and
  is being used in bad faith.

5
Bad faith.

• (i) circumstances indicating that you have
  registered or you have acquired the domain name
  primarily for the purpose of selling, renting, or
  otherwise transferring the domain name
  registration to the complainant who is the owner
  of the trademark or service mark or to a
  competitor of that complainant, for valuable
  consideration in excess of your documented
  out-of-pocket costs directly related to the
  domain name or
• (ii) you have registered the domain name in order
  to prevent the owner of the trademark or service
  mark, provided that you have engaged in a pattern
  of such conduct or
• (iii) you have registered the domain name
  primarily for the purpose of disrupting the
  business of a competitor or
• (iv) by using the domain name, you have
  intentionally attempted to attract, for
  commercial gain, Internet users to your web site
  or other on-line location, by creating a
  likelihood of confusion

6
ACPA Cyberpiracy as an offense

• Model stockpile names and then profit from
  selling them
• ACPA approach Liability standard 1125 (d)
• Remedy (1)(C) A court may order the forfeiture
  or cancellation of the domain name or the
  transfer of the domain name to the owner of the
  mark.
• In rem proceeding

7
ACPA substantive standard

• (A) A person shall be liable if, without regard
  to the goods or services of the parties, that
  person
• (i) has a bad faith intent to profit from that
  mark and
• (ii) registers, traffics in, or uses a domain
  name that--
•   (I) in the case of a mark that is distinctive
  at the time of registration of the domain name,
  is identical or confusingly similar to that mark
•   (II) in the case of a famous mark that is
  famous at the time of registration of the domain
  name, is identical or confusingly similar to or
  dilutive of that mark

8
Bad faith intent to profit (aaargghhhh!!!)

• A court may consider factors such as, but not
  limited to
• (I) the intellectual property rights of the
  person
• (II) the extent to which the domain name
  consists of the legal name of the person or a
  name commonly used
• (III) the person's prior use of the domain name
  in connection with the bona fide offering of any
  goods
• (IV) the person's bona fide noncommercial or
  fair use of the mark in a site accessible under
  the domain name
• (V) the person's intent to divert consumers
  either for commercial gain or with the intent to
  tarnish by creating a likelihood of confusion
• (VI) the person's offer to transfer, sell, or
  otherwise assign the domain name to the mark
  owner
• (VII) the person's provision of material and
  misleading false contact information
• (VIII) the person's registration or acquisition
  of multiple domain names which the person knows
  are identical or confusingly similar and
• (IX) the extent to which the mark incorporated
  in the person's domain name registration is or
  is not distinctive and famous

9
Sportys

• Sportys case Sportys for aviation products
• Sportsman's is a mail order catalog company that
  is quite well-known among pilots and aviation
  enthusiasts for selling products tailored to
  their needs.
• Distinctive or famous
• Identical or confusingly similar
• Bad faith
• Distinctiveness refers to inherent qualities of
  a mark and is a completely different concept from
  fame. A mark may be distinctive before it has
  been used--when its fame is nonexistent. By the
  same token, even a famous mark may be so
  ordinary, or descriptive as to be notable for its
  lack of distinctiveness. We hold Sportys is
  distinctive

10
Shields case

• Shields Joe Cartoon
• Distinctive or famous
• Degree of inherent or acquired distinctiveness
  of the mark." As far as we (or the parties)
  know, Shields runs the only "Joe Cartoon"
  operation in the nation The second factor under
  1125(c) is "the duration and extent of use of
  the mark in connection with the goods or services
  with which the mark is used." Shields has used
  "Joe Cartoon" for the past fifteen years The
  third factor is "the duration and extent of
  advertising and publicity of the mark." Joe
  Cartoon t-shirts have been sold across the
  country since at least the early 1990's, and its
  products appear on the Website of at least one
  nationally known retail chain,

11
Element 2 similarity

• Identical or confusingly similar
• Compare likelihood of confusion
• Compare Without regard to products etc.
• Sportys is confusingly similar
• Element 3 Bad Faith intent to profit

12
Bad Faith

• We hold that there is more than enough evidence
  in the record below of "bad faith intent to
  profit" on the part of Sporty's Farm, so that "no
  reasonable factfinder could return a verdict
  against" Sportsman's. First, it is clear that
  neither Sporty's Farm nor Omega had any
  intellectual property rights in sportys.com at
  the time Omega registered the domain name.
  Sporty's Farm was not formed until nine months
  after the domain name was registered, and it did
  not begin operations or obtain the domain name
  from Omega until after this lawsuit was filed.
  Second, the domain name does not consist of the
  legal name of the party that registered it,
  Omega. Moreover, although the domain name does
  include part of the name of Sporty's Farm, that
  entity did not exist at the time the domain name
  was registered.

13
VW case

• Virtual Works ISP registers vw.net
• The following provide circumstantial evidence of
  Virtual Works' bad faith 1) the famousness of
  the VW mark 2) the similarity of vw.net to the
  VW mark 3) the admission that Virtual Works
  never did business as VW and 4) the
  availability of vwi.org at the time Virtual Works
  registered vw.net.
• We do not suggest that these four facts would
  alone resolve the question of Virtual Works'
  intent on summary judgment.
• Volkswagen, however, points to direct evidence
  regarding Virtual Works' intent--the statements
  made at registration.
• Virtual Works had a dual purpose.
• Virtual Works had a bad faith intent to profit
  when it attempted to sell vw.net to Volkswagen.
• When Virtual Works registered vw.net, many other
  domain names were available for its use.

14
Interstellar

• Epix sues Intersteller
• Epix.com
• Epix electronic imaging company
• ISS limited business use
• The district court found that Tchou and ISS
  adopted the www.epix.com domain name in good
  faith. In particular, it determined that Tchou
  adopted the domain name epix.com as a descriptive
  term to connote electronic pictures. Evidencing
  his good faith, Tchou performed a web search on
  "epix" before registering epix.com, but did not
  find Epix because it was not yet on the Internet.
  Furthermore, Tchou engaged in a bona fide use of
  his website.

15
Reconsider

• Houston texansco.com for a Houston tour company
• Register intending to sell