Chilling Effects
Home Weather Reports Report Receiving a Cease and Desist Notice Search the Database Topics
Sending
Topic HomeFAQsMonitoring the legal climate for Internet activity
Berkman Center for Internet & Society
 Chilling Effects Clearinghouse > Domain Names and Trademarks > Frequently Asked Questions Printer-friendly version

Frequently Asked Questions (and Answers) about Domain Names and Trademarks

  • Q: Isn't the domain name registration process "first come first served"?
  • Q: How was I supposed to know that my domain violates somebody else
  • Q: What is a trademark and why does it get special protection?
  • Q: What is trademark infringement?
  • Q: Can a trademark give someone rights in common words and letters?
  • Q: What are the UDRP and ACPA?
  • Q: How does a mark owner use the ACPA against cybersquatters?
  • Q: Do I have trademark rights in my domain name?
  • Q: How do I identify the owner of a domain name?
  • Q: What if I don't live in the US? Can I still lose my domain name under the ACPA?
  • Q: What civil and criminal liabilities may be imposed for trademark infringement?
  • Q: Where can I find state trademark law?
  • Q: What if I need to contact an attorney?
  • Q: What if I used false contact information in my domain name registration?
  • Q: What is "intellectual property"?
  • Q: Does the PTO's refusal to register a mark mean the mark infringes someone else's trademark?
  • Q: What is a domain name?
  • Q: What is WHOIS information?

    Question: Isn't the domain name registration process "first come first served"?

    Answer: In .com, .org and .net, which are "open" to any kind of registrant, the policy is first-come, first-served, as long as you have registered and used the domain name in good faith or have legitimate interests in the domain name. However, you have no right to violate trademark law, or ignore your Registration Agreement, or engage in cybersquatting just because you registered the name first.

    Furthermore, in the newer domains such as .biz and .name, there are additional registration requirements that must be met because some of these domains are restricted. Trademark owners may also have advance registration rights. Check individual registry requirements. See list of generic top-level domain registries at http://www.internic.net/faqs/new-tlds.html.

    >>top


    Question: How was I supposed to know that my domain violates somebody else

    Answer: It is the domain name registrant

    >>top


    Question: What is a trademark and why does it get special protection?

    Answer: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

    Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws.

    Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic.

    The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused.

    >>top


    Question: What is trademark infringement?

    Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.

    >>top


    Question: Can a trademark give someone rights in common words and letters?

    Answer: Not all identifying names and phrases can be protected by trademarks. Protection depends on a mark's strength, which is determined by how it is categorized. There are four categories (in descending order of strength):

    1. arbitrary
    2. suggestive
    3. descriptive
    4. generic

    An arbitrary mark receives the most protection since the name bears no relationship to the product -- it implies imagination and thought. Kodak is an example of an arbitrary mark because the name itself suggests no connection to film or camera equipment. We learn this association only after the name has been used and becomes associated with the source of that product. A descriptive mark receives protection if it has secondary meaning in consumers' minds. A generic mark rarely receives protection because it is naturally associated with something in consumers' minds. An ordinary description is not special enough to warrant protection. However, if consumers connect the mark and its source in a way that would not exist without the mark's use in commerce, then the mark can be protected.

    Alphabet letters, initials, abbreviations and acronyms may be entitled to protection if they are so original that they constitute an arbitrary mark (e.g., NICAD for nickel cadium). Otherwise, they may be protected only if they had acquired a secondary meaning which means that consumers have come to recognize the mark and associate the goods with a particular manufacturer (e.g., IBM and BMW).

    >>top


    Question: What are the UDRP and ACPA?

    Answer: Follow these links for Frequently Asked Questions on the UDRP (Uniform Domain Name Dispute Resolution Policy) or ACPA (Anti-cybersquatting Consumer Protection Act).

    >>top


    Question: How does a mark owner use the ACPA against cybersquatters?

    Answer: The ACPA creates a private right of action for trademark owners. This means that the owner of a trademark can sue the holder of a confusingly similar domain name. The suit must be brought in Federal Court - in a U.S. District Court.

    To summarize what has been said above

    >>top


    Question: Do I have trademark rights in my domain name?

    Answer: You may actually have trademark rights superior to those of your accuser. You may have such trademark rights because
    (a) you have a registered trademark;
    (b) you have a pending "intent to use" trademark application, of which the filing date predates the use of the mark by your accuser;
    (c) you have a pending "use based" trademark application and your date of first use predates the first use of the mark by your accuser; or
    (d) you have ?common law? rights to the trademark.

    In the U.S., the person who establishes priority in a mark gains the ultimate right to use it. According to the Lanham Act, determining who owns a mark involves establishing who first used it to identify his/her goods. That means, in the United States, you do not need to register a mark to establish rights to it. However, registering a mark means that the registrant is presumed to be the owner of the mark for the goods and services specified in the application.

    >>top


    Question: How do I identify the owner of a domain name?

    Answer: The quickest way is to use the global lookup tools such as Geektools, SamSpade, or uWhois multi-registrar WHOIS services. These are not authoritative directories, however, because they merely link to the databases of other directory services.

    To verify actual registration data of a particular domain name, use the Whois tool hosted by the registry for the top level domain in question. UniNett keeps a list of links to all top level domain registries.

    >>top


    Question: What if I don't live in the US? Can I still lose my domain name under the ACPA?

    Answer: Indeed, you can. If the mark owner is protected by US law (uses the mark in the US) then that mark owner can bring an ACPA action in a US court regardless of the domain holder's location. If the domain holder fails to show up in court, s/he may lose by default, in which case the US court will issue an order to the domain registrar or registry to cancel or transfer the domain registration to the mark owner. If the domain holder cannot be identified or located, the mark owner can bring an in rem action to obtain the domain name (see "What if the mark owner can't find the domain name holder?"). But the court must have authority over the registry or registrar holding the domain registration. All .com, .org and .net domain names are subject to the ACPA because the registry, Network Solutions, is located in the US. If the court does not have jurisdiction over the domain name registrar or registry, however, it will be difficult for the court to enforce its order outside the US. If neither the domain holder nor the mark owner has any contact in the US, then it isn't likely either can seek protection under US domestic laws, however, this is a question decided under treaties that govern international protection of trademarks. In such cases, the UDRP may be a more useful forum for the trademark owner to use.

    >>top


    Question: What civil and criminal liabilities may be imposed for trademark infringement?

    Answer: Under federal law (Lanham Act Section 32), an infringer shall be liable in a civil action by the registrant for certain remedies provided in the Act.

    One such remedy is an injunction, where a court orders a person who was found to violate the Act to stop its infringing activities.

    A trademark owner/registrant may also be able to obtain lost profits or damages against a defendant in a civil action only if the acts were committed with knowledge that such imitation was intended to be used to cause confusion, mistake, or to deceive. The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name.

    Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation.

    The court can order the cancellation or transfer of a domain registration.

    In the case of a willful violation of Lanham Act section 43, a court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of a defendant bearing the registered trademark shall be delivered up and destroyed.

    >>top


    Question: Where can I find state trademark law?

    Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and remedies.

    If marks are used in interstate commerce, then federal law will also apply.

    >>top


    Question: What if I need to contact an attorney?

    Answer: This website is meant as an aid to help you decipher Cease and Desist notices so you can make informed decisions about your course of action. If, after reading this, you think the C&D you received might have some merit, or you think you might engage your opponent in battle even if the C&D is, in your opinion, baseless, consultation with an attorney is always a good idea.

    The Online Media Legal Network (OMLN) is a network of law firms, law school clinics, in-house counsel, and individual lawyers throughout the United States willing to provide pro bono (free) and reduced fee legal assistance to qualifying online journalism ventures and other digital media creators.

    You can find an intellectual property attorney at www.martindale.com or by calling your state or local Bar Association and asking for a referral.

    >>top


    Question: What if I used false contact information in my domain name registration?

    Answer: False or fictitious domain registration information is a basis for finding "bad faith" registration or use of the domain name and this can cause the domain holder to lose his/her domain under the Anticybersquatting Consumer Protection Act (ACPA) and under the Uniform Domain Name Dispute Resolution Procedure (UDRP). See the topic on John Doe Anonymity for arguments in favor of protecting online anonymity.

    >>top


    Question: What is "intellectual property"?

    Answer: Intellectual property refers to the rights one has in the product of one's intellect. This includes copyright (rights in creative expression)and patents (rights in inventions, discoveries, methods, compositions of matter, etc.) which are granted by article I, section 8 clause 8 of the US Constitution which gives Congress the power to "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

    Related rights include trademark (rights in the names one uses to identify one's goods and services), trade secret (confidential business practices), unfair trade practice, passing off, trade libel, false advertising, misappropriation. Laws protecting most of these rights exist at both the state and federal level. "Proprietary rights" is just a general term meaning "one's own rights."

    >>top


    Question: Does the PTO's refusal to register a mark mean the mark infringes someone else's trademark?

    Answer: No. Even if the Trademark Examiner refuses registration of a mark on the grounds of likelihood of confusion, that does not mean use of the term infringes a trademark. Only a court can rule as a factual matter that the likelihood of confusion amounts to trademark infringement.

    >>top


    Question: What is a domain name?

    Answer: A domain name is a name associated with a particular computer online. In the domain name www.chillingeffects.org, .org is the top-level domain ("TLD"), chillingeffects is the second-level domain name, and www is a subdomain. Domain names are looked up on name servers in the DNS hierarchy to resolve them to numerical IP addresses.

    A domain name registration, like a telephone directory listing, is simply a service by which the domain registry agrees to list your domain name and the corresponding IP address in its domain zone file (such as the .com zone file). The routers that forward data bits around the Internet must consult these zone files to know which machine you're using. If the registry removes the domain name from the zone file, then routers (and users) will not be able to address mail or see your website if they use your domain name. They can, however, still reach you by using your IP address.

    There are over 250 top level domains (like .com, .us and .uk). Each has its own procedures for handling registrations and trademark disputes.

    >>top


    Question: What is WHOIS information?

    Answer: WHOIS is a searchable database maintained by registries and registrars that contains information about domain name registrations in the com, net, org, edu, and ISO 3166 country code top-level domains. Also, the protocol, or set of rules, that describes the application used to access the database.

    Registrants involved in malfeasance will often provide false information for their listings on WHOIS. So will registrants concerned with privacy who do not wish to make their home addresses, telephone numbers, or email addresses public.

    >>top


    Maintained by Berkman Center for Internet & Society

  • Frequently Asked Questions (and Answers)

    Chilling Effects Clearinghouse - www.chillingeffects.org
    disclaimer / privacy / about us & contacts