FAQ: Questions and Answers

[back to notice text] Question: Why do trademarks get such special protection? Answer: 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. [back to notice text] Question: What is a trade name? Answer: Answer: A trade name is the actual name of the company. It may or may not also be a trademark. Trademarks are used to label specific goods or services; trade names identify the organization itself. For example, "Ford Motor Company" is a trade name as well as a trademark. "Bronco" is a trademark only. In those cases, if the trade name is registered as a domain name, the name owner is protected against cyber-squatting under traditional trademark provisions and also under the newer Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Dispute Resolution Policy (UDRP) of ICANN. If a trade name is not used as a trademark, it may still be protected under other kinds of laws (having different criteria and remedies), such as unfair competition. However, if the trade name is registered as domain name, the owner will not be protected against cyber-squatting under the Anti-Cybersquatting Consumer Protection Act (ACPA) or the Uniform Dispute Resolution Policy (UDRP) of ICANN since they both apply only to trademarks. [back to notice text] Question: How was I supposed to know that my domain violates somebody else?s rights? Answer: It is the domain name registrant?s responsibility to make sure that the domain does not infringe or violate someone else?s rights. According to the Policy, by applying to register or renew a domain name, you are saying that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. Of course, you aren?t expected to look up trademark registrations around the world or research legal issues like common law trademark rights. That?s why the Policy requires the trademark owner (the complainant) to prove bad faith and why the Policy offers domain name holders the opportunity to demonstrate that they have rights or legitimate interests in the domain name. As mentioned above, the Policy was primarily intended to deter abusive domain name registration practices, not punish ordinary domain name holders who register a family name for the purpose of putting family news and pictures online or to prevent people with a legitimate business from registering a name they are commonly known by and then offering bona fide goods and services online. [back to notice text] Question: Who are the UDRP "Providers"? Answer: The Providers are organizations that have been approved by ICANN to resolve UDRP disputes. The four are: World Intellectual Property Organization ("WIPO"); eResolution Consortium ("eRes"); the National Arbitration Forum ("NAF"); and CPR Institute for Dispute Resolution ("CPR"). Since the trademark owner chooses the Provider, the trademark owner should be aware that the Providers differ in some respects. For example, each one may have its own supplemental rules, charge different fees, or have different page restrictions for the complaint and response. Relative to each other, some providers are statistically more inclined to favor the trademark owner. [back to notice text] Question: What is "bad faith" registration or use? Answer: Facts that are considered as evidence of bad faith are described in the UDRP Policy. They include acquiring the domain name primarily for the purpose of selling or renting it to the mark owner (or the mark owner?s competitor) for money or other value that greatly exceeds the costs of the domain name. This is the typical situation that the courts have called "cybersquatting." Another circumstance that will be considered evidence of bad faith is a pattern of registering domain names in order to prevent the mark owners from using their marks as domain names; also, if you register the domain name primarily to disrupt a competitor?s business. If you intentionally use the name in a manner that confuses or misleads users into believing that your site is affiliated with or endorsed by the mark owner, and you are getting commercial value from that confusion, you will also be considered as acting in bad faith. Panelists are also allowed to determine whether other acts, not specified in the Policy, may also amount to bad faith. For example, false or inaccurate contact information on the registration is frequently considered evidence of bad faith. [back to notice text] Question: How can I lose a domain registration in a UDRP? Answer: The trademark owner must prove three things: (1) that s/he has a trademark right that is identical or confusingly similar to your domain, (2) that you have no right or legitimate interest in the domain name, and (3) that you registered and used the domain in bad faith. [back to notice text] Question: What is the UDRP? Answer: The Uniform Domain Name Dispute Resolution Policy (?UDRP?) is an online procedure for resolving complaints made by trademark owners about domain names. It isn't a court nor is it an arbitration, but the authority that established it in 1999 (ICANN) has the power to order the deletion or transfer of domain names. ICANN requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs. Domain holders agree to this procedure in their domain registration contracts. The UDRP Policy explains what trademark owners have to prove in order to take a domain name away from the holder, as well as what domain name holders can use to show that they should be allowed to keep the domain registration. The UDRP Rules outline the actual process for filing a complaint (if you are a trademark owner) and for responding to a complaint (if you are the domain name holder). The Policy and the Rules also explain some of the basics of the proceedings, such as how to chose a Provider, how Panels make their decisions, how the parties are notified of the outcome, what language will be used in the proceeding, the availability and effect of court proceedings, and the types of remedies available. Each of the Providers also has its own Supplemental Rules to cover all the bases. The UDRP currently applies to .com, .org, .net, and a few country code top level domains (ccTLDs) including .ac, .mx, and .tv. It will soon apply to the new generic top level domains (gTLDs) .info and .biz. [back to notice text] Question: What is trademark dilution? Answer: A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness. Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c). [back to notice text] Question: What is a protectable "right or legitimate interest" in a domain name? Answer: If the domain holder has a right or legitimate interest in the domain name, then s/he is entitled to keep it, under the UDRP. The Policy gives some examples of rights and legitimate interests, but the contestants and Panelists may develop others. The Policy recognizes a right if (a) you are commonly known by the domain name (as a personal or business name), (b) if you are using it for legitimate noncommercial or fair uses without intent to mislead consumers or tarnish the mark owner (for example if the term is being used to generically describe what the website is about, such as ?newyorknews?) or (c) if you were using the name in a bona fide effort to sell goods or services (or you can demonstrate that you were preparing to do so) before you had any notice of the trademark owner?s complaint. The UDRP allows the Panelists to determine other circumstances of rights or legitimate interests on a case-by-case basis. Some of them have included the right to use the domain if you are a legitimate reseller of the marked goods, or acquired the domain before the trademark owner acquired trademark rights in the name. [back to notice text] Question: Where do I find UDRP decisions? Answer: The case opinions are posted by the various dispute providers. ICANN keeps a central list. WIPO posts its own decisions as does NAF. Some tools that search all the provider databases include: Berkman Center for Internet & Society at Harvard Law School, the Cornell-UMass UDRP-DB, and ICANN. [back to notice text] Question: What are the consequences of the proceeding? Answer: The Panel may cancel a domain name or order the transfer of the registration to the trademark owner or decide to leave the registration with the domain holder. If it cancels the domain registration, the domain will go back on the market for anyone to grab, so this is not an option that most trademark owners would request. If the domain name holder loses, the Registrar will wait 10 business days before implementing the Panel?s decision so that the domain name holder has the chance to file a lawsuit in court of law. If the domain name holder files a lawsuit, the Registrar will take no further action until it receives notice that the dispute was settled or that the lawsuit was dismissed or withdrawn. [back to notice text] Question: What does it mean to take all reasonable steps to protect a trademark? Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services. If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial. If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement. Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark distinctive. [back to notice text] Question: What does the "reservation of rights" language mean? What are they "waiving" at me? Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.

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