FAQ: Questions and Answers

[back to notice text] Question: How was I supposed to know that my domain violates somebody else Answer: It is the domain name registrant [back to notice text] Question: I registered the domain first. Why can't I keep it? Answer: Maybe you can. The ACPA only protects trademark owners against cybersquatters. If your registration or use doesn't violate the Act, you should be able to keep the domain. However, being the first to register a name doesn't give you special rights or protections if you violate the law. Just as in physical space, you cannot use another's trademark to your own commercial advantage if the result is to "steal" the value of the trademark's goodwill and turn it to your own advantage. Read the remaining FAQs that explain what the ACPA actually forbids. [back to notice text] 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): arbitrary suggestive descriptive 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). [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: What constitutes "bad faith" use of a domain name? Answer: The ACPA instructs the courts to consider a number of factors to determine the presence of bad faith. These are enumerated in the paragraphs below, but many involve new concepts that are rather vaguely defined. It may take some time before courts decide exactly how these new terms should be interpreted. A court is likely to decide that a domain name registrant acquired or used the name in bad faith if s/he sought to divert customers from a trademark owner's website to another that, either for purposes of commercial gain or to tarnish the mark, could harm the goodwill represented by the mark. "Goodwill" is a legal term indicating the valuable relationship or familiarity that exists between businesses and their customers and is often embodied in their trademark symbols. It can be harmed if the domain name is likely to cause confusion about what organization created or sponsored a website. Bad faith from attempted commercial gain can arise if a domain name holder steals customers because the name is so similar to a trademark. For example, a shoe retailer might hold www.reabok.com, hoping to steal shoe buyers from customers looking for Reebok shoes. Bad faith from tarnishing can arise if a domain name similar to a trademark leads web surfers to a site, such as a pornographic website, that tends to harm the "good name" of the trademark owner. Or a pornographic website at www.reabok.com could create an unwholesome association that Reebok would like to avoid. (Although, Reebok may be considered a famous mark [back to notice text] Question: Is it possible to hold a domain name in good faith even if it is identical or confusingly similar to another's trademark? Answer: The ACPA is forgiving of legitimate uses of domain names. There is less likely to be a violation of the Act if the domain name holder actually has some intellectual property rights in the name, or if the person has previously used the domain name in connection with bona fide offering of goods or services. Operating a domain name to which you have fairly entrenched trademark rights, or having operated a sales website under the domain name for a long time, is somewhat safer. Take note, however, that this safety is illusory if your domain name resembles (or is) a famous mark. Thus an Internet service provider, Virtual Works, lost a case to Volkswagen, over its domain name www.vw.net, because the "VW" mark is famous, even though VW is the abbreviation of Virtual Works, and even though they had operated the site for several years. If your domain name is your own name, or a name by which you are often referred, this is more likely to be deemed a good faith use. Edwin Von Aschenbach will probably be safe in registering www.vonaschenbach.com, even if Von Aschenbach, Co., manufactures high quality desks and "Von Aschenbach" is a trademark in the sale of desks. Edwin Pepsy should be more careful. [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 [back to notice text] Question: What facts should a C&D include? Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following information: (1) the trademark that is allegedly being infringed; (2) the trademark, domain name or other use that is allegedly doing the infringing; (3) the products and services on which your opponent uses the allegedly infringed mark; (4) the date your opponent commenced such use; and (5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office. [back to notice text] Question: What does a request to "cease and desist" mean? Answer: A request to cease and desist is basically asking the party to immediately stop the infriging behavior and then permanently refrain from it. [back to notice text] Question: What is this laundry list of things the C&D says will happen if I don't obey? Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to: (1) ceasing use of the allegedly infringing mark or surrendering the domain name; (2) rendering an accounting; (3) posting corrective advertising; (4) obtaining an injunction; (5) recovering costs and fees. Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them). Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied: (1) your domain name is identical or confusingly similar to your opponent?s; (2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); and (3) your name is registered and used in bad faith. An accounting basically means that you disclose the following information to your opponent: (1) the date you began using the allegedly infringing mark; (2) the names of individuals who knew of the use when it began; (3) the amount of traffic at your web site or business at your store; and (4) your profits and revenues during the time you used the allegedly infringing mark. Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent?s, and that you are not affiliated with your opponent. An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark. Some provisions of the Lanham Act permit a trademark holder to recover attorney?s fees and court costs from an infringer. That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent?s right to inflict any of them on you. [back to notice text] Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute? Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994). [back to notice text] 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.

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