Tech Law Geek

How do I protect my domain name?

The Internet Corporation For Assigned Names and Numbers (ICANN) offers several Domain Name Dispute Resolution Policies. The most frequently used policy is the Uniform Dispute Resolution Policy (UDRP), since it covers all .aero, .biz, .com, .coop, .info, .museum, .name, .net, .org, and .pro domains.

How the UDRP can be helpful

The UDRP provides a more simplified administrative proceeding for resolving domain name disputes.  All ICANN accredited registrars include the UDRP provisions in their domain name registration agreements. Remedies are limited to either canceling the domain name registration or transferring ownership to the complainant.  An approved dispute resolution service providers list is maintained at the ICANN site.

How do I stop people from ripping off my content?

• Basic trademark and copyright protection issues

Both trademark and copyright law provide protection for your website content and brand identity, subject to some limitations, primarily related to fair use.  Copyright protection is available immediately upon creation of the work.  No registration is required, but there are still benefits to registering.

• Appropriate use of trademark and copyright notices

Trademarks may use the symbol ™ to signify usage of a mark prior to registration.  After registration, the symbol ® may be used.

U.S. law technically no longer requires use of the copyright notice, composed of the copyright symbol ©, year of publication, and copyright holder's name. However, since this reflects only recent changes in the law, it still helps to include the copyright notice so infringers cannot claim they were unaware the material was protected.

• Fair use issues

Fair use permits other parties to lawfully use your mark in comparative commercial advertising/promotions, noncommercial use, and all forms of news reporting and news commentary. [does this include blogger comments?]

While your competitors may be able to use your mark in comparative advertising, common law remedies for commercial disparagement are available if untrue statements are made regarding your goods and/or services.  The Lanham Act also provides for a federal claim based on misleading, partially incorrect or untrue statements regarding your product(s).

With copyrighted content, fair use considerations include:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

See 17 U.S.C. § 107

• Registering trademarks

Trademarks may be registered at both the state and federal level.  Most states have adopted some version of the Model State Trademark Act drafted by the International Trademark Association.  At the federal lever, registration may be on either the Principal or Supplemental registers.  Both registers allow the mark owner to use the symbol ® to signify registration, protect the owner against state restrictions on mark usage, and gives priority rights on international applications subject to foreign treaty agreements.

Registration on the Principal register provides many more benefits beyond that of the Supplemental register.  If your mark meets the Principal register requirements of distinguishing your goods and services, that would be the preferred form of registration.  If you are unable to meet either federal register requirements, then you may want to follow up with your Secretary of State or other appropriate official to register your trademark at the state level. 

• Policing marks and fighting infringers

The Anticybersquatting Consumer Protection Act (ACPA) penalizes registrants for incorporating protected trademarks in their domain name that "results in consumer fraud and public confusion as to the true source or sponsorship of products and services."  The ACPA is an amendment to the Trademark Act of 1946, commonly referred to as the Lanham Act.  It adds cyberpiracy prevention to a general class of civil actions for false designation of origin, false descriptions, and mark dilution.

Who can sue under the Anti-Cybersquatting Act?

Only the mark owner may sue under the ACPA amendments to the Lanham Act, where the owner believes the accused cybersquatter has (1) a bad faith intent to profit from usage of the mark and (2) registers, traffics or uses a domain name that is identical or confusingly similar to the mark.

Is owning a registered mark a prerequisite for a claim under the Anti-Cybersquatting Act?

No, you do not need to have your mark registered to assert your rights under the ACPA.  However, the accused cybersquatter may avoid a finding of bad faith if the court finds they had reasonable grounds to believe use of the domain name was fair or otherwise lawful.  Since there is a strong presumption that a registered trademark is valid and enforceable, its registration provides constructive notice of your claim to the mark.

Relevant similar state statutes

Most states provide for a general cause of action for unfair competition and anti-dilution statutes, such as California's Business & Professions Code §14330.  Those claims may also be filed with a federal Lanham Act case.

 

Sources:

Peter B. Maggs & Roger E. Schechter, Trademark and Unfair Competition Law (6th ed. 2002).

United States Patent and Trademark Office

United States Copyright Office

---