Misappropriation of Trademarks on the Internet

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1 SM Misappropriation of Trademarks on the Internet September 14, Patterson Thuente Christensen Pedersen, P.A., some rights reserved - DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter.

2 Topics Trademark basics Squatting Social media sites Google Ebay 2

3 Trademark Basics Distinctive sign or indicator of some kind used by an individual, business organization or other legal entity to uniquely identify the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. Typically a name, word, phrase, logo, symbol, design, image, or combination of these elements. Protects consumers from confusion If in continuous use, a trademark can last forever Trademarks can be regional or national. means the mark is registered with the USPTO means you assert rights to the mark 3

4 Trademarks as Domain Names Cybersquatting: Registering a domain names that incorporate a trademark Typosquatting: Registering a domain name confusingly similar to a Trademark Cybersmearing: Registering a domain name to express dissatisfaction with a trademark or a corporation 4

5 Trademarks as Domain Names Domain names are important assets to businesses that provide additional marketing opportunities for trademark owners. Customers occasionally type a brand name directly into a browser rather than a search engine. If the domain name does not resolve to the intended company, consumer confusion and loss of revenues may occur. 5

6 Anticybersquatting Consumer Protection Act (ACPA) 43 (d) of the Lanham Act Gives the trademark owner a cause of action against anyone who, with a bad faith intent to profit from the mark, registers, traffics in, or uses a domain name that Confusingly similar or identical to a mark that was distinctive at the time of registration; or Confusingly similar, identical or dilutive to a mark that was famous at the time of registration. 6

7 Anticybersquatting Consumer Protection Act (ACPA) Remedies: Forfeiture or cancellation of the domain name or transfer of the domain name to the trademark owner In lieu of actual damages, the plaintiff may elect statutory damages of not less than $1,000 and not more than $100,000 per domain name, as the court considers just Authorization of in rem jurisdiction over domain names when in personam jurisdiction over the Web site operator cannot be obtained Money damages are not available in an in rem lawsuit (forfeiture or cancellation of the domain name) 7

8 Anticybersquatting Consumer Protection Act (ACPA) List of non-exhaustive factors in determining bad faith intent to profit : Defendant s IP rights Extent that domain name constitutes the defendant s legal name Defendant s prior use of the domain name with a bona fide offering of goods/services Defendant s bona fide noncommercial use of the mark in a site accessible under the domain name Defendant s intent to divert customers from the mark owner s online location, either for commercial gain or to disparge the mark, by creating a likelihood of confusion Defendant s offer to assign the domain name to another (incl. the mark owner) without having used the domain name Defendant s use of misleading false contact information when applying for registration of the domain name Defendant s registration of domain names with knowledge those names were identical or confusing to distinctive marks, or dilutive of famous marks Extent to which the mark incorporated into the defendant s domain name is or is not distinctive/famous within the meaning of 43(c) 8

9 Resolving Domain Name Disputes Uniform Domain Name Dispute Resolution Policy (UDRP) Adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 Domain name registrants are required to submit to a mandatory administrative proceeding to resolve disputes related to their use of the domain name 9

10 ICANN ICANN stands for the Internet Corporation for Assigned Names and Numbers ICANN is a public benefit, non-profit, international organization responsible for the management and oversight of the coordination of the Internet s domain name system and its unique identifiers ICANN was created through a Memorandum of Understanding between the U.S. Department of Commerce and ICANN to transition management of the DNS from the U.S. government to the global community 10

11 Approved Dispute Resolution Providers ICANN has approved the following dispute resolution providers: WIPO Arbitration and Mediation Center (WIPO) CPR Institute for Dispute Resolution (CPR) National Arbitration Forum (NAF) Asian Domain Name Dispute Resolution Center (ADNDRC) 11

12 UDRP Remedy Requirements Domain name is identical or confusingly similar to Complainant s trademark or service mark Registrant has no right or legitimate interest in respect of domain name Domain name was registered and is being used in bad faith 12

13 Examples of Bad Faith Circumstances that indicate the defendant s main purpose was to sell domain name to the trademark owner for a profit. History of registering domain names to prevent trademark owners from registering. Registering a domain name to disrupt the business of a competitor. Attempting to divert Internet users to Defendant s site for commercial gain by creating confusion concerning source or sponsorship. 13

14 Examples of Legitimate Interest Pre-dispute use or demonstrable preparations to use the domain name in a bona fide offering of goods or services. Defendant was commonly known by the name. Legitimate, noncommercial or fair use of the domain name without intent to misleadingly divert or tarnish. 14

15 UDRP Advantages Mandatory dispute resolution procedure. No Jurisdiction problems. Quick results (60 to 90 days). Low costs ($3-8K) Direct enforcement by the registrar of the domain name. Proceedings can be conducted in 11 different languages that are recognized under WIPO. 15

16 Google s Trademark Policy Depending on the regions in which you have trademark rights, Google may investigate the use of trademarks in ad text only or in ad text and keywords In the United States Google will investigate ad text only Google will not disable keywords in response to a trademark complaint Furthermore, the investigation will only affect ads served on or by Google 16

17 Google s Trademark Policy Google will perform a limited investigation of reasonable complaints about use of trademarks in ads Google s policy permits use of the trademark in the ad text in the following circumstances: Ads which use the term in a descriptive or generic way, and not in reference to the trademark owner or the goods or services corresponding to the trademark term OR Resale of the trademarked goods or services: The landing page of the ad must sell (or clearly facilitate the sale of) the goods or services corresponding to a trademark term The landing page must also clearly demonstrate that a user is able to purchase the goods or services corresponding to a trademark 17

18 Google s Trademark Policy Sale of components, replacement parts, or compatible products corresponding to a trademark: The landing page of the ad must sell (or clearly facilitate the sale of) the components, replacement parts, or compatible products relating to the goods or services of the trademark The landing page must also clearly demonstrate that a user is able to purchase the components, parts, or compatible products corresponding to the trademark term. OR Informational sites: The primary purpose of the landing page of the ad must be to provide informative details about the goods or services corresponding to the trademark term Additionally, the landing page may not sell or facilitate the sale of the goods or services of a competitor of the trademark owner 18

19 Google s Trademark Policy In the case of resellers and retailers of components, replacement parts, or compatible products, the landing page must be primarily dedicated to the sale or facilitation of the sale of the goods or services corresponding to the trademark The landing page may not be dedicated to the goods or services of a competitor of the trademark owner. 19

20 Filing a Trademark Complaint with Google Trademark owners may submit either a specific or general trademark complaint A specific complaint means that Google will investigate a trademark term(s) in specific advertisements only Google will not investigate the trademark in any other advertisements A general complaint means that Google will investigate the trademark in all relevant advertisements If there are specific advertisers that are authorized to use the trademark(s), the trademark owner is required to provide the corresponding customer ID(s) or login (s) 20

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24 Google Trademark Policy: Summary The trademark owner doesn't need to be a Google AdWords advertiser in order to send a complaint. Investigations will only affect ads served on or by Google. Investigations only apply to sponsored links, not search results For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in the AdSense for Domains program Google encourages trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs 24

25 Twitter s Trademark Policy Using a company or business name, logo, or other trademarkprotected materials in a manner that may mislead or confuse others or be used for financial gain may be considered a trademark policy violation Accounts with clear intent to mislead others will be suspended; even if there is not an explicit trademark policy violation, attempts to mislead others may result in suspension. Where there is a clear intent to mislead others through the unauthorized use of a trademark, Twitter will suspend the account and notify the account holder When an account appears to be confusing users, but is not purposefully passing itself off as the brand/company/product, the account holder will be notified and given an opportunity to clear up any potential confusion 25

26 Facebook s Trademark Policy Ads cannot include any content that infringes upon the rights of any third party, including copyright, trademark, privacy, publicity or other personal or proprietary right The advertiser must have intellectual property rights to the creative and be permitted to display such creative as advertising on the Facebook site Facebook provides tools to help trademark owners protect their intellectual property rights 26

27 Automated IP Infringement Form 27

28 Facebook s Trademark Policy Facebook will promptly remove or disable access to potentially infringing content and will notify the user and, if requested, provide IP Infringment report to the user Facebook will terminate repeat infringers when appropriate. Applications developed by third parties and available to the Facebook community are not created by Facebook and do not reside on their servers IP owners are encouraged to contact the developer directly contact info often found on the application s about page or by adding the application and then clicking help 28

29 Facebook s Trademark Policy Facebook will try to assist when a developer does not comply with its legal obligations relating to content issues If you are not the IP owner (or the authorized representative of the owner) you cannot report a suspected infringement to Facebook 29

30 Facebook s Trademark Policy Counter-notice form Facebook offers and appeal opportunity for copyright claims only The DMCA then allows Facebook to restore content if the rights owner does not file a court action within 10 business days of receiving the copy of the counter-notice DMCA makes users liable for materially misrepresenting in a counternotice that content was removed by mistake 30

31 DMCA Counter-Notice Form 31

32 Questions?? Tom Dickson