FAQ: Questions and Answers

[back to notice text] 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. [back to notice text] Question: What is the right of publicity? Answer: The right of publicity is a right to prevent the unauthorized commercial use of someone's identity, including name, image, or likeness. A natural person (and that person?s heirs) can sue under this right if the person's likeness is used to advertise products, for example. Since the right of publicity only prevents unauthorized commercial use, however, it does not block use of the identity for a statement of public or social interest, including news reporting, for a work of art or entertainment, and if the use is not for profit nor a threat to the commercial value of the identification. [back to notice text] Question: Where can I find the text of the ACPA? Answer: The Anti-cybersquatting Consumer Protection Act as enacted may be found at http://www.mama-tech.com/1948.html. Most of the ACPA provisions are now found in the Lanham Act at 15 USC 1125(d), 15 USC 1114 and 15 USC 1117. [back to notice text] Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)? Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA. ACPA applies to people who: (1) have a bad faith intent to profit from a domain name; and (2) register, use or traffic in a domain name; (3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered. ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name. Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services. See the module on ACPA to find out more about bad faith and legitimate defenses. [back to notice text] Question: How does the ACPA apply to domain names? Answer: It makes it illegal to register, "traffic in" or use a domain name is identical or confusingly similar to a distinctive or famous mark (or which dilutes a famous mark). [back to notice text] Question: What constitutes a violation of the Act? Answer: In addition to having a domain name that steps on the toes of an existing trademark as mentioned above, a person will be held liable only if he or she has a "bad faith intent to profit from the mark, including a personal name which is protected as a mark." An example of a personal name that is protected as a mark would be the name of a Hollywood celebrity whose name is used as a trademark to identify his or her performance services. [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?see below for more). A court will almost certainly find bad faith if the domain name holder attempts to sell the domain name for financial gain to either the trademark owner or someone else, without having used it or without intending to use it. A court is likely to find bad faith if the name holder provides false or misleading identification information when applying for registration, or if the holder fails to accurately update this information. A court will also frown upon a prior history of such behavior. A court is likely to find bad faith if the person registers a number of names identical or similar to trademarks. [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 if I think that my domain name is OK? Am I still in trouble? Answer: The ACPA provides that there is no bad faith if the domain name holder believes, and had reasonable grounds to believe, that his or her use of the domain name was a fair use or otherwise lawful. It is not so clear that this provision will really keep you out of trouble. However, in doubtful cases, if you are using a domain name in which you have some intellectual property rights, and under which you have sold goods or services, and if someone else claims infringement upon a slightly-but-not-very famous mark, it might be of some use as an additional factor in your favor. [back to notice text] Question: What about noncommercial uses? Answer: According to the Fourth Circuit Court of Appeals, "the Federal Trademark Dilution Act of 1995 ("FTDA") and the Anticybersquatting Consumer Protection Act of 1999 ("ACPA"), Congress left little doubt that it did not intend for trademark laws to impinge the First Amendment rights of critics and commentators. The dilution statute applies to only a 'commercial use in commerce of a mark,' 15 U.S.C. ? 1125(c)(1), and explicitly states that the '[n]oncommercial use of a mark' is not actionable. Id. ? 1125(c)(4)....Congress directed that in determining whether an individual has engaged in cybersquatting, the courts may consider whether the person?s use of the mark is a 'bona fide noncommercial or fair use.' 15 U.S.C. ? 1125(d)(1)(B)(i)(IV)" One should be careful in this area, however. Sites that parody the mark holder or its website have been found not to be a good faith use by the Fourth Circuit Court of Appeals. The Fourth Circuit noted that despite the existence of a fairly obvious parody on the challenged website, confusion could arise because the domain name could appear separately from the website content or where the parody isn't clear on its face. Moreover, the meaning of "noncommercial" use can be interpreted in a fairly narrow manner by some courts. The 4th Circuit, for example, in Lamparello v. Falwell, leaves open the issue of whether merely using the name in the stream of commerce (whether or not it is being used to generate revenue) might be enough to qualify as commercial use. Other courts have held that an ability to use the site to access, directly or indirectly, a website that is selling something, has been held to constitute a commercial use. [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: How do I know which marks are famous and what difference does it make? Answer: Owners of "famous" marks have special privileges. They can block new uses of any similar name even if consumers wouldn't be confused by it. They are protected against "dilution" and "tarnishment" as well. If you walk up to someone on the street and ask someone if they recognize the word or symbol, and they recognize it right away, it is probably famous. If you have to remind them ("The Berkman Center is this crazy thing at Harvard?"), then it is probably not. Whether or not a particular mark is actually famous (or distinctive) is a question for the court. A mark owner who claims to be famous may have an exaggerated belief of the mark's importance.

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