By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP
Once you have identified your marks and sought protection through registration for some or all of them, there are still going to be other issues that you will need to consider. Trademark owners have an obligation to police their marks and take steps to stop infringers. Otherwise, they may run the risk that someone else will profit off their marks or tarnish the reputation they have developed for those marks. In extreme cases, the failure to police one’s marks may result in losing them entirely. The biggest issues in trademark protection today arise from the use of trademarks on the Internet. In this blog, we identify some situations that you may encounter or want to think about.
You undoubtedly have one or more websites to promote your services, to interact with your listeners or viewers or to make video or audio available for online viewing or listening. You have spent a fair amount of time and money promoting your sites. Then, you learn that someone else has registered and is using a domain name that is confusingly similar to your domain name or one of your trademarks to attract traffic to their site. There are numerous ways that these cybersquatters can register a variation on your domain name or mark: adding (or dropping) a hyphen, adding a generic term, misspelling a word, omitting a letter, and replacing the letter “o” with a “zero” or the letter “l” with a “one” are some of the most common.
What should you do? You should establish a budget for taking action against cybersquatting. As a practical matter, however, you cannot pursue every one of these domain name registrations – you would need an unlimited budget. Our view is that you should only go after those domain names that have an active website that damages you in some way or are so close to your domain name or marks that they are drawing a lot of traffic. For example, does the domain name re-direct people who are looking for your website to a competitor’s site? Does it contain offensive content? Is it being used for some sort of scam or fraudulent activity?
Once you decide that there is a problem, what are your options? If it is a competitor, a cease and demand letter may do the trick. In many cases, however, you may not even be able to determine the true identity of the registrant. You probably do not want to incur the expense of bringing a civil action in court. There is an alternative. There is a relatively inexpensive and fast remedy, called the Uniform Dispute Resolution Policy. It is essentially a mandatory arbitration that all domain name registrants must agree to accept. There are three things that you will need to prove: (1) the domain name is identical or confusingly similar to one of your trademarks; (2) the registrant has no legitimate interests in the domain name; and (3) the domain name was registered and has been used in bad faith. If you prevail, the domain name will be assigned to you. Trademark owners win over 85% of all cases filed and they typically are resolved in about 60 days.
Finally, there are two types of websites where you may just need to accept them and take no action. First, parked or “pay-per-click” webpages incorporate various links to third party sites or advertisements. The domain name registrant receives a small payment for each person who clicks on one of these links. Such websites are extremely common and it is not usually going to be worth it for you to go after them unless there is a pressing need for that particular domain name. Second, if someone has registered a domain name similar to your mark and is using it only for legitimate criticism, they are protected under the First Amendment and you are unlikely to prevail. In fact, your actions may be posted on the website to claim that you are a hypocrite for asserting your own First Amendment rights as a broadcaster, while not respecting those of others. So, the better course may be to just grin and bear it.
Defensive Domain Name Registrations
You can avoid some of these problems by registering domain names that are similar to your domain name or trademarks, even though you do not want or need them. Your costs in registering such domain names may be less than the cost of having to take action against even one cybersquatter. An attorney who is experienced in this area can provide you with suggestions on the most common types of variations on your mark that you may want to register.
The New Top Level Domains
In the past, a trademark owner only had to worry about what cybersquatting in a limited number of top level domains (the part of the domain name that appears to the right of the dot), e.g., .com .net, .org and a few others. Even so, as discussed above, the scope of the problem has not been similarly limited because of the numerous possible variations on your domain name or mark.
Over the last two years, the organization that is responsible for the management of the Internet, ICANN, has approved the launch of hundreds of new top level domains, with more to come. These new top level domains fall in numerous categories: truly generic (e.g., .online, .site, .website, .cloud, .help, .xyz), geographic (e.g., .nyc, .london), industry (e.g. .news, .press, .accountant) and others. Thus, the potential number of problems has grown exponentially as has the cost of obtaining defensive registrations for your trademarks.
Very few, if any, of these new gTLDs have caught on with the public and it is expected that many will ultimately fail. It is my view that most businesses should be very selective in registering their marks in any of the new gTLDs. For example, the European Broadcasting Union has been chosen by ICANN to administer the “.radio” domain name as a community top level domain. Thus, it will only be open to members of the International Radio Community. Radio station licensees may want to register their call letters and other trademarks as .radio domain names.
Anyone who wants to register a mark as a second level domain should get that mark registered with the Trademark Office. Marks that are federally registered can then be registered in a database called the Trademark Clearinghouse, which will then allow the owner to seek registration in a new gTLD for a sixty-day period before the registry can make its domain names available to the public.
Do you ever conduct a search on the Internet and wonder why the first-listed results are even there? It happens because someone is paying the search engine to lists its ad (or “sponsored link”) in response to searches for a particular term (or “keyword”). Sometimes, these terms may be one of your trademarks and, in some cases, the sponsored link may be for one of your competitors. Unless your trademark appears in the sponsored link, however, most courts have become unwilling to take action. More and more often, they conclude that there is no likelihood of confusion because the sponsored link is typically somehow set off or distinguished from the actual search results, such as by incorporating the word “Ad,” and consumers have become used to seeing these sponsored links and are not likely to think that they are associated with the owner of a brand that he or she was searching. Where, however, the sponsored link or the web page to which it is linked includes a reference to your trademark, you may have a remedy. If you decide to bid on your competitor’s trademarks as a keyword that will generate a sponsored link to your website, you equally need to avoid making any visible reference to the competitor or its marks.
Concurrent Use of Trademarks on the Internet
Historically, television and radio stations have been local. If two stations in the same market used similar slogans, consumers would likely be confused. Advertising for one station could result in more listeners for the other station. Similarly, one station might get credit from Arbitron for a listener who was tuned to a different station. In that situation, the broadcaster that used the slogan first would have a trademark infringement claim available as a remedy. In contrast, a station in Chicago, a station in Miami and a station in Los Angeles could each use the identical slogan without any problems. For example, Arbitron could determine that a listener who used a slogan to identify a station could easily determine which one it was based on where the listener lived.
Streaming of broadcasts meant that a listener in Chicago might be able to listen to the broadcast from Miami or Los Angeles on any Internet enabled device. Or, someone who conducted an Internet search using the slogan as a search term could easily be directed to the web site for any of these stations. Courts have resolved many claims based on webcasting or other activity on the Internet by finding that being on the Internet is not always the same as engaging in activity in every geographic area nationally. If one party has a federal registration for its mark, the answer may be more complex.
These issues will continue to arise in cases involving Internet-only radio stations or webcasters. Even though FCC-licensed broadcasters cannot use the same call letters as another licensed station, webcasters can try to identify themselves any way that they want, particularly if they are using four letter “call” letters that begin with a “W” or a “K.” Issues can arise when the website operator uses “call letters” as part of a format this is a “tribute” to a defunct station, but the call letters have since been assigned by the FCC to another radio station.
Users of social media frequently adopt a name or handle that is identical to a well-known trademark. In many cases, there is no bad faith and making a complaint to the individual may result in unwanted publicity. Most social media have adopted policies to address complaints by trademark owners, but many are not responsive to the concerns of trademark owners. Here, too, defensive registrations of names in social media may be the best approach.
The increasing uses of the Internet have been a great boon to most businesses, but has created many new problems as well. They may seem overwhelming at times, but, with some planning, they can be managed whether your business is large or small. And, like most problems, they will not disappear if we ignore them.
This concludes our Trademarks Basics series – we hope you’ve enjoyed learning about this fun and engaging area of law.
For more in our series on trademark basics, see Part One on what a trademark is and why it is important. Part Two talked about the importance of trademark searches. Part Three, as set out above, dealt with the benefits of Federal trademark registration. Part Four suggested conducting a trademark audit to make sure that you are maximizing the value of the brands that you own.
Reprinted by permission.