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Internet Domain Names and Intellectual Property Issues

Farmington, MI |

I've got a number of domain names with inactive websites that referto specific university and pro sports teams, for example MichiganStateSpartansFanGear.com and DetroitTigersFanGear.com. Are there any issues with copyright, intellectual property, etc? Would they have any legal standing to request that a website using these domain names be taken down?

Attorney Answers 6


  1. While I cannot give you legal advice in this forum, you should speak with an IP attorney before proceeding further. Yes, there can be trademark, copyright, and unfair competition issues depending on how the names are used. Also, an owner of a trademark can institute an ICANN action to try to get the domain name transferred because of improper usage. The issue, however, is complex and an attorney can explain it to you. See http://www.icann.org/en/help/dndr.

    THIS RESPONSE IS INTENDED TO CONVEY GENERAL INFORMATION ONLY. IT SHOULD NOT BE RELIED UPON OR TAKEN AS LEGAL ADVICE. FURTHER, THIS RESPONSE IS NOT INTENDED TO AND DOES NOT CREATE AN ATTORNEY-CLIENT RELATIONSHIP.


  2. Yes, there definitely are IP issues you'll need to address. Virtually all professional sports teams, and most collegiate teams these days, maintain strong trademark protection over the use of their names. A trademark holder can seek to have a domain name containing the trademark transferred to the trademark holder through ICANN proceedings and may even opt to sue for trademark infringement, unfair competition, and violation and the federal Anti-cybersquatting Consumer Protection Act, all of which allow the recovery of damages and potentially attorney's fees from the domain name holder.

    You should consult a trademark/internet lawyer in your area before moving forward with any of these domain names.

    The information provided here is general in nature, is not legal advice, and does not create an attorney-client relationship with Will Montague or Montague Law PLLC.


  3. Using trademarks in your domain name is called "cybersquatting." There are both trademark and domain name remedies which the trademark holders can exercise. I further suspect that the products for sale on the sites have trademark infringement issues.

    The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.


  4. As my colleagues note, yes, just the act of registering a domain name may be unlawful and subject you to financial liability.

    The relevant law is the Anti-Cybersquatting Prevention Act:
    15 USC 1125(d) Cyberpiracy prevention
    (1)(A) A person shall be liable in a civil action by the owner of a mark … if, without regard to the goods or services of the parties, that person—
    (i) has a bad faith intent to profit from that mark … and
    (ii) registers, traffics in, or uses a domain name that—
    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
    (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
    (III) is a trademark, word, or name protected by [other statutes]. …
    (1)(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. …
    (3) The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable.

    15 USC 1117(d) Statutory damages for violation of section 1125(d)(1)
    In a case involving a violation of section 1125 (d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

    So not only can the Universities and sports teams sue you to ask the Court to the transfer to them the domain names that you registered, they can also chose to not even try to prove their damages and can simply ask the Court to award them $1,000 per domain name registration. This is tactically important because a defendant [in this case you] is not entitled to a jury trial when the plaintiff only seeks statutory relief [in this case the domain name transfers and statutory minimum damages]. Which means the judge decides the whole shooting match which dramatically reduces the cost of suit -- and so there's more likelihood the suit will be filed.

    In short, if you want to warehouse domain names for resale that include the names and/or trademarks owned by others then you need to work closely with your trademark attorney to reduce the risk of being sued.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  5. Yes you could have potential trademark infringement issues here. Most sports teams have their logos/marks federally registered with the USPTO. You can check if a trademark is registered by searching the USPTO website online, via its online search engine TESS (http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4006:utmnc8.1.1)

    As a possible option, most of collegiate/national sport teams provide licensing opportunities for individuals wanting to sell products using their trademarks. You'll need to find the contact information to their licensing department in order to obtain a license to sell/use their mark or products with their mark on them. It's typically an application and quality review process and approval isn't guaranteed. Hope this helps.

    AttorneySam.com

    This is not intended to be legal advice and is for educational purposes only. No attorney-client privilege has been created.


  6. Google "cybersquatting" and read about this. You are cruisin' for a bruisin'. Get an IP lawyer consultation and get this corrected yourself before the NCAA, MLB, etc. sue you. If you persist in this, t's not a matter of whether they send you a CDL, just a matter of when.

    So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.

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