Is this a trademark infrignment?
I have registered a domain name say "domain.in". There already exists a website "domain.com". I did not use "domain.in" to make money in any form. I did not sell any products or services nor display any advertisements in "domain.in". But i simply displayed information related to the product of "domain.com". I received a notice from a advocate saying the company owning "domain.com" is their client and accused me of intellectual property infringement and claimed a huge amount as damage. Is this a crime? How should I handle this?
Please offer me an advice and help me
Attorney answers (2)
Ryan R Gile
Reputation Level 6
Answered over 2 years ago.
Intellectual Property Law Attorney in Las Vegas, NV.
Disclaimer: This answer is provided as a public service and as a general response to a general question, it is not meant, and should not be relied upon as specific legal advice, nor does it create an attorney-client relationship.
Under 15 USC §1125(d)(1)(A). a domain name registrant can be liable for cybersquatting if the registrant
(i) registers, traffics in, or uses a domain name that a) is identical or confusingly similar to a distinctive mark which is distinctive at the time of registration of the domain name or b) is identical or confusingly similar to or dilutive of a famous mark which is famous at the time of registration of the domain name and
(ii) has a bad faith intent to profit from that trademark, including a personal name, which is protected as a trademark under Section 43 of the Lanham Act.
You acknowledge that the domain name is similar to the company with the domain.com, so assuming that domain is a distinctive mark, then the issue becomes whether you registered it in bad faith.
The statute (*15 U.S.C. § 1125(d)(1)(B)(i)) sets forth nine non-exclusive "bad faith" factors that courts consider in determining bad faith:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.
Without knowing your specific details, it would appear that your strongest argument is #4 (non-commercial, fair use) -- you indicate you are simply displaying information related to the product. Or are you? Are you advertising a competing product? Do you have any ads displayed on the webpage? Things like those can change your non-commercial domain name into a commercial domain name.
Barring that, the primary factors would be whether you have trademark rights to the name (which you acknowledge you don't) and prior use of the domain in connection with goods or services (which you don't have either).
The "huge amount" of damges that they are referring to are the "statutory damages" for cybersquatting (15 U.S.C. § 1117(d)) which can range from $1000 min to $100,000 max per domain.
2 people marked this answer as good
Laura Mcfarland-Taylor
Reputation Level 18
Answered over 2 years ago.
Trademark Application Attorney in Bolingbrook, IL.
The answer above is excellent, but I was struck by this: "But i simply displayed information related to the product of "domain.com"." What, exactly, does this mean? Was it positive, negative?
You really should speak with an intellectual property attorney before deciding on a course of action.
1 person marked this answer as good
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