This guide explains the legal bases for liability due to registering another's trademark as, or within, a domain name.
Trademark infringement [15 U.S.C. 1114]
The mere registration of another's registered trademark as, or within, a domain name does not infringe the mark owner's trademark rights. Publishing a website at any such domain also does not necessarily infringe. To infringe, the website contents must offer a product or service for sale in a way that's likely to cause consumer confusion, mistake, or deception. But only some marks are federally registered. And even if so, absent one or more of those consumer responses--which can often be dispelled by skillful wording and disclaimers on the website--the website does not infringe.
Trademark dilution [15 U.S.C. 1125(c)]
The mere registration of another's famous trademark as, or within, a domain name does not dilute the mark owner's trademark rights. Publishing a website at any such domain also does not necessarily dilute. To dilute, the website contents must offer a product or service for sale in a way that's likely to blur the distinctiveness or tarnish the famous mark. But few marks are "famous." Moreover, it's not dilution to use a famous mark fairly, for news reporting or commentary, or for noncommercial purposes.
False designation of origin
False designation of origin [15 U.S.C. 1125(a)]
The mere registration of another's trademark as, or within, a domain name does not create a false designation of origin. Publishing a website at any such domain also does not necessarily falsely designate the site or its contents. To do so, the contents must offer a product or service for sale and likely lead consumers to falsely believe the website owner is the mark owner or is affiliated, connected, or associated with it or that the website owner's product or service comes from the mark owner or the latter sponsors or approves of the product or service. Again, skillful wording and disclaimers can often dispel any such likely confusion.
Cybersquatting [15 U.S.C. 1125(d)]
Registering, trafficking, or using another's trademark as, or within, a domain name may be cybersquatting if: the domain name is identical or confusingly similar to the mark, or is dilutive of a "famous" mark, and the registrant has a bad faith intent to profit from the mark. The "bad faith" analysis is guided by statutory factors designed to distinguish between wrongful and lawful conduct. For example, the registrant's bona fide noncommercial or fair use of the mark on the website at the domain indicates lawful conduct as does registering a domain name that consists of the registrant's legal or commonly used name. Moreover, there is no bad faith when the registrant believed, and had reasonable grounds to believe, that its use of the domain name was fair or otherwise lawful.
ICANN Uniform Dispute Resolution Proceeding [or any analogous proceeding created by any of the domain name registries].
Registering and using another's trademark as, or within, a domain name may expose the registrant to a mandatory arbitration proceeding over ownership of the registration if: the domain name is identical or confusingly similar to another's mark, the registrant has no rights or legitimate interests in the domain name, and it was registered and is being used in bad faith. If the website at the domain is published solely for noncommercial use then the registrant is typically found to have a legitimate interest and no bad faith. Moreover, the domain name must be in use--that is, a webpage must be published at the domain. The most server penalty against the registrant is an order requiring it to transfer the domain name registration to the mark owner [there is no risk of monetary liability].
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