Trademark Infringement By A Competing Website? Take Action Now.
Recently, I received a phone call from a client asking for advice on a reoccurring issue. The client asked: “Do I have legal recourse against a competing website that is utilizing my trademark in its domain name?”
The short answer is yes, but let's look at the reasons why.
Simply put, a domain name is a Web site's unique address on the Internet. It can be used to identify organizations and other entities on the Web (e.g., http://www.nike.com/us/en_us/). Like any other advertising message, signage, or other communication, a domain name can infringe upon a trademark. However, a claim of trademark infringement involves more than simply proving that your trademark is being used in another’s domain name.
Rather, to succeed on a claim of trademark infringement, a plaintiff must prove that the defendant's use of a mark or domain name has created a "likelihood of confusion" about the origin of the defendant’s goods and services. Courts evaluate several factors to determine if a likelihood of confusion exists. In the context of a competing domain name, oftentimes it is not difficult to establish a likelihood of confusion because the “infringing” website offers competing goods or services.
The Anticybersquatting Consumer Protection Act ("ACPA") should also be kept in mind. The ACPA generally prohibits using a domain name containing another’s trademark with intent to profit. Notably, the ACPA allows penalties of up to $100,000 per domain name abuse incident.
Oftentimes a demand letter is the best approach to remedying an infringing domain name. The demand letter will: (i) identify the infringing domain name, (ii) demand that the offending party cease and desist from using the infringing domain name, and (iii) set forth the consequences for noncompliance (i.e., possible lawsuit, penalties, and costs). In most situations, a well constructed demand letter will convince the offending party to cease using the offending domain name.
If you have questions regarding an infringing domain name, please contact me.
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