Skip to content

Domain Name Ownership Rights Take a Hit for Trademarks

December 5, 2009

We’ve all been there.  You misspell Google.com when you type too it quickly, and you end up at goggle.com.  Or your brain misfires and you type MacDonalds.com, intending to find a fast food chain.  In either case, you end up at a site with nothing but a few advertisements.  While they are annoying, people who camp these similar addresses have paid for the privilege to do so and are being undermined by a recent decision of the National Arbitration Forum.

Some background:  The Internet Corporation for Assigned Names and Numbers is a non-profit that keeps track of internet domain names.  When you register your site with your hosting service, they are registering it, somewhere down the line with ICANN

As a part of registering with ICANN, registrants agree to a Uniform Domain Name Dispute Resolution Policy.  This means that if you want to contest the ownership of a domain, or there is some other argument around a domain name, the dispute must go to an arbiter instead of a courtroom.  There are only four approved arbiters, only two that use English, one of which is the National Arbitration Forum, which heard this case.

In this case, a company, Netcorp, LLC, registered over a thousand variations on the domain “freecreditreport.com,” each with minor changes that a user might mistake for the correct url [like “free-credit-report.com”].  The owners of “freecreditreport.com,”  Consumerinfo.com, brought an action in the Natinoal Arbitration Forum to force out Netcorp.

The NAF agreed with Consumerinfo.com, and held that the domains infringed on the their trademark rights.  Netcorp will have to stop using them.

This is not the first time this has happened.  Within the opinion itself, the arbiters cite many instances where typosquatters have been made to give up their sites (such as Microssoft.com, which now redirects to a bing search for Microsoft).

The obvious benefit of this ruling is that businesses will have some confidence that their site is the only one their customers will find when searching. 

There are a lot of questionable effects here, though.  The first, given the scope of the ruling, is that anyone using a “confusingly similar” domain name to an established company with an easily recognizable trademark could be the target of an action to stop using their domain.  The opinion suggests a legitimate purpose can validate a site.  But what if, for example, an owner is holding on to a domain hoping to one day develop a site there.  This is especially troublesome when considering that an individual might eventually start a business with an entirely different purpose than the one whose trademark is similar.  What interests qualify as legitimate?  Further, what is illegitimate about placing ads on a site until one develops it for further use?

In my mind, the problem is capitalizing off the trademark.  But is the misspelled or incorrect URL encompassed in the trademark?  The NAF thinks so, but I am not so sure.

Conceptualize it this way: a business in your town has an address, say 123 East Main St.  Another company opens up a business at 123 West Main St. that sells similar products.  This is akin to a company camping a similar URL.  A URL is not the trademark, it is the address.

I guess I just don’t see the same ownership rights over URLs that the NAF does.  I don’t think that if I have an easily recognizable trademark, I am permitted to abridge the ownership of all property (as I think domain names should be considered) similar to that trademark.

But hey, what do I know?  I’m just a law student. 

Thanks to the North Carolina Journal of Law and Technology for blogging on this ruling.

Advertisements

Reply:

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s