Left-Wing Groups Registering Domains Such As bush2004, georgewbush.org Are Violating TM Law

For those of you who are interested, left-wing groups registering domain names such as www.bush2004.com, www.bush2004.org, georgewbush.org, etc. are clearly violating the Lanham Act, i.e federal trademark law. The pertinent law reads as follows:

(1) In general. (A) Civil liability. Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person. (B) Exception. A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under title 17, United States Code, including a work made for hire as defined in section 101 of title 17, United States Code, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person. The exception under this subparagraph shall apply only to a civil action brought under paragraph (1) and shall in no manner limit the protections afforded under the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) or other provision of Federal or State law.

(2) Remedies. In any civil action brought under paragraph (1), a court may award injunctive relief, including the forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff. The court may also, in its discretion, award costs and attorneys fees to the prevailing party.

(3) Definition. In this subsection, the term "domain name" has the meaning given that term in section 45 of the Trademark Act of 1946 (15 U.S.C. 1127).

(4) Effective date. This subsection shall apply to domain names registered on or after the date of the enactment of this Act [enacted Nov. 29, 1999].

Where corporate officer registered individual's name as domain name before Anticybersquatting Consumer Protection Act (Act) became effective, and, after effective date of Act, officer's corporation registered same name with different domain name registrar, corporation's registration was subject to Act. Schmidheiny v Weber (2003, CA3 Pa) 319 F3d 581. "Creation date" of domain name does not control whether domain name registration is subject to Anticybersquatting Consumer Protection Act, and plain meaning of word "registration" is not limited to "creation registration." Schmidheiny v Weber (2003, CA3 Pa) 319 F3d 581. Language of 15 USCS § 1129, part of Anticybersquatting Consumer Protection Act, does not limit word "registration" to narrow concept of "creation registration." Schmidheiny v Weber (2003, CA3 Pa) 319 F3d 581. Word "registration," for purposes of 15 USCS § 1129, part of Anticybersquatting Consumer Protection Act (Act), includes new contract at different registrar and to different registrant; in this case, that occurs after effective date of Act. Schmidheiny v Weber (2003, CA3 Pa) 319 F3d 581. Individual does not lack standing to bring action under 15 USCS § 1129 simply because he is foreign national. Schmidheiny v Weber (2001, ED Pa) 59 USPQ2d 1313. There was no extraterritoriality impediment to Swiss national's claim for violation of 15 USCS § 1129, where defendant was American resident, and his challenged activities occurred within U.S. Schmidheiny v Weber (2001, ED Pa) 146 F Supp 2d 701, 59 USPQ2d 1313. Claim that owner of Internet domain names Schmidheiny.net and Schmidheiny.org engaged in unfair competition under state law by suing owner of name Schmidheiny.com for violation of 15 USCS § 1129(1)(A), was preempted by Anti-cybersquatting Consumer Protection Act, since allowance of state claim would create direct conflict with purposes of Act. Schmidheiny v Weber (2001, ED Pa) 164 F Supp 2d 484.

More on that:

15 USCS § 1114 (2004)

§ 1114. Remedies; infringement; innocent infringment by printers and publishers

(1) Any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

As used in this paragraph, the term "any person" includes the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.

(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act or to a person bringing an action under section 43(a) or (d) [15 USCS § 1125(a) or (d)] shall be limited as follows:
(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 43(a) [15 USCS § 1125(a)] shall be entitled as against such infringer or violator only to an injunction against future printing.
(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, United States Code, the remedies of the owner of the right infringed or person bringing the action under section 43(a) [15 USCS § 1125(a)] as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.
(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 43(a) [15 USCS § 1125(a)] with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.
(D) (i) (I) A domain name registrar, a domain name registry, or other domain name registration authority that takes any action described under clause (ii) affecting a domain name shall not be liable for monetary relief or, except as provided in subclause (II), for injunctive relief, to any person for such action, regardless of whether the domain name is finally determined to infringe or dilute the mark.
(II) A domain name registrar, domain name registry, or other domain name registration authority described in subclause (I) may be subject to injunctive relief only if such registrar, registry, or other registration authority has--
(aa) not expeditiously deposited with a court, in which an action has been filed regarding the disposition of the domain name, documents sufficient for the court to establish the court's control and authority regarding the disposition of the registration and use of the domain name;
(bb) transferred, suspended, or otherwise modified the domain name during the pendency of the action, except upon order of the court; or
(cc) willfully failed to comply with any such court order.
(ii) An action referred to under clause (i)(I) is any action of refusing to register, removing from registration, transferring, temporarily disabling, or permanently canceling a domain name--
(I) in compliance with a court order under section 43(d) [15 USCS § 1125(d)]; or
(II) in the implementation of a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another's mark.
(iii) A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.
(iv) If a registrar, registry, or other registration authority takes an action described under clause (ii) based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs and attorney's fees, incurred by the domain name registrant as a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation of the domain name or the transfer of the domain name to the domain name registrant.
(v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this Act. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
(E) As used in this paragraph--
(i) the term "violator" means a person who violates section 43(a) [15 USCS § 1125(a)]; and
(ii) the term "violating matter" means matter that is the subject of a violation under section 43(a) [15 USCS § 1125(a)].

Decisions/interpretations

Use by defendant of plaintiff's trademark as domain name for web site was properly viewed, for purposes of 15 USCS § 1114, as being "in connection with" distribution or advertising of goods or services, since web site contained hyperlink that connected users to defendant's other web site which was operated for commercial purposes. OBH, Inc. v Spotlight Magazine, Inc. (2000, WD NY) 86 F Supp 2d 176, 54 USPQ2d 1383.

Domain name registrant, who has lost in World Intellectual Property Organization (WIPO) adjudicated Uniform Domain Name Dispute Resolution Policy proceeding, may bring action in federal court under 15 USCS § 1114(2)(D)(v) seeking to override result of earlier WIPO proceeding by having his status as nonviolator of Anticybersquatting Consumer Protection Act declared and by getting injunction forcing transfer of disputed domain name back to him. Sallen v Corinthians Licenciamentos LTDA (2001, CA1 Mass) 273 F3d 14, 60 USPQ2d 1941.

Argument, that 15 USCS § 1125(d) must impose liability on domain name registrar or keeper of registry because 15 USCS § 1114(2)(D)(iii) would otherwise be superfluous, is without merit, since latter statute refers only to damages under 15 USCS § 1114, and not 15 USCS § 1125; additionally, 15 USCS § 1114(2) does not create independent causes of action, but only limits available remedies. Lockheed Martin Corp. v Network Solutions, Inc. (2001, ND Tex) 141 F Supp 2d 648, 59 USPQ2d 1231.

Travel agent registered and obtained incontestable trademark, long before website operator bought domain name under mark; thus, operator who made no trademark search had no rights in mark, unfairly competed, infringed mark, and cybersquatted. Eurotech, Inc. v Cosmos European Travels Aktiengesellschaft (2002, ED Va) 213 F Supp 2d 612.

Where North Carolina company had registered Internet domain names that were identical to car manufacturer's name, car manufacturer had promoted its mark continuously for 40 years, and there was strong consumer recognition of car manufacturer's mark, company was preliminarily enjoined from using domain names without disclaiming affiliation with car manufacturer due to likelihood of consumer confusion. Nissan Motor Co. v Nissan Computer Corp. (2000, CD Cal) 89 F Supp 2d 1154, affd (2000, CA9 Cal) 246 F3d 675, reported in full (2000, CA9 Cal) 2000 US App LEXIS 33937.

District court's judgment denying U.S. plaintiff's claim for declaratory relief that Internet domain name that was same as name of Spanish city was valid, was reversed, because defendant foreign city did not have valid trademark under Lanham Act, which expressly applied to case by statute. Barcelona.com, Inc. v Excelentisimo Ayuntamiento de Barcelona (2003, CA4 Va) 330 F3d 617, 67 USPQ2d 1025.

Where both truck manufacturer and website owner administered websites providing truck locator services, truck manufacturer was entitled to preliminary injunction in trademark infringement action against website owner due to strong likelihood of success on merits based on website owner's use of manufacturer's trademark in internet domain names. PACAAR Inc. v Telescan Techs., L.L.C. (2003, CA6 Mich) 319 F3d 243, 65 USPQ2d 1761, 2003 FED App 40P.

Defendant's use of "cardservice" in internet domain name in competition with plaintiff infringes plaintiff's CARD SERVICE trademark, and defendant's attempts to damage plaintiff's business by internet postings during litigation are considered in awarding attorney fees to plaintiff. Cardservice Int'l v McGee (1997, ED Va) 950 F Supp 737, 42 USPQ2d 1850, affd (1997, CA4 Va) 1997 US App LEXIS 32267.

Due to nature of Internet use, defendant's appropriation of plaintiff's mark as domain name and home page address may not adequately be remedied by disclaimer; in those situations where disclaimers are insufficient to cure confusion with respect to domain names, only proper resolution is to cancel or assign to trademark owner infringing domain name. Ford Motor Co. v Ford Fin. Solutions, Inc. (2000, ND Iowa) 103 F Supp 2d 1126, 55 USPQ2d 1217.

Disclaimer: Opinions posted on Free Republic are those of the individual posters and do not necessarily represent the opinion of Free Republic or its management. All materials posted herein are protected by copyright law and the exemption for fair use of copyrighted works.