Question on domain and trademark law

March 27, 2011 12:58 PM

I plan to talk to a lawyer about this but right now, I'm doing my research and would like to reach out to the MeFi community for advice.

I own a domain name and I noticed someone is running a site using a very similar domain (ie., if I owned autoblog.com, they're using auto-blog.com).

I ran a content site for several years, ending in 2006 when the site got hacked and I replaced it with a placeholder page.

The other site with the similar domain has been running for almost a year, covering identical material that my site covered in the past.

Do I have a strong case against this site? I simply want them to operate under a different name, surrender the domain over and pay for any legal fees resulting.

posted by wesker to law & government (19 answers total)

By identical material, do you mean exact word-for-word articles copied from your site?
posted by demiurge at 1:08 PM on March 27, 2011

Do you have a trademark on the name used in your domain? If so, you may prevail in a complaint under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Bad faith and not having any rights or legitimate interests in the domain are the other two tests you need to meet before you'd win in a UDRP complaint. This is the way I would go since it would result in your being awarded the domain if you prevail.

If you lack a trademark, my response would be to let it go unless you are willing to register a trademark and then argue against the other party's use of the domain. I am not fully versed on trademarks, but your not having used the name since 2006 may result in that being a difficult road to travel.
posted by fireoyster at 1:08 PM on March 27, 2011

@demiurge,

No, not exact word-for-word articles. They are covering the same subject matter that my website did in the past.

Using my example in my question, both cars and the auto industry.
posted by wesker at 1:11 PM on March 27, 2011

If your site is just a placeholder page right now, it will be difficult to demonstrate that they are harming you in any way.

Is the domain name as generic as your example suggests? Right now it sounds like somebody else wanted to get some AdSearch revenue from blogging about cars, found an available name, and went to work. Covering "the same subject matter" on a topical blog doesn't sound very hard to do, or malicious.

If your domain name is more unique than your example suggests, then I could see some evidence of intent to deceive on their part, and UDRP is probably the way to go.
posted by misterbrandt at 1:21 PM on March 27, 2011 [2 favorites]

If their articles are new writing, even if they cover the same subject, then as far as I know you don't have any kind of claim. They're not violating your copyright. Sounds like you don't have a trademark. Imitation isn't actionable.
posted by Chocolate Pickle at 1:34 PM on March 27, 2011

Trademark is not as black-and-white a concept as others here make it out to be; you can establish rights to a mark through use, even without registering and obtaining a formal trademark registration. However, failure to use the page for content in five years makes it relatively less likely that you could obtain any relief.

It's very hard to tell anything without knowing the domain names involved, so going to a lawyer is your best bet. He or she can tell you about your rights under the Uniform Domain Name Dispute Resolution Policy and under US federal trademark law.
posted by raf at 1:39 PM on March 27, 2011

It seems that the status of your trademark registration is going to be key.

Absent any trademark rights, you'd lack standing to pursue a UDRP claim. An action under the UDRP requires that the domain in question be "identical or confusingly similar to a trademark or service mark in which the complainant has rights". You can still make a case that without a federal trademark registration you still have common-law trademark rights but that's easier said than done.

From: http://udrpcommentaries.wordpress.com/2010/08/03/proving-common-law-trademark-threshold-for-jurisdiction/ :

It is not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). However, the proof demands for registered and unregistered are significantly different. Whereas the owner of a registered mark succeeds in proving its trademark right by submitting a copy of the registration certificate – which “is prima facie evidence of [the trademark’s] validity,” NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009) and also “creates a rebuttable presumption that the mark is inherently distinctive,” Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO March 5, 2002) – an owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark was recognized by the consuming public as an indicator of its goods or services when the domain name was registered.

If the name in question really is something descriptive like the "Auto Blog" example, then proving secondary meaning sounds like it's going to be really difficult. And if you're looking at reaching back to 2006 to find secondary meaning, that sounds an awful lot like a trip down the rabbit hole.

(Indeed, from the "Dogs Bite" decision cited previously, "If a mark is considered merely descriptive, it is incapable of functioning as a trademark. A mark is merely descriptive when used on or in connection with the services that contain a term that directly and immediately conveys some knowledge of the characteristics of the product or service. A mark is descriptive if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods. The Complainant has not registered the mark or any variation of it. The mark is incapable of registration because it is descriptive if not generic. It consists of two words which describe information provided by the Complainant. A complainant cannot claim rights in a mark comprised of two or more words when the words are common and descriptive and particularly when these words are not exclusively associated with the Complainant's business.")

The lawyer you consult with can provide with specific legal advice after looking at the specific domain names in question and the specific way which you used the putative trademark in the past. This comment is just providing the framework for that discussion (with someone else) and is not intended to create any sort of attorney-client relationship.
posted by QuantumMeruit at 2:37 PM on March 27, 2011 [1 favorite]

Do you have a trademark on "autoblog" or something? Hard to tell from just the title.
posted by rhizome at 3:33 PM on March 27, 2011

My guess would be that getting payment for the money you spend suing them will be near impossible. In general, that does not seem to be how things work in the US.

So, the new question becomes, how much are you willing to spend, and what are the odds of a successful outcome in getting the domain back?

Please feel free to peruse this website to better understand the issues involved in domain name seizure:

http://www.nissan.com
posted by Maxwell_Smart at 4:58 PM on March 27, 2011

@misterbrandt, @raf and @QuantumMeruit

Thank you for your advice and time.

To clarify the question about trademark status, I currently do not have a registered trademark.

A concern I have is about liability on any future activity with the domain/website, especially if the other party obtains a registered trademark for the name.

Generally speaking, what would occur to someone in under these specific circumstances?
posted by wesker at 6:46 PM on March 27, 2011

Trademarks tend to be first-come, first-served. Conceivably you could pursue your vengeance by getting a trademark now and using your previous work against them, possibly enraging your potential users who are presumably some significant portion of auto-blog's current users. Other than that I don't really think you have any standing here. It just sounds like you dropped the ball and someone else picked it up. They even waited four years.

I have a domain name that someone else registered a trademark after I had it. They sent a few email nastygrams some years back, but nothing real has happened so far.
posted by rhizome at 6:57 PM on March 27, 2011

@misterbrandt

Upon further investigation, the owners of the site are definitely looking to pursue a commercial venture.

They are selling a digital subscriptions for a magazine with the same name, running a podcast, attending industry events, etc.
posted by wesker at 11:48 AM on March 28, 2011

@rhizome

Are you currently publishing content on that domain? Were you publishing when the trademark owner contacted you?
posted by wesker at 11:51 AM on March 28, 2011

Not currently, no, but I have in the past. I believe a site was up when they contacted me. Point being, they have even more claim to the word in the domain name than you do in yours.
posted by rhizome at 12:35 PM on March 28, 2011

IANYL - but I do this day in and day out as an IP attorney.

You have a big problem with letting your site lapse since 2006. In trademark parlance, you have abandoned your rights in or whatever trademark/domain you were publishing under. A claim of abandonment typically requires 3 years of non-use - then the burden would shift back to you to demonstrate your continuing efforts to use the mark.

For a UDRP, you do not need a registered trademark, but have to demonstrate you have acquired secondary meaning/trademark significance in . This is made all the more difficult if your trademark is generally descriptive of what the services are. It will also be hard for you to establish sufficient secondary meaning when the site has been blanked for 4 years.

Your best bet is to let the name go. Do not offer to transfer or sell - that puts a big target on your back because this is major evidence of bad faith under the UDRP. If the name is very descriptive, you would always have difficulty building a strong trademark - choose something better. Also, if this other party has been building increasing rights in something similar while you did nothing with the mark, any attempt on your part to start use again will lilely be monitored and you will always have the risk of enforcement by the (now) stronger party.
posted by polyhistoric at 1:47 PM on March 28, 2011

I don't think he had any rights to abandon, save (potentially) copyrights on content of the site itself.
posted by rhizome at 4:25 PM on March 28, 2011

@rhizome

Could you clarify your last comment? I'm a bit unclear on its meaning for me.

Thank you.
posted by wesker at 4:35 PM on March 28, 2011

You have your already-existing content, which has copyright protection for the authors. If they were copying this, you'd be able to go after them for copyright infringement. Other than that, I don't see any more rights than that in play here. Patents are irrelevant, there are no trademarks and copyright goes to the writers and artists (typically and by default). So, what else could there be to go after them for?

You can sue anybody for anything, and I'd like to say some IP lawyer will come in with some sure-fire magic, but after 8-10 years of following copyright as a layman I'm pessimistic about your having a chance of success at all here. Sorry.
posted by rhizome at 6:20 PM on March 28, 2011

@rhizome

No offense taken. I just wanted you to clarify that comment.

Now I have a list of questions to ask counsel. And I appreciate the commentators here, sharing their expertise.

There's a great community here at MiFi.
posted by wesker at 8:41 PM on March 28, 2011