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Trademark Guide: Domain Names and Infringing Use on the Internet

By Stephanie Robinson

eBay recently entered into a stipulated final judgment with the operator of another Internet auction site that, as alleged by eBay, committed trademark infringement, dilution, false designation of origin and unfair competition through its use of a confusingly similar domain name ? CoinBay.biz. Under the agreement, the CoinBay operator agreed to change the name of its site to CoinDay.com and to never attempt to register any trademark with ?bay? or with a logo that includes offset letters or alternating colors, as in the well-known eBay logo. The case serves as a reminder to all businesses owning famous marks that policing potentially infringing use of those marks by others can be a challenging prospect. An illegally infringing use can involve all or, as in the eBay case, only part of a mark. In some cases, though there may be a facially infringing use, if it is not tied to the promotion of products or services similar to those associated with the protected mark, the owner?s legal remedies may be limited. Furthermore, while certain cases may require trademark, cybersquatting, or unfair competition litigation in order to reach a resolution, others may be addressed through indirect methods, such as a request to an Internet service provider (ISP) that it take down an infringing site. With trademarks, as opposed to copyrights, the latter remedy may be somewhat less obvious, as there is no trademark equivalent to the Digital Millennium Copyright Act, under which an ISP is given safe harbor from potential copyright claims only if it removes infringing material in response to written notice from the copyright owner. In contrast, for trademarks, an ISP?s own terms of use often can be helpful in convincing it to remove infringing content. The amount of business conducted worldwide on the Internet will only continue to increase into the future. Policing unauthorized use of protected marks on the Internet is therefore the lynchpin to an effective trademark enforcement regime.

Full post as published by Business and Technology Law on March 06, 2008 (boomark / email).