Legal Issues Surrounding Domain Names, Part 2

So it begs the question well what is famous. Every country sets their own different standards for that in the US, especially with the advent of domain names, a lot of trademark holders were using the dilution and tarnishment remedies to fight against domainers. Courts starting seeing this very loosely and they were granting this famous status to trademarks that really weren't famous. They were maybe famous within a particular niche industry or maybe within a particular profession. But within the general consuming public, they would definitely not be considered famous. So that was a problem, the waters were becoming very murky for anybody to have good predictable guidelines to try and make smart decisions so luckily last year they passed a new dilution act that basically sets a very firm standard on what famous is. And that is famous in the eyes of the general consuming public. And that's going to make it very difficult for trademark holders to pull the dilution defense because even if you are like say a famous detergent brand that's not to say that the public knows who you are or they are going to instantly identify that company with that trademark. The law wasn't all that great as they made the standard for famous harder, they also made the other standards easier. So it used to be that you had to show actual dilution, it's such an ethereal concept because how do you show actual dilution. Under the new law they have to show what's called likelihood of dilution (which anybody can make).

Moving out of trademarks, we have very similar types of rights. We have publicity rights which can be seen as an individual's trademark rights to their name. Commercial use here is going to be the big factor here. If you are using somebody else's name for commercial purposes without their consent it could infringe upon their publicity rights. That being said, if it's a public figure they have opened themselves up about much more public discourse about them but a difference between commenting or speaking about somebody than commercially using their likeness. You can kind of think of it in similar veins when a celebrity has their photo taken and somebody uses it in their marketing material without their consent because that basically creates a relationship in the mind of the consumer with the relation of the two. With domain names it's a similar thing.

Another related law is Passing Off, which is very similar to trademark law but it's kind of the common law unfair competition version of it. With passing off its basically more of a 'are you presenting yourself out as this company to confuse consumers on purpose. There have been some famous cases involving companies that have very descriptive trademarks and other companies who start up or use domain names that incorporate those descriptive trademarks then the company will come and make a passing off name. PhonesToGo.co.uk was a very famous case on this. PhonesToGo is a registered fairly strong trademark in the UK and they were able to shut down the use of domains that were incorporating that term that were being used to sell phones. Trademark infringement was difficult to show but passing off was fairly easy even though the defense there being there was no intent to pass off. But in the minds of the consumers if they were confused then that was good enough.

That was a summary of the different laws out there that need to be avoided, which now asks the question: 'How do we avoid these problems?' One of the best things to do is trademark searches. Knowing what is out there, knowing what the trademark is, who the holder is, where they are located, and what goods/services are associated with it. To illustrate this point one of the cases that I talk about a lot is elephant.com, which is related to a UK insurance company. In that sense it would be a very strong trademark as elephants have nothing to do with selling insurance as it would be a very strong identifier if they put enough marketing efforts into it. The domain owner had his own Google solution, and had a picture of an elephant and then Google ads. His keyword was elephant. Well it just turned out that the competitors of this insurance company were putting through ads with the elephant keyword. So he had no role in the competing ads showing up on his domain name. But if he has gone in and advance and did some trademark searches and seen that elephant was an insurance company and I know for certain that I want to avoid insurance related keywords than that would be a smart choice. Luckily for him he did avoid insurance related keywords he just had elephant and the insurance company lost their UDRP case and their US court case when they tried to take the domain name away from him. But it's important to think about those things because especially when we are using parking solutions that use a lot of popular search records to see what people are looking for there might be that temptation to take some of those keywords that people are typing in to the search bar and try to increase your CTR. But that's a temptation that should be avoided, because that is where you can take a legitimate domain name that is being used legitimately and cross the line by that selection of keyword there. That's why we need to know what trademarks are associated with our domains. Because it can be very easy and sometimes tempting to take a legitimate domain and do something silly with it. While you might make some short term money it's going to give you long term problems. Under the UDRP they have to show bad faith at the time of registration. you might still be able to win a UDRP case with a generic domain name in that type of scenario but under the ACPA or under the other similar laws it wouldn't be as relevant . When you have a generic domain name we need to stick to the category that it is indented to be in.