Trade Marks on the Internet copyright 1996-2003; last updated August 14, 2003




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Legitimate Use


Unlike trade mark registries, the domain name systems do not differentiate between various classes of wares or services. Consequently, there can be several people with the same trade mark seeking to register the same domain name.

Examples of unintentional overlap of names include:



  • registration of "dc.com" by a service offering information about Washington, D.C. was disputed by Warner Brothers as owner of the trade mark DC COMICS; [ironically, the site is now registered to Deloitte Consulting] and

  • registration of thegap.com standing for Genesis Access Point, the trade mark for an Irish Internet service provider, which was unsuccessfully challenged by The Gap, Inc. clothing store.

Where the competing claimants to a domain name both have a legitimate interest in that name, it will belong to the first person to register.

Trade Mark Infringement


The clearest case of trade-mark infringement using a domain name arises where a competitor registers a domain name in order to confuse the public as to the source of wares or services. Trade mark infringement, and related actions for depreciation of goodwill and passing off are discussed below in the section entitled Recovering a Domain Name.

Typosquatting


Savvy infringers can take advantage of typographical errors made when Internet users type in a domain name. For instance, Philip Morris has sued the owner of phillipmorris.com for trade mark infringement.

The other danger of typosquatting was revealed in a Norwegian case involving the domain names kvaerner.com (“AE”) and kvearner.com (“EA”). Apparently, EA got confidential information intended for AE and EA and criminal proceedings for violation of trade secrets and extortion were brought against it.


Protest and Parody Sites


In this category of cases, trade mark rights conflict with free speech interests. Domain name registrants will often incorporate a trade mark into a domain name that will be used in conjunction with a web site to parody or criticize the trade mark owner. For example, in Lucent Technologies, Inc. v. Lucentsucks.com17 a critic of Lucent Technologies registered the domain name LUCENTSUCKS.COM. Lucent Technologies sued to silence its critic. Although the case was decided on jurisdictional grounds, the court seemed prepared to entertain the registrant’s argument that it had a legitimate free speech interest in the domain name.

As a precautionary tactic, Verizon Wireless registered the domain name verizonsucks.com. However, soon afterward, hacker-zine 2600 Magazine registered verizonreallysucks.com. Verizon’s lawyers sent a cease and desist letter to 2600 publisher Emmanuel Goldstein alleging that the registration violated the ACPA. A limitation of the ACPA is that it only prevents someone from registering a domain name similar to a trade mark if they have a “bad faith intent to profit from” that domain name. Because Goldstein registered the domain name verizonreallysucks.com to ridicule the newly formed company and not to make a profit, it is most likely that the ACPA did not apply. verizonreallysucks.com is still being operated as a protest site. In another antagonistic move, the Magazine registered another domain name: VerizonShouldSpendMoreTimeFixingItsNetworkAndLessMoneyOnLawyers.com.

Similarly, free speech concerns prompted a British Columbia court to find that a union’s web site, which used trade marks from its employer’s site as graphics and in meta-tags, did not amount to trade mark infringement. The case, British Columbia Automobile Association v. Office and Professional Employees’ International Union, Local 378 is discussed below.

It does not appear that the UDRP gives the same weight to free speech interests. In a case involving several domain names including WALMARTCANADASUCKS.COM, the panel found that the registrant had registered the name, in bad faith and ordered the domain names at issue transferred to Wal-Mart Stores, Inc. Philips, the electronics company, was also able to get antiphilips.com from its original registrant through a UDRP proceeding. The decisions have not, however, been consistent.


Reverse Domain Name Hijacking


The owner of a trade mark registration can use the UDRP to challenge a domain name being used for unrelated wares or services. Mark Partridge calls this practice “Reverse Domain Name Hijacking”.18 Reverse domain name hijacking was attempted by trade mark owners under NSI’s dispute resolution policy. Examples of these types of cases include:

  • Interstellar Starship Services, Ltd. v. Epix, Inc.19

  • Giacalone v. Network Solutions, Inc.20

As the law in this area develops, courts and arbitrators have become more sensitive to the fact that trade mark rights don't always entitle a person to recover a domain name.

The new CDRP expressly addresses instances of reverse domain name hijacking and calls for a fine of $5000.00 for such behaviour.


RECOVERING A DOMAIN NAME


Once someone else has registered your trade mark as a domain name, there are several ways of recovering it. Typically, domain name disputes are based on the following legal causes of action: trade mark infringement; passing off; depreciation of goodwill; trade mark dilution; tarnishment; and cybersquatting. In addition, domain name disputes can be resolved through arbitration, mediation and compromise. A list of precedent setting cases in domain name disputes is available from WIPO. Since the CDRP has not yet been implemented by CIRA the only way to recover a .ca domain name is to bring legal action for trade-mark infringement, passing off or depreciation of goodwill.

Trade Mark Infringement


A registered trade mark owner has the exclusive right to use the mark, and that right is infringed when anyone else sells, distributes or advertises wares or services in association with a confusing trade mark or trade name.21 Similarly, no one is permitted to use someone else’s registered trade mark in a manner that is likely to depreciate the value of the trade mark’s goodwill.22

One of the first Canadian domain name disputes involving trade mark infringement concerned the word SYMPATICO. Sympatico was (and is) the name of an Internet service offered by Bell Sygma and MediaLinx Interactive Inc.23 These two companies registered the domain names sympatico.com and sympatico.ca. However, Marc Nicholas of Toronto obtained the domain name sympatico.net which he used to promote his Internet consulting company. MediaLinx disputed Nicholas' right to use the domain name and sympatico.net was withdrawn from registration. This was also one of the first domain name disputes involving similar domain names with different generic extensions.24 Since the dispute, MediaLinx has registered SYMPATICO as a trade mark in Canada. sympatico.net is not currently in use but a   WhoIs? search indicates that the domain name is now registered to MediaLinx.

In ITV Technologies Inc. v. WIC Television Ltd. the Federal Court of Canada first granted an interim order and then dismissed an interlocutory injunction against ITV Technologies. WIC had registered the trade mark ITV and ITV Technologies wanted the trade mark expunged. ITV challenged the trade mark because it wanted to undermine WIC's claim to the domain name itv.net. WIC had used ITV as a trade mark since 1974 for television broadcasting and program production and had used it as a basis to obtain the domain name itv.ca. ITV Technologies was "net-casting" from its web site since late 1995 (two years before the injunction hearing). ITV Technologies had posted a disclaimer on its web site "ITV.net has no affiliation with CITV" and had undertaken to provide a link to the WIC site. The Court was not satisfied that irreparable harm would result. Appeals to the Federal Court of Appeal and the Supreme Court of Canada were dismissed.25

The question of whether use of someone else's trade mark as a domain name constitutes trade mark infringement is not settled. For example, notharvard.com bumped heads with Harvard University over the use of Harvard in the domain name. This case may also involve the thorny issue of disclaimers and whether they dispel or create confusion.



In Innersense International Inc. v. Manegre26 an Alberta Court granted an ex parte interim injunction restraining the defendants from directly or indirectly selling or transferring registration of the domain name INNERSENSE.COM. Apparently, one of the defendants, a former employee, was responsible for registering the domain name with NSI. The domain name registration expired and the domain name was registered by the second defendant, the brother of the former employee. The defendants then offered the domain name for sale in the press. Applying the traditional test of (1) serious issue, (2) irreparable harm, and (3) balance of convenience, in determining whether or not to grant the injunction, the Court found that "problems with the possibly simple and quick transferability and marketability of this Internet Domain Site and with respect to Internet Domain Sites generally literally to any point in the world, lead me to believe that the balance of convenience or inconvenience is best served by granting the Application."

British Columbia Automobile Association v. Office and Professional Employees’ International Union, Local 37827, was an action for passing off, trade mark infringement and copyright infringement in relation to Internet web sites. The plaintiff, British Columbia Automobile Association (“BCAA”) claimed that the defendant, Office and Professional Employees’ International Union, Local 378 (the “Union”), a union representing 170 office employees of BCAA, copied design elements and trade marks from BCAA’s web site and posted those copies on the Union’s own web site. BCAA also complained that the Union was guilty of passing off and had depreciated the goodwill of BCAA’s trade marks by using them in domain names and meta-tags. In March of 1999, the Union registered the domain names BCAAONSTRIKE.COM and PICKETLINE.COM and later BCAABACKTOWORK.COM. All three of the Union’s domain names took a browser to the Union’s web site. BCAA alleged that the Union copied fundamental design elements from the BCAA web site. BCAA sent the Union a cease and desist letter. In response, the Union modified certain portions of their web site and the meta-tags coded into their web site, however, the Union continued to reproduce a substantial part of the BCAA web site meta-tags. Although BCAA alleged that the Union’s unamended site infringed BCAA’s copyright in its own web site, BCAA did not advance that claim in respect of the amended site. The causes of action advanced against the amended site were passing off and depreciation of goodwill under s.22 of the Trade marks Act. BCAA alleged that use of the domain names BCAAONSTRIKE and BCAABACKTOWORK and the use of BCAA and other BCAA trade marks in meta-tags constituted passing off because the Union was intercepting people looking for the BCAA web site. It is important to note that by October of 1999, and well in advance of trial, the Union had removed the meta-tags which included BCAA trade marks from its web site and had also inserted commas between the words “British Columbia Automobile Association”.

The Court considered the law of passing off as well as the developing body of British, American and Canadian law on passing off through the use of domain names and meta-tags. Specifically, the Court considered:



  • British Telecom plc. v. One in a Million Ltd., [1998] 4 All E.R. 476 (C.A.) in which the English Court of Appeal found that the registrant of domain names such as MARKS&SPENCER.COM did so for the purpose of capitalizing on the goodwill attached to those names. The Court also found that the registrant was making a false representation that it was somehow associated with the companies who’s names had been registered. The Court concluded that these false representations constituted passing off.

  • Brookfield Communications Inc. v. West Coast Entertainment Corp. 174 F.3d 1036 (9th Cir. 1999) in which Brookfield, the owner of the registered trade mark MOVIEBUFF obtained an injunction preventing West Coast Entertainment from using the domain name MOVIEBUFF.COM on the basis that such use was likely to cause confusion as to source. The Court also commented that meta-tags were less likely to cause confusion than domain names.

  • BigStar Entertainment, Inc. v. Next Big Star, Inc. 105 F. Supp 2d 185 (S.D.N.Y. 2000) in which the court found that NEXTBIGSTAR.COM was not confusing with BigStar’s trade mark mainly on the basis that the businesses of the parties were not sufficiently closely related to cause confusion.

  • Jews for Jesus v. Brodsky 993 F. Supp. 282 (D.N.J. 1998) aff’d without opinion 159 F.3d 1351 (3d Cir. N.J. 1998) in which the Court found that whether or not there was a likelihood of confusion depended on a consideration of: (1) the degree of similarity between the owner’s mark and the alleged infringing mark; (2) the strength of the owner’s mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the target of the parties’ sales efforts are the same; (9) the relationship of the goods in the minds of the public because of the similarity of function; and (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market. The Court found that the defendant was using the domain name in an effort to deceive the audience looking for the plaintiff organization’s site.

  • Planned Parenthood Federation of America v. Bucci, 1997 U.S. Dist. LEXIS 3338; 42 U.S.P.Q. 2D (BNA) 1430 (S.D.N.Y. 1997), aff’d 1998 U.S. App. LEXIS 22179 (2d Cir. N.Y. 1998) in which the plaintiff organization, owner of a registered trade mark, obtained an injunction against the registrant of the domain name PLANNEDPARENTHOOD.COM who used the associated web site to post anti-abortion literature.

  • In both Edgar Online Inc. v. Dan Parisi, Civil No. 99-2288 (BNA) (D.N.J. 1999) and Washington Speakers Bureau, Inc. v. Leading Authorities, Inc. 33 F. Supp. 2d 488 (E.D. Va. 1999) the Court had no trouble concluding that the use of almost identical domain names by competitors created confusion.

  • Nitron Corporation v. Radiation Monitoring Devices, Inc. 27 F. Supp. 2d 102 (D. Mass. 1998) in which the defendant used meta-tags to misrepresent its web site as that of its principal competitor. The Court had no trouble granting a preliminary injunction.

  • Playboy Enterprises, Inc. v. AsiaFocus International, Inc. 1998 U.S. Dist. LEXIS 10359 (E.D. Va. 1998) can be contrasted with Playboy Enterprises, Inc. v. Welles, 7 F. Supp. 2d 1098 (S.D. Cal. 1998) aff’d without opinion 162 F. 3d 1169 (9th Cir. Cal. 1998). In the first case, the defendants were using the trade marks PLAYMATE and PLAYBOY both in their domain names and in meta-tags for adult entertainment sites. The Court gave default judgment against these intentionally deceptive practices. However, in the Welles, the web site was being operated by Terri Welles, a former playboy playmate. The Court found that Ms. Welles was entitled to identify herself as former playmate and could use PLAYBOY and PLAYMATE as meta-tags.

  • Bally Total Fitness Holdings Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998) in which the defendant operated a web site critical of Bally Total Fitness under the domain name COMPUPIX.COM. The Court found that the defendant, despite the fact that he was using Bally’s registered trade marks as meta-tags, was not making commercial use of the marks and a “reasonably prudent user” would not be confused. The Court found that even if the defendant had used the domain name BALLYSUCKS.COM, a reasonably prudent user would not be confused as to source.

The Court carefully considered the fact that the Union was not making a commercial use of the web site and was using BCAA’s trade marks in connection with a labour relations dispute.

The Court found that the Union’s current web site was not passing itself off for the BCAA web site because there was no confusion or possibility of confusion in the mind of an Internet user that the Union’s web site was associated with or belonged to BCAA. The Court based this conclusion on the following facts: (1) the Union’s domain name was not identical to BCAA’s trade marks; (2) the Union is not using meta-tags identical to BCAA’s trade marks; (3) the Union’s web site is not competing commercially with BCAA; (4) the use of similar meta-tags or domain names is of less significance in a labour relations or consumer criticism situation, partly because there is less likelihood of confusion; and (5) even though the incorporation of the acronym BCAA into the Union’s domain name was intentional, it is not a misrepresentation as long as the Union doesn’t represent that its web site belongs to, or is associated with, BCAA.

The Court found that in the context of a labour dispute, there was a reasonable balance to be struck between intellectual property rights and freedom of expression. The Court also found that an earlier version of the Union’s web site was inherently confusing and that the Union was guilty of passing off based on this earlier version of the web site. However the Court refused to grant an injunction or to order the Union to deliver up the domain names which incorporated the BCAA trade mark. The Court also found that the Union was not making a commercial use of BCAA’s marks, they were only providing information and, therefore, the Union was not “using” BCAA’s marks as required for the purposes of Section 22 of the Trade Marks Act.

Another interesting dispute is going on between Canada Post and Epost Innovations Inc.28 Canada Post is alleging that its official marks are infringed by Epost’s use of domain names such as cypost.com.


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