Legal Question in Technology Law in Pennsylvania

I am not your attorney and the following should not be taken as legal advice.

When using a domain name which is identical to a brand, product, company or individual, one should be careful not to run afoul of the various cyber squatting laws. The main consideration in many of these laws is "bad faith." Are you operating the domain name simply so you can get money from the true trademark holder? That would be the definition of bad faith. Many companies are willing to go to great expense to obtain domain names which have been wrongfully squatted upon. Registrants of domain names should proceed cautiously.

If you would like to discuss further, please contact me at 856-874-9090.

Good luck, Dan

If you�ve registered the domain delta.biz, you might face a challenge if you use a website at that address to sell faucets or airline tickets. But if you use it for, say, a fertilizer business near the Mississippi delta, there is little likelihood that a U.S. company would assert that your use of the domain infringes or dilutes their trademark. Beware however, of selling fertilizer from that domain in Brazil and in Egypt. That�s because trademark rights are location-specific, and there is a Delta Fertilizer Company in each of those countries that might be able to preempt the hypothetical usage I describe.

In U.S. legal parlance, a �brand� is a trademark, and a trademark is a word or symbol associated with certain products and/or services. The principles of trademark law and unfair competition have been extended to the subject of Internet domains in various ways, such as through the Anticybersquatting Consumer Protection Act of 1999 and the Uniform Domain-Name Dispute-Resolution Policy, established by the Internet Corporation for Assigned Names and Numbers (�ICANN�). Essentially, if you register and use a domain that includes another entity�s trademark, questions arise with regard to whether you are engaging in trademark infringement or trademark dilution, and whether you have done so in bad faith.

Trademark infringement exists where you have created a likelihood of confusion as to the source of a product or service in the minds of potential consumers. Another question that arises in the context of famous trademarks is whether you are �diluting� the famous trademark. You said that your products fall into a different subject area than the products associated with the �big brand.� The specifics of your situation are critical here and you should enter into a formal attorney-client relationship with a knowledgeable attorney for real legal advice. However, speaking generically, the likelihood of confusion test for finding trademark infringement is based on a multitude of considerations, including the appearance of two trademarks, their associated goods and/or services, the commercial impression created by each trademark, and the sophistication of the potential consumer. Because of this, the fact the goods and/or services of two otherwise similar trademarks are not exactly the same is probably not enough, by itself, to rule out a likelihood of confusion. A likelihood of confusion can exist between two otherwise similar trademarks if one is associated with say, dental chairs, and the other is associated with dental drills. Also, the distinction between a service and a product is not always enough to carry the day for a potential defendant. For example, if one trademark is associated with the service of washing cars and another, otherwise similar trademark, is associated with car wash products, there could still be a likelihood of confusion, and thus, trademark infringement. Trademark dilution, on the other hand, is concerned with blurring the distinctiveness of or tarnishing the goodwill associated with a particularly famous mark. Thus, trademark dilution can exist even where the goods and/or services that you are selling are significantly different than those associated with a famous trademark.

As I mentioned above, bad faith comes into play as well. The existence of bad faith is determined based on a variety of considerations, but essentially, it is whether you intended to disrupt the business of another trademark holder or trade on the goodwill associated with its trademark. I should also mention that owners of strong trademarks typically have legal departments that are continually on the lookout for instances of trademark infringement, trademark dilution, cybersquatting, and activities that could cause one or more of their trademarks to be deemed �generic.� In fact, if they fail to �police� them, the trademarks might eventually lose their distinctiveness in the minds of consumers, and a court might later rule that the terms are no longer anyone�s trademark. Therefore, if you are dealing with a �big brand,� you may be hearing from their legal department in the future.

While I have highlighted various considerations, I emphasize that this is only the tip of the iceberg and I highly recommend that you seek professional legal advice.