Legal Question in Business Law in Virginia

Re: Internet domain use

Very tricky IP question. There are a lot of factors that we would need to investigate. Your friends may be right - they may not be. There is very strong web-squatting law. The case in particular involved PETA.org and the group People for the Ethical Treatment of Animals, where a man in the Norfolk area had registered PETA.org and called the site "People Eating Tasty Animals", posting pictures that were, needless to say, offensive to PETA. PETA won and the man was required to turn over his domain/ discontinue use.

The Fourth Circuit, affirming the decision of the district court below, held that defendant was guilty of service mark infringement and unfair competition, and had violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his creation and operation of a web site at the domain www.peta.org, which contained plaintiff's federally registered service mark "peta." In reaching this conclusion, the Fourth Circuit rejected defendant's defense that his site, titled "People Eating Tasty Animals," was a parody of plaintiff's "People for the Ethical Treatment of Animals" organization because the domain name containing plaintiff's mark did not appear simultaneously with that aspect of the web site containing the parody of plaintiff's organization.

The court went on to hold that "Doughney's use of PETA's mark in the domain name of his website 'is likely to prevent Internet users from reaching PETA's own Internet web site. The prospective users of PETA's services who mistakenly access Defendant's web site may fail to continue to search for PETA's own home page, due to anger, frustration or the belief that PETA's home page does not exist." This, held the court, constitutes a use "in connection with goods or services" for the purpose of establishing a trademark infringement claim.

This is a very light summary of the law, you really need to discuss this in more detail with a lawyer.

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Re: Internet domain use

I believe your understanding is correct. There is a new Federal law that relates to this, but it involves the use of a trademark owned by another in a domain name. My colleague's detailed discussion involves a federally-registered trademark by PETA. However, the law does not apply where no trademark is involved (at least not very clearly at all). What if they trademarked the name after the fact? This is very unclear. Such a situation is not addressed in the law and I think it would be a tough sell for them to do that.

It helps that your had the domain name before the shopping center started doing business. This is particularly true because one of the requirements for getting a trademark is to be using the name in commerce, and using it first. The fact that you had the domain name first (if you were actually using it) could even block the shopping center from getting a trademark, because you were using the name first.

It would hurt if you were seeming to intentionally trade on confusion among the names. Thus putting up shopping information that appears designed to deliberately exploit confusion among the public on the name would be the only area of concern, and that might worry me a bit. If you do that, you should add a notice saying "Were you looking for ....? You can find their website by clicking here..."

If you put up city and shopping information, try to design it in a way that the information may be relevant to shoppers, but shoppers would not be confused into thinking they were looking at the shopping center's OFFICIAL website.

Of course, the shopping center can give you a lot of grief even if they would eventually lose in court. They can make demands and tell you that you cannot do this or that. It is worth listening to what they say. But of course you cannot believe their version of things. They are not on your side, and cannot give you legal advice.