Legal Question in Technology Law in Virginia

Re: domain name dispute

There was an actual case with very similar facts: a man registered the name "victoria.com" for his daughter, whose name was Victoria. The folks at Archie Comics came after the family with guns blazing. The content of the Web site was baby pictures, family stuff, entirely non-commercial.

Archie Comics went down in flames. However, the facts were about as extreme as one could get, and it is important not to read too much into it.

For example, if the man had registered the domain name "xerox.com," no way the outcome would be the same. There is a continuum of trademarks that runs from "arbitrary or fanciful" (like Xerox, a word that meant nothing until used by the company) through "distinctive" to "descriptive" and "generic" (unprotectable). If you pick one of the trademarks that is either arbitrary or inherently distinctive, you are likely to run into trouble.

Re: domain name dispute

The plaintiff in a trademark suit usually has to show some likelihood of confusion resulting from the defendant's use of the name. This is why Lexis (a computer database used by many lawyers) can coexist with the auto maker Lexus -- the names are similar, but no one is going to be misled into purchasing one product when what they really want is the other.

Many companies will gladly spend whatever it takes to protect their trademarks, even if it isn't cost-effective in each case. A company that does not enforce its trademark can lose the rights, and enforcement is just a cost of doing business. The Bayer company used to own (e.g., have a trademark on) the name "Aspirin," but it allowed people to use the name generically and lost its rights in the process. This is why Xerox runs ads reminding people that "Xerox" is not a verb or a noun, but is their trade name. It's also why Coca-Cola reportedly has several investigators who order "Coke" at restaurants around the country, analyze the drinks they receive, and sue those who serve another brand under the Coke name. These actions are expensive, but losing the trademark would be much more damaging.

Whether you face such a risk is hard to say. Each case is very fact-specific, though, so it's hard to assess your situation with the sketchy details you have provided.

Re: domain name dispute

If your use is truly non-commercial, then you should be able to win if a trademark suit is filed. Unfortunately, trademark lawsuits can be very expensive.

Also, they might not file a lawsuit. If the corporation has a registered trademark, they can get NSI to put the domain name on hold. This would eliminate your use of the name unless you sued to get it back.

On the other hand, if you get lucky and they file the suit in California, your attorney should file a motion under the SLAPP statute. This would allow you to collect attorneys fees from the corporation that sued you.