An estimated 60 million adult Americans search for information on the Internet every day. E-business constitutes over $2 trillion in annual sales for our economy. Over two-thirds of American households now contain a computer with Internet access. Mobile telephone and other devices are merging telecommunications, entertainment and traditional computer services.
With that backdrop, it is no surprise that businesses try to get a competitive edge with their websites. Sometimes those tactics run afoul of traditional notions of trademark infringement and unfair competition. Legislatures and courts have responded to a point where, over the past decade, a more predictable playing field has emerged for businesses with respect to their Internet ventures. Hazards remain, but now remedies exist.
Domain Names
By now people have heard about the Wild West style, claims-jumping behavior surrounding the early issuance of domain names. Prominent businesses were at the mercy of individuals who had registered popular dot com domain names using the companies' famous trademarked names. The early registrants demanded exorbitant sums in order to release their bounty. It was not long before Congress passed the Anti-cybersquatting Consumer Protection Act ("ACPA") to prevent Internet squatting on the rights of another business.
That statute created injunctive and damages remedies to businesses with marks entitled to protection, whether or not they are federally registered. In addition, cybersquatting registrants are now subject to loss of their domain names through an administrative process known as the Uniform Dispute Resolution Policy ("UDRP"). Depending upon the circumstances, either the ACPA or the UDRP processes can prove effective in ridding the Internet of copycat or confusingly similar domain names. For more extensive remedies, including damages for loss of revenue, one still has to go to court, using the ACPA and other statutes
Investigating Use And Registration
Too often, a business learns about an offending website weeks or months after it has been up and harming its operations. When an organization heavily relies upon new customer visits to its website, it is important to police the Internet to make sure there are no domain names similar to your own enterprise. For instance, you can patrol the Internet yourself at regular intervals to search for the company's name or similar marks, including identical terms using different top level domain extensions, such as .net, .org, or .us. Alternatively, you can hire a service company to perform such a task, such as MarkMonitor or Cyveillance.
Once you find a hit, you should visit a caching service, such as that offered by Google or WayBackMachine. This will give an idea as to how the website may have changed over time. Then, you can find out information about the registrant through a domain registration database operated by WhoIs or similar service. Some people register domain names anonymously, by hiring a third party, such as Domains By Proxy. Peeling the onion to discover the true identity of a website owner may require some ingenuity. Once you find the registrant, you can make contact and enforce your rights.
Metatags And Key Words
Most website owners know by now that search engines, such as Google, crawl the Internet for descriptive terms about websites to assist in their search function. In addition to the domain name, search engines read metatags written into the website code, which further describe the nature of the website. Some website operators include the trademarked words of competitors in the metatags. For instance, a Hewlett-Packard personal computer retailer might create metatext so that a person typing into a search engine the term "Apple Computer" might end up finding the Hewlett-Packard personal computer retailer. This phenomenon, defined as "initial interest confusion," can cause an inquiring buyer mistakenly to visit a website which does not sell Apple Computer products. But the buyer, once pursuing the wrong website, may find other computer products of interest and conclude a transaction. Initial interest confusion is similar to a false billboard directing interstate highway drivers to the next exit for a McDonald's restaurant. A hungry driver will see the sign, exit the highway, whereupon he or she does not find a McDonald's, but rather only a rival hamburger chain. The driver, tired and hungry, decides to eat at the rival hamburger spot instead of searching further for a McDonald's. This conduct is generally considered to be trademark infringement, and a court will enjoin the use of that metatext.
An interesting twist on this behavior is found in keyword advertising use by a number of search engines, such as Google's AdWords program. For instance, if you were to type an airline company's name into a search engine, the web page for that airline would appear as a search result, but alongside that result may be "sponsored links" with advertisements and web page links to other airlines and discount ticket sellers. In other words, those other airlines and discount ticket seller have bought advertising space wherever there is a search engine inquiry for the trademarked specific airline name. On September 25, 2006, Congress passed the Trademark Dilution Revision Act to try to give search engines, like Google, some immunity for these sales of advertising space.
Fair Use
While it is risky, a website owner can refer in the text (but not the metatext) of its website to the trademarked goods or services of a competitor. For instance, if a business sells spare parts for use with a particular trade name product, such as Ford Motor vehicles, that is considered fair use. In addition, one can use another's trademarked product by way of comparative advertising. Of course, if the rival's product is not described accurately by way of comparison, the competitor could bring suit on the basis of another theory, such as deceptive or unfair advertising.
Conclusion
Today, businesses are much better at recognizing competitive threats from Internet websites. It takes diligence and a willingness to pursue remedies in order to protect a business' trademarks and to earn the substantial revenue now possible over the Internet.
Tom Donovan is a Director in the Litigation Department of McLane, Graf, Raulerson & Middleton, Professional Association. He Focuses his practice on intellectual property and complex commercial disputes. The McLane Law Firm is the largest full-service law firm in the state of New Hampshire, with offices in Concord, Manchester and Portsmouth.
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