Internet Trademark Infringement: Legal Guide

Internet trademark infringement is pervasive in the modern era. Whether it occurs in a domain name, in meta tags, or in keyword advertising, Internet trademark infringement can cause confusion in the marketplace and allow competitors to divert valuable traffic from your website or brand. Thankfully, there are many remedies for Internet trademark infringement.

For domain name trademark infringement, complainants may use the Uniform Domain Name Dispute Resolution Policy to recover a domain name that has been registered in bad faith. Alternatively, plaintiffs may use the Anticybersquatting Consumer Protection Act to obtain damages of up to $100,000 per domain name for cybersquatting.

For meta tag infringement, plaintiffs may use the Lanham Act, the federal trademark act, to assert a claim of trademark infringement and to obtain damages. Additionally, a plaintiff may claim under the Lanham Act and state law for unfair competition, which prohibits passing off and false designations of origin.

For keyword advertising infringement, plaintiffs may use the Lanham Act to assert a claim of trademark infringement. The case law concerning keyword advertising infringement claims have been in flux over the years, and most jurisdictions now allow claims only for the use of a trademark in ad text, not simply the use of a trademark to trigger an ad.

If you are facing Internet trademark infringement, contact the Internet trademark infringement lawyers at Revision Legal at 855-473-8474.

A Closer Look at Each Type of Internet Trademark Infringement

Domain Name Trademark Infringement and Cybersquatting

Cybersquatting — the registration of a domain name incorporating another party’s trademark with bad-faith intent to profit — is addressed by two distinct legal frameworks. The UDRP, administered by ICANN through approved dispute resolution providers, provides a relatively fast and inexpensive mechanism for transferring or canceling infringing domain names. A UDRP complainant must prove three elements: (1) the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights; (2) the respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.

The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), provides a federal court cause of action with statutory damages of $1,000 to $100,000 per domain name, at the court’s discretion. The ACPA requires the plaintiff to prove bad-faith intent to profit, which the statute identifies through nine non-exclusive factors including the defendant’s trademark rights in the disputed name, the defendant’s prior use of the name, and evidence of an offer to sell the name to the trademark owner.

The choice between UDRP and ACPA litigation depends on the facts and objectives. UDRP proceedings are faster and cheaper but limited in remedy to transfer or cancellation. ACPA litigation in federal court takes longer and costs more but offers monetary damages, permanent injunctions, and in rem jurisdiction over the domain name itself when the registrant cannot be found or is outside the US.

Keyword Advertising Infringement

Pay-per-click keyword advertising presents persistent trademark questions. When a business purchases a competitor’s trademark as a keyword trigger for its ads, the competitor’s search results page fills with the business’s ads. Courts have analyzed this practice under the Lanham Act’s likelihood-of-confusion standard, but the results have not been uniform.

The legal consensus that has emerged in most circuits is that purchasing a trademark as a keyword trigger, without more, does not constitute trademark infringement — the use is not “use in commerce” as a source identifier. However, if the sponsored advertisement itself includes the trademark in the ad text in a manner that is likely to confuse consumers about the sponsorship or endorsement of the advertised goods, a Lanham Act claim is viable. See 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005); Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011).

Social Media Trademark Infringement

Social media platforms have introduced new vectors for trademark infringement: fake accounts impersonating legitimate businesses, unauthorized use of trademarks in social media handles, and infringing use of trademarks in profiles and sponsored content. Most major platforms — Meta, Twitter/X, Instagram, TikTok — maintain brand protection programs through which verified trademark owners can report infringing accounts and content for removal. Federal court litigation is available for more serious or persistent infringement.

Remedies for Internet Trademark Infringement

A trademark owner who prevails in an infringement action may recover:

• Injunctive relief — a court order requiring the infringer to stop using the trademark. This is often the most important remedy, particularly where monetary damages are difficult to quantify.
• Actual damages — the plaintiff’s provable economic losses attributable to the infringement.
• Disgorgement of the infringer’s profits — the infringer’s revenues attributable to the infringing use, less allowable costs.
• Statutory damages — up to $200,000 per counterfeit mark per type of goods or services, and up to $2 million for willful counterfeiting, under 15 U.S.C. § 1117(c).
• Attorney’s fees — available in exceptional cases under 15 U.S.C. § 1117(a), typically cases involving willful infringement or litigation misconduct.

How to Respond to Internet Trademark Infringement

If you discover that a competitor or third party is using your trademark online without authorization, take the following steps:

1. Document the infringement. Capture screenshots of the infringing website, advertisements, social media accounts, or domain name registrations. Note the dates and preserve this evidence.
2. Consult a trademark attorney. Before sending any correspondence, have an attorney evaluate the strength of your claim and advise on the best enforcement strategy.
3. Send a cease and desist letter. A well-crafted letter from a trademark attorney often resolves the infringement without litigation. It puts the infringer on notice, establishes willfulness for any subsequent damages claim, and creates a record.
4. File a UDRP or ACPA action for domain names. If the infringement involves a domain name, a UDRP proceeding or ACPA lawsuit may be the fastest path to resolution.
5. Consider federal court litigation. For persistent, willful, or high-value infringement, a federal court lawsuit provides the full range of legal remedies including injunctive relief, damages, and attorney’s fees.

If you have questions about trademark registration or enforcement, contact the trademark attorneys at Revision Legal. Call us at 855-473-8474 or complete our contact form.