domain name extensions

Seizing an Infringer’s Domain Name is an Effective Method of Combating Infringement

By John DiGiacomo

 

Seizing an Infringer’s Domain Name is an Effective Method of Combating Infringement

When your business is confronted with infringement of copyrights, trademarks and/or other IP, one of the most effective remedies for stopping the infringement is suing and asking the court to order the transfer of the infringer’s domain name to your business. This prayer for relief can be made in conjunction with or independently from a claim made under the Anticybersquatting Consumer Protection Act (“ACPA”). See 15 U.S.C. § 1125(d).

When an owner of intellectual property sues for infringement, recovering money damages is important. However, a far more important goal is stopping the infringing activity and preventing it from starting up again after the lawsuit is finished. Collecting money damages can be very difficult. But seizing a domain name is much easier since the order transferring the domain name can be served on the domain registrar. Once a domain name is transferred, an infringer is effectively out of business.If you need help protecting your trademarks and copyrights, you need to retain an experienced copyright and trademark attorney, like those at Revision Legal.

In general, there are two types of circumstances under which courts have been willing to order the transfer of domain names. First, courts will order a transfer of domain name where allowing the infringer to continue using the domain name will cause — in some manner — confusion among consumers creating a risk of continuing infringement. Typically, the circumstances involve a domain name that is “confusingly similar” to the plaintiff’s copyright/mark. This is the usual claim alleged under the ACPA. An example can be seen in the Magistrate’s opinion in the recent case of Baycare Health Systems, Inc. v. Baycare Health Management Corp., Case No. 8:18-cv-2380 (M.D. Florida, January 3, 2020). In that case, plaintiff owned trademarks and copyrights related to the name BAYCARE including a website called Baycare.org. The plaintiff sued Baycare Health Management Corporation alleging various causes of action including trademark and copyright infringement. Among the remedies sought, the plaintiff asked the court to transfer or terminate the defendant’s domain name, Baycare.us. In the end, the Magistrate recommended that the court order that the Baycare.us domain name be transferred to the plaintiff. The Magistrate used an ACAP analysis and reasoned that the two domain names were so similar that confusion among consumers would inevitably be created. Further, such confusion would create a continuing injury to the plaintiff’s superior trademark. Further, the court noted that, prior to the relevant dates, the defendants never had trademarks with respect to BAYCARE and never had any non-infringing use of the mark. For these and other reasons, the Magistrate concluded that transferring the domain name was warranted under the circumstances.

A second circumstance where courts will order a domain name transfer is where continuing infringement is shown. Ordering a domain name transfer is a method of stopping the infringing behavior. The most famous case illustrating this legal principle is Philip Morris USA, Inc. v. Otamedia Ltd., 331 F. Supp. 2d 228 (S.D. New York 2004). In that case, Philip Morris obtained an injunction against Otamedia Ltd prohibiting it from selling Philip Morris products on its website called Yesmoke.com. However, Otamedia did not cease its infringing behavior and Philip Morris sought to have the court order modified. Philip Morris asked the court to order that the Yesmoke domain name be transferred to itself. The court considered various factual and legal issues and, eventually, agreed with Philip Morris. Importantly, Philip Morris did not have any trademarks or copyrights related to the word or mark YESMOKE. Despite that, the court ordered the domain name to be transferred because Otamedia did not stop its infringing activities after the first injunction was issued. The court found that Yesmoke’s sales were predominantly sales of Philip Morris products even after the original injunction. The court held that transferring the domain name was justified to put an end to the infringement behavior. Supporting the same principles is the case of Gucci America, Inc. v. Tyrrell-Miller, 678 F. Supp. 2d 117 (S.D. New York 2008). In that case, the court declined to transfer the two domain names at issue unless proof was later submitted showing that the defendant was continuing to sell the counterfeit products on the websites in violation of the court’s order.

Note that federal courts have an inherent authority to order the transfer of domain names. This inherent authority arises from their equitable powers to craft adequate remedies. In this manner, a prayer for a domain name transfer can be made in addition to or independently from a claim alleged under the ACPA. Under the ACPA, a domain name transfer can be ordered independently of whether there has been infringement. The key legal elements under the ACPA are an identical or confusingly similar domain name and a defendant’s “bad faith intent to profit.” Often, infringement and ACPA claims are brought in conjunction which can be a powerful one-two legal knockout strategy that is very effective in preventing existing and continuing infringement.

If you have questions about protecting your trademarks and other intellectual property, contact the trademark lawyers at Revision Legal at 231-714-0100.

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