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The “I” Issues - The Internet & International Trademarks

As with all intellectual property rights, the increasingly international nature of even the smallest business endeavors has affected trademark law. Similarly, the Internet has raised trademark issues which did not exist in the past.

Copyrighted material available on a website is a major issue for this area of IP law. For trademarks, one major concern is the use of marks in domain names. For example, http://paralegaltech.com is the domain name for Paralegal Tech Institute (PTI)’s website. What if someone came along and began using the domain name “paralegaltechinstitute.com?” Wouldn’t this infringe on PTI’s mark?

There is another “PTI” out there (Powerhouse Technologies Inc.), and in fact their web address is pti.com. That PTI is a specialty software company. Would a potential paralegal student be confused if he accidentally wound up at pti.com? In this case, for now, there is almost no chance of customer confusion, and neither mark appears to infringe on the other.

What about General Motors Corporation, manufacturer of Cadillacs and Hummers? Their web address is gm.com. But try visiting “gmmotors.com” and you will be directed to a website which has no affiliation with General Motors Corporation. Instead, you will arrive at a website owned and operated by Scoggin-Dickey Parts Center (“SDPC"), based in Lubbock, Texas. GM parts are readily available from SDPC, and many such parts are listed prominently on the home page. How many consumers would be confused here? Is SDPC affiliated with GM, or do they just happen to sell some GM parts?

Interestingly, although you would have typed “gmmotors.com” into your browser, you would have been redirected to a website whose address appears to be “sdpc2000.com.” How can they get away with this?

It would make me feel better to assume that the technology is too complicated for most readers…since it is certainly too complicated for me. Suffice it to say, one home page on the Internet might be reached through several different domain names (e.g., note that testyourbest.net will redirect you to testyourbest.com). Again, the Schechter and Thomas Hornbook provides an excellent discussion concerning the administration and distribution of domain names (at 788–792).

The larger issue for trademark owners is how they can prevent others from using their marks as part of a domain name. Given the high likelihood of confusion, can GM prevent SDPC from using gmmotors.com?

One issue which warrants mention is that of jurisdiction. The international nature of the Internet means that out-of-state defendants (not to mention out-of-country defendants!) are not easily reached.

Once any jurisdictional problems are solved, the trademark issues may be addressed. In Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1321 (9th Cir. 1998), the court examined the Federal Trademark Dilution Act and the local (California) statute and found that a “cybersquatter” was guilty of infringement. Cybersquatters are people who buy domain names solely intending to benefit from the goodwill of someone’s trademark.

EXAMPLE: Toeppen had registered the domain name “panavision.com” before that company even thought to establish an   Internet presence (yes, youngsters, there once was such a time). When Panavision attempted to register their mark as a domain name, Toeppen offered to “settle the matter” for $13,000. The court pointed out that Toeppen had registered over 100 other names, some of which he had already tried to sell for between $10,000 and $15,000 each, including:
  • Delta Airlines
  • Neiman Marcus
  • Eddie Bauer
  • Lufthansa

So if Toeppen’s domain names constitute illegal dilution of registered marks, why is “gmmotors.com” still around? Just for giggles, try some other mark variations as domain names and see what you come up with. Some of the domain names I’ve found which don’t get you to the mark owner’s website include:

  • Fordtrucks.com
  • Fordtough.com
  • Windowscomputer.com

Many who use the Internet regularly, myself included, no longer go to search engines first when seeking a company’s website. Instead, we have developed the habit of simply typing in the company name as a domain name. The vast majority of the time, this works. However, this also makes confusingly similar domain names an increasingly troublesome problem for trademark owners.

Panavision establishes the possibility of succeeding on a dilution claim against cybersquatters, and as of 1999, §1125(d) (“Cyberspace prevention”), a new cause of action, was created. §1125(d) makes a person

“liable in a civil action by the owner of a mark”

for the bad faith registration of a mark as a domain name. The added subsection (d) is longer than all of the rest of §1125, and includes guidance on how “bad faith” is determined. §1125(d) also explicitly states that the remedies available under the new subsection are in addition to any other remedies available by law.

GlobalSantaFe Corp. v. Globalsantafe.com, 250 F. Supp. 2d 610 (D. Va. 2003) addressed many of the issues which arise in these cases, including those involving foreign registrants (in this case, a Korean entity). The domain name at stake was “globalsantefe.com,” which the defendant registered with a Korean registrar just one day after two companies publicly announced their intention to merge and form GlobalSanteFe Corp. See Globalsantafe.com at 613.

In that case, the domain name was eventually disabled until such time as it could be transferred to the trademark owner. Of course, this does not resolve all Internet trademark issues, and domain names which are confusingly similar to famous marks persist. The Globalsantafe.com case, however, is a good place to start research, at least until Internet usage and the law change again…which could be at any time! (This case is still good law as of 2017.)

Addressing a slightly different issue, §8131 (formerly §1129) prohibits the use of the name of a living individual (or a name confusingly similar to it) as a domain name without that individual’s consent.

One relatively new usage of domain names which was likely not very prevalent at the time of the Globalsantafe.com decision, only about 2 years earlier, is discussed in a note in the September 2004 Cornell Law Review titled “The Truth in Domain Names Act of 2003 and a Preventative Measure to Combat Typosquatting.”

Most of us have had the experience of mistyping a domain name and ending up at a site designed to compete with your intended target. This “typosquatting” is just one of the ever-evolving ways in which valuable marks are exploited on the Internet. It seems that by the time a federal or state act is drafted and passed, the problem it was meant to address has already been overshadowed by yet another headache for mark owners. Certainly, this area of law will continue to demand the time and attention of knowledgeable attorneys and paralegals, and those best equipped to help clients in these areas will be those most familiar with the technology and the trends in technology usage.

In addition to the international issues which arose in Globalsantafe.com, international trade creates issues involving the protection of U.S. marks abroad. While the Berne Convention is the place to look for international protection of copyrights, it is the Madrid Protocol which serves that purpose for trademark law.

Today, in addition to the primary register in the U.S., valuable marks should be placed on the international registry in accordance with the Madrid Protocol. §§1141 et seq. cover the United States participation in the 1989 international agreement and the amendments thereto.

In many respects, trademark law in the U.S. today mirrors international law. However, there are a number of important differences and it is never safe to assume that a mark which is valid, and well-protected, in the U.S. will enjoy the same status abroad, even in other Madrid Protocol nations. Also, the changing use of marks, the Internet, and increasingly open borders promoting global trade are just as much a problem internationally as they are here, perhaps even more so. Where trademark law is concerned, especially where international or Internet issues are present, one must never take for granted that one’s knowledge of the law is up-to-date. Careful research is the name of the game.