Hello,
The question is whether you can register a "copycat" domain name and
use it for commercial purposes.
The Anticybersquatting Consumer Protection Act (P.L. 106-113):
"(A) A person shall be liable in a civil action by the owner of a
mark, including a personal name which is protected as a mark under
this section, if, without regard to the goods or services of the
parties, that person--
" (i) has a bad faith intent to profit from that mark, including
a personal name which is protected as a mark under this section; and
<br>
" (ii) registers, traffics in, or uses a domain name that--
"(I) in the case of a mark that is distinctive at the time of
registration of the domain name, is identical or confusingly similar
to that mark;
"(II) in the case of a famous mark that is famous at the time of
registration of the domain name, is identical or confusingly similar
to or dilutive of that mark; or
"(III) is a trademark, word, or name protected by reason of section
706 of title 18, United States Code, or section 220506 of title 36,
United States Code.
"(B) (i) In determining whether a person has a bad faith intent
described under subparagraph (A), a court may consider factors such
as, but not limited to--
"(I) the trademark or other intellectual property rights of the
person, if any, in the domain name;
"(II) the extent to which the domain name consists of the legal name
of the person or a name that is otherwise commonly used to identify
that person;
"(III) the person's prior use, if any, of the domain name in
connection with the bona fide offering of any goods or services;
"(IV) the person's bona fide noncommercial or fair use of the mark in
a site accessible under the domain name;
"(V) the person's intent to divert consumers from the mark owner's
online location to a site accessible under the domain name that could
harm the goodwill represented by the mark, either for commercial gain
or with the intent to tarnish or disparage the mark, by creating a
likelihood of confusion as to the source, sponsorship, affiliation, or
endorsement of the site;
"(VI) the person's offer to transfer, sell, or otherwise assign the
domain name to the mark owner or any third party for financial gain
without having used, or having an intent to use, the domain name in
the bona fide offering of any goods or services, or the person's prior
conduct indicating a pattern of such conduct;
"(VII) the person's provision of material and misleading false contact
information when applying for the registration of the domain name, the
person's intentional failure to maintain accurate contact information,
or the person's prior conduct indicating a pattern of such conduct;
"(VIII) the person's registration or acquisition of multiple domain
names which the person knows are identical or confusingly similar to
marks of others that are distinctive at the time of registration of
such domain names, or dilutive of famous marks of others that are
famous at the time of registration of such domain names, without
regard to the goods or services of the parties; and
"(IX) the extent to which the mark incorporated in the person's domain
name registration is or is not distinctive and famous within the
meaning of subsection (c)(1) of section 43."
Let's look at your proposal to register the names with "Amazon" in
them. You probably aren't named Mr. Amazon, and you haven't said you
have long had a business with "Amazon" in the name. You don't plan
fair, noncommercial use of the name. Your proposaed activity --
selling a copycat domain name to a casino -- could easily damage the
reputation of Amazon. You indicate you like the domain because people
will confuse it with Amazon.com. You plan to sell it without using it
yourself. It looks like your proposal would easily be considered "bad
faith" under the ACPA.
As an example of how the ACPA works, the Fourth Circuit Court of
Appeals recently ruled Virtual Works ISP cannot use the domain name
vw.net, because it infringes upon the rights of Volkswagen (1). Also
see Sporty's Farm, LLC v. Sportsman's Market, Inc. , (2d. Cir. 2000)
and Shields v. Zuccarini, (3d. Cir. 2001).
Regarding www.dolphin-s.com, I don't think that's similar to any
"famous" mark like Amazon is. So you don't have to worry about the
dilution clause. The question is only whether it is identical or
confusingly similar to a distinctive mark. If you are trying to steal
traffic from a site with a similar name (such as dolphin-d.com) or a
business somewhere named Dolphin-S Inc., you might have a problem.
(Check with a lawyer for definitive advice, of course.)
As far as the best places to sell domain names, the Domain Name Guide
at igoldrush.com gives top rating to buydomains.com (2). A discussion
at WebHostingTalk provides several other ideas (3).
Sources:
(1) ME Law & Technology Assoc., "Fourth Circuit rules in favor of
Volkswagon in Antocybersquatting Act case," 2001,
http://mainelaw.maine.edu/mlta/works/01/vw.htm.
(2) Internet Goldrush, "Domain Brokers," http://www.igoldrush.com/links3.htm.
(3) "Whats the best domain name reseller program?" Dec. 2, 2004,
http://64.233.167.104/search?q=cache:r87Pk08TWWIJ:www.webhostingtalk.com/showthread.php%3Fthreadid%3D349265+best+domain+reseller&hl=en.
I hope this answer meets your needs. If not, please request clarification.
Search strategy
best domain reseller
://www.google.com/search?hl=en&lr=&q=best+domain+reseller
anticybersquatting act
://www.google.com/search?hl=en&lr=&q=anticybersquatting+act
copycat domain names
://www.google.com/search?hl=en&lr=&q=copycat+domain+names |
Request for Answer Clarification by
mario0455-ga
on
20 Dec 2004 21:22 PST
Subject: Re: Domain name dispute
From: ramblingdiatribe-ga on 04 Jun 2004 00:45 PDT
I have some experience in these matters at a personal level as I've
been involved in domain name dispute processes more than once in the
past.
Firstly, there is no cost to you when someone files with ICANN -- they
pay approximately USD$10,000.00 for one or more domain names, and then
they get to pick two arbitrators (and you get to pick one). I believe
each arbitrator has to be from a different country, but my memory is
foggy on this point.
Secondly, if someone wants to sue you for infringement of their
intellectual property (e.g., a Trademark, Registered Trademark,
Copyright, Patent, etc., violation), then there could be costs to you
depending on which country you're in (they generally have to come to
your country to sue you when it comes to gTLDs such as .com, .net,
.org, etc. -- note that all the two-letter ccTLDs are handled locally
by their respective countries and the local legal systems have
jurisdiction over them). If you're both in the same country, then
there's definitely a possibility they can go through the courts
instead of ICANN, and if you're in the USA that could be bad news if
you have to hire a lawyer or pay any court fees (you might consider
settling for less if you are certain you're going to lose, but you
really should consult a lawyer about all of this first).
Thirdly, if you have to create an ICANN defence, definitely get a
lawyer. In the cases I was involved in (I won't indicate how I was
involved), when defences made use of technicalities, the judgement was
always in the favour of the defence. My conclusion from this was that
they arbitrators followed the "letter of the law" so-to-speak. One
such technicality has to do with the date the Trademark was granted
vs. the date the domain name was registered -- if the domain was
registered first then they can't claim you had any malicious intent
unless they can prove you knew about their plans to apply for a
Trademark before you registered the domain name. Arguing your past,
current, and intended use of the domain name can also be helpful if it
differs greatly from their cause.
With regards to terminology, here are a few more points of interest:
1. TM means Trademark, and is the step before the encircled letter "R"
(which means "Registered Trademark").
2. "Cybersquatting" is a heavily mis-used term. In the old days
(approximately 10 years ago) when Network Solutions was the only
Registrar, one could register a domain name and not have to pay for 30
days. If after 30 days no payment was collected, the domain name
would be terminated. People who did this regularly with the same
domain name were, essentially, "cybersquatters" since a "squatter" is,
for example, someone who doesn't pay for property they're using
without permission. In the case of someone who has paid for a domain
name, they can't be accused of "squatting" or, in this case,
"cybersquatting," even if the name really should belong to someone
else (it never did, so permission isn't actually required to register
it either). The best term I can think of to describe someone who
intentionally purchases domain names that are similar to well-known
trade names (e.g., products, companies, famous people, trademarks,
etc.) for various reasons (usually to sell for a great profit) is
"domain baron." In fact, there's a guy who does just this with his
web site: http://www.domainbaron.com/
Oh yeah, if they use the term "cybersquatting" in their ICANN
complaint, ask for a concise definition of "squatting," "cyber," and
"cybersquatting." Depending on how they define this, you may be able
to get some of their arguments stricken from their complaint if it
looks like they're accusing you of stealing (which you're obviously
not if you paid for the registration).
Good luck, and be sure to consult a lawyer if they decide to go after
this in a formalized manner.
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