The Lanham Act, which is codified under 15 U.S.C. § 1051 et seq., is the federal law that governs trademarks. Under the Lanham Act, to succeed on a trademark infringement claim, a claimant must show ownership of the mark and a likelihood of consumer confusion resulting from another’s use of the mark.
The remedies for trademark infringement include injunctive relief, disgorgement of defendant’s profits from use of the trademark, damages to the aggrieved party (i.e., plaintiff), and costs incurred in bringing the lawsuit against defendant.
Usually, many Internet-related trademark litigation disputes reflect a trademark owner’s desire to establish online brand recognition and loyalty. As such, a website operator may be liable for trademark infringement for displaying another’s trademark on a website, without authorization, in a manner which implies a relationship between the owner of the trademark and the website.
A metatag is a word or embedded code in a data field on a website which is not usually part of any publicly viewable web page. Generally, search engines (e.g., Google) read a website’s metatags to determine the subjects addressed on the site.
In the past, some courts have found that using a competitor’s trademark in metatags can amount to trademark infringement when the use results in confusion relating to origin or affiliation of the website. Sometimes, use of trademarked terms in metatags will not constitute trademark infringement when and if the use was not intended to deceive or confuse consumers.
A domain name (e.g., atrizadeh.com) is protectable, pursuant to applicable trademark laws, only if it is used to brand the website to which the domain name resolves. So, if the domain name is only used as a web address, it is not protectable as a trademark.
Generally, it is the registration of a domain name which is associated with another’s trademark so to benefit from the relations with that mark. The Anticybersquatting Consumer Protection Act (“ACPA”) imposes legal responsibility for registering, trafficking in, or using a domain name which is identical or confusingly similar to another’s trademark or that dilutes a famous mark, with “bad-faith” intent to profit from the goodwill of a trademark or domain name. See 15 U.S.C. § 1125(d).
The Internet Corporation for Assigned Names and Numbers (“ICANN”) administers the domain name registration system. It approves and certifies domain name registrars. ICAAN adopted the Uniform Domain Name Dispute Resolution Policy (“UDRP”) which governs the terms and conditions in connection with a dispute between parties other than ICAAN over the registration and use of an Internet domain name. Under the UDRP, a complainant (i.e., a party who claims to have rights in a domain name registered to another person or party) may bring a claim before one of the authorized dispute resolution providers such as the (i) World Intellectual Property Organization (“WIPO”); (ii) National Arbitration Forum (“NAF”); (iii) Institute for Conflict Prevention & Resolution (“CPR”); or (iv) Asian Domain Name Dispute Resolution Centre (“ADNDRC”). Please click here to read more about ICANN.