What to do when your Domain is Threatened?

ttyp0 writes "I am a student at Purdue University. Three years ago, I decided to purchase the domain PURDUEONLINE.COM and use it for whatever reason. Just recently my ISP received a letter from Purdue's Executive Vice President threatening legal action if I do not transfer ownership of my domain to the University's control. (More below.)

"My website offers free services to students, two of which are web based email and a student directory with full search capability yet Purdue claims that my domain infringes on the school's trademarked name. My question is, what legal rights do I have to keep my domain name? Any suggestions, or even a good lawyer whom I can call?"

Things like this make me also worry about the new cybersquatting laws that may end up putting the little-guy-with-the-neat-domain between a rock and a hard place.

ttyp0 continues: "After investigation I found that Purdue had only two names trademarked, which are "Purdue University" and "Purdue Boilermakers". I clearly state that we are not affiliated with Purdue University. There are other similar sites which use the word "Purdue" in the same fashion, such as, PURDUEPEOPLE.COM, PURDUECHAT.COM, and PURDUEDATING.COM to name a few...

Comments

Get Medieval

[jellicle]

on trademark law. You need to start reading up on everything there is to know about trademarks and domain names. There's a lot of material available - I hope you have some free time to kill.

You'll want to start with the Domain Name Rights Coalition, which has a lot of good information, including a page about your rights (more specifically, the trademark holder's rights - you have no rights) under Network Solutions' trademark policies. If you pass those tests (which I believe you do, unless Purdue has a trademark on Purdue Online which predates your domain registration), you're in much better shape - NSI won't automatically shut you down. Purdue always has the option of filing suit, you see, but under certain circumstances NSI will take action preemptively against you and you'll lose without ever entering court.

Read your domain name registration agreement!

Of course, Purdue's case in court is weak. It cost them almost nothing to send this demand letter; if you knuckle under, that's a nice domain name for them with almost zero expenditure. They don't have a right to possess all domain names with Purdue in them, any more than Frank-the-chicken-guy does. You aren't attempting to extort money out of them (at least I hope not), you're providing your own independent, ongoing service. You're not attempting to confuse visitors into believing that Purdue runs the site. All of these factors are important. Read up on the criteria for actually infringing someone's trademark, like I said earlier, and send the nice lawyers a letter indicating that you know your rights and stand by them. Send them a list of all the other domain names with the string "purdue" in them - there are several sites which offer wildcard domain name searching. Don't offer to sell them the domain name. If you want to sell, you must retain a lawyer for that.

And take the time to write up some webpages about the situation and post them on purdueonline.com. Inform the school newspaper and local papers that Purdue is trying to hijack your domain name. Publicity is never a bad thing when you're in the right.

--
Michael Sims-michael at slashdot.org

Obvious, but...

[tgd]

This is kinda obvious but I think deserves saying... You wouldn't go to a lawyer website and ask their opinion on a diagnosis your doctor made and give it more than a grain of salt, so I wouldn't in this case either.

Don't trust that they don't have a case because people on here tell you they don't, the best advice anyone can give in a case like this is one that was already given. Ask a lawyer (not a nerd ;) ) if the case may have merit. If it might, and you don't want to deal with the hassle, compromise or give up the domain. If the case likely has no merit, then wait until they sue you and have the lawyer deal with it.

One thing worth saying though, is that if you decide to wait until they sue you knowing they have a case and assuming you'll give up the domain and things will be fine at that point, you should be aware that the offer to return the domain from you is not sufficient to force them to withdraw the lawsuit, and they can choose to continue it to a court case if they want.

There are very few rules preventing malicious lawsuits here in the U.S.

We need more TLD and *restrictions* on them

[Masem]

If this was Compaq going after compaqonline.com, I see no problem with that. However, this is an education instituion trying to go after a .com domain. There's something logically wrong about that.

Besides the constant talk about trying to add new top level domains, I really hope such talk includes placing restrictions on those domains. Things such as

• .net may only be distributed to ISPs and other network service providers.
• .org may only be distributed to non-profit organizations
• .com or .baz may be only distributed to companies and businesses.

Also, I would suggest that you cannot fight domain names that are outside your company's TLD. For example, say .web is set up for general purpose websites that are not part of e-business and fall outside other catagories (I would consider /., segfault, and most on line comics to fall into this area). If someone set up compaqsuxs.web, Compaq would have no right to try to fight that site, as Compaq would be considered a .com/.biz site. (If there is excessive slander in the content of the site, then there might be recourse there, but that's not related to the domain name itself).

But once again, it boils down to the fact that e-commerce has put too much value on the domain name, which 5 years ago, was of very little importance to any net-savvy person. *sigh*.

Don't panic! (Basic TM law info)

[Froomkin]

I'm a lawyer and (worse?) a law professor, so I have to start with disclaimers: this isn't legal advice, consult a lawyer who is familiar with the facts of your situation, etc. etc. YMMV. Consult the other disclaimers at once, etc. etc..

I should also note that what follows is based on the law at the time the letter was written (i.e. I am not taking account of the cybersquatting bill, which AFAIK has not actually passed both houses yet although I gather it's almost a foregone conclusion).

Furthermore, trademark law varies some (but only some) from country to country. I know much more about US law than I do about other countries. What I do know about European trademark law, however, suggests that the position of a domain name registrant viz a viz a brick & mortar trademark holder is a little less favorable in, say, the Netherlands, than it would be in the US because the distinction between commercial/non-commercial uses is less strong, and because mere registration may qualify as "use" of a trademark or some other type of infringing activity. What follows is primarily geared to the US domain name registrant.

As a general rule, trademark law divides the universe of trademarks into two families: a fairly small set of "famous" marks (think "CocaCola (tm)" and everything else. In the US the "famous" marks (and, weirdly, maybe some non-famous marks) are protected by relatively new federal anti-dilution statute and in many but not all states by (older) state anti-dilution laws which do vary. All trademarks, whether famous or not, are also protected against "confusion" and "tarnishment" (and other stuff we'll ignore for now). Tarnishment prosecutions are rare, but the law protects against the association of a trademarked name with something really bad (porn or drugs), modulo first amendment concerns (but then beware libel law). Running a porn site, even a free one, might well be considered tarnishment if the site's name was easily confused with a trademarked name.

The critical points to understand, as a first approximation to the law only, are these:

• In the US, although not necessarily in other countries, mere registration of a domain name, without something more (infringing use and/or an offer to sell the domain name, especially one that is part of a pattern of such offers), is NOT a violation of trademark law. There might be some special cases sounding in unfair competition law (e.g. registering the domain name of a competitor), but we'll ignore that.
• If
  1. your use is purely non-commercial (you are not even selling T-shirts), and
  2. you have never offered to sell the domain name to anyone for anything, and
  3. you are not guilty of tarnishment
  then your legal position is very strong.
• If you are engaged in any sort of commercial activity using the domain name, it matters whether the trademark is famous or not.
  • If it is (and fame can be just regional instead of national) , you might want to talk to a lawyer as this part of the law is in some flux since the federal statute is fairly new and state laws vary.
  • If the mark is not famous, the most important issue is whether there is a likelihood of confusion between your site and the trademark. This is a question about how you are using the site, not a question about the name itself. On the other hand, the court will look at the totality of the circumstances, including how different your line of business is from that of the trademark holder. Just running a little disclaimer is not inevitably going to be enough to protect you, especially if there is substantial similarity between your line of business and theirs. Yup, probably lawyer time again.
• If you have offered to sell the domain name for $$$ the court is going to suspect you of being a cybersquatter. The more the $$$, the worse it looks. It also looks worse if you initiated the contact; it's less bad if they contacted you and they first broached the subject of $$$.

Note also that all new registrations and all re-registrations in .com, .org and .net will henceforth be subject to ICANN's new take-it-or-leave-it dispute policies at the option of a complainant with a trademark seeking to wrest a domain name from a non-trademark holder.

So, don't panic. Please keep in mind that the new cybersquatting bill may obsolete some of the above. I understand the bill was amended last week and I have not had a chance to look at the latest text, which is why I'm not discussing it.

A. Michael Froomkin,
U. Miami School of Law,POB 248087
Coral Gables, FL 33124,USA