B.  U.S. Law and Domain Names.

    Domain Name disputes generally are based upon allegations that the registrant of the domain name has violated U.S. Federal law regulating trademark infringement, dilution, or the Anti-Cybersquatting Consumer Protection Act.  Additionally most states have laws that duplicate one or all of these claims.

1.  Trademark Infringement

    There are both Federal and State statutes which govern trademark infringement.

15 USC 1114   Lanham Act (Registered Marks)
15 USC 1125 (a)   Lanham Act  (Common Law Marks)
R.C. § 4165.02 Ohio Deceptive Trade Practices
R.C. § 1329.65   Unauthorized Use of Trademark

    Trademark claims under Ohio law generally follow the same analysis that courts employ when considering analogous federal claims.  See generally Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr.,109 F.3d 275, 288 (6th Cir. 1997), and Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 754 (6th CA. 1998).

    Plaintiff must show legal right to the mark and a likelihood of confusion.  False designation under the Lanham Act, violating the prohibition under Ohio common law against trademark infringement, and violating the Deceptive Trade Practices Act ("DTPA") of Ohio all mirror one another by requiring a showing of a likelihood of confusion . Mister Twister, Inc. v. JenEm Corp., 710 F.Supp. 202, 204 (S.D.Ohio 1989)

   To assess the consumer's "likelihood of confusion" in the marketplace, this Circuit has identified a number of factors which should be examined, including :
(1) strength of the plaintiff's mark;
(2) relatedness of the services;
(3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) likely degree of purchaser care and sophistication;
(7) intent of the Defendant in selecting the mark; and
(8) likelihood of expansion of the product lines using the marks.
Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916 (1982) (citing Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 790 (9th Cir. 1981)).

    These factors imply no mathematical precision, but are simply a guide to help determine whether confusion is likely . . . . and not all of these factors may be particularly helpful in any given case." Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991).


2.  Dilution

 
15 USC 1125 (c)   Federal Trademark Dilution Act
Ohio common law  U.S. Playing Card Co. v. The Bicycle Club
695 N.E.2d 1197, Ohio App. 1 Dist.,1997.

Trademark dilution is gradual whittling away of trademark's distinctiveness through use by third parties on nonconfusing, noncompeting products, and thus action for trademark dilution protects trademark owner against diminution of trademark's commercial magnetism or selling power by junior user's unauthorized use of same or substantially similar mark.

The goal of dilution theory is to eliminate any "risk of an erosion of the public's identification of a very strong mark with the plaintiff alone," and to prevent another user from "diminishing a mark's distinctiveness, uniqueness, effectiveness and prestigious connotations.  Tiffany & Co. v. Boston Club, Inc., 231 F. Supp. 836, 844 (D. Mass. 1964).

Dilution is defined in 15 USC 1127 as the "lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion mistake or deception."

The legislative history of the Act suggests that "the definition is designed to encompass all forms of dilution recognized by the courts," including: dilution by blurring, dilution by tarnishment and disparagement; and dilution by diminishment.

15 USC 1125 (c) The Federal Trademark Dilution Act of 1995

1. The plaintiff's mark must be "famous".
2.  The plaintiff's mark must be "distinctive".
2. There must be commercial use by the defendant.
3. The offending mark must be used in commerce.
4. Defendant's use began after mark was famous.
5. Use causes dilution of the distinctive quality of the plaintiff's mark.

Distinctive and famous?
15 USC 1125(c) provides that:

"... In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to--

(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20,1905, or on the principal register.


3.  Cybersquatting

15 USC 1125 (d) AntiCyberSquatting Consumer Protection Act.

Liable if:

1.  Without regard to the goods or services of the parties

2.  Bad faith intent to profit from that mark, and;
3.  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.

In determining bad faith intent 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.

(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

In rem provision.

Pursuant to 15 U.S.C. § 1117(d) , a plaintiff seeking recovery under the ACPA may elect to recover statutory damages in lieu of actual damages and profits. A court may award statutory damages in an amount between $1,000 and $100,000 per infringing domain name based on the court's determination of what is just.

4.  Conversion ?
Sex.com - No not property
LucentSucks.com - Yes is property

5.  Antitrust ?
Weber v. National Football League 112 F.Supp.2d 667, N.D.Ohio, July 31, 2000.


Anthony J. DeGidio Esq., 419-382-9590 FAX 419-382-9592
Email: tony@cyberlawyer.com