As it should be. I am not a lawyer but past cases have upheld company copyright, trademark and patent rights every time. There are multiple tests to apply in these cases. If a domain name is "confusingly similar"; or if there is an "intent to divert or re-direct users"; or if a site is taking customers or treading on a "good name"; then the test is met. Geico insurance sued Google in 2004 and won (or Google settled). Geico charged Google and Overture with infringing on its trademarks when they sold them as keywords to Geico's rivals, so that the protected terms could appear in sponsored search results. According to the suit, that practice causes consumer confusion, in violation of the Lanham Act, the primary federal law covering trademark registration and protection.
Other problematic areas occur when there is an obvious element of "bad faith". For example, using one companies trademark to generate click-through traffic to another companies product or offering. Free speech issues are considered and respected. One can purchase a domain name such as "CompanyNameSucks.com" and publish text that complains of a product or service (as long as there is no liable or slander). However, if one then includes a referral to a competing product or service in that web site there is possible "tarnishment and blurring" of the company name and potential for a lawsuit. One can use other company logos, names and marks and use a possible "fair use" defense if challenged. For example, the "Pepsi Challenge" used CocaCola's marks on commercials when having a side-by-side taste test between the two products. These issues are very important to web developers, designers, and content managers. The use of other company product names in page titles, META tags, page names and file names are being challenged by those companies more and more often. When building web sites for a client it would be prudent to have that client indemnify the agency (developer, sub-contractor, content manager, etc.) in your written contract for the use of trademarks in META tags, etc. Get all content updates in writing from your client and save the paper trail. Even with an indemnification clause you may be sued but with some planning you can avoid or lessen the damage.
|One can purchase a domain name such as "CompanyNameSucks.com" and publish text that complains of a product or service (as long as there is no liable or slander). However, if one then includes a referral to a competing product or service in that web site there is possible "tarnishment and blurring" of the company name and potential for a lawsuit. One can use other company logos, names and marks and use a possible "fair use" defense if challenged. For example, the "Pepsi Challenge" used CocaCola's marks on commercials when having a side-by-side taste test between the two products. |
I am building up a couple of "productsucks.com" sites (mainly for support, some general terms, some specific to a line of products) and it is a good rule of thumb (although unwritten) to make it 100% clear that you are not that company nor do you represent that company. I've seen big corporations go after little guys for companysucks.com sites and lost partially because the owner of the site made it clear that they were not that company nor did they represent that company and had links to the company to discuss company-related things. CYOA is always the best policy.
But, the above is a blatant case of infringement.
I've personally lost sites in WIPO cases, and from what I could tell, a company could almost always take your site away if it contained their trademarked name regardless of use, however I might be mistaken. Some companies subscribe to services that notify them if anyone buys a domain with any of their trademarked terms in the domain name.
I find it unusual that many large companies such as Wells Fargo don't use WIPO at all while other companies like eBay will go ape on anyone that buys a domain with their name in it. For a greater understanding of WIPO take some time and do a search on say "ebay" and read through some WIPO cases at wipo.int [wipo.int] Very interesting reading.
The moral of the story is, when you try to capitalize on other companies trademarked terms in domain names especially their company name itself without their consent, you are asking for it.
I lost a WIPO dispute last year, too, although I was not cybersquatting. At least, I wasn't trying to sell the domain to anyone and never offered it for sale. I think WIPO rules favor large companies. (I still think I was right in my case. There is no doubt the other company owned the trademark, but does that mean they get to own every domain extension?)
I have a question about this. What if you bought a domain name that isn't trademarked and don't bother to because you dont' sell anything, like its a fan site of many things or maybe because your not rich in spending that kind of money. And years down the road someone copyrights the name, maybe not even knowing about you to start with. Then find you. Could they sue you over using their name, even know you had the domain name long before they put a trademark on it?
|And years down the road someone copyrights the name... |
Well if you bought the name before the copyright existed then they would have a very hard time proving that you registered the name in bad faith.