Michigan Business Lawyer Blog

Many businesses maintain an Internet presence to compliment their bricks and mortar operations. As Web 2.0 expands and e-commerce continues to grow, most of these companies would prefer to use their primary trademark or trade name, plus the ".com" suffix as their Internet web address. However, this might not be possible since businesses in very different fields can share similar names, and Internet domain names are assigned on a "first come, first served" basis. Thus, a business that owns a valuable trademark or trade name may find that it cannot use that trademark or trade name as part of its Internet domain name.

That's bad enough, but so called "cybersquatters" can make things even worse. Cybersquatters register domain names containing a business's trademark or trade name and then try to sell the domain name to the owner of the trademark or trade name. Fortunately, Congress responded fairly quickly to this kind of activity by enacting the Anticybersquatting Consumer Protection Act of 1999, codified at 15 USC 1125(d). This Act makes it illegal for a person to register or use an Internet domain name with a "bad faith" intent to profit from the domain name, if the name is (1) identical or confusingly similar to a distinctive trademark; or (2) identical or confusingly similar to or dilutive of a famous trademark.

In addition, the Internet Corporation for Assigned Names and Numbers (ICANN) has established a procedure for arbitrating Internet domain name disputes. To accomplish this, ICANN has implemented the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP contains a three step test to resolve domain name disputes. To prevail under the UDRP, a person wishing to challenge an Internet domain name must prove the following three items:

1. The disputed domain name is identical or confusingly similar to the challenger's trademark.

2. The person who first registered the disputed domain name had no legitimate interest in or right to the domain name.

3. The person who registered the disputed domain name did so in bad faith and is using the name in bad faith.

If a person can prove these three items, they are entitled to have the registration of the disputed domain name transferred to them, or have it canceled.

Michigan businesses must act carefully to protect their online assets and name. Proactive consultation with a Michigan business lawyer who understands the Internet is essential for Michigan businesses who intend to make the Web an integral part of their operations and future success.