March 22, 2010

Post-Domain Infringement: In Search of a Remedy

Natalma M. McKnew

In the spring of 2009, famed Major League Baseball manager Tony La Russa discovered that someone had registered a Twitter account, http://twitter.com/TonyLaRussa, claiming to be the manager of the St. Louis Cardinals, then posted La Russa's picture and messages using La Russa's name. The real Tony La Russa asked Twitter to remove the fake Tony La Russa account, but Twitter ignored his requests. Undaunted, La Russa filed suit against Twitter and the offending account holder in what may have been the first lawsuit filed against a social networking site based on a post-domain address. La Russa v. Twitter, Inc. and Does 1-25, Case No. CGC-09.488101 (Cal. Super. Ct. filed May 6, 2009).

After testing the concept with select users, in June 2009 Facebook offered its subscribers an opportunity to create personalized web addresses, or vanity URLs. The prospect of vanity URLs, incredibly alluring to Facebook and Twitter users, struck fear into the hearts of trademark owners. Policing one's mark when a Facebook or Twitter user could incorporate it into a vanity URL became far more difficult. Both Facebook and Twitter established policies and procedures for handling trademark disputes internally. But, as in the case of Tony La Russa, Twitter's approach of ignoring reasonable demands will be unlikely to assuage trademark owners.

The Internet is no respecter of political boundaries, emphasizing the necessity of a federal remedy. But whether extant legal tools are sufficient to address unauthorized post-domain path trademark use is doubtful. Once again, the law needs to catch up to the Internet.

Vanity URLs
A personalized Facebook address or "vanity URL" allows a Facebook subscriber to create a unique, personalized address. A personalized Facebook address might appear, for instance, as www.facebook.com/barackobama or, in an example of a potentially unauthorized service mark use, www.facebook.com/FIFA10. The personalized addition is the language used after the slash in the URL, sometimes referred to as a post-domain path.

Facebook set some limitations on the new feature. First, registered users are only permitted to personalize the web address correlating to the respective user's profile. Second, Facebook registration is on a first-come, first-served basis. Third, users are not permitted to transfer usernames. Prior to the vanity URL launch date, Facebook allowed owners of federally registered marks to protect those marks from registration by other users, but similar privileges were not extended to owners of common law marks or for marks pending registration.

Facebook understood that trademark infringement issues could arise from its vanity URL offering and established a process for handling disputes. The process is triggered by completing an online form, after which, Facebook assures complainants, disputes will be resolved internally. A Facebook representative described the following details of the internal dispute resolution process:

  1. If a subscriber is holding a username containing another's federally registered trademark, Facebook will transfer the username to the holder of the mark;

  2. The owner of a pending application for registration may be able to challenge use of the mark by an unauthorized subscriber and have the username transferred without having to await registration;

  3. If the subscriber is a user with the same last name or a company with the same name as the registered mark, Facebook is not likely to transfer the name (application of first-come, first-served policy); and

  4. If Facebook cannot decide who should rightfully hold the username, it may withhold the name and not allow anyone to use it.

Internet commentators responded quickly to Facebook's vanity URL offering. Tim Cole, Chief Registrar Liaison for the Internet Corporation for Assigned Names and Numbers (ICANN), observed that Facebook created a situation analogous to the "early days of Network Solutions . . . doing domain registrations, and they didn't anticipate the nature of the trademark issues that started arising" and warned that Facebook's dispute resolution process might not resolve the conflicts arising from registering vanity URLs.

Twitter likewise established an internal grievance process. It, too, begins with a web request submission to Twitter's Terms of Service group, to which Twitter promises to respond within 24 hours. Twitter maintains that it will work with users to remove infringing material and that it will suspend an account if there is a clear intent by the infringing user to mislead viewers into believing that the account belongs to the trademark owner. But Twitter's process evidently didn't work for Tony La Russa.

In short, although both Facebook and Twitter tout their internal grievance procedures, neither appears to offer much transparency, expediency, or predictability to a trademark owner.

ICANN/UDRP
The intelligent business lawyer might be inclined to seek a remedy in the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP governs disputes "over the registration and use of an Internet domain name," prescribing a mediation process in which disputes might be resolved more swiftly than in other venues. The process begins with the filing of a complaint with one of four "providers" approved by ICANN. These providers, which include the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), the Asian Domain Name Dispute Resolution Center, and the Czech Arbitration Court, are essentially mediators entrusted to resolve domain name disputes consistent with the UDRP. In the United States, WIPO and NAF are the most frequently used providers.

Cybersquatting is defined as "[t]he act of registering and using a domain name with bad faith intent to profit from the goodwill of someone else's trademark," 15 U.S.C. § 1125(d), comprising the following characteristics:

  • (1) the registrant's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

  • (2) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

  • (3) the domain name has been registered and is being used in bad faith.

While WIPO and NAF have credibility and invaluable experience dealing with trademark disputes in domain names, the UDRP does not offer relief for infringement via vanity Facebook or Twitter vanity URLs. The UDRP is a consensual process; domain name registrars execute a Registrar Accreditation Agreement, agreeing to be bound by the UDRP. Strangers to the registration agreement are under no obligation to use the UDRP process. Neither Facebook nor Twitter is a domain name registrar, and thus they are not subject as registrars to the UDRP.

The UDRP appears to contemplate applicability beyond top-level domains (TLDs). For instance, section 1.7 of the Accreditation Agreement defines a registered name as "a domain name within the domain of a TLD . . . whether consisting of two (2) or more (e.g., john.smith.name) levels . . ." However, neither WIPO nor NAF has flexed any muscles beyond TLD territory, and neither organization appears to believe that the UDRP applies to post-domain names. On its blog, NAF commented that it was aware of Twitter and Facebook vanity URLs and the Tony La Russa litigation, but that "there is no dispute resolution process set up through [ICANN] for Facebook or Twitter URL disputes." An NAF representative explained that the portion of a domain name appearing after the backslash is never subject to the UDRP because it is a path appended to the domain name indicating where a file may be found. A WIPO representative offered a similar opinion.

Anti-Cybersquatting Consumer Protection Act
Very soon after Network Solutions began registering domain names to users, less than scrupulous entrepreneurs implemented greenmail schemes, registering domain trademarks and business names, then ransoming the URL to the mark owner. Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), in response. But riding the ACPA to remedy in a Facebook or Twitter vanity URL case is doubtful. First, the Act appears to address domain names obtained through a "registrar." Second, liability under the ACPA requires a showing of the user's "bad faith intent to profit" from the registration.

Title 15 U.S.C. § 1127 defines domain name as "any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet." The definition is lost in circularity: A domain name registration authority is an entity that registers domain names, and a domain name is any alphanumeric designation that is assigned by a domain name registration authority. "Registrar," "registry," and "registration authority" are not statutorily defined. A registrar entity that has signed a Registrar Accreditation Agreement with ICANN is a domain name registrar, but the language of the ACPA appears to exceed that scope. Not only registrars, but "other registration authorities" are subject to the Act. The addition of terms other than "registrar" indicates a broader scope of application. Otherwise, use of the varying terms would be redundant, a statutory construction that courts actively discourage.

Could Twitter or Facebook be defined as a "domain name registration authority"? The court in Sallen v. Corinthians Licenciamentos Ltda., 273 F.3d 14 (1st Cir. 2001), explained that with their own URL registrations, Facebook and Twitter "acquir[ed] exclusive rights to that second-level domain [www.facebook.com or http://twitter.com] and the ability to create as many third (or higher) level domains as desired under the second level domain." Neither is authorized by ICANN to assign TLD or second-level domains, but both allow subscribers to register unique, third-level domain addresses. In Facebook, Inc. v. Power Ventures, Inc., 2009 U.S. Dist. LEXIS 42367 (N.D. Cal. May 11, 2009), the court described the social networking site as a "proprietary network." Users must register and assent to Facebook's Terms of Use before using the site. Third parties may create applications that interact with the network, so long as they adhere to a standard set of protocols and agree to Developer Terms of Service. Facebook permits integration of third-party websites and permits exchange of data with those sites. In short, Facebook appears to function as the "registrar" of its proprietary network.

Whether an unauthorized registrant has a bad faith intent to profit poses another hurdle to recovery under the ACPA. The statute, 15 U.S.C. § 1125(d)(1)(B)(i), identifies nine nonexclusive factors that a court may consider to determine the existence of a bad faith intent to profit, but other, unnamed factors also might support the finding.

Classic evidence of a bad faith intent to profit, of course, is the ransom of a domain name to the rightful trademark owner. Although Facebook's policy of forbidding vanity URL transfers by users would seem to foreclose that precise activity, demanding a payment in exchange for relinquishing the name exhibits the same intent. Indeed, the Senate report accompanying the ACPA identified as evidence of a bad faith intent to profit "register(ing) well-known brand names . . . in order to extract payment from the rightful owners of the marks." Practices that would satisfy the Lanham Act's commercial use requirement also may satisfy the ACPA. In Pet Silk, Inc. v. Jackson, 481 F. Supp. 2d 824 (S.D. Tex. 2007), for instance, although the primary site lacked any overt commercial purpose, a link to a commercial site on which competitive products were offered for sale reflected the actor's bad faith intent to profit from URL registration.

The Lanham Act
Having been excluded from the expedited UDRP procedures and doubting relief under the ACPA, mark owners may seek redress for trademark infringement under the Lanham Act. The Lanham Act indeed may provide the most viable federal claim. The challenge is to demonstrate that the infringer used the mark in commerce; that the mark was used as a trade mark, i.e., to identify goods or services; and that the use entails a likelihood of confusion.

It is by now clear that the use of another's trademark in a domain name may constitute a trademark violation, a pronouncement that rests on a solid rationale. As the First Circuit explained in the Sallen case: "Because of their easily remembered form, domain names have become business identifiers important to offering goods and services." Trademark dilution, a violation of 15 U.S.C. § 1125(c), also may result from wrongful use of a famous mark in a URL. But application of the statute in a post-domain path dispute is less clear. Courts have had difficulty perceiving anything other than URL use as a trademark use. How, judges have opined, can a use that is ancillary to the URL (e.g., a post-domain path) be a trademark use? Where is the likelihood of confusion? How can this be a commercial use?

The Sixth Circuit's decision in Interactive Products Corp. v. a2z Mobile Office Solution, Inc., 326 F.3d 687 (6th Cir. 2003), in which the court concluded the use of another's trademark in the post-domain path was not an infringing use, highlights some of these issues. The trademark holder, Interactive Products, asserted claims of trademark infringement and false designation of origin against a2z, which had used Interactive Products' trademark in the post-domain path of its URL. The court focused on a critical element of proof, namely the likelihood of consumer confusion, observing that "[t]he post-domain path of a URL . . . does not typically signify source." Internet users, the court explained, do not find particular web pages by entering a full URL address into a web browser. They are more likely to reach desired web pages "via a link from the website's home page, which does not contain the post-domain path."

The court stated its conclusion broadly: Since a post-domain path does not signify source but rather serves as a directory within a domain name, "it is unlikely that the presence of another's trademark in a post-domain path of a URL would ever violate trademark law." IPC had failed to present evidence that the presence of its trademark in a2z's URL could lead to consumer confusion.

The few courts that have addressed post-domain URL issues have expressed a similar skepticism, as in Knight-McConnell v. Cummins, 2004 U.S. Dist. LEXIS 14746 (S.D.N.Y. June 29, 2004), where use of the plaintiff's name in a post-domain path did not cause confusion. In a case predating Interactive Products, for instance, Patmont Motor Werks, Inc. v. Gateway Marine, Inc., 1997 U.S. Dist. LEXIS 20877 (N.D. Cal. Dec. 17, 1997), the court adopted an even narrower functional view of a post-domain path. The defendant's website included a second-level URL that incorporated the plaintiff's Go-Ped trademark: www.idiosync.com/goped. Because the unauthorized use did not appear in the domain name, the court concluded, the defendant's use of Go-Ped was not a trademark use:

[T]he text that follows the domain name in a URL—in other words, the text that comes after the slash—serves a different function. This additional text, often referred to as the "path" of the URL, merely shows how the website's data is organized within the host computer's files . . . Nothing in the post-domain path of a URL indicated a website's source of origin . . .

As Internet marketing becomes more sophisticated, so does unauthorized use of trademarks. A competitor non-trademark owner's use of the target company's trademark as a metatag or as a purchased keyword on a search engine allows a competitor to be included in the listed search results, sometimes preceding the trademark owner. At some point in the search, the user will realize that the non-trademark owner's site is not the target site, but the user's attention has clearly been diverted from the trademark owner's site in the first instance. This doctrine of initial interest confusion may overcome judicial angst. Appreciating that an indirect or invisible use of another's mark can lure Internet searchers away from the trademark owner's goods or services, courts may more closely examine the functional role of indirect trademark uses.

The Sixth Circuit in Audi AG v. D'Amato, 469 F.3d 534, 544 (6th Cir. 2006), explained the enhanced risk of Internet confusion:

[S]imultaneous use of the Internet as a marketing tool exacerbates the likelihood of confusion, given the fact that entering a web site takes little effort—usually one click from a linked site or a search engine's list; thus Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership.

Applying that logic, the court concluded that the defendant's posting of a hyperlink to a site that incorporated Audi's trademark caused initial interest confusion; judgment of trademark infringement was affirmed. Even a disclaimer on the defendant's site did not rebut confusion; the court explained: "A disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the web site comes too late."

Courts applying the doctrine of initial interest confusion have referenced an eight-factor test for assessing confusion. In the Ninth Circuit at least, these are commonly known as the Sleekcraft factors, from AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). Three of the factors—similarity of the marks, relatedness of the goods, and use of the Internet as a marketing channel—are known as the Internet trinity and assume primary importance in the analysis, as in Brookfield Communications, Inc. v. West Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).Metatags, pop-up ad triggers, purchased advertising keywords, links, and even algorithmic use have been the subject of these inquiries. The results vary; no uniform trend can yet be discerned.

Prior precedent does not mark a clear path, and cases such as Interactive Products, Patmont Motor Werks, and Knight-McConnell are discouraging. But there is hope to be found. If an entirely invisible metatag can be trademark infringement, then a visible, vanity URL surely could qualify as a trademark use.

Vanity URLs are in their infancy. But, as their use increases, an aggrieved trademark owner may be able to develop evidence that Facebook or Twitter users actually enter the vanity URL as a primary address. For instance, one might enter www.facebook.com/Tiger as an intuitive choice to reach Tiger Woods' Facebook site, or www.facebook.com/cocacola to reach Coke's Facebook site. A vanity address then begins to function as an identifier of specific goods or services—as a trademark.

The use in commerce element of trademark infringement, defined at 15 U.S.C. § 1127 as use "in the ordinary course of trade," may prove the more difficult hurdle in social network vanity URL cases. While the commercial intent of certain Facebook or Twitter accounts (e.g., www.facebook.com/cocacola) may be obvious, that intent may be more subtle for most users. Unearthing a commercial use may be challenging.

Take, for instance, Mr. Houeix, a disappointed former student at the Savannah College of Art and Design who maintained a website dedicated to complaining (cybergriping) about the college. Asserting trademark infringement based on Houeix's incorporation of one of the college's marks in the domain name, the college sued. Savannah College of Art and Design, Inc. v. Houeix, 369 F. Supp. 2d 929 (S.D. Ohio 2004). Although initial interest confusion was evident, the absence of a commercial element ultimately doomed the case.

Mr. Houeix's cybergriping was constitutionally protected, the court explained, unless a commercial motive could be found. To offend the Lanham Act, the defendant must unfairly seek to profit or capitalize on the goodwill in the owner's mark. Reasoning that links to commercial sites could satisfy the commerce element, the college vigorously mined the links on the offending site. Their efforts were finally rewarded. Following links originating from the defendant's site, through several successive layers, the college finally found a commercial site. But the court declared the remote commercial link too tenuous. The result: no use in commerce and no trademark infringement.

The Savannah case does not extinguish the possibility of finding a commercial motive in an apparently noncommercial site, including Facebook or Twitter sites. More direct links have satisfied the requirement, for instance, in the GEICO and Rescuecom cases noted in the sidebar.

Admittedly, none of these cases have involved a post-domain URL. But the trend to examine the function of trademark uses raises the hope of protection. The Sixth Circuit might even cure the apparent internal disjunction between its Interactive Products and Audi AG decisions.

Conclusion
There is no easy road to a federal remedy for trademark owners who are aggrieved by unauthorized use of their marks in vanity URLs on Facebook or Twitter. Initial interest confusion and functional use of nonvisible tags may develop in the context of post-URL path infringement, but the direction the path may take is unclear.

The Lanham Act may offer a remedy for post-domain trademark infringement. But that remedy assumes that the aggrieved mark owner can identify and obtain jurisdiction over the offending user. Amendment of the ACPA to embrace post-domain disputes is a logical alternative. Only with the ACPA's promise of in rem jurisdiction could a trademark owner have any reasonable expectation of achieving an effective remedy for post-domain infringement.

The logic that protects trademark owners from unauthorized commercial use of their marks in domain names, by now an established concept, should apply equally to vanity URLs registered on social network sites. Trademark owners should be protected from others misappropriating the value and goodwill of a mark—registered or unregistered—to their own purposes. That such uses are occurring in the constantly expanding, changing, and technologically advancing arena of electronic communications should not frustrate the value of trademarks.

This article ends as it started. The law needs to catch up to technology.

Additional Resources

The Courts Lack Uniformity in Assessing "Confusion"

In Trans Union LLC v. Credit Research, Inc, 142 F. Supp. 2d 1029 (N.D. Ill. 2001), use of another's mark as a metatag did not offend the Lanham Act, but a potential Lanham Act violation was found on similar use in Brookfield Communications, Inc. v. West Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)(court stating that "[u]sing another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store"); Bihari v. Gross, 119 F. Supp. 2d 309 (S.D.N.Y. 2000); and Nettis Environmental Ltd. v. IWI, Inc., 46 F. Supp. 2d 722 (N.D. Ohio 1999). Use of a competitor's trademark as a pop-up ad trigger was held not to be a trademark use in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), but purchasing trademarks as advertising keywords found greater traction in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009), and Playboy Enterprises, Inc. v. Netscape Communications, Inc., 354 F.3d 1020 (9th Cir. 2004). Conflicting cases on the advertising keyword issue are collected in Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006). Links have formed a basis for finding infringement, e.g., Government Employees Insurance Co. v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004); Rescuecom Corp.,562 F.3d 123; Texas International Property Ass'n v. Hoerbiger Holdings AG, 624 F. Supp. 2d 582 (N.D. Tex. 2009), but algorithmic use has failed to provide the basis for a claim, Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003).

Natalma M. McKnew

McKnew practices at Smith Moore Leatherwood LLP in Greenville, SC. Her e-mail is tami.mcknew@smithmoorelaw.com. The author wishes to thank Steve Woodliff, third-year law student at the University of Mississippi, who rendered strong assistance with this article, checking many blog sources and conducting several interviews.