Trademarks, Domain Names & Cybersquatting

March 9th, 2020

Like peanut butter and jelly, trademarks, domain names and cybersquatting all go together.  Every analysis begins with  trademark rights.  I order to make a claim for cybersquatting, and you have to have trademark rights in a word or phrase.  If that word or phrase is also a domain name, you can protect the domain name using your trademark rights.

Trademark Rights & Confusion

A trademark or service mark is generally a word, phrase, symbol, or design, or a combination, associated with a company, goods or services that identifies and distinguishes the source of the goods or services from third parties, including competitors.  A service mark is related to the source of a service rather, than a source identifier for goods.

When comparing the rights of two companies to a mark, the key test is a “likelihood of confusion” between the marks.  The likelihood of confusion is more likely to be an issue when the competing marks are similar, and the goods and/or services between the two competing users are related.  Any variations of words or letters that create a likelihood of confusion will result in a contest on trademark rights. the first to use the mark in commerce typically wins, even if the mark is not registered with the USPTO.  Further,  two identical marks can coexist, so long as the goods and services are not related.

Trademark Issues & Domain Name Use

Domain names are not necessarily trademark protected.  A trademark identifies goods or services as being from a particular source. Registration of a domain name does not create trademark rights. If the domain name is an identifier of source, and meets the tests for non-domain name trademarks, or matches your trademark, then you can protect it,.

Cybersquatting Domain Names

Cybersquatting is the registration of a domain name with a bad faith intent to profit from and existing trademark owner related to that owner’s pre-existing trademark rights. Cybersquatting can also occur when you ‘use’ or change use of a domain name or website hosted on a domain name, if the change in use starts to create a likelihood of confusion. Finally, trying to sell a domain name which is confusingly similar to a trademark owner can be powerful evidence of bad faith intent to profit.

Internet Attorney Update: Viacom Appeals Summary Judgment Ruling in Trademark and Copyright Infringement Lawsuit Against Google and YouTube

August 16th, 2010

Holding true to its promise, Viacom has appealed a judgment by the District Court for the Southern District of New York wherein Judge Stanton ruled that Google and YouTube are not liable for copyright infringement based on Safe Harbor provision of the federal Digital Millennium Copyright Act (DMCA).

This case began back in 2007 with Viacom’s initial lawsuit against YouTube alleging $1 billion in damages. Viacom argued that YouTube provides a service to internet users by doing more than merely allowing trademark infringement attorneysthem to post and distribute copyrighted materials. Viacom’s complaint stated;

“YouTube itself commits the infringing duplication, distribution, public performance, and public display of Plaintiffs’ copyrighted works, and that infringement occurs on YouTube’s own website, which is operated and controlled by Defendants, not users.”

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Trademark Infringement Update: Second Circuit Reverses to Find Jurisdiction Based on Shipment of Single Counterfeit Chloé Handbag

August 13th, 2010

In a decision rendered on August 5, 2010 by the U.S. Court of Appeals for the Second Circuit, that court reversed the district court’s refusal to exercise jurisdiction based on Defendants’ shipment of a single counterfeit Chloé handbag from California to New York in the case of Chloé v. Queen Bee, 09-3361-cv (2nd Circuit, Aug. 5, 2010).

The Second Circuit’s Chloé v. Queen Bee opinion can be found here.

Interestingly, it appears that the single shipment of the counterfeit Chloé handbag was a ploy. The sale was actually orchestrated by Chloé’s attorneys as a “trap sale” to open up Defendants Queen Bee of Beverly Hills and its principal Simone Ubaldelli to claims of trademark infringement attorneys

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2 Seventh Day Adventist Organizations Bring Trademark Infringement Lawsuit Against Breakaway Church

August 12th, 2010

The U.S. Court of Appeals for the Sixth Circuit rejected a defendants’ motion dismiss various trademark infringement claims brought against him by two Seventh Day Adventist organizations. Suit was brought by General Conference Corporation of Seventh-Day Adventists and General Conference of Seventh-Day Adventists (Plaintiffs/Adventists) against Walter McGill (Defendant), after McGill broke off from the Seventh Day Adventist Church congregation and began his own congregation (apparently of which there are only 3 members) under the name Creation 7th Day Adventist Church.

trademark infringement attorneysOriginally Adventists brought a trademark infringement lawsuit against McGill in the U.S. District Court for the Western District of Tennessee at Jackson for his use of protected marks belonging to Adventists in advertising and promoting his breakaway church. In response, McGill brought a motion to dismiss based on the Free Exercise Clause and the Religious Freedom Restoration Act (RFRA), which was denied by the district court. Subsequently, and after McGill’s repeated refusal to appear for a court-ordered mediation to which he had initially consented, the district court entered default judgment against him and granted partial summary judgment in favor of Adventists.

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AOL’s ‘ADVERTISING.COM’ Trademark Found Generic by Ninth Circuit Ruling, Overruled Preliminary Injunction Against

August 5th, 2010

In a case before the U.S. Court of Appeals for the Ninth Circuit, Plaintiff on appeal, Inc. (, appealed a preliminary injunction order previously entered by the U.S. District Court for the Central District of California which barred from using the domain name for its web services.

trademark infringement attorneysThe full opinion;, Inc., v. AOL ADVERTISING, INC., FKA Platform-A, Inc.; AOL INC., Case No. 10-55071 (9th Cir. August 3, 2010).

Defendants in this suit are AOL ADVERTISING, INC., FKA Platform-A, Inc.; and AOL INC., (collectively as ‘Defendants’ or ‘AOL’). AOL was the original plaintiff in this lawsuit and at the district court level it filed a complaint alleging trademark infringement against in the Eastern District of Virginia. That case was transferred to the Central District of California where District Judge Valerie Baker Fairbank entered a preliminary injunction against

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Greenpeace Embroiled in Trademark Infringement and Defamation Lawsuit Over its Pac-Man Parody Game, Turtle vs Tata

August 2nd, 2010

Pac-Man is almost universally recognized as the beloved yellow circle with a mouth who is being chased by the ghosts Blinky, Inkey, Pinky and Clyde. In a twist on this classic arcade game, Greenpeace produced their own version of the game. In the Greenpeace’s version, they have swapped out the usual Pac-Man characters for their own hero and nemesis set; the endangered Gahirmatha turtle featured in yellow and squared off against four colorful Tata symbols named Ratty, Natty, Matty and Tinku.trademark infringement and defamation lawsuit

Go here to play Greenpeace’s parody game, “Turtle vs Tata”

Or here to revert back to the iconic original Pac-Man game in a Flash version

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2 Men Charged with Trademark Infringement for Selling Wood as Laptops

August 2nd, 2010

Hinds County authorities caught two men on Thursday attempting to sell blocks of wood and binders filled with paper by passing them off as laptop computers and cameras. The two men, Eddie Handford, 45, and Frank Hamilton, 54, were caught at the Mississippi Fairgrounds in Jackson. They were offering for sale the fake laptops and cameras contained boxes, complete with Toshiba labels, to an off-duty trooper when they were arrested.

trademark infringement attorneysThe two are being charged with trademark infringement and two counts of illegal sale of goods bearing counterfeit labels, each count of which carries a maximum sentence of five years in jail and $10,000 in fines. Read More »

Trademark-Infringement-Attorney Update: Defendant Lexus Vehicle Auto-Brokerage Service Protected by Fair Use Doctrine in an Appeal from Lawsuit Brought by Toyota

July 26th, 2010

In this recent trademark-infringement lawsuit, Plaintiff Toyota brought suit against Farzad and Lisa Tabari for using the Toyota’s mark ‘LEXUS’ in 2 domain names that advertised the Defendants’ auto brokerage services ( and The court of appeals ruled in favor of Defendants’ and against the injunction preventing their use of ‘LEXUS’ anywhere in the domain names used for their auto brokerage service.

trademark infringement attorneysProcedural History;

The district court found trademark infringement and ordered the defendants to cease using the domain names ( and and enjoined them from future use of the ‘LEXUS’ trademark in connection with any other domain name.

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Free Download Links for Firefox Web-Browser Used as Traps on some German Websites

July 26th, 2010

Many Internet users take downloading free software over the Web for granted, especially when that download link is located on a seemingly legitimate Website next to the seemingly legitimate logo of the software you are downloading.

trademark infringement attorneyHowever, with increasing prevalence these ‘free download’ links are being used as traps and can be found throughout myriads of Web pages hosted by German servers.

Recognizably, one of the familiar companies hosting freeware or Open Source Software (F/OSS) that is being used on these ‘trap’ fraudulent Websites is the popular internet browser Firefox.

On its Website, Firefox boasts that “switching from IE to Firefox is quick and easy – a safer, faster, more advanced Web is only a few clicks away!”

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The Naked Cowboy Threatens The Naked Cowgirl with Trademark Infringement Lawsuit After She Refused to Become a Franchisee

July 22nd, 2010

Time Square icon The Naked Cowboy is threatening The Naked Cowgirl with a lawsuit and fines up to $150,000.

Robert Burck is the original Naked Cowboy and also the owner of the ‘NAKED COWBOY’ trademark. In a bid to enforce his brand rights, he sent a cease-and-desist letter to Sandy Kane, who has proclaimed herself as The Naked Cowgirl and who also began to appear in Times square donning a red, white and blue cowboy hat and matching bikini several years ago.

trademark infringement attorneyIn an article posted on the New York Post earlier today, Sandy Kane is characterized as, “a fixture of the city comedy scene and former stripper famous for closing her act by lighting her breasts on fire.”

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