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Designing Your Website to Avoid Copyright & Trademark Problems

By Andrew Berger, Counsel, Tannenbaum Helpern Syracuse & Hirschtritt

Web site design is big business but may also expose the designer to big problems. If you choose the wrong domain name, post material on a site that infringes another’s trademark, or link to a site that you know contains pirated material, you and your client may be subjected to embarrassing and expensive litigation.

Below are some suggestions to avoid that.

Domain Name Selection

You need to choose a domain name that is both distinctive and non-infringing. That will not be easy. Most distinctive names are already registered. But first some naming basics. Domain names are composed of two parts:

  1. a descriptive name ending in a dot called the second-level domain, and
  2.  the suffix following the dot called the top-level domain.

For instance, the site amazon.com contains the descriptive name or second-level domain “amazon” and the top-level domain “com.” The descriptive name may combine letters, numbers, and some typographical symbols but no apostrophes or spaces. Three of the seven top-level domains are open to commercial users: com, net, and org. The other four (edu, gov, mil, and Interactive) are restricted to certain entities. The manager for Internet addresses, the Internet Corporation for Assigned Names and Numbers (ICANN), in response to pressure from business groups, may soon be adding some new top-level domains.

Naming Guidelines

After you have selected a possible name, search the website of one of the more than 90 domain name registrars to see if the name is available. If the name is already registered or warehoused by someone else, the search result will list similar names that you may register. For instance, search for the name Nike and the registrar will tell you that similar sounding names like “aboutnike.com” and “nikebusiness.com” are available. But before you register, keep the following guidelines in mind:

  1. If you choose a domain name that is the same or confusingly similar to another famous or distinctive trademark, here is what might happen: You invite litigation from the trademark owner under a federal statute called the Anti-Cybersquatting Consumer Protection Act or arbitration under ICANN’s dispute resolution policy. You will lose the case and your domain name to the owner of the mark if a court finds you selected that name to compete or drain business from the mark by confusing potential customers about the source or sponsorship of your site. For instance, if your site sell shoes made by a Nike competitor, don’t pick the name “nikebusiness.com” since a court is likely to determine you picked that name to draw Nike customers and switch them to your brand. Even if you do not compete with the mark, you may lose the domain name if you have never conducted business under that name, if it is not the name of a person associated with your company, or if you try to sell your domain name to the mark for financial gain. For example, Volkswagen was able to take the domain name “VW.net” away from Virtual Works, Inc. since that company had never conducted business under that domain name, had no trademark or other rights in the initials “VW,” and confused Volkswagen customers by using that domain name.
  2. If your domain name is also your name, you may be able to continue to useit, even though it is the same as another’s famous mark. But the court may set some conditions on your use. Thus, Mr. Uzi Nissan, the owner of a computer business, was permitted to use the domain name “nissan.com” so long as he did not use his site to display any automobile-related information or advertising and posted a notice on the top of his home page disclaiming affiliation with the Japanese automaker Nissan.
  3. You may also be able to use a domain name that is similar to another’s trademark so long as your purpose is to criticize the mark’s business. For instance, a court refused to shut down a site named “ballysucks,” dedicated to complaints about Bally’s fitness business. The court found that a reasonably prudent person would not mistake that site for the official Bally site. Similarly, a court declined to close down a site called “lucentsucks.com” because no consumer would confuse it with a site sponsored by Lucent.



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