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Trademark Infringement Online

Educating people on what new technology can do for them in their businesses may require a whole new set of skills for association staff, but understanding how that technology may be used in the marketplace may also require a new understanding of old rules and principles designed to protect consumers as they may apply to the technology filled workplace.

An example of the application of such a principle to the Internet is demonstrated by decisions such as one issued on April 26, 1996 by the U.S. District Court in California in Comp Examiner Agency, Inc. v. Juris, Inc., (1996 WL 376600 (C.D.Cal.)), involving the use of another company’s trademark as a website and second level domain name. Comp Examiner Agency (CEA) was owned by a California attorney who specialized in workers compensation issues. This attorney had registered with Network Solutions, Inc. (NSI), the Internet name authority in the United States, the domain name “juris.com,” and then transferred ownership of the domain name registration to CEA for its use. At the web site CEA sold software used in the legal, insurance and forensic professions, and in promotions for use of the web site claimed to have included links to many useful legal resources found on the Internet. The site was promoted to an audience which included attorneys and law firms.

Juris was a manufacturer of law office software and other goods and services mainly related to law office automation. In 1988 Juris had registered the trademark “Juris” for use in connection with these goods and services with the United State Patent and Trademark Office, and the mark had become incontestable under the federal trademark law (the Lanham Act). The principle market for Juris’ products was made up of attorneys and law firms.

When Juris found out about CEA’s website (while trying to obtain the same domain name from NSI, Juris wrote to CEA to ask it to give up the domain name on the basis of Juris’ preexisting, valid trademark registration. TCE refused to cooperate and under NSI’s Domain Name Dispute Policy once Juris had supplied NSI with a copy of its federal registration certificate which predated TCE’s first use of the domain name, TCE should have had one of four options: (1) within thirty days submit to NSI a trademark registration certificate for the domain name; (2) relinquish the domain name to Juris; (3) accept assignment of a new domain name; of (4) refuse a new name and refuse to assign old name to Juris. Under options 3 and 4 NSI’s policy would have required that a hold be put on the name and it becomes unavailable to any party until the dispute can be resolved. TCE failed to provide any response, and, according to Juris, NSI, contrary to its own policy, allowed TCE to continue to use juris.com and also allowed them to register jusiscom.com as a new domain name.

TCE sued Juris for declaratory judgment asking the federal district court to determine the respective parties rights to the domain name, and Juris counter claimed for trademark infringement. Juris then asked the court for a preliminary injunction to stop TCE’s continuing use of the juris.com domain name during the pendency of the lawsuit. In ruling on Juris’ motion for a preliminary injunction, the Court agreed with Juris’ contention that the use of juris.com as a domain name was likely to cause confusion among potential purchasers of CEA’s goods and services and lead them to possibly believe that the source of these goods and services was actually Juris. CEA was ordered to shut down all commercial activity at the juris.com site within seven days of the date of the Court’s order pending a later full trial on the merits.

This was not the first time trademark owners had clashed with users of Internet domain names identical to their trademark. Other major companies have had to fight this battle including, McDonalds, Avon, the Better Business Bureau, Hasbro (separately for both their Candyland and Clue trademarks), and Apple Computer (for their Newton trademark), and this is far from a comprehensive list. This case may have been easier for the Court than some other examples because both the trademark owner and the Internet domain name owner were in the same line of business, selling products to the same group of consumers. However, this is one of the first cases which expressly recognized that an Internet domain name could parallel the function of a trademark in commerce, and, through the application of traditional principles of trademark law, to determine the use of someone else’s trademark as a domain name could result in trademark infringement.

The role of trademarks and domain names is an important one and the case discussed here is only one of many which have arisen involving major corporations. The issue is also of importance in the REALTOR® community as the expansion of real estate business onto the Internet continues to accelerate. It will be important for Association’s to monitor not only the use by members of the Association’s membership marks on the Internet but also their own to assure all such uses comply with the rules governing the use of the membership marks. There are no special rules which must be learned for the Internet, but members as licensees authorized to use the membership marks must abide by the rules on the Internet the same way they do in any other media. The Trademark Protection Program treats the Internet as just another of the ways by which members may promote their services and the properties they are offering for sale. As such the rules governing the use of the membership marks on the Internet, including as domain names, are the same ones governing all uses of the membership marks by members. Members must observe these rules in the same way the must abide by the NSI domain name rules (those rules can be found at www.internic.net).

The term REALTOR®, whether used on the Internet, as part of a domain name or in some other fashion must refer to a member or a member’s firm, may not used with descriptive words or phrases and should be separated from the member's name or firm name. Thus uses such as number1realtor.com, firstrealtor.org or realtorproperties.com are all incorrect. Uses such as johndoe-realtor.com or abcrealty-realtors.com on the other hand would be examples of what could be done as a part of domain names. The membership marks, and particularly the REALTOR® block R logo should not be used as hypertext links at a web site as such uses can suggest an endorsement or recommendation of the linked site by your Association.

The cost involved in correcting these types of misuses emphasizes the importance of communicating the rules and their application in cyberspace to members at the earliest possible time so that decisions related to domain names and designs for websites can include trademark considerations. As the rules themselves have not changed, members need only be reminded that the Web is not an unregulated wild west where anything goes, and the rules governing use of the membership marks do apply to uses on the Internet.