MichaelF wrote:Can you figure out this one. uraqtpie.com?

HB wrote:I'm not a lawyer, but it's likely that "La Marzocco" is a protected trademark and they may have an issue with your domain name choice.

Domain Names

Using someone else's trademark in your domain name is a risky proposition because courts do not necessarily extend the same protections to domain names as they do to commentary, criticism, and news reporting. Early on in the development of Internet law, many cases held that websites could not use a company or organization's trademark in a confusingly similar domain name, even if the website accessible under that domain name criticized the trademark owner, and its content made clear that it was not sponsored by or affiliated with the trademark owner. The reasoning was that a critic has no free speech right to confuse Internet users into thinking that they are entering someone else's website in order to expose them to a critical message.

However, there is a new trend in the cases towards allowing "gripers" and other critics to use domain names that are nearly identical to the trademark owner's trademark, so long as the underlying website does not confuse Internet users into thinking it is affiliated with the trademark owner and it does not engage in commercial activity. For example, in Falwell v. Lamparello, 420 F.3d 309 (4th Cir. 2005), the Fourth Circuit Court of Appeals denied a trademark infringement claim based on the defendant's use of the domain name "fallwell.com" in connection with a website criticizing the social and religious views of the Reverend Jerry Falwell. The court held that it "must look not only to the allegedly infringing domain name, but also to the underlying content of the website" and concluded that, when viewed in this context, the defendant's use of the domain name created no likelihood of confusion. In TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), the Fifth Circuit Court of Appeals denied a trademark dilution claim based on the defendant's use of a developer's trademarked name in her gripe site's domain name. The court determined that the defendant's site was noncommercial because it was dedicated to critical consumer commentary and did not host advertising or links to commercial sites. The court did not treat the domain name as separate from the underlying website, and so it dismissed the entire dilution claim.

It is still not clear which view of the law will prevail. One way to help yourself avoid trademark liability is to include something in the domain name itself that makes it clear that you are criticizing or commenting on the trademark owner, such as a "sucks" designation. This brings the domain name back within the category of commentary and criticism and makes your First Amendment arguments more persuasive. For example, in Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003), the court held that the defendant's use of the domain name "taubmansucks.com" was "purely an exhibition of Free Speech, and [federal trademark law] is not invoked." Similarly, in Bally Total Fitness Holding Corporation v. Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998), the court held that the defendant's use of "ballysucks" in a sub-domain for a website engaging in critical commentary did not constitute trademark infringement or dilution.

Domain name disputes often involve cybersquatting claims under the Anticybersquatting Consumer Protection Act. For details, see the Cybersquatting section.