Is it infringement if someone buys a URL with my company's trademark?

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Question:

I have trademarked my business name, "KINECT," with the U.S. Patent and Trademark Office, and also have registered the URL. Since I did so, someone has purchased the URLs KINECT.NET, KINECT.ORG, and KINECTION.ORG, NET, and COM. Can this be considered a trademark infringement, based on dilution, once they begin using the sites?

Answer:

Trademark infringement and dilution are actually two separate claims. You suffer dilution only if your name is famous, such as Sony or Disney. KINECT does not have the resonance in the public mind as do those music and mouse giants.

Trademark infringement depends on several factors, the most important of which are (1) who used the name KINECT for commercial purposes first, and (2) which goods or services were sold using that name. As a general rule, if they started using the name on similar goods or services after you began using the name, you have superior trademark rights.

Always bear in mind that infringement is based on the likelihood of customer confusion -- that is, is a consumer likely to be confused that the other company's goods or services come from your company? If the other site carries different merchandise or offers different services, there is unlikely to be any confusion.

One final note, buying a domain name that reflects the name of a business or famous person with the intent of profiting off that business -- for example, selling the name back to the business or celebrity for a profit -- is considered to be cybersquatting. The Anticybersquatting Consumer Protection Act of 1999 authorizes a cybersquatting victim to file a federal lawsuit to regain a domain name or sue for financial compensation. Under the act, registering, selling or using a domain name with the intent to profit from someone else's good name is considered cybersquatting. Victims can also use the provisions of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN, an international tribunal administering domain names. This international policy results in arbitration of the dispute, not litigation.

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