Domain Name Trademark Cases | Post-Domain Path Doesn’t Infringe Trademark

The 6th Circuit Court of Appeals recently ruled in Interactive Products Corporation v a2z Mobile Office Solutions, Inc., that the presence of a trademark in a web page's URL post-domain path does not violate federal trademark law.

The Court noted:

If, for instance, the present domain name dispute involved a situation where a2z and MOE were selling a portable computer stand called "The Lap Travel Stand," then this would be a typical trademark case where the eight factors would be helpful in determining whether defendants' use of this mark would likely cause confusion with IPC's "Lap Traveler" trademark. In this case, however, the product defendants are selling is called "The Mobile Desk," a trademark not at all similar to IPC's "Lap Traveler" trademark. IPC, of course, is not challenging defendants' use of the mark "The Mobile Desk" to identify their competing product; instead, IPC is challenging the presence of its trademark, "laptraveler," in the URL post-domain path of the web page from which defendants are selling the Mobile Desk product…

Apparently, the present domain name trademark case marks the first time a circuit court has considered the issue of whether the presence of another's trademark in the post-domain path of a URL violates trademark law. Several courts have considered the Internet law issue of whether the use of another's trademark in one's website domain name violates trademark law, and the answer is usually that such use is a violation. See, e.g., PACCAR, Inc. v. TeleScan Tech. LLC, 319 F.3d 243 (6th Cir. 2003) (holding that defendant's use of domain names such as "peterbilttrucks.com" and "kenworthnewtrucks.com" violated plaintiff's trademark rights in the marks "Peterbilt" and "Kenworth"); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (holding that the defendant's use of the domain name "moviebuff.com" violated plaintiff's trademark rights in the mark "MovieBuff"). But these courts have all relied on the fact that domain names usually signify source. As we recently stated, "[w]ords in many domain names can and do communicate information as to the source or sponsor of the web site." PACCAR, 319 F.3d at 250; cf. Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 627-28 (6th Cir. 1998) (Merritt, concurring) (noting that a domain name does not always act as a trademark and stating, "When a domain name is used only to indicate an address on the Internet and not to identify the source of specific goods and services, the name is not functioning as a trademark.").

Because post-domain paths do not typically signify source, it is unlikely that the presence of another's trademark in a post-domain path of a URL would ever violate domain name trademark law. For purposes of the present internet case, however, it is enough to find that IPC has not presented any evidence that the presence of "laptraveler" in the post-domain path of a2z's portable-computer-stand web page is likely to cause consumer confusion regarding the source of the web page or the source of the Mobile Desk product, which is offered for sale on the web page. Therefore, the district court correctly granted summary judgment in favor of defendants on IPC's trademark claims. Moreover, because there is not any evidence that the post-domain path of a2z's portable-computer-stand web page signifies source, it was unnecessary for the district court to examine the eight factors traditionally used to determine likelihood of confusion between two source-signifying marks.