Obviously, the internet has changed things. One question raised in the early days of the internet was whether domain names were presumptively treated as trademarks.
Congress passed the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d) in 1999 (revised 2012), to address trademark law on the web. The ACPA prevented registering domain names that are designed with a “bad faith intent” to profit from a mark.
As with all things legal, certain exceptions apply. These come from things like having the same name - which you then use as a domain name - as a famous mark. So, for example, if your name is Miller, it wouldn’t be bad faith to incorporate that name in a domain name.
However, the law has been used to prevent someone from registering the domain name of panavision.com
for their images of the city of Pana, Illinois, because it was shown that they intended to hold the domain hostage for a payout from film camera company Panavision. See Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).
In Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), the defendant registered the domain name Panavision.com
. Panavision, the trademark owner, learned that Toeppen had registered its trademark when it attempted to register the trademark “Panavision” as a domain name.
Toeppen was using the domain panavision.com
to display photographs of Pana, Illinois, and, when asked to cease, he offered to sell the domain name to Panavision for $13,000. After Panavision refused to buy the domain name from Toeppen, he registered its other trademark, Panaflex, as a domain name.
The Court held that the FTDA could be violated without the traditional tarnishing or blurring the courts had required. Rulings like this extended the FTDA substantially.