Fashion blogosphere "EXPLODES" with allegations of stolen domain names; LOF *cautiously* weighs in

Posted by Charles Colman

As Racked reported earlier this week, “the fashion blogosphere has exploded that stole its name from an already-established fashion blog called”  Jennine Jacob, who runs what I’ll call the “hyphen blog,” had some fightin’ words for the “hyphen-less blog,” claiming, among other things, that “there is another site attempting to use my name” and that she is “exploring her options.”  Presumably, this means hiring a lawyer.  (Not me, as far as I'm aware.)


The first question that occurred to me after learning of this “controversy” was: “Why does the ‘established’ blog have a hyphen in its name?”  (Everyone knows hyphens in domain names are bad, bad, bad!)  The answer, perhaps unsurprisingly, is that the owners of the hyphen-less blog actually registered their domain name roughly a year before Jacob registered hers.  Now, this doesn’t mean that the hyphenless blog has the all-important "priority" in the "Coveted" mark, or that it wasn’t “attempting to use [hyphen blog’s] name,” as Jacob claims (that’s an allegation of intent, which is easy to throw around casually in interviews, but of course has to be proven in legal proceedings.)  Nevertheless, the chronology should, at the very least, give pause to Racked commenters throwing loaded words at the hyphenless blog like “steal,” “exploit,” and “knock off.”


In any event, when Jacob “explores her options,” she’ll likely learn that this messy situation raises potential issues under multiple federal and state statutes.  (This being a blog and not a law review article, we'll just look at the most important or interesting ones.)


First, there’s your run-of-the-mill trademark infringement action, typically brought under the federal Lanham Act with a similar or often identical state-law claim thrown in for good measure.  Here, the central question is usually whether there is a “likelihood of confusion” between the two marks at issue.  The "junior user’s" intent, which the aforementioned Racked commenters have somehow divined, is just one factor in the “likelihood of confusion” test.  Just a month ago, a federal district court in San Francisco dutifully waded through the many relevant factors, in a case involving music websites similarly named “Groovera” and “Guvera.”  His analysis, while not controlling in the Coveted case, is instructive; both sides might wish to acquaint themselves with the opinion.


Then there’s the federal Anticybersquatting Consumer Protection Act.  Most people who use the term “cybersquatting” probably have a sense that it’s something “bad people” do, and the law more or less agrees: only those with a “bad faith intent to profit from [a] mark” are considered cybersquatters under 15 U.S.C. § 1125(d).  The statute offers nine--count 'em--nine factors courts should consider when deciding if a defendant acted with the requisite bad faith.  But those factors aside, my (admittedly off-the-cuff) take is that when a defendant registered the contest domain first, a plaintiff purchased "the hyphened alternative," and the first registrant never tried to extort the senior user (i.e., sell its domain name for some obscene sum), an ACPA claim is going to be an uphill battle for the plaintiff.


Next, there are statutes that create causes of action for trademark dilution.  In short, this means that when a mark is “famous” enough, you don’t need to show a “likelihood of confusion” to prevail.  For instance, if you make and sell “Chanel” condoms, not many consumers will be confused about whether the products come from the real Chanel.  But the Chanel mark is undoubtedly “famous” under any judicial test used—whether under federal or state law—and you’ve diluted that fame through your condom shenanigans.  (Incidentally, just don’t mess around with unlawfully branded condoms – it’s not worth it.) For companies with a lower profile than Chanel, i.e., most companies in existence, the trick in a dilution case is proving that your mark is, in fact, “famous.”  When a plaintiff offers what is arguably a “niche” product, like, for instance, a fashion blog, it seems to me that the plaintiff better try his damnedest to get the court to look at the smallest relevant subset of consumers possible.  (Why?  Because if you take a survey of people walking down Third Avenue, a majority of those willing to stop and talk will probably not be familiar with either “Coveted” blog—hyphenated or not.)


While I couldn’t possibly do the legwork on all of Jacob’s potential claims, unless she paid me, of course, one last potential kink I’d like to touch on is the “registration” issue.  With all due respect to a woman who is apparently (to quote an especially passionate Racked commenter) “one of the most well-respected . . . fashion bloggers on the planet,” this situation would be far simpler if Jacob had just hired a lawyer and registered her mark soon after launching her site (or even before.)  While relatively expensive, successful registration of a trade or service mark with the U.S. Patent and Trademark Office affords the registrant what we lawyers call “nationwide constructive use” of the mark—in other words, courts will basically pretend that the owner has used the mark throughout the U.S., even if s/he only used it in a single region. 


Without federal registration (as appears to be the case here), a user only has what are called “common-law rights” in its mark, which arise from use in commerce alone and are limited to the geographic scope of actual use.


Figuring out that scope was simple in the olden (pre-1985) days.  Party X might have run a business in Massachusetts named, say, “Rex”, while party Y might have used the same mark in connection with similar goods in, say, Kentucky.  This only became a problem when one party encroached on another’s territory.


But what to do now, when many companies’ entire business is the administration of a website, which is accessible to all Internet users, everywhere


The courts have addressed this issue repeatedly in the “personal jurisdiction" context (that is, when deciding exactly where party A can sue party B), and more or less reached a consensus that you can't sue someone in state X just because his website is viewable there.


However, judges still seem to be struggling with the “Internet is everywhere” issue when it comes to the scope of common-law trademark rights.  For example, just three years ago, one court noted, unhelpfully, that “[t]he use of a mark in a domain name and on a website may be sufficient to create common law trademark rights.”  Though most judges have an affinity for elaboration, this one did not speak to the geography issue at all.  But to offer some more “off-the-cuff” analysis – again, for actual “legal advice” you’ve got to shell out the cash – I’m betting any judge worth his salt would want to see evidence of “permeation” among actual consumers in the relevant region.  And that’s not easy to produce—at least, not without significant financial resources.  Unfortunately, as so many have learned the hard way, blogging is hardly a goldmine.


Again people, this is not legal advice, and please don't treat it as such.  If you are confronting an situation that you think may pose legal issues, schedule a formal consultion with a lawyer.