Law360 reported that two competing DUI defense lawyers are fighting over the domain name www.dontblow.com (article here, but subscription required). Well-known DUI attorney Tyler Flood is the plaintiff. He has been using the domain name www.DoNotBlow.com for almost a decade. Mark Hull started using the similar domain name in 2011 which prompted the suit.
You can see Flood’s trademark here:
Flood has sued for trademark infringement, false designation of origin, unfair competition, injury to business reputation and dilution, cyberpiracy and unjust enrichment.
Domain Name Disputes
Focusing on the domain name, a plaintiff has two choices to challenge the use of a similar domain name by someone else–file a UDRP complaint or file an Anti-Cybersquatting Consumer Protection Act lawsuit.
The UDRP is an online process that is decided on the papers without discovery or live testimony. As the holder of a domain, you are required to submit to a “mandatory administrative proceeding” to determine rights to the domain. Regardless of whether you participate, your domain registrar must enforce the decision of UDRP Panel. If either side elects to go to court instead, the UDRP proceedings are usually put on hold.
To prevail in a UDRP claim, you must prove: (1) you have a trademark right that is identical or confusingly similar to the domain of the infringer; (2) that the infringer has no legitimate interest in the domain name; and (3) and that the person is using the name in bad faith.
If litigation through the courts makes more sense, then you should pursue your claim under the Anti-Cybersquatting Consumer Protection Act (“ACPA”) which is codified at 15 U.S.C. § 1125(d). To prevail under the ACPA, you must show the infringer (1) has a bad faith intent to profit from a domain name; and (2) registers, uses or traffics in a domain name that is identical, confusingly similar or dilutes your mark. Under the ACPA, the trademark does not have to be registered, but must: (1) be distinctive at the time of the registration of the domain name; or (2) is famous at the time of registration. Violators can be fined between $1,000 to $100,000 per wrongly used domain name. A successful plaintiff can also recover lost profits, the profits of the violator and court costs.
The immediate defense that jumps out is whether “DoNotBlow.com” is too generic to deserve trademark protection. In UDRP complaints, you usually ignore the .”com” part. Flood may have to show that the full phrase “DoNotBlow.com” has acquired a distinctive secondary meaning apart from its original meaning that identifies his particular services.
On the other hand, “Do Not Blow” does not generally describe legal services, so it has a better chance surviving a challenge than, say, “DUIDefenselawyer.com” on a generic basis.
It will be an interesting case to watch like we did when lawyers in Wisconsin fought over the bidding on competitor’s name to trigger Google ads.