The world of domain names is ever-evolving with new generic top-level domains (“gTLD’s”) added to ICANN’s New gTLD Program regularly. Part of Traverse Legal’s brand protection and trademark monitoring efforts includes investigating the usage of various domain names that are registered containing our client’s trademarks. Through our review, we are able to determine whether a domain name’s use of the client’s trademark constitutes cybersquatting to warrant a cease and desist letter. Now, a relatively newer issue that has developed in the domain name world is the use of trademarks in subdomains and whether those are subject to the Anticybersquatting Consumer Protection Act (“ACPA”).
A subdomain – or “third level domain” – is an additional part of the main (“second level”) domain name, created to organize and navigate different sections of a website. Subdomains appear to the left of the main domain name and can be easily created within a domain registrar. An example of a subdomain is subdomain.domain.com (not to be confused with a subdirectory, which is is domain.com/subdirectory). As subdomains become increasingly popular, so does the practices of registrants selecting subdomains that – especially when paired with the second level domain – create a likelihood of confusion with protected trademarks.
In short, the current answer appears to be no. Under the ACPA (15 U.S.C. 1125(d)), a party can be liable if it registers, traffics in, or uses a “domain name” that is “identical or confusingly similar” to a trademark, with bad faith intent to profit from the mark. “Domain Name” is defined by the ACPA as “any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the internet.”
One of the only cases to speak on this specific topic directly – GoForIt Entertainment LLC v. DigiMedia.Com LP – involved the issue of whether defendant’s use of the subdomain “goforit.com.org” constituted cybersquatting on plaintiff’s GO FOR IT trademark. The Northern District of Texas held that subdomains were not actionable under the ACPA because subdomains are not “registered with or assigned by” a website registrar, so therefore subdomains fall outside the ACPA definition of “domain name.” The court rationalized that the “only part of a web address that must be registered is the second level domain. Establishing a third level domain does not require registration with or assignment by a domain name registration authority.” Ultimately, summary judgment was granted in favor of defendant.
As cybersquatters continue to evolve their tactics, the bad faith use of subdomains will likely keep growing in popularity. Traverse Legal predicts that subdomains will start to become more of an issue for trademark owners looking to enforce their rights online. As subdomains become more common and egregious, eventually the law will have to catch up and recognize the various levels of domain names that can be considered cybersquatting. Until then, we will remain diligent in monitoring the usage of second-level domain names on behalf of our client’s and enforcing their rights pursuant to ACPA for the same.