Internet Outlaws: Knowingly Placing Ads on Parked Domain Names Invokes Contributory Trademark Liability

INTRODUCTION I. TRADEMARKS AND THE INTERNET A. Trademark Law B. Traditional Contributory Infringement II. ONLINE TRADEMARK INFRINGEMENT: DIRECT AND CONTRIBUTORY INFRINGEMENT ONLINE A. Trademarks within the Online Context B. Trademark Infringement Online 1. To What Parties is Online Trademark Liability Subscribed? a. Registrars: Universally Protected from Trademark Liability under U.S. Law b. Registrants: Traditionally Held Liable for Trademark Infringement for Cybersquatting C. Contributory Trademark Infringement Online III. AD PARKER LIABILITY ONLINE A. Ad Parker Direct Infringement Liability B. Ad Parker Contributory Infringement Liability CONCLUSION INTRODUCTION A theory of trademark liability for domain name registrants--who register domain names that incorporate registered trademarks they do not own--is clearly established in the United States. However, it is also clearly established that registrars, who govern the distribution of domain names, have no liability when domain names are used for illegal activity. While the liability of these two essential parties related to website registration is clear, to date, little research exists regarding whether the parties that actually facilitate the monetization of trademark-infringing website registration are somehow liable for intellectual property infringement themselves. Drawing on the established frameworks holding registrants liable for online trademark violations in the United States, this Comment encourages a framework of contributory trademark liability for "advertisement parkers" ("ad parkers"), those organizations that facilitate revenue generation through the placement of advertisements on parked, cybersquatted domain names. In examining whether the advertisers paying for links on parked, cybersquatted pages are contributorily liable for trademark infringement, this Comment examines relevant case law, from Lockheed Martin Corp. v. Network Solutions, Inc., to Tiffany, Inc. v. eBay, Inc., as well as relevant federal statutes. First, I address trademark law in the United States generally; second, I evaluate trademarks, trademark infringement, and contributory trademark infringement in an online context; and third, I argue that contributory trademark infringement should apply to organizations that facilitate ad placement on parked, cybersquatted domain names. I. TRADEMARKS AND THE INTERNET A. Trademark Law It is a "traditionally accepted premise that the only legally relevant function of a trademark is to impart information as to the source or sponsorship of the product." (1) However, trademark law is now used not only to protect the source of an item against confusion, but also to protect against a range of harms, especially online, including dilution of a source's true identity in the marketplace through the registration of domain names. In the United States, trademarks are often protected online by invoking rights provided by the Federal Trademark Dilution Act of 1995, (2) which has now been incorporated into the United States' Anti-Cybersquatting Consumer Protection Act (3) ("ACPA") within the Lanham Act. (4) Two types of trademark claims are raised in domain name disputes: trademark infringement and trademark dilution. (5) A mark owner may complain of infringement if the mark is being used by someone other than the owner in a way that is likely to cause confusion among consumers. (6) In trademark dilution claims, the trademark owner does not have to prove likelihood of confusion among consumers, but does have to show dilution of the distinctive source-identifying quality of the mark. (7) To qualify as dilution, the mark must be "famous," defined as having achieved fame among the general public (in other words, the mark is instantly recognizable in a source-identifying way by the general public); and the use must have diluted the quality of the mark by blurring or tarnishing the mark through association with other things that are not associated with the mark owner's products or services. …