Anti Cybersquatting and Consumer Protection Act codified at 15 U.S.C. § 1125(d).
If you own a trademark and find that someone is holding it hostage as a domain name until you pay a large sum for it, you may be a victim of Cybersquatting. Cybersquatting means registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. It refers to the practice of buying up domain names reflecting the names of existing businesses, intending to sell the names for a profit back to the businesses when they go to put up their websites.
In a letter from the attorneys for Friends of the Hunley, Inc. they state “your use of the domain name, "the Hunley.com" has resulted in trademark dilution, trademark infringement and cyber piracy”, as prohibited under the Anti Cybersquatting and Consumer Protection Act codified at 15 U.S.C. § 1125(d).
First of all a trademark is defined as a word, phrase, symbol or design, or combination of these used to identify the source and quality of a business product. For example, “Nike” identifies a particular brand of athletic shoe. Generally a trademark for goods appears on the product itself or on its packaging.. A trademark allows you to protect the goodwill that your business has earned in the market place. Business names can become trademarks when they are used in the marketplace to identify a product or service, such as the name “Microsoft”
Trademark law grants one entity a legal monopoly to use, and exclude others from using, a mark and confusingly similar marks in the market in which that trademark is used.
To get protection of a trademark the courts look to a number of factors. 1)The distinctiveness of the mark, 2)the duration and extent of use and promotion of the mark, 3)the geographical extent of the trading area where the mark is used, 4)the degree of recognition of the mark, 5)the extent of third-party use of similar marks, 6)whether the mark has been registered in the U.S. Patent and Trademark Office.
Now to charge trademark dilution, Friends of the Hunley, Inc. must first define what their trademark is and if in fact they have a trademark. Are they claiming that, “The Hunley”, The CSS Hunley, The Hunley Submarine, The CSS H.L. Hunley, The H.L. Hunley, and all other derivatives and combinations using the words “Hunley” are their trademark and that they have a legal monopoly of these words. I have done considerable research and can not find a registered trademark belonging to the Friends of the Hunley, Inc.
There is such a thing as “Common Law” trademark rights which is developed solely through use, if you can show that you enjoy goodwill and name recognition to a product or service name. And to claim a “common law” trademark it still has to be distinct and recognizable.
Involves any person who uses in commerce any reproduction or copy of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or cause a mistake or to deceive. First there is no trademark to infringe upon and there is no goods or services for sale using Friends of the Hunley, Inc. logo or trademarks. And to avoid any chance of confusion there are postings on each page of www.thehunley.com to alert readers that this is not Friends of the Hunley, Inc. or hunley.org website, also a disclaimer is posted for all to read.
The third charge of Cyber piracy:
A person shall be liable in a civil action by the owner of a mark if that person has bad faith intent to profit from that mark. Friends of the Hunley, Inc. must show bad faith on the part of the domain name registrant, in this case George W. Penington. The Friends of the Hunley, Inc. must prove that the domain name, www.thehunley.com, was registered with the specific intent of selling it back to them for a profit, which has never been the case.
The Friends of the Hunley, inc. registered their domain name, www.hunley.org on October 24, 1998.
Other registered names are:
www.thehunley.com registered 2/23/99 to George W. Penington
www.hunley.com registered 6/7/1996 to Netidentity, Reno, Nevada
www.thehunley.net registered 1/16/200 Stephen Lowe, Anderson, S.C.
www.csshunley.org registered 12/16/99 Veterans Choice Mortgage, Augusta, Ga.
www.csshunley.com registered 7/28/2000 Morris and Bailey Charleston, S.C.
www. HL Hunley.com is available
www. The Hunley Submarine is available
www.friendsofthehunley.com is available Amongst a slew of other Hunley names.
The Friends of the Hunley had a variety of domain names to choose from and essentially could have registered all the related names for themselves. I have spent thousands of hours building my web site as a free, one stop site for information about The Hunley. Work they themselves could have been doing to provide interested people information. Friends of the Hunley, Inc. has taken off the articles and pictures that were once available to the public and are putting them in the private pay area of their site. It is my opinion that discoveries including pictures and information should be the property of all of us and not just a select few. After all they are using public money, space, time and tax dollars to perform the recovery efforts. They are supposed to be non-profit, charitable organization yet they hoard the information as if it is their personal toy.
Friends of the Hunley, Inc. must show that my intent was to divert consumers from their site and that I could harm the goodwill they represent in their mark, either for commercial gain or with the intent to tarnish their mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site. For example if I was doing business as SONI you would have a possible cause of confusion if I were selling electronic equipment.
I believe that the problems started when I ask for donations to fray the cost of running this site, after all we had been working on it for over two years and actually started research in 1997. Some of the staff must have been concerned that my asking for donations would hinder their business in some way. I have done nothing but refer people to them through E-mail and hyperlinks. They have refused to assist me in what is my donation to the recovery efforts and a tribute to the Brave Crew of the CSS H L Hunley.
The Hunley.com is used for the dispersement of news, news reporting, and news commentary as well as the scientific research and progress reports on the recovery efforts of the Hunley Submarine. We offer goods and services and these goods and services are knowledge and research.
The Friends of the Hunley must show that I have no right or legitimate interest in respect to the domain name, www.thehunley.com. Does the Friends of the Hunley, Inc. simply covet my domain name or are they pursuing other sites as well.
To win this case, the Friends of the Hunley, Inc. must prove that:
There are many concurring uses of the same name that are non-infringing, such as the use of the “Delta” trademark for both air travel and sink faucets.
It is legal to make noncommercial or fair uses of others’ marks online, such as in comparative advertising, comment, criticism, parody or news reporting. Bad faith intent can not be found if the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. To this minute I don’t believe that anyone can trade mark the Hunley name, that it is a common name to refer to the Hunley Submarine and that variations are used by many.
In conclusion: Is this pending legal battle malicious and uncalled for, waste of tax dollars, and is it frivolous. The money spent on attorney fees could be better spent on the men of the Hunley and the restoration of the Hunley Submarine.