Internet Expert Witness Discusses Domain Name Trademark Infringement

Internet Expert WitnessThis case involves a trademark infringement lawsuit. An entertainment company sold software on an Internet website that provided paid online access to a searchable database that included information about the entertainment industry. The company had a registered trademark. However, a large video rental chain began using their registered domain name. The video rental chain registered a trademark for their stores that incorporated the entertainment company’s domain name and used the name in its advertising and marketing materials. The video chain later trademarked a domain name for a website where they planned to offer a searchable database of movie information. The domain name for the video chain’s website was very similar to the entertainment company’s domain name. The entertainment company sought an injunction to stop the video rental chain from operating its website. Expert witnesses in computer forensics and software licensing/development were sought to opine on the issue. 

Question(s) For Expert Witness

  • 1. Can an entertainment company bring a trademark infringement suit against a video rental company for using its registered domain name for a movie web site?

Expert Witness Response

If a company has a valid, protectable trademark interest in a domain name, it generally can bring a trademark infringement action against another company if the other company tries to use the protected mark in commerce. If the company who owns the protected mark used it first in commerce and there is a danger that consumers will confuse the two marks, the company can usually bring a trademark infringement action against the other company if it tries to use the protected domain name. When two domain names are essentially identical and two companies offer similar goods or services, it is likely that consumers may confuse the domain names. In this case, the use of the entertainment company’s domain name by the video rental chain was likely to cause consumer confusion because both companies provided similar searchable databases of movie information. This means that the closeness of their goods was very high. Since consumers were likely to associate the entertainment company’s website with the website of the video rental chain, the video rental chain probably infringed the trademark of the entertainment company in this case. Also, because the two companies in this case used the same marketing and advertising forum (i.e. the Internet), consumers were very likely to confuse the two websites. Because of the overlap in advertising and marketing facilities and similarity between the goods offered by each company, the video rental chain probably infringed the trademark of the entertainment company in this case.


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