Is the registrar of a domain liable for trademark infringement? INVENTEL v. LI

A trademark is something that a producer of a products brands products with to distinguish those products from the products of competitors. Traditionally a trademark is thought of as a word, phrase or symbol, however anything that serves as a source identifier can be eligible for trademark protection. If someone uses a trademark in a way that is likely to cause consumer confusion, that can be considered trademark infringement. The owner of a trademark can combat trademark infringement by filing a lawsuit. In that lawsuit a trademark owner can request an injunction to stop infringing activity and monetary damages for trademark infringement which has occurred.

The internet presents trademark law with several challenges. Trademark law was written long before things like websites, internet service providers and domain registrars existed. However, several updates to federal trademark law have created special statutes to address the challenges presented by the internet.

The internet is a network of computers, each of those computers forwards information to its peers using a numeric address. To make it easier for humans to navigate the internet, a computer’s numeric address can be assigned a domain name. A domain name is a string of characters which is easier for a human to remember than a group of numbers. A domain registrar manages a registry of domain names and the corresponding numeric address. Clients of a domain registrar pay a fee to register their domain name.

The question then becomes, if a domain registrar allows someone to register a trademarked word, does that make the domain registrar liable for trademark infringement?

15 U.S.C. § 1114(2)(D) of the Lanham Act states: Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a person bringing an action under section 1125(a) or (d) of this title shall be limited as follows . . . A domain name registrar, a domain name registry. . . shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.

The statute creates a safe harbor for domain registrars. A domain registrar will not be liable for trademark infringement committed by a client, unless the domain registrar acts in bad faith. Despite this safe harbor, there are plaintiffs that still attempt to hold a domain registrar liable for trademark infringement.

INVENTEL PRODUCTS, LLC v. LI 2:19-cv-09190 (D.N.J. 2019) is a case which deals with the question of whether a domain registrar is liable for the trademark infringement of one of its clients. The plaintiff in this case is a manufacturer of video cameras for cars. The plaintiff has been aggressively pursuing individuals who the plaintiff feels are making counterfeit versions of its products. The main defendant in this case setup several websites which used the plaintiff’s trademarks to market video cameras for cars. The plaintiff also named several other companies who provided services to the defendant as co-defendants.

One of the co-defendants in the case is GoDaddy, the domain registrar used by the defendant to register the domains names for the websites which started this lawsuit. The plaintiff asserted that it had provided GoDaddy with multiple notices that the defendant was infringing on the plaintiff’s trademark. The plaintiff asserted that GoDaddy acted in bad faith by continuing to register domain names for the defendant.

The court held that failing to prevent its computer system from registering the Website does not constitute bad faith on the part of GoDaddy. The domain registration is automatic and because the process is automatic GoDaddy lacked the intent to act in bad faith. The court found that the plaintiff provided no basis for the proposition that GoDaddy must predict which URLs will be used for infringement purposes and proactively stop them from being registered. The court dismissed the plaintiff’s case with respect to GoDaddy.

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