Other Remedies and Defendants

• Jurisdiction: Maryland

XXI. OTHER REMEDIES AND DEFENDANTS

A. Uniform Domain-Name Dispute-Resolution Policy

When a third party makes unauthorized use of trademark as part of its website's domain name, the mark owner can bring an administrative claim under the Uniform Domain-Name Dispute-Resolution Policy²³⁸ to have the domain name assigned to the person entitled to use the domain. No damages are available. All domain name registrants are subject to the policy. Because it is an administrative proceeding, the UDRP is usually less expensive than a claim in the federal courts under the Anticybersquatting Consumer Protection Act.²³⁹ The UDRP is also preferable to the ACPA when the cybersquatter is not using infringing domain name for similar goods and services. There is no "likelihood of confusion" requirement to win a UDRP proceeding. The key to success in any UDRP proceeding is that the infringer needs to have taken the domain name in bad faith. The rules set up definitions for what actions constitute bad faith, and what actions are legitimate and not in bad faith. An aggrieved party can file in one of the arbitration forums that handle UDRP cases, and a single arbiter or a panel decides the case. The process is conducted electronically, with strict limits on timing and the size of pleadings. Each forum publishes its decisions.²⁴⁰

B. Contributory Liability

Contributory infringement is applicable in trademark cases where one facilitates or encourages infringement. The Supreme Court explained in Inwood Labs., "if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit."²⁴¹ The Second Circuit has added that "contributory liability may arise where a defendant is ... made aware that there was infringement on its site but ... ignored that fact."²⁴²

C. Vicarious Liability

Vicarious liability is also actionable. Liability for vicarious trademark infringement requires "a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product."²⁴³

D. Unfair Competition

Unfair competition is a more general cause of action based in common law. It covers trademark infringement and other...