John Berryhill Shares Thoughts About ENS TM Infringement

John Berryhill is an Intellectual Property attorney who specializes in domain name law. Last night, John posted a Twitter thread regarding trademark infringement, specifically related to ENS domain names. In the thread, John shared some thoughts about the potential issues that may come with owning ENS domain names that infringe on trademarks and brands.

Obviously, every domain name is unique, and there may be unique circumstances related to each domain name registration. Reading John’s thread would be a good idea for people who own ENS domain names that could potentially match well-known brand names and trademarks:

Just a brief word about some of the recent ENS fun & games. First, you are absolutely correct that intentionally registering a well-known distinctive trademark as a domain name and holding it for ransom is not trademark infringement. Congratulations, you got that right. 1/?

— John Berryhill (@Berryhillj) April 26, 2022

However, “infringement” is not the only way to violate a mark. Because of events in the early domain name system, the US passed a law to specifically deal with holding domain names for ransom because, indeed, it was not infringement (and a problematic fit for dilution). 2/

— John Berryhill (@Berryhillj) April 26, 2022

That law, 15 USC 1125(d) (and some other scattered bits in related sections) provides the brand owner with its choice of actual damages or up to $100,000 per domain name. (and attorney’s fees) 3/

— John Berryhill (@Berryhillj) April 26, 2022

That law (a/k/a the ACPA) does not specifically define “domain name” and certainly is not confined to be interpreted to refer to the gTLD root. So, here’s the thing… 4/

— John Berryhill (@Berryhillj) April 26, 2022

If you are located in the US, then you had better be very consistent with your use of VPN’s to access things like Opensea, Twitter, any of many email providers, etc.; and your historical transactions and contemplated future transactions better not trip you up. 5/

— John Berryhill (@Berryhillj) April 26, 2022

Back in the days of Napster, Limewire, etc., the RIAA didn’t have to go after everyone, or even be able to, to find enough people of whom to make an example with ruinous legal actions. Even if you are outside of the United States… 6/

— John Berryhill (@Berryhillj) April 26, 2022

…there are a number of treaty procedures which, while unwieldy, provide for international discovery processes (in some instances) and for international enforcement of judgments. 7/

— John Berryhill (@Berryhillj) April 26, 2022

Another thing the ACPA doesn’t care about is whether you still have the domain name. If you were holding it for ransom and burned it, for example, they can still come after you for monetary damages whether you still have it or not. 8/

— John Berryhill (@Berryhillj) April 26, 2022

In fact, there have been quite a number of lawsuits involving ordinary ICANN-root gTLD names which the defendant no longer owned, which arose from “domain tasting” for very short registration periods (less than five days). 9/

— John Berryhill (@Berryhillj) April 26, 2022

It will always be the province of “people who are hard to reach with legal process” to enjoy the advantages of being such a person. But if you coming from the standpoint of classic “there is no law applicable to (technology x)” or… 10/

— John Berryhill (@Berryhillj) April 26, 2022

…you think you can’t be reached by it, because you don’t fully appreciate what can be discoverable, then this is a well-trod path by your music sharing pioneer forebears in US federal litigation. /fin.

— John Berryhill (@Berryhillj) April 26, 2022