Domain Names
By William Fisher, Dori Kornfeld
and Dotan Oliar
Last updated:
July 1st, 2002
Table of Contents
Introduction
Case Studies
Readings
Selected Disputes
Discussion Questions
Additional Resources
Introduction
The commercialization of the Internet has dramatically increased
the importance and economic value of domain names. The sets
of alphanumeric characters denoting Internet addresses have become
a major source of cash, controversy, and caselaw. Catchy “dot-com”
phrases are splashed across billboards, buses, and Superbowl advertisements.
Companies and individuals struggle over the more attractive and
memorable of the names, resorting to the courts, alternative dispute
resolution mechanisms, and the private market to settle their disputes.
In late 1999, for example, the peak of the dot-com hype, eCompanies
reportedly paid
$7.5 million for the rights to the "business.com
" tag -- the highest price ever to be paid for a domain name.
Trademark law has proven to be an awkward device
for resolving conflicts over domain names. Accordingly, during
the past two years, various jurisdictions have been experimenting
with new legal systems for addressing such conflicts. The
most important such regime is the Uniform
Domain Name Dispute Resolution Policy (UDRP,) which provides
a quick and relatively inexpensive procedure to settle matters through
mandatory arbitration, to which registrants agree when they register
domain names. The UDRP allows a party to file a complaint
with a pre-approved dispute resolution service provider to assert
rights to another party’s registered domain name if the name corresponds
to the complainant's existing trademark or service mark. Another
tool now available to U.S. trademark holders is the Anticybersquatting
Consumer Protection Act , which allows trademark holders to
file suit against parties who allegedly “register, traffic in, or
use” domain names identical or confusingly similar to their marks.
A recent development that, together with the previous two, may alleviate
the need to either pay enormous sums for domain names or to litigate
or arbitrate their ownership is the process administered by ICANN
, the Internet Corporation for Assigned Names and Numbers, of adding
seven new generic Top-Level Domains (gTLDs,) such as .biz, .info
and .name to the traditional ones, such as .com, .org and .net.
This module describes and evaluates both the
old and the new regimes -- and considers the various proposals currently
on the table for further reform. We begin with two case
studies , intended to whet your appetite. We then review
the relevant technology and legal doctrines
. Summaries of recent domain-names disputes
follow. Finally, we propose some topics
for the online discussion forum .
Back to top
Case
Study 1: J. Crew v. Crew.com
"Generic" terms generally are not protected under
trademark law due to their commonness and the public interest in preserving
their utility in multiple contexts. Although a generic term may be incorporated
into a trademark with another word or phrase, the term itself is normally
considered to be part of the public domain. Some recent cyberlaw decisions,
however, have held that a generic term that is a subset of a trademark
might be protected intellectual property.
The UDRP case, J.
Crew Int’l v. crew.com, exemplifies some of the conflicting
arguments in the debate over generic domain names. For several years,
"J. Crew," the popular apparel retailer, has operated a website
under the domain name, " JCrew.com."
In 1998, the respondent registered “crew.com,” set up a website,
and included a link to "JCrew.com." An employee of
J. Crew asked the respondent to place a J. Crew banner advertisement
accompanying the link and promised to pay respondent a commission
for sales made using that link. The respondent did place the banner
ad, but J. Crew ultimately defaulted on its offer to pay a commission.
J. Crew’s attorney approached the respondent’s attorney about selling
the domain name, and the respondent’s attorney replied that the
respondent had “spent over six figures for domain names” and “would
not be interested in a nominal sum.” In addition to registering
“crew.com,” the respondent had registered or acquired more than
50 domain names consisting of trademarks or other generic words
that others might want to buy or use.
The three-member panel of arbitrators split in its
decision, debating whether constructive notice of a federally registered
trademark is sufficient to bar registration of an associated domain name
when the word itself is generic. The majority concluded that the respondent’s
acquisition of “crew.com” constituted an "abusive registration" within
the meaning of the UDRP and that, given the respondent’s speculative behavior
and awareness of the trademark, the domain name should be transferred to
the complainant.
The lone dissenter strongly criticized the majority’s
opinion: “The majority seems to assume that a trademark owner has some
sort of God-given right to use the trademark to the exclusion of others.”
He warned, “This creates a dangerous and unauthorized situation whereby
the registration and use of common generic words as domains can be prevented
by trademark owners wishing to own their generic trademarks in gross.”
Case Study 2: The "Sucks"
Suffix
In another recent UDRP proceeding, Wal-Mart
Stores, Inc. v. Walsucks and Walmarket Puerto Rico , the domain
names “walmartcanadasucks.com,” “wal-martcanadasucks.com,” “walmartuksucks.com,”
“walmartpuertorico.com,” and “walmartpuertoricosucks.com” were transferred
to Wal-Mart, the large retail department store chain. The panel
determined that the respondent’s offer to sell his domain names
to the corporation was an indication of bad faith. The registrant
contended that the use of the suffix “sucks” clearly indicated to
customers and Internet users that the retail chain did not operate
the websites in question, and thus that the domain names were not
confusingly similar to the complainant's trademark. The arbitrators
responded that the domain name would divert customers, despite users’
recognition that the site was not sponsored by the retail chain:
“‘[I]t is likely (given the relative ease by which websites can
be entered) that such users will choose to visit the sites, if only
to satisfy their curiosity. Respondent will have accomplished his
objective of diverting potential customers of Complainant to his
websites by the use of domain names that are similar to Complainant’s
trademark.”
The Canadian registrant defended his sites as “freedom of expression
forums of complaint against Wal-Mart.” The “walmartcanadasucks.com” and
“walmartuksucks.com” web pages each declared, “This is a freedom of information
site set up for dissatisfied Walmart Canada [or UK, respectively] customers.”
Visitors were encouraged to “Spill Your Guts” with a “horror story relating
to your dealings with Wal-Mart Canada [or UK, respectively].” The panel
dismissed the free speech argument: “The evidence on the record of this
proceeding makes clear that Respondent registered the names for bad faith
commercial purposes – that is, to threaten Complainant’s business and demand
payment as a ‘domain name consultant’ while publicly purporting to engage
in ‘free speech’ critique of Complainant.”
Since "sucks" related arbitrations are so prevalent,
UDRP panelists have filled e-libraries with voluminous, and often contradictory,
commentaries on the meaning of the suffix. As you will read below,
a key question under § 4.a.(i) of the UDRP is whether the registered
domain name is 'confusingly similar' to an existing trademark. An
as yet unresolved question is whether a <trademark>sucks.com domain
name can at all be confusingly similar to <trademark>. Some panels
have adopted a per se rule, meaning that <trademark>sucks.com
can never be confusingly similar to <trademark>. Other panels
have rejected such a clear-cut rule. The various positions in this
debate are well presented in the Vivendi
arbitration, in which one of the reasons that made the majority rule that
the domain vivendiuniversalsucks.com is confusingly similar to the Vivendi
Universal mark was that it believed that 'certain members of the public
in general and "Internauts" in particular, not being English speakers and/or
aware of the meaning of the word "sucks" in the Internet world, would be
likely to understand "sucks" as a banal and obscure addition to the reasonably
well-known mark VIVENDI UNIVERSAL.' Not less interesting was the dissent's
justification for rejecting the per se rule:
As the majority suggests, there may well be some narrow categories
of trademarks for which the word "sucks" does not clearly disassociate
a domain name from the trademark, and therefore it may be unwise to adopt
a per se rule holding that "sucks" domain names can never be found confusingly
similar to the trademarks they contain. But the Complainant in this proceeding
does not claim to be known as a manufacturer of vacuum cleaners or suction
pumps, or as a self-deprecating alternative rock band, or a test laboratory
for beverage straws, or a porn star, a black hole, or any other sort of
entity that people are likely to associate with sucking.
The argument that the use of “sucks” in conjunction
with critical domain names is a protected form of free speech may have
greater potential under the American Anticybersquatting Consumer Protection
Act. In Lucent
Technologies v. Lucentsucks.com , 95 F.Supp.2d 528 (E.D.Va., 2000),
Lucent Technologies brought an in rem action against “lucentsucks.com,”
a site displaying pornographic photographs and promoting pornographic services.
Although the case was ultimately dismissed for unrelated reasons, the court
noted that the defendant provided a persuasive argument that “the average
consumer would not confuse lucentsucks.com with a website sponsored by
plaintiff” and reasoned that “a successful showing that lucentsucks.com
is effectively parody and/or a cite [sic] for critical commentary would
seriously undermine the requisite elements for the causes of action at
issue in this case.”
The "sucks" phenomenon got so powerful over the Internet,
that it was probably just a matter of time until someone picked
up on the www.sucks.com domain
- both as a name and a concept (
renamed in June 2001.) The site serves as a digital market
place where people opine on anything
that, in their mind, "sucks." States,
colleges
and politicians
are are among the targets, but major American corporations are more
typically attacked. If one truly disapproved of this site's
concept, she would not even have to bother registering the suckssucks.com
domain, because one of the site's users has already begun a discussion
thread to this very end. Another benchmark of sucks' power
as an e-concept was manifested by the application
to make .sucks a generic Top Level Domain, similar to the existing
.com, .net and .edu.
In sum, the use of the "sucks" suffix, initiated by
dispersed individuals who wished to express their disapproval of certain
corporations and then misused by cybersquatters, is now beginning to reflect
organized consumer behavior.
Back to top
Readings
The Domain Name System
The Domain Name System, or DNS, is a hierarchical
identification scheme designed to ensure that each Internet address is
globally unique and corresponds to a distinct numeric value. The system
resolves a domain name, such as “www.cnn.com,” into a unique "IP address"
-- a numerical name containing four blocks of up to three digits each (such
as 198.41.0.52), which points to a single location on the Internet. The
DNS was designed primarily as a mnemonic device to help people remember
the “addresses” of Web pages more easily.
The DNS hierarchy is structured into separate domains,
each controlled by a different administrative entity. When an individual
types a domain name into a browser, the request is first directed to the
DNS server, usually operated by an Internet Service Provider, which then
finds the databases for each sub-domain from right to left. For example,
if the URL (Uniform Resource Locator) is <http://www.cnn.com>, the DNS
server will first locate the server for “.com,” which is the Top Level
Domain (TLD), then for “.cnn,” the Second Level Domain, and finally for
“www.” The DNS server ultimately locates the corresponding page and sends
the message back to the originating computer. Only one set of records designates
the protocols and services associated with every DNS name.
Until recently, there were only 7 generic top-level domains
(gTLDs.) Registration in four of the seven, namely .gov, .mil,
.int and .edu, was reserved to certain types of public institutions,
and was not accessible to the public at large. The other three,
.com, .org and .net, were administered by the private Virginia-based
corporation, Network
Solutions, Inc. (NSI,) pursuant to a contract it had with the
U.S. government. NSI's monopoly was criticized by many who
either paid excessive registration fees or who sought a share in
NSI's pie. Disgruntlement concerning NSI's privileged position
was one of the forces that led to the formation of ICANN.
Under the new system, the registration of domain names and their
administration is performed by "registries" and "registrars," which
are companies that ICANN either signs
a contract with or accredits
, accordingly. A registry is responsible for maintaining the list
of all domain names and their owners under a certain gTLD.
Registrars act as brokers for the registration of domain names.
Individuals or companies interested in registering a new domain
name have to contact a registrar, sign a contract and pay it the
due fees. The registrar checks the availability of the desired
domain name with the registry, and takes care of its registration
for the patron. NSI, or in its current incarnation VeriSign
Global Registry Services , still serves as the registry of the
.com, .org and .net domains, but its monopoly in supplying registrar
services in these domains is now enjoyed by more then 90
accredited registrars. See the registries' full list
. As discussed below, seven new gTLDs are in the process
of being added, with some already fully operational.
Approximately 250 country-code TLDs (ccTLDs) are operated by local
administrators in each country. The ccTLDs appear as two-letter
character strings at the suffix of a domain name, such as .it for
Italy, .uk for the United Kingdom, and .us for the United States.
Some countries, such as Italy, restrict registration to local entities.
Others, such as Tuvalu, owner of the popular .tv domain, have invited
foreign registration of domain names. In April 2000, a startup company
in California paid Tuvalu $50 million for the rights to auction
off .tv domains for the next 10 years. (See “
Want A ‘TV’ Domain Name? No Problem Atoll,” by Paul McDougall,
Information Week Online, Apr. 14, 2000). Although ccTLDs are not
required to adhere to the UDRP, some have voluntarily chosen to
do so.
The Lanham Act
Prior to the adoption of the Anticybersquatting Consumer Protection
Act, U.S. courts relied on the Lanham Act to settle disputes between domain-name
registrants and trademark owners. The Lanham
Act provides a trademark owner three potential causes of action:
-
If his trademark has been registered on the Principal Federal Registry,
he can claim that the registration of a similar domain name would create
a "likelihood of consumer confusion" in violation of section 32(1) - 15
USC S.1114(1) .
-
If his trademark has not been registered, he can claim that registration
of a similar domain name would constitute unfair competition in violation
of section 43(a) - 15
USC S. 1125(a) .
-
Even if the defendant's domain name does not create "consumer confusion,"
the owner of a "famous" trademark can claim that the defendant's behavior
would "dilute" the power of his mark -- i.e., lessen its "capacity . .
. to identify and distinguish goods and services” -- in violation of section
43(c) - 15 USC
S. 1125(c) .
Additional information concerning each of these causes of action is available
in the trademark
primer materials . A significant amount of caselaw
developed before the introduction of the Anticybersquatting Consumer Protection
Act, concerning such issues as classic cybersquatting, competitive sites,
non-competitive sites, and reverse domain name hijacking.
Formation of ICANN
In October 1998, the Internet
Corporation for Assigned Names and Numbers (ICANN) was formed as a
non-profit body to assume management of the technical functions of the
Internet, previously handled by the U.S. government or its contractors
and volunteers. ICANN is responsible for the coordination of the
Domain Name System, the assignment of protocol parameters, the allocation
of Internet Protocol address space, and management of the root server system.
For additional information concerning the establishment of ICANN, click
here.
Mechanics of the UDRP
ICANN formally adopted the Uniform
Domain Name Dispute Resolution Policy in October 1999. The way
in which the UDRP is binding domain
name registrants, who may reside in different jurisdictions with different
trademark laws, is through a system of contracts: ICANN requires
all registrars in the .biz, .com, .info, .name, .net, and .org, as a pre-requisite
to their accreditation, to require all registrants to agree to the UDRP
mechanism. Mark owners may seek remedies under their domestic laws
(e.g. American mark holders can sue, among others, under the Anticybersquatting
Consumer Protection Act (see below),) or under the UDRP. Domain
name registrants must adhere to the UDRP, once such proceeding has been
initiated against them. The advantages of the UDRP over litigation
are many: plaintiffs may find it difficult to obtain personal jurisdiction
in court against foreign registrants, a brick-and-mortar trial may take
eternity in eTime, the enforcement of judgments in one country over registries
that are in another is problematic and time consuming, and the costs of
trial may be prohibitive. The UDRP takes about 45 days, costs
about $ 2500, and the resulting decision is immediately executed.
Remedies under the UDRP, however, are limited to the cancellation and/or
transfer of the domain name; no monetary damages are available. As
of December 2001, more than 4,800 UDRP proceedings had been initiated.
Of the nearly 4,000 decided cases, about 80 percent resulted in either
cancellation of the domain name registration or a transfer of the name
to the trademark owner; 20 percent resulted in a decision for the respondent.
A statistical
summary of the UDRP proceedings is available on the ICANN website.
The UDRP provides several criteria to determine whether
the complainant or registrant will prevail in an administrative proceeding.
To obtain rights to a domain name, the complainant must prove (see §4.a):
-
that the domain name is identical or confusingly similar to a trademark
or service mark to which the complainant has rights;
-
that the domain name holder has no rights or legitimate interests in respect
of the domain name; and
-
that the domain name has been registered and is being used in bad faith.
“Bad faith” registration and use of a name may be
found if the domain name was purchased for the purpose of (see §4.b):
-
selling, renting, or otherwise transferring the domain name registration
to the rightful trademark or service mark holder;
-
preventing the mark holder from using the domain name;
-
disrupting a competitor’s business; or
-
for commercial purposes attempting to attract Internet users to the site
by confusing consumers concerning its source, sponsorship, affiliation,
or endorsement
Domain name holders may invoke any of the following
defenses to establish their rights or legitimate interests in a name (see
§4.c):
-
the use of the domain name in connection with a bona fide offering of goods
or services;
-
the registrant’s common association with the name (regardless of whether
it obtains rights to the corresponding trademark or service mark); or
-
noncommercial or fair use of the name.
The UDRP’s efficiency and cost effectiveness
entail trade-offs. Administrative panels generally prohibit in-person
hearings, including teleconferences, video conferences, and web
conferences. The process includes no testimony, cross-examination,
briefing, or argument. Each party is permitted to request
additional documents, but is given no power of discovery.
Several aspects of the policy create ambiguity for parties and panelists
alike. Concepts such as “fair use” and “free speech” are afforded
different protections through national trademark laws, and the UDRP
employs a vague choice-of-law standard, thus allowing each panelist
to decide which nation's principles to apply. (For example,
in Tourism and Corporate Automation Ltd. v. TSI Ltd. , a
U.S. panelist decided to apply U.S. trademark law to a conflict
between parties from New Zealand and Australia, explaining that
he was “reasonably familiar with U.S. trademark law.”)
ICANN delegates responsibility for the resolution of domain name
disputes to independent, presumably impartial service
providers. To date, ICANN has accredited five service providers
– CPR
Institute for Dispute Resolution , eResolution (which ceased
operations in late November 2001 because of financial reasons,)
the National Arbitration Forum
, the Asian
Domain Name Dispute Resolution Center, and the World
Intellectual Property Organization . (See ICANN’s information
concerning the approval
process for dispute-resolution service providers for a description
of its criteria in evaluating a candidate.) Some critics contend
that the UDRP is biased in favor of trademark holders, because
it allows complainants to choose the provider. As trademark owners
are the complainants who pay the fee, providers have an economic
incentive to favor trademark holders. In “
Rough Justice: An Analysis of ICANN's Uniform Dispute Resolution
Policy ,” Milton Mueller, Director of the Convergence Center
at Syracuse University’s School of Information Studies, provides
empirical support for this criticism. (Mueller also
evaluates 121 cases of trademark-based challenges to domain name
registrations and concludes that 88% of the cases would not constitute
trademark infringement under traditional trademark law.)
Some additional assessments of the UDRP:
-
In “
Juries and the New Common Law of Cyberspace ,” David G. Post, a Professor
at Temple Law School, argues that the Internet public has had minimal input
in the creation of the UDRP, which, in effect, is creating a new body of
international trademark law.
-
Along with Michael Froomkin, a Professor at Miami Law School, Post sent
a letter
to the ICANN Board in February 2000 discussing bias under the UDRP and
recommending possible solutions.
-
Orrie Dinstein and Elisabeth Cappuyns evaluate the initial implementation
of the UDRP in “
Assessing the First 100 Days of ICANN's Dispute Plan .”
The Anticybersquatting Consumer Protection Act
The U.S. Congress passed the Anticybersquatting
Consumer Protection Act in November 1999. The Act amends the
Federal
Trademark Act of 1946 (the Lanham Act) to enable a trademark holder
to file suit against a domain-name registrant who has allegedly misappropriated
his name or a name that is identical or confusingly similar to his mark.
An "in rem" provision allows a trademark owner to attack a domain name
registered by a nonnational over whom the trademark owner could not obtain
personal jurisdiction. The remedies in such "In-rem" actions are
limited to the forfeiture, cancellation, or transfer of the domain name.
Remedies for all other claims include injunctive relief (such as cancellation
or transfer of the domain name) and monetary damages. The plaintiff may
request statutory damages of $1,000 to $100,000 per domain name instead
of actual damages.
The Act lists several factors to determine whether
a domain name has been registered in bad faith, including (see 15
U.S.C. § 1125(d)(1)(B)(i) ):
-
the registrant’s trademark or other rights in the name;
-
the registrant’s legal name or nickname;
-
prior bona fide use of the domain name in connection with goods or services;
-
noncommercial or fair use;
-
intent to divert customers from the trademark owner’s site either for commercial
gain or to tarnish or disparage the mark by creating confusion as to the
source or sponsorship of the site;
-
an offer to transfer the site for financial gain without having used the
site in connection with a bona fide offering of goods or services or with
a past history of accumulating domain names for such purposes;
-
the provision of false and misleading contact information when registering
the name;
-
a pattern of registering multiple domain names that infringe upon others’
marks; and
-
the extent to which the mark used in the domain name can be classified
as distinctive or famous under the federal antidilution statute.
The Act does not specify the relative significance
of each factor in evaluating the legitimacy of a domain name registration.
The context of the statute seems to imply, however, that the first four
factors would indicate an absence of bad faith, while the next four would
be evidence of bad faith. The final factor might be used either to support
or undermine a showing of bad faith, depending upon the circumstances.
International and Comparative Perspectives
The trademark systems of the various nations in
the world are gradually becoming increasingly similar. One source
of this convergence is a set of international agreements -- such as the
Paris
Convention and the Agreement
on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”)
-- which require member countries to conform to certain standards when
creating and administering their trademark laws. Nevertheless, trademark
law continues to vary to some extent by country. This variability
creates complications when trademark law is brought to bear on domain names.
For example, in Prince plc v. Prince Sports Group Inc. (1997), the plaintiff,
a U.S. sporting goods manufacturer, sued the defendant, a British information
technology company, for its use of the domain name “prince.com.” A court
in the United Kingdom ruled that the “first-come, first-served” approach
to domain name registration should prevail, provided that the registration
does not create a likelihood of consumer confusion. (See “
Legal Action On Domain Name Collapses ” by Douglas Hayward (TechWeb,
Oct. 22, 1997).) In Amadeus Marketing S.A. v. Logica s.r.l. (1997),
an Italian court ruled that a trademark holder does not have automatic
rights to a domain name; rather the mark owner must show that the domain
name registration creates a likelihood of confusion or damage to his activities.
In the past, the regulations employed in administering
the many national domain-name registries varied substantially. Lately,
after the adoption of the UDRP by ICANN, many nations amended their policies
to be UDRP compatible, such as Hong
Kong (since April 2001,) and China
(since December 2000.) Other countries maintain policies that are different:
Finland's policy
, under which a 'private person' cannot register a domain name, and Norway's
policy , which uses
a list of SLDs for various domain types, do not explicitly specify a dispute
resolution policy, but mention reasons for forced termination of domain-name
ownership, such as according to a court order, or the non-payment of fees.
Brazil adopted a resolution in 1998 prohibiting the registration of names
that conflict with well-known and reputed trademarks. To expand available
namespace, Brazil has created sub-groups of Top Level Domains, distinguishing
various categories for companies, individuals, and professionals.
New
TLDs: An Expansion of Name Space
The crowded “.com” domain is just starting to get some breathing room
with the implementation
of a new slate of Top Level Domains
(TLDs.) In November 2000, the ICANN Board of Directors selected 7
of nearly 50 proposals (see report
about the applications) for new generic Top Level Domains - “.aero,” “.biz,”
“.coop,” “.info,” “.museum,” “.name,” and “.pro” – as a supplement to the
existing “.com,” “.org,” and “.net” TLDs.
New questions of trademark and intellectual property
rights will arise as each TLD administrator devises a set of rules to regulate
the registration and retention of domain names under its registry. All
of the TLD operators have agreed to implement the UDRP, yet each has proposed
its own nuances for dispute resolution. Some operators plan to adopt, or
have already adopted, the “sunrise” mechanism, which would allow trademark
holders to register corresponding domain names during a specified period
before the TLD is opened to the public. Others plan to institute, or have
already instituted, a “watch service” to allow trademark holders, upon
payment of a fee, to be notified immediately of any attempts to register
associated domain names. Six of the new TLDs will restrict registration
to parties that comply with their specific mandates. The forthcoming domains
are listed below.
- .AERO
: Registration will be limited to individuals, entities and
governmental bodies that provide, support or facilitate the
efficient, safe and secure transport of people and cargo by
air. Operation should start in the first quarter of 2002.
-
.BIZ
: This gTLD is now fully operational. Registrants are required to show
that their domain names will be used for purposes reasonably related to
commercial business. The registry employs three dispute
resolution policies : Restrictions Dispute Resolution Policy (
RDRP ,) to be used mainly to challenge a registrant's fitness to the
.biz gTLD, the Start-up Trademark Opposition Policy (
STOP ,) which is used to resolve disputes between registrants and IP
holders who submitted an IP claim, and the regular UDRP.
-
.COOP
: Registration in this gTLD is restricted to cooperatives that meet certain
eligibility criteria. Sponsored by the National Cooperative Business Association,
it launched this spring.
-
.INFO
: This is the only non-restricted gTLD among the new seven, very much like
.com. It is now fully operational, with more then 600,000 domain names
registered. Afilias, the registry's operator, defined an initial
"sunrise period" of registration, in which a "
sunrise challenge process " for domain name disputes resolution applies,
with WIPO being the sole arbitrator. After the sunrise period ends, disputes
will be resolved according to the UDRP. Read related news
.
-
.MUSEUM
: Registration will be limited to museums that meet criteria defined by
the International Council of Museums. The registered domain names must
accord to specified conventions. The registry will verify the eligibility
for registration in this gTLD. Currently, there are no approved registrars
for this domain.
- .NAME
: Registration in this gTLD is limited to individuals.
The services it intends to supply include: personal homepages,
email forwarding service, and a 'digital identity' (a feature
under development that will include, for example, an e-signature
and an online address book.) Registration in the .name domain
will include "two dots," such as jim.jones.name. Domain
name registrants must demonstrate their association with the
requested name. In order to protect IP rights , the registry
ran a sunrise phase, during which it employed the NameWatch
service, which allowed IP holders to monitor new registrations
of infringing domain names, and allowed Defensive Registrations
that prevents registrations of infringing domain names.
-
.PRO
: This gTLD will serve certified professionals around the world, such as
lawyers, doctors and accountants. Registration will be available
both for individuals and firms. The Secondary Level Domain will designate
the profession, and the Third Level Domain the identity of the registrant,
such as JohnSmith.med.pro. In order to register a domain, registrants
will have to verify that they are qualified professionals in good standing.
This gTLD is not yet operational.
Public
interest groups wrote a letter to the Department of Commerce
urging the Department to hold hearings on the new gTLDs and allow
public commentary before approving ICANN’s recommendations to add
new gTLDs. They contended that ICANN has moved far too slowly
in the introduction of new gTLDs and underscored the importance
of implementing a multitude of new gTLDs. They warned that “as long
as there is an artificial scarcity of gTLDs, the competition for
the most descriptive names will increase and the discord will grow.”
The letter explained, “More gTLDs will allow Internet speakers to
use recognizable channels with less fear of treading on the intellectual
property rights of others.” In February 2001, the U.S. House
of Representatives and Senate held hearings to examine ICANN’s selection
of the 7 new gTLDs.
It should be noted that in choosing these winning 7 applications,
one of ICANN's purposes was to experiment in new and different concepts
for running and administering gTLDs. Based on the evaluation
of these new gTLDs, ICANN will decide on further expanding the Domain Name
System.
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Selected
Disputes
A large body of caselaw has emerged as trademark owners and domain name
holders have sought review under the UDRP and the Anticybersquatting Consumer
Protection Act. All UDRP decisions, absent exceptional circumstances,
are posted on a publicly accessible website, yet readers are at the mercy
of the opinion writer, since all evidence is confidential. A sample
of cases is set forth below.
UDRP
Sale of Domain Name for Profit
World
Wrestling Federation Entertainment, Inc. v. Michael Bosman ,
Case No. D99-0001 (worldwrestlingfederation.com)- In this first
case decided under the UDRP, Michael Bosman registered the domain
name with a registrar based in Australia and attempted to sell the
name to the World Wrestling Foundation three days later for $1,000.
The panelist concluded that the respondent’s offer to sell the domain
name to the complainant for a price considerably in excess of out-of-pocket
costs directly associated with the domain name constituted bad faith
use.
General
Machine Products Company, Inc. v. Prime Domains , National Arbitration
Forum File FA0001000092531 (craftwork.com)- The complainant owned trademark
“craftwork,” and the respondent had previously acquired hundreds of domain
names with common words. When the complainant realized that the respondent
had registered the domain name “craftwork.com,” he contacted the respondent
about selling the domain name. Disappointed by the registrant’s offer,
the trademark owner filed a complaint under the UDRP. The panel decided
in favor of the respondent, noting that it was the complainant who approached
the respondent about selling the domain name and that the term “craftwork”
is in widespread use in a descriptive sense.
Traditions
Ltd. v Noname.com , National Arbitration Forum 0004000094388 (traditions.com)-
A Minnesota corporation in the furniture industry that operated retail
stores in the state and had customers and vendors throughout the United
States began using the name “Traditions” in connection with its business
in 1987 and registered the trademark “Tradition Classic Home Furnishings”
in 1995. The respondent was not maintaining a website at “traditions.com,”
nor did he have plans to use the name “traditions.” He had registered and
owned 50 domain names, which were not all “generic.” The panel ruled
against the respondent, noting his acquisition of a large number of domain
names with the intent to resell them for profit.
Abbreviation
Hewlett-Packard
Company v. Homepage Organisation , National Arbitration Forum FA0004000094446
(hp.org)- The complainant Hewlett-Packard had registered numerous proprietary
marks in connection with its computer products and was the owner of “hp.com”
and “hp.net.” In December 1996, the respondent registered the domain name
“hp.org,” which was placed on “hold” by Network Solutions in August 1998
until March 2000. The site was not functional when the complaint was filed
on April 12, 2000. The panel transferred the domain name, declaring that
the complainant had trademark rights to the abbreviation.
Lack of Use
Telstra
Corporation Limited v. Nuclear Marshmallows , WIPO Case No.
2000-0003 (telstra.org)- The complainant, Telstra Corporation Limited,
the largest company on the Australian stock exchange, challenged
Nuclear Marshmallows, an unregistered business name of an unidentifiable
business entity with an Australian address, for its registration
of “telstra.org”. The respondent’s domain name did not
resolve to a Web site or other online presence, and the respondent
could not be reached through its contact information. The
panel concluded that the respondent’s passive holding of the domain
name constituted bad faith, noting the prevalence of the trademark,
the respondent’s deliberate concealment of contact information,
and the respondent’s failure to provide evidence of any good faith
intentions.
Loblaws,
Inc. v. Yogeninternational , eresolution AF-0164 (presidentschoicesocks.com)-
The panel determined that inactive use of the domain name was insufficient
evidence of “bad faith.” The complainant, Loblaws Inc., was a large retail
store chain in Canada that marketed numerous products under the brand “President’s
Choice” since 1984. The panel noted that the domain name may have been
registered in bad faith, given the complainant’s extensive use of the mark
in Ontario, Canada, where both the complainant and respondent were situated.
Nevertheless, the panel stated, the URL pointed to a standard “under construction”
page, thus showing “no evidence that the Respondent has used the domain
name for any purpose whatsoever.” The panel ruled in favor of the respondent,
asserting that a complainant must show both bad faith registration and
use of a domain name.
Generic Terms
Süd-Chemie
AG v. tonsil.com , WIPO Case No. D2000-0376 (tonsil.com)- A
German chemical products firm had trademark rights to the word “tonsil”
and filed a complaint against the American registrant of “tonsil.com,”
claiming that “tonsil” is “an invented word that has no meaning
or significance other than to identify and distinguish its products
from those of its competitors.” The panelist transferred the domain
name to the German company.
Rollerblade,
Inc. v. Chris McCrady , WIPO Case No. D2000-0429 (rollerblade.net)-
The complainant was the owner of the trademark “rollerblade” and
was in the business of manufacturing and selling in-line skates.
The respondent used the website to display pictures of his family
rollerskating. He contended that he registered the domain name “for
my nephew’s birthday so he and his friends could have a ‘neat’ email
address and a website to show off their ‘rollerblading’ pictures.”
The panelist transferred the domain name to the complainant, noting
that the domain name was identical to the trademark.
Gordon
Sumner, p/k/a Sting v Michael Urvan , WIPO Case No. D2000-0596
(sting.com)- The registrant, nicknamed Sting, registered the domain
name in 1995 and used it for a gaming site. Gordon Matthew Sumner,
the lead singer of The Police and popularly known as Sting, sought
to transfer of the domain name, arguing that the name had “become
synonymous in the minds of the public with [him] and his activities
in the music industry.” The panelist declined to transfer
the name, noting that “sting” is a generic word.
Free Speech
Corinthians
Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J.
D. Sallen Enterprises , WIPO Case No. D2000-0461 (corinthians.com)-
An American registrant used the domain name “corinthians.com” for
a website containing biblical quotations from the book of Corinthians.
When the registrant offered to sell the domain name to a Brazilian
soccer team named Sport Club Corinthians Paulista, the team filed
a cybersquatting complaint. The registrant contended that he had
made a legitimate noncommercial and fair use of the name by placing
scripture on the site as a bona fide service to the religious public.
The panelist relied on a Brazilian law providing trademark protection
to athletic entities and transferred the domain name to the complainant.
Product Criticism
Bridgestone
Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone
Corporation v. Jack Myers , WIPO Case No. D2000-0190 (bridgestone-firestone.net)-
The tire manufacturer Bridgestone-Firestone challenged a former
Bridgestone employee’s registration of the domain name “bridgestone-firestone.net,”
which the respondent used as a consumer-employee forum. The web
page included a section entitled “What BFS doesn't want you to know.”
The panel upheld the respondent’s right to maintain the website
to post criticism of the corporations.
Geographic Names
Excelentisimo
Ayuntamiento de Barcelona v. Barcelona.com Inc. , WIPO Case
No. D2000-0505 (Barcelona.com)- A U.S. citizen registered “barcelona.com”
and maintained a website with news and tourism information related
to Barcelona. The City Government of Barcelona filed a complaint
under the UDRP, and the panelist transferred the domain name, declaring
that the U.S. registrant “is definitely taking advantage of the
normal confusion of the public which by using a Barcelona route
in Internet would normally expect to reach some official body or
representative of the city of Barcelona itself.”
Pueblo
International, Inc. v. Pueblo On-Line , National Arbitration Forum
FA0007000095250 (pueblo.org)- The complainant, a large supermarket chain,
sought transfer of the domain name from the respondent, who used the site
to provide a tour guide of Pueblo, Colorado. The panelist permitted the
respondent to retain the name, explaining that registration in the “.org”
domain distinguished the site from the trademark name and constituted a
non-commercial, fair use. The opinion declared, “The top-level domain ‘org’
customarily is in usage by non-profit or ‘miscellaneous’ entities and not
by a supermarket chain such as Complainant’s.”
ccTLDs
The
NASDAQ Stock Market, Inc. v. Steve Grewal , WIPO Case No. DTV2001-0001
(nasdaq.tv) - The famous stock exchange sought transfer of the domain
name. As you have read before, the dotTV Corporation International
(dotTV) had paid the island nation of Tuvalu $ 50 million for the
right to auction .tv domains for 10 years. Countries are not
bound by the UDRP, and can resolve domain name disputes as they
see fit, but since dotTV had voluntarily adopted the UDRP, the dispute
was resolved according to it. In this case, the respondent
did not dispute that its registered domain name was confusingly
similar to the complainant's registered mark. However, the respondent
contended that it had legitimate interests in the domain name as
an acronym for the organization that it had been developing, namely
the North American Sikhs Demanding Answers to Questions. The
panel found that the domain name had been registered and used in
bad faith, and therefore ordered its transfer.
Anticybersquatting Consumer Protection Act
Bad Faith
Sporty's
Farm LLC v. Sportsman's Market, Inc. , 202 F.3d 489 (2d Cir. 2000)-
The plaintiff Sportsman’s Market, which had been using the trademark “Sporty’s”
in reference to its aviation products catalogue since the 1960s, prevailed
in a suit against the defendant Omega, a Christmas tree Internet company.
In 1994-95, Omega created a subsidiary called Pilot’s Depot and Sporty’s
Farm and registered the domain name “sportys.com.” The court granted Sportsman’s
Market the domain name, concluding that the defendant had registered the
name to prevent the plaintiff from using it.
Mattel
Inc. v. Internet Dimensions Inc. and Benjamin Schiff , 55 U.S.P.Q.2d
1620 (S.D.N.Y. 2000)- Mattel, the manufacturer of Barbie dolls, sued the
defendant, who hosted a subscription-based pornographic site at “barbiesplayen.com.”
The judge declared in his opinion that the defendants were trying to profit
from the “favorable public image of the Barbie doll.” “The Barbie dolls,
with their long blond hair and anatomically improbable dimensions are ostensibly
intended to portray wholesomeness to young girls,” wrote the judge. “The
‘models’ on the barbiesplaypen.com site, although many have long hair and
anatomically improbable dimensions, can in no way be described as engaging
in ‘wholesome’ activities.”
Northern
Light Technology, Inc, v. Northern Lights Club, Jeffrey K. Burgar and 641271
Alberta Ltd , 236 F.3d 57 (1st Cir. 2001)- In January 2001, the First
Circuit Court of Appeals upheld the lower court ruling for the plaintiff.
The plaintiff registered the domain name “northernlight.com” in September
1996 and began using the corresponding website as a search engine in August
1997. The Canadian defendants registered “northernlights.com” in October
1996 and offered vanity web-based e-mail accounts under the domain name
“northernlights.com” that users could access through other sites such as
“flairmail.com.” No actual website resolved to “northernlights.com.” After
a USA Today article in March 1999 about search engines erroneously referred
to the plaintiff’s website as “northernlights.com,” the plaintiffs entered
into unsuccessful negotiations with the defendants for sale of the domain
name. Subsequently, the defendants ran an active website from “northernlights.com”
that featured a search engine for limited words and phrases and links to
other members of the “Northern Lights Community,” including a link to the
plaintiff.
Abbreviation
Virtual Works, Inc.
v. Volkswagen of America, Inc. , 238 F.3d 264 (C.A.4 Va., 2001)-
The Fourth Circuit of Appeals upheld the lower court’s decision
transferring the domain name “vw.net” to the American branch of
the German manufacturer. The defendant, a small Internet service
provider, had registered the domain name in 1996. The lower court
ruled in favor of the auto manufacturer, noting the Internet service
provider had attempted to sell the domain name to Volskwagen. See
“
Volkswagen Wins Cybersquatting Case - Again ” by Steven Bonisteel
(Newsbytes, Jan. 23, 2001) and “
Judge Sides with Volkswagen in Net Name Lawsuit ,” describing
the lower court’s decision, by Patricia Jacobus (CNET News.com,
Mar. 22, 2000).
Parody
People
for Ethical Treatment of Animals, Inc. v. Doughney , 113 F.Supp.2d
915 (E.D.Va., 2000)- The animal rights group People for the Ethical Treatment
of Animals filed suit against the domain name holder, who registered “peta.org”
in 1995 for a parody site entitled “People Eating Tasty Animals.” The court
transferred the domain name to the plaintiff, rejecting the defendant’s
claim that the parody site constituted protected free speech under the
First Amendment. See “
Court Orders Owner of PETA Parody Site to Relinquish Address ” by Sonja
Barisic (The Boston Globe, June 20, 2000).
Morrison
& Foerster v. Wick , 94 F. Supp. 2d 1125 (D. Colo. 2000)- The defendant
registered domain names using variations of the law firm Morrison &
Foerster’s name (“morrisonandfoerster.com,” “morrisonfoerster.com,” “morrisonforester.com,”
and “morrisonandforester.com”) and used the sites for criticism and parody.
The court denied the defendant’s argument that his sites were protected
under the First Amendment and ruled in favor of the plaintiff.
In Rem
Harrods
Ltd. v. Sixty Internet Domain Names , 110 F.Supp.2d 420 (E.D.Va., 2000)-
The court dismissed the case. The plaintiffs, which operate the Harrods
Department Store in London, filed an in rem suit against the defendant
HBAL (a foreign corporation with its principal place of business in Buenos
Aires), which had registered a variety of domain names containing the word
Harrods. The District Judge held that the in-rem provision of the ACPA,
like its other provisions, required a demonstration of "bad faith" and
"was not designed to combat domain name registrants utterly ignorant of
certain existing trademarks, or those registrants with a good faith reason
to believe that they have the right to register certain domain names.”
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Discussion Topics
1. What are the benefits and shortcomings of the UDRP and Anticybersquatting
Consumer Protection Act? Would you advise a client to file a claim under
the UDRP or the Act? Do you think a trademark holder or domain name
registrant has a relative advantage in either one?
2. Do you think the in rem provisions of the ACPA are fair? Should different
countries be able to implement their own in rem policies and make them
binding on foreign parties? What is an effective alternative?
3. Do you think the UDRP is skewed in favor of trademark holders? Would
you suggest a different means of determining which provider should handle
a case?
4. Do you think the “sunrise” mechanism and “watch service” are fair
supplements to the UDRP for the new gTLDs? Is it fair for trademark
holders to have privileged initial access to domain names? How many variations
of a domain name should trademark holders be permitted to preregister?
Does the “watch service” seem to be an effective mechanism for curbing
so-called cybersquatting? What are some of the dangers of such a service?
Is it fair to limit the service only to parties who pay a fee? Would these
mechanisms not run afoul the main purpose of adding new gTLDs?
5. Do you think the introduction of new gTLDs will be beneficial or
problematic to domain name dispute resolution? Do you believe there is
currently an artificial scarcity of namespace? Do you think that adding
7 new gTLDs will be adequate, inadequate, or excessive?
6. How should the UDRP address issues of precedent? Should panelists
be forbidden to rely upon the rulings from previous cases due to the opacity
of the rulings, or do holdings merit stare decisis?
7. Do you think the UDRP and ACPA provide adequate protections for fair
use and free speech? How can the UDRP handle such concepts when trademark
and free speech laws vary considerably among countries?
8. How should the UDRP and ACPA approach conflicts regarding generic terms?
When a generic term constitutes part of a trademark, should the
trademark owner have a cause of action to challenge the domain name
registration?
9. Should trademark law ever have been applied to domain names?
Should domain names be assigned on a purely “first-come, first served”
basis with no mechanism for challenge?
Go to
the Discussion Board
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Additional Resources
General Trademark/Domain Name Resources
For an excellent primer on cyberlaw and domain name conflicts, read
“
Learning Law in Cyberspace: Name Conflicts ” by Diane Cabell.
The Domain
Name Handbook website is a comprehensive source of information on domain
name disputes and their resolutions. This site includes analyses and text
of decisions under both the UDRP and Anticybersquatting Consumer Protection
Act, news reports, essays and commentary, and information on meetings by
organizations such as ICANN and WIPO.
The
Perkins Coie Internet Case Digest maintains and updates a list of summaries
of domain name cases.
The Phillips
Nizer website provides summaries of domain name cases. To view
these summaries, select “Internet Library” and choose “Domain Name/Path.”
The
Electronic Frontier Foundation Domain Name Disputes Archive
UDRP Search Engines
List
of Proceedings Arranged by Commencement Date
List
of Proceedings Arranged by Proceeding Number
List
of Proceedings Arranged by Domain Name
Search
Tool for the UDRP Proceedings Index (updated daily)
Search
Tool for UDRP Decisions (full-text, updated weekly)
Keyword
Search of Text of Published Opinions , provided by the Berkman
Center
UDRP
Search Engine , provided by the University of Massachusetts
Center for Information Technology
and Dispute Resolution
ICANN
The Articles
of Incorporation detail the basic structure of the organization.
The Bylaws
describe the structure of power within ICANN, outlining the mandate
of the Board, Supporting Organizations, committees, and officers.
ICANNWatch
provides a forum for commentary and criticism of ICANN. Numerous
essays and letters are posted at the site.
Country-Code Top Level Domains
A somewhat outdated list
of ccTLDs around the world.
World Intellectual Property Organization
In 1998, the U.S. Department of Commerce asked
the World
Intellectual Property Organization (WIPO) to conduct a report
proposing recommendations and guidelines for resolution of domain
name conflicts. WIPO submitted its final report
in April 1999, and the report became a focal point for development
of the UDRP within ICANN.
The report received criticism from a variety
of sources. Professor A. Michael Froomkin’s Quick
Guide to Major Flaws in the WIPO Domain Name Proposal provides
a brief description of some controversial aspects of the report.
He provides a thorough analysis of WIPO’s interim report in A
Critique of WIPO's RFC3 . For additional perspectives, see comments
by Laina Raveendran Greene, Chair and Facilitator of APPLe, who
provides an Asian
perspective on the interim report ; comments
by Mike Doughney (former owner of peta.org) on the implications
of WIPO’s recommendations for small businesses; and the WIPO
Comments Page for general comments.
WIPO continues to actively participate in the
domain dispute resolution process. It was the first provider approved
by ICANN to arbitrate in UDRP proceedings. In July 2000, WIPO commenced
the Second
WIPO Internet Domain Name Process to address the protection
of recognized identifiers other than trademarks, such as geographical
indications and names of celebrities. WIPO also initiated a ccTLD
program in August 2000 to address the resolution of domain name
conflicts at the ccTLD level.
Old NSI Dispute Resolution Policy
The UDRP replaced the dispute resolution policy
administered by Network Solutions, Inc. (NSI). Formerly, NSI, which
was the sole registrar until mid-1999, would place domain names
on hold until the parties resolved their conflict through either
settlement or litigation. The registrar reserved the right to modify
the domain dispute policy at any time and to revoke, suspend, or
transfer or otherwise modify any registration at its own discretion
at any time. The policy provided that NSI would transfer a domain
name to a trademark holder who could prove that the trademark was
registered before the domain name was obtained.
Several shortcomings were apparent in implementation of the policy.
The policy unfairly disrupted the business or expressions of a website
owner by placing a domain name on hold upon receipt of a complaint,
before investigating into any allegations. Moreover, the policy
only allowed trademark holders whose identical mark had been
registered to issue a complaint.
For a review of litigation under NSI’s former dispute resolution
policy, see Oppedahl & Larson LLP, NSI
Flawed Domain Name Policy information page . Also see Carl Oppedahl’s
critique of the policy, Analysis
and Suggestions Regarding NSI Domain Name Trademark Dispute Policy
.
Registering a Domain Name
A party interested in registering a domain name
in a gTLD may do so through any ICANN-accredited
gTLD registrar . Certain registrars will register domain names
in particular ccTLDs as well.
InterNic
WHOIS allows users to see whether a domain name has been registered
and the identity of a registrant.
CheckDomain
allows a party to see whether a domain name has been registered
in many ccTLDs as well as gTLDs.
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