Use of Trademarks in Domain Names & Domain Name Disputes

What Is a Domain Name?

• A domain name is the user-friendly form of an Internet Protocol (IP) address that points an Internet user’s computer to the website the user wants to view • Each IP address is a string of numbers • The domain name is made of characters that are easier to remember • Example: inta.org is easier to remember than its corresponding IP address, 64.244.180.150

Domain Name System (DNS)

• Basically, DNS is a global addressing system • DNS allows users to go to a specific website by entering its corresponding domain name • DNS locates and translates domain names into IP addresses

Components of Domain Names

Second-level domain

www.inta.org

Top-level domain

Components of Domain Names: Top-Level Domains

• Highest level in the DNS hierarchy – Generic Top-Level Domains (gTLDs) • Examples: .com, .net, .org

• • Also, gTLDs for business or interest groups (e.g., .gov for the U.S. government, etc.)

NEW

gTLDs (e.g., .brand, .community, .geographical area) – Country-Code Top-Level Domains (ccTLDs) • Examples: .au for Australia, .mx for Mexico – Internationalized Domain Names (IDNs) • Contain local language characters such as accents and may include non-Latin scripts • Examples: 香港 (Hong Kong), рф (Russian Federation)

Components of Domain Names: Second-Level Domains

• Second-level domain names: – Follows “www.” and precedes the top-level domain name – Chosen by registrant – Must be: (1)

unique

term not previously used as a second-level domain name, and (2) registered

New gTLD Names

• Examples of new gTLD names: – by brand (.amazon, .dunlop), music and arts community (.theater, .band), cause (.eco, .charity), geographic/cultural area (.nyc, .irish), etc. • Companies and organizations will be able to create and operate a registry business for the new gTLD • The use of non-Latin characters (such as Cyrillic, Arabic, Chinese, etc.) will also be allowed in gTLDs • The initial application process closed on May 30, 2012 • The time period for a second round of applications has not yet been established, but it will likely be at least a couple of years after the close of the initial round of applications

New gTLD Names: Trademark Owners’ Remedies

• The World Intellectual Property Organization (WIPO) is the exclusive provider of dispute resolution services for trademark based “Legal Rights Objections” for the new gTLDs (More info: http://www.wipo.int/amc/en/domains/newgtld/ )

Timeline for New gTLDs

For the most up-to-date information, see: • http://www.inta.org/Advocacy/Pages/gTLDs.

aspx • http://newgtlds.icann.org/en/applicants/agb

How Are Domain Names Registered?

• Internet Corporation for Assigned Names and Numbers (ICANN) manages domain name system (More info: http://www.icann.org/ ) • ICANN-Accredited Registrars handle the actual registration of gTLDs • National Registry or Local Registrars handle the actual registration of ccTLDs

Domain Name Disputes

Cybersquatting refers to when a party registers, without permission, a domain name that is confusingly similar to a third-party trademark with the intention of seeking to reap some type of commercial or financial benefit, often in an effort to block the trademark owner from using the domain until the owner agrees to pay an exaggerated sum for the domain.

Domain Name Disputes

• Typosquatting • Domain Name Testing

Reactions to Cybersquatting

• Uniform Domain-Name Dispute-Resolution Policy (UDRP): http://www.icann.org/en/help/dndr/udrp • Anticybersquatting Consumer Protection Act 1999 (ACPA): http://www.law.cornell.edu/uscode/text/15/1125

Uniform Domain-Name Dispute-Resolution Policy (UDRP)

• International arbitration process for resolution of domain name disputes adopted by ICANN • Incorporated into domain name registration agreements of accredited registrars – Also, registrants make certain representations regarding their domain names (e.g., domain name registration will not infringe third-party rights, etc.) • Only administrative alternative to going to courts

UDRP Service Providers

• World Intellectual Property Organization (WIPO) • National Arbitration Forum (NAF) • Asian Domain Name Dispute Resolution Centre • The Czech Arbitration Court Arbitration Center for Internet Disputes (More info: http://www.icann.org/en/help/dndr/udrp/providers )

UDRP: Applicable to the Following

•

All ICANN-Accredited Registrars for gTLDs

: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, .travel and .xxx

•

Some

ccTLDs, such as .au (Australia)

UDRP Rules

Proceedings are governed by: • The Uniform Domain-Name Dispute Resolution Policy (UDRP), AND • Supplemental rules issued by the dispute resolution service provider

UDRP Procedure: WIPO Example

• Complaint filed • Formal commencement • Response due (within 20 days) • 1 or 3 panelist(s) appointed • Decision due to WIPO (within 14 days) • WIPO forwards decision to parties, ICANN and registrar (within 3 days) • Decision implemented by registrar (More info: http://www.wipo.int/amc/en/domains/gtld/udrp/ )

UDRP Policy

• Complaint requirements: (a) Same or confusingly similar trademarks (b) No legitimate interest in the domain name (c) Bad faith registration and use of the domain name

UDRP: Same or Confusingly Similar Trademarks

• Domain name is identical or confusingly similar to a trademark in which the complainant has rights • Different panelists may have different views with regard to trademark + terms (sucks, love, my, hate, …) (e.g., xyzsucks.com) (the content will generally determine the relevance of the term) • Different panelists may also have different views with regard to “generic” trademarks (the content and respondent’s rights will likely determine the outcome) (More Info: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html

)

UDRP: No Legitimate Interests

• Registrant/respondent does not have any rights or legitimate interests in the domain name at issue • Complainant must establish

prima facie

case that respondent lacks rights (More Info: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html

)

UDRP: Demonstrating Rights & Legitimate Interests

• Use of (or demonstrable preparations to use) the domain name in connection with a bona fide offering of goods/services • Commonly known by the domain name (even if no trademark rights) • Legitimate noncommercial or fair use (e.g., in some cases, criticism and fan sites) (More info: http://www.icann.org/en/help/dndr/udrp/policy )

UDRP: Bad Faith

• Registrant registered and is using the domain name in bad faith • Bad faith is determined at the time of registration (not renewal) • Offers to sell a domain name (even during settlement discussions) can show bad faith (More Info: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html

)

UDRP: Evidence of Registration and Use in Bad Faith

• Registration of the domain name to: – Sell, rent or transfer the domain name for valuable consideration in excess of the out-of pocket costs directly related to the domain name – To prevent the owner of the trademark from obtaining the domain name, or a pattern of such conduct – Disrupt business of a competitor – Attract users to a website for commercial gain by creating confusion with trademark owner’s mark

UDRP Remedies

• Cancellation of the domain name • Transfer of the domain name to the trademark owner

Other Jurisdictions

• Many countries have their own policies and procedures • Examples:

Mexico

—Domain Name Dispute Resolution Policy for .mx (LDRP): http://www.registry.mx/jsf/static_content/domain/policies_second.jsf

Israel —

Procedures for Alternative Dispute Resolution under the .il ccTLD by Dispute Resolution Panels (IL-DRP): http://www.isoc.org.il/domains/ildrp.html

(More Info: WIPO Arbitration & Mediation Center ccTLD Database: http:// www.wipo.int/amc/en/domains/cctld_db/ )

Anticybersquatting Consumer Protection Act (ACPA)

• United States law that provides trademark owners with a civil remedy against cybersquatting • Cybersquatting is defined as “registering, trafficking in, or using a domain name with

bad faith

intent to profit from the goodwill of a trademark belonging to someone else” • One portion of ACPA relates to famous individuals

ACPA Requirements

• The mark is valid • The owner registered the domain name in bad faith in order to profit from the mark • The mark was distinctive when the domain name was registered • The domain name is identical or confusingly similar to the mark

ACPA Remedies

• A court order requiring that the domain name be transferred to the mark owner • Monetary damages

Summary —UDRP vs. ACPA

ACPA

Expensive Lengthy proceedings Uncertain Limited to the United States Damages

UDRP

Inexpensive Quick proceedings Majority of decisions in favor of complainant Incorporated globally for certain domains (e.g., .com) Damages are not available

Recommendations to Trademark Owners

• Use watch services • Proactively register a few basic variations of your company name or brand name for defensive purposes (also known as defensive registrations)

INTA Resources

• Internet Topic Portal • Domain Names Fact Sheet • Differences Between Trademarks and Domain Names Fact Sheet • The UDRP: Alternative Dispute Resolution For Domain Name Disputes Fact Sheet