Transcript Intellectual Property on the Internet

Conflicts over Domain Names
William Fisher
March 25, 2003
© 2003. All rights reserved
Outline
I.
II.
III.
IV.
Types of Disputes
Dispute Resolution Systems
Goals?
Alternatives
I
III
II
IV
Types of Disputes








Cybersquatting
Typosquatting
Competing Use
Noncompeting Use
Reverse Domain Name Hijacking
Retailers
Fan Sites
Parody and Commentary
Dispute-Resolution Systems
1) UDRP
2) Anticybersquatting Consumer
Protection Act
3) Trademark Infringement
- Likelihood of Confusion
4) Trademark Dilution
5) Unfair Competition
-
UDRP governs “Abusive
Registrations and Use” of DNs
 the domain name is identical or
misleadingly similar to a trademark in
which someone else has rights.
 the holder of the domain name has no rights
or legitimate interests in that domain name
 the domain name has been registered and is
used in bad faith.
http://www.icann.org/dndr/udrp/uniform-rules.htm
UDRP governs “Abusive
Registrations and Use” of DNs
 the domain name is identical or
misleadingly similar to a trademark in
which someone else has rights.
 the holder of the domain name has no rights
or legitimate interests in that domain name
 the domain name has been registered and is
used in bad faith.
http://www.icann.org/dndr/udrp/uniform-rules.htm
Examples of “Bad Faith”
 Circumstances indicate that defendant’s main
purpose was to sell DN to TM owner for more
than the direct costs of registration
 History of registering DNs to prevent TM owners
from registering
 Registering a DN in order to disrupt the business
of a competitor
 attempting to divert Internet users to Defendant’s
site for commercial gain by creating confusion
concerning source or sponsorship
Examples of “Legitimate Interests”
Pre-dispute use or demonstrable preparations
to use the DN in bona fide offering of goods
or services
Defendant was commonly known by the name
Legitimate, noncommercial or fair use of the
DN without intent to misleadingly divert or
tarnish
Procedure






Complainant picks forum
Respondents have 20 days to respond
No additional submissions typically are permitted
Decision within 14 days of appointment of panelist(s)
Respondents default 50% of the time
Remedies:


Cancellation of the registration
Transfer of the DN to the complainant
 Losing respondent can postpone remedy by filing suit
within 20 days
UDRP Usage
 As of June, 2002, over 6,000 proceedings


Over 10,000 domain names
(Currently, aprx. 29,000,000 gTLDs)
 Rates of filing are declining gradually
 Most of the DNs challenged under UDRP were
registered during the boom of early 2000
 WIPO is the most popular provider, and becoming
more so – aprx. 70% of the cases
 55 “appeals” to date: http://www.udrplaw.net/UDRPappeals.htm
See Convergence Center Database: http://dcc.syr.edu/markle/mhome.htm;
Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
The End of the “Land Rush”?
From: http://dcc.syr.edu/markle/markle-report-final.pdf
But registration of country-code TLDs continue to rise
Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
ACPA, 15 U.S.C. sec. 1125 (d)
 TM owners have civil cause of action
against defendants who, with bad faith
intent to profit from the goodwill of a TM,
register or use a DN that is:


identical or confusingly similar to a distinctive
mark,
or dilutive of a famous mark
ACPA Factors
1. Does  have IP rights in the DN?
2. Is the DN ’s legal or customary name?
3. ’s prior use of DN to offer goods/services
4. ’s prior noncommercial or fair use of DN
5. ‘s intent to divert business from  and harm
good will by causing likelihood of confusion
6. ‘s offer to sell DN – or habit of doing so
7. Did  provide false contact information
8. Did  acquire multiple DNs similar to TMs
9. How distinctive or famous is ’s mark?
Safe Harbor:
 “Bad faith intent” shall not be found where
the defendant “believed and had reasonable
grounds to believe that the use of the
domain name was a fair use or otherwise
lawful”
Remedies
 Injunctive Relief (retroactive)
 Damages (nonretroactive)
 Statutory Damages (nonretroactive)

$1000 - $100,000 per domain name
 In rem jurisdiction
 Registrars may sua sponte refuse to register
marks that they deem to violate the rules
Application of ACPA
 People for Ethical Treatment of Animals v.
Doughney (EDVa 2000): peta.org used for
parody site: “People eating tasty animals”

Links to leather-goods and meat websites
PETA
1. Does  have IP rights in the DN?

2. Is the DN ’s legal or customary name?

3. ’s prior use of DN to offer goods/services
?
4. ’s prior noncommercial or fair use of DN
?
5. ‘s intent to divert business from  and harm
good will by causing likelihood of confusion
6. ‘s offer to sell DN – or habit of doing so
?
7. Did  provide false contact information
?
8. Did  acquire multiple DNs similar to TMs

9. How distinctive or famous is ’s mark?


Applications of TM Infringement
Doctrine to Domain Names
 Amadeus Marketing (Italy 1997): TM owner must
prove operation of similar DN is directly
confusing or damaging to TM
 British Telecommunications (UK 1998): A DN
incorporating a TM “shows an inherent tendency
to confuse” consumers
 Champagne Céréales (France 1998): A DN
mimicking an unregistered TM creates excessive
likelihood of confusion
 Braunschweig (Germany 1997): DN incorporating
name of a city creates likelihood of confusion
Forms of Dilution
 “Dilution by blurring occurs where ‘the defendant uses or
modifies the plaintiff's trademark to identify the
defendant's goods and services, raising the possibility that
the mark will lose its ability to serve as a unique identifier
of the plaintiff's product.’ Like tarnishment, blurring is
concerned with an injury to the mark's selling power and
‘need not involve any confusion as to source or
sponsorship.’”
 “Tarnishment may occur when the plaintiff's mark is used
by the defendant in association with unwholesome or
shoddy goods or services. Tarnishment may also result
from an association with obscenity, or sexual or illegal
activity, but is not limited to seamy conduct.”
Doctrines
 UDRP
 ACPA
 Trademark
Infringement -Likelihood of
Confusion
 Trademark
Dilution
 Unfair
Competition
}
Types of Conflict





Cybersquatting
Typosquatting
Competing Use
Noncompeting Use
Reverse Domain Name
Hijacking
 Retailers
 Fan Sites
 Parody and Commentary
{
Problems
 Unnecessarily complex
 Unpredictable outcomes
 Trademark owners have too much power;
domain-name owners too little
 Excessive Impediments to Freedom of
Speech
Goals?
1) Economic
Efficiency
(a) Incentives for socially
valuable activities;
-- creating and policing TMs
(reduce “search costs” &
maintain quality)
(b) Optimal exploitation of
resources
-- get DNs into hands where
they are most valuable
(c) Reduce transaction costs
-- minimize number of steps
Goals?
1) Economic
Efficiency
2) Fairness
3) Distributive
Justice
4) Free Speech
& Creativity
5) Privacy
IV. Alternatives
1) Improved UDRP
2) More GTLDs
3) Eliminate protection for generic domain
names
4) Increased latitude for criticism and parody
5) Return to first-come, first-served
6) Repudiate domain names altogether
7) Domain names naturally atrophy
Improved UDRP
Defects:
 Complainant picks
forum
 No appellate process
 Simplified
procedures ill suited
to complex cases
 Arbitrators reach
cases not intended
by the policy
 Innocent defaults
Possible Remedies
 Disputes assigned
randomly to licensed
providers, or
 Registrars pick
providers (Mueller)
 Establish internal
appellate process (loser
pays)
 Add discovery system,
or
 Reduce jurisdiction
 $1000 bond (Mueller)
Major gTLDs
 .com: 21,300,000
 .net: 3,500,000
 .org: 2,400,000
More gTLDs
.aero
.biz
.coop
.info
.museum
.name
.pro
Aviation
Businesses
Cooperatives
Unrestricted
Museums
Personal names
Professionals
Operator
SITA
NeuLevel
dotCoop
Afilias
MuseDoma
Global Name Registry
RegistryPro
Reducing Scarcity?
 See Zittrain & Edelman at
http://cyber.law.harvard.edu/tlds/001/
Trademark Doctrine: No
protection for generic marks
 Inherently generic marks

E.g., Alaska Salmon; Convenience Store
 Marks that become generic through use

E.g., thermos, kleenex; lite beer
Basis of the rule: excessive threat to
competition
Domain-Name practice currently
deviates from this rule
 Trademark owners are sometimes
able to control generic domain names

E.g., crew.com
 Generic domain names are protected
(by law) against “confusingly
similar” domain names

E.g., E-cards.com vs. Ecards.com
 Generic domain names are protected
(by code) against identical domain
names

Only one firm can use sex.com
Reverse
this rule
Reverse
this rule
Either:
(a) Refuse
registration, or
(b) Mandatory
index page
(cf. Mattel v. Hasbro)
Increased Latitude for Criticism
and Parody
 Permit registration of all DNs whose critical
purpose is apparent on their face


E.g., verizonsucks.com; yahooka.com
Doctrinal basis: not “confusingly similar”
 Recognize criticism as a legitimate use
under UDRP, ACPA, and dilution doctrine

E.g., PETA case and Jews for Jesus case would
be decided differently
Return to first-come, first-served
 Analogy to buying up rights to newly
discovered valuable resource

E.g., Edison and bamboo
 Rely on the market to get DNs into the
hands of firms best able to use them
 Limit relief to the conduct of a website in a
fashion likely to cause consumer confusion

Cf. Amadeus
Repudiate Domain Names
 DNs are not essential to navigation of the
Internet
 Dispense with the system in favor of IP
Addresses
 Consumers will rely on search engines,
links, and bookmarks
Domain Names Atrophy
 Value of domain names may diminish
naturally as search engines become more
powerful and ubiquitous