Transcript International Intellectual Property Cybersquatting [slides by David Steele]

International
Intellectual Property
Profs. Atik and Manheim
Fall, 2006
Cybersquatting
[slides by David Steele]
Cybersquatting
 Federal cause of action
 State cause of action
Cal Bus & Prof. Code § 17525(a)
It is unlawful for a person, with a bad faith intent
to register, traffic in, or use a domain name, that is
identical or confusingly similar to the personal
name of another living person or deceased
personality, without regard to the goods or services
of the parties.
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Federal cause of action
 Anticybersquatting Consumer Protection Act
Also known as the ACPA
15 U.S.C. 1125(d)
§43(d) of the Lanham Act
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15 U.S.C. 1125(d) - Cyberpiracy
 15 U.S.C. 1125(d)(1)(A)
provides a civil action by the owner of a mark
any mark protected under Lanham act
without regard to the goods or services of the
parties, that person
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15 U.S.C. 1125(d)(1)(A)
 bad faith intent to profit from that mark;
and
 registers, traffics in, or uses a domain
name that-identical or confusingly similar to a distinctive
mark;
identical or confusingly similar to a famous
mark;
dilutive of a famous mark
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15 U.S.C. 1125(d)(1)(B)
determining “a bad faith intent to profit”
consider factors (but not limited to)
Defensive factors
 registrant’s rights in the domain name;
 legal name or commonly known by name;
 bona fide offering of any goods or services;
 noncommercial or fair use of the mark
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15 U.S.C. 1125(d)(1)(B)
determining “a bad faith intent to profit”
consider factors (but not limited to)
Offensive factors
 registrant’s intent to divert consumers to its site for
commercial gain or to tarnish or disparage the mark
 registrant’s offer to sell domain name
 registrant’s uses fake contact information when
registering
 registrant’s registration of multiple domain names that
are TMs
 fame of mark within the meaning of subsection (c)(1) of
section 43.
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Remedies II
 15 USC 1117(d)
statutory damages $1,000 - $100,000 per
domain name for violation of 1125(d)(1)
the plaintiff may elect, at any time before
final judgment is rendered by the trial court,
to recover, instead of actual damages and
profits,
as the court considers just
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Retroactive
 injunctive relief also ok
 damages ok if
registered after act; or
renewed after act; or
used after act.
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15 U.S.C. 1125(d)(2)(D)
 Remedy for in rem action - injunction only
(D)(i) The remedies in an in rem action under
this paragraph shall be limited to a court order
for the forfeiture or cancellation of the
domain name or the transfer of the domain
name to the owner of the mark
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15 U.S.C. 1125(d)(2)(D)
 Immunity for registrars and registries
(D)(ii) The domain name registrar or registry
or other domain name authority shall not be
liable for injunctive or monetary relief under
this paragraph except in the case of bad faith
or reckless disregard, which includes a willful
failure to comply with any such court order.
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In Rem actions in non-ACPA cases?
 What if the domain name (the defendant)
violates via dilution or infringement? Can a
plaintiff sue the domain name in rem?
 Split in circuits
4th Cir. Says sure…
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Safe Harbor
15 U.S.C. 1125(d)(1)(B)
(ii) Bad faith intent shall not be found if court
determines def. believed and had reasonable
grounds to believe that the use of the domain
name was a fair use or otherwise lawful.
 Def. Must BOTH
believe; and
 have reasonable grounds to believe
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Understanding ICANN
The Internet Corporation for Assigned Names and
Numbers (ICANN) is a technical coordination body
for the Internet. Created in October 1998 by a
broad coalition of the Internet's business,
technical, academic, and user communities,
ICANN is assuming responsibility for a set of
technical functions previously performed under
U.S. government contract by IANA and other
groups.
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Understanding ICANN
 Specifically, ICANN coordinates the
assignment of the following identifiers that
must be globally unique for the Internet to
function:
Internet domain names
IP address numbers
protocol parameter and port numbers
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ICANN and Domain Name Disputes
 one of the key functions of ICANN is to create and
administrate disputes over domain names
 one of the factions at the negotiating table was the TM
lobby
 the TM lobby pressured US Gov., who pressured ICANN
 ICANN enacts the UDRP
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Uniform Dispute Resolution Policy
 application of policy by contract
 ICANN - Registrar - Registrant
 policy issue - why do this at all?
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UDRP
 Procedural issues
 Dispute Providers
 WIPO
 National Arbitration Forum
 CPR Institute for Dispute Resolution
 # of panel member - one or three members
 payment of fees
 WIPO - $1,500; NAF - $1,150
 Language of proceeding - same as language of
registration agreement
 Time deadline
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URDP - Prima Facie Elements
 Complainant has burden to prove all of the
following three elements:
The D.N. is identical or confusingly similar to
Complainant’s mark;
Respondent has no rights or legitimate interest
in the D.N.; and
Respondent registered and is using D.N. in bad
faith.
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UDRP - Prong 1
 The D.N. is identical or confusingly similar
to Complainant’s mark;
 Same language as ACPA
 NOT likelihood of confusion test
 ignore TLD string
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UDRP - Prong 2
 Respondent Has No Rights or Legitimate
Interest in the Domain Name
 three expressly enumerated defenses, more available
 before notice of dispute, use or preparation to use in
connection with a bona fide offering of goods or services
 N.B. unlawful is not bona
 commonly known by the domain name
 legitimate noncommercial or fair use of domain name without
intent to misleading divert consumers or tarnish mark
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UDRP - Prong 3
 Registration and Use In Bad Faith
not really both…
 four expressly enumerated circumstances
of bad faith, more available
1) acquired primarily to sell to Complainant /
mark owner for $$
2) to prevent mark owner from using it - must
also show pattern
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UDRP - Prong 3
 four expressly enumerated circumstances
of bad faith, more available
3) primarily for the purpose of disrupting the
business of a competitor
4) intentionally attempted to attract, for
commercial gain, Internet users to your web
site by creating a likelihood of confusion with
the complainant's mark
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Implementing UDRP decisions
 time line
10 business days for registrant to file suit
n.b. suit should be filed in selected mutual jdx
but what if it’s not?? See ACPA 15 U.S.C. 1114
(d)(2)(D)(i)(II) cited above
after 10 days, complainant sends registrar new
whois details
registrar implements decision
what if registrar doesn’t?
what if registrar is told by local court not to?
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Appeals of UDRP
 about the Federal Arbitration Act
 promotes arbitration
 promotes contracts
 standard of review
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