Chapter 11: Domain Names and Other Trademark Issues on the Internet

By: Adrian Lui

Introduction• Expansion of the

Internet ▫ Raised many challenging

issues for law and policy-makers

▫ Major issue of trademark policy: domain names Who has priority in

registering a domain name?

What laws apply when there are disputes?

Where can these disputes be resolved?

Domain Name History• Coined in 1983• Domain name every website’s unique address on

the Internet• 7 generic domain names (gLTDs)

▫ .com, .org, .net, .edu, .gov• Country code domain names (ccTLDs)

▫ .us, cn, .de• In 1992, the U.S. government commercialized the

Internet ▫Entered into a private contract with Network

Solutions Inc to register domain names .com quickly became the most popular sought by

commercial businesses

Cybersquatting• Initially, domain name

registration was on a first-come, first-served basis

• Opened the door for “cybersquatting” ▫ Cybersquatters are users

who register as many famous trademarks as possible Legitimate owners of the

trademarks may be desperate to buy them out

▫ For cybersquatters, lucrative business with little financial risk

Suggestions to Resolve Domain Name Problems

•Increase the Number of Domain Name Registrars▫NSI should no longer solely control

allocation of domain names•Increase the Number of Generic TLDs

▫No longer exclusively relies on .com▫Apple Music should apple.mus, and

Apple Computer should be Apple.cpu May cause greater consumer confusion May cause difficulty for trademark owners

to police their rights

Suggestions to Resolve Domain Name Problems Continued

•More reliance on Country-Code TLDs (ccTLDs)▫Registered under authority of respective

governments▫May resolve conflicts between trademark

owners from separate countries, since each can use their own country ccTLD

•Use of Online Dispute Resolution Systems▫Inexpensive compared to suing in court▫Disputed domain names may not be used

until lawsuits have been completed

Anti-Cybersquatting Consumer Protection Act

• In 1999, the U.S. adopted the APCA▫ Address cybersquatting activities▫ Prevent deceitful techniques of

unfairly profitting from registration process

▫ Modifications to first-come, first served basis Applicable when there’s no bad

faith• Users may be liable for civil

action by the owner, if the person ▫ Has a bad faith intent to profit

from that mark▫ Uses a mark that is identical or

confusingly similar to a distinctive mark

How to Determine Bad Faith?• Under the ACPA, there is no exact definition of “bad faith”

▫ Interpretation is up to the courts▫ However, there is an evaluation criteria.

• Legitimate Interests▫ You used the domain name before the dispute to offer

services▫ You or your business is commonly known as the domain

name▫ You are making a fair use of the name without intending to

divert or mislead customers to your site• Evidence of Bad Faith

▫ You acquired the domain name for the purpose of reselling▫ You have a pattern of registering domain names to prevent

trademark owners from obtaining them▫ You use the domain name to profit by confusing Internet

users to visit by mistake

FIRACT: Lahoti v. Vericheck Inc.Background• Vericheck, Inc., the defendant, is a Georgia corporation

that provides electronic financial transaction processing services.

• In 2001, Vericheck gained a state registration for its service mark.

• However, in 2003, the U.S. Patent and Trademark Office denied Vericheck a federal registration because it was already registered to Lahoti’s company in Arizona.

• David Lahoti obtained the domain name www.vericheck.com in 1996, but did not use the website to offer any goods or services.

• In the past, David Lahoti has been found liable for cybersquatting activities, registering over 400 domain names such as Nissan.org.

• Lahoti asked for as much as $72,500 to sell the domain name

• In 2006, Vericheck sued for trademark infringement• Lahoti countersued arguing that his use of the domain

name was fair and lawful.

ICANN• By 1997, international

communities objected U.S.’s control over the Internet

• Transfer of Internet responsibilities to a new private nonprofit organization▫ Internet Corporation for

Assigned Names and Numbers (ICANN)

• By early 2009, ICANN had accredited over 950 different registrats (compared to 1 in 1992)

The Uniform Dispute Resolution Policy

•Developed by ICANN▫Simple and efficient way to deal with

cybersquatters and other bad faith registrations

•In 2009, all registrars are required to incorporate UDRP into their registration agreements▫Trademark disputes can be resolved by

an independent arbitration panel

Dispute Resolution Process• Most popular independent dispute

resolution provider has been the World Intellectual Property Organization

• Submit your complaint to the WIPO’s Arbitration and Media Center

• Request for a one-member ($1,500) or a three-member panel ($4,000).

• WIPO sends the complaint to the domain name registrant, who then has 20 days to respond

• Then, the panel has 14 days to issue their response▫ If the panel decides in your favor,

they will direct the registrar to cancel the domain name

Trademark problems with Twitter

• Fake accounts representing celebrities, corporations, and politicians

• New variant of cybersquatting. ▫ Misusing and tarnishing of

trademark• Tony La Russo sues Twitter

▫ Tweets about him drunk driving.

▫ Damaged reputation and trademark rights

• Fake BP Oil tweets▫ Fake account’s followers

outnumbered legitimate account

▫ 20,000 followers versus 4,700

Trademark Issues with Auction Sites• Websites such as eBay.com

offer merchandise through their auctions.▫ Many counterfeit goods in

their auctions• Similar issues with peer-to-

peer file sharing and copyrights

• Contributory trademark infringers?

• No general consensus on the responsibilities of Internet auction businesses for counterfeit listings

Take Home Message

Trademark issues on the Internet is constantly a work in progress. Despite the available avenues for complaints, the protection system is challenging to implement on a global scale. In addition, the domain name registration system has continued to evolve while the dispute resolution system has not.