Conflicts over Domain Names Program of Instruction for Lawyers William Fisher June 25, 2004 © 2004....

Conflicts over Domain Names

Program of Instruction for LawyersWilliam FisherJune 25, 2004

Types of Domain-Name Disputes

Cybersquatting

Joshua Quittner registers “mcdonalds.com”

Typosquatting

Misrosoft.com

Conflicts between Competitors

Kaplan.com

Conflicts between Noncompetitors

Howard Johnson registers “howardjohnson.com”

Retailers

weber.com

Retailers

weber.com

webergrills.com

Commerical v. Noncommerical Users(Reverse Domain Name Hijacking)

pokey.org

Prima Toy Company

(December 2, 2000)

Fan Sites

Parody and Commentary

http://www.introducingmonday.com

http://www.introducingmonday.co.uk/

http://www.introducingmonday.com

http://www.introducingmonday.co.uk/

Initial Legal Responses

Types of Trademark Infringement

Identical Marks on Competitive Products

Similar Marks on Competitive Products

Axes and Factors in Assessing Likelihood of Confusion

Similarity of Appearance SQUIRT / QUIRST (for soft drinks)

Similarity of Sound Huggies / Dougies (for disposable diapers)

Similarity of Meaning Apple / Pineapple (for computer products) Good Morning / Buenos Dias (for bath

products)Marketing Environment

Similar Marks on Noncompetitive Products

Polaroid/McGregor Factors for Noncompetitive Products

Ultimate issue: likelihood of confusionStrength of the plaintiff’s markSimilarity of the two marksProximity of the two productsQuality of the defendant’s productLikelihood of the plaintiff “bridging the gap”Actual confusionDefendant’s “good faith”Sophistication of buyers of the productsGeneral equities

Varieties of “Consumer Confusion”

SourceEndorsement (e.g., Rolls Royce Radio Tubes)Post-sale (e.g., Ferrari)Initial Interest (e.g., Brookfield)

Dilution

Forms of Dilution (Clinique 1996) “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.”

International Development of Dilution DoctrineOriginates in Germany, (Odol 1925)Gradually expands in United States

Schecter, 1927 State anti-dilution statutes, 1947-present Federal Trademark Dilution Act, 1996

Slow introduction elsewhere Benelux countries, Germany adopt expansive doctrines EC Harmonization Directive (1988) and EC Community

TM Regulation (1993) are ambiguous• Benelux countries and France favor generous reading• England and ECJ resist

Dilution

Applications of TM Infringement Doctrine to Domain NamesAmadeus 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

Problems

1) “Use in Commerce”?

2) Consumer Confusion?

3) Federal Dilution Doctrine only applies to “famous” marks

4) Judicial proceedings are slow and expensive

The New Legal Regime

Dispute-Resolution Systems

1) UDRP

2) Anticybersquatting Consumer Protection Act

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

Coverage

All gTLDsAprx. 1/3 of ccTLDs

ProcedureComplainant picks forumRespondents have 20 days to respondNo additional submissions typically are permittedDecision within 14 days of appointment of panelist(s)Respondents default 50% of the timeRemedies:

Cancellation of the registration Transfer of the DN to the complainant

Losing respondent can postpone remedy by filing suit within 20 days

UDRP UsageAs of May, 2004, 9377 proceedings

Roughly 15,000 domain names (out of a total of aprx. 60,000,000 DNs of all sorts)

Rates of filing are declining graduallyMost of the DNs challenged under UDRP were

registered during the boom of early 2000WIPO is the most popular provider, and becoming

more so – aprx. 70% of the casesPlaintiffs win 71% of the time

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

The End of the “Land Rush”?

From: 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

UDRP UsageAs of May, 2004, 9377 proceedings

Roughly 15,000 domain names (out of a total of aprx. 60,000,000 DNs of all sorts)

Rates of filing are declining graduallyMost of the DNs challenged under UDRP were

registered during the boom of early 2000WIPO is the most popular provider, and becoming

more so – aprx. 70% of the casesPlaintiffs win 71% of the time

See Convergence Center Database: http://dcc.syr.edu/markle/mhome.htm;

Other forms of bad faithNo bad faith

15%14%

Source: http://udrp.law.cornell.edu/udrp/stats.php

1) UDRP

2) Anticybersquatting Consumer Protection Act

1) UDRP

2) Anticybersquatting Consumer Protection Act (UDRP on Steroids)

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, 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 jurisdictionRegistrars may sua sponte refuse to register

marks that they deem to violate the rules

Application of ACPAPeople 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

ACPA Factors

3. ’s prior use of DN to offer goods/services ?

4. ’s prior noncommercial or fair use of DN ?

7. Did provide false contact information ?

Applications of ACPAPeople 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

Mattel v. Schiff (SDNY 2000): barbiesplaypen.com for commercial porn club

ACPA Factors

Mattel

Doctrines

UDRPACPATrademark

Infringement -- Likelihood of Confusion

Trademark Dilution

Unfair Competition

Doctrines Types of Conflict

UDRPACPATrademark

Trademark Dilution

Unfair Competition

CybersquattingTyposquattingCompeting UseNoncompeting UseReverse Domain Name

HijackingRetailersFan SitesParody and Commentary

UDRPACPATrademark

Trademark Dilution

Unfair Competition

UDRPACPATrademark

Trademark Dilution

Unfair Competition

UDRPACPATrademark

Trademark Dilution

Unfair Competition

Defects of UDRP

Complainant picks forumNo appellate processSimplified procedures ill suited to

complex casesArbitrators reach cases not intended

by the policy

General Problems

Unnecessarily complexUnpredictable outcomesTrademark owners have too much power;

domain-name owners too littleExcessive Impediments to Freedom of

Speech

Alternatives to the Current Legal Regime

Alternatives

1) Improved UDRP2) More GTLDs3) Eliminate protection for generic domain

names4) Increased latitude for criticism and parody5) Return to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

Alternatives

1)1) Improved UDRPImproved UDRP2) More GTLDs3) Eliminate protection for generic domain

Improved UDRP

Defects:Complainant picks

forumNo appellate processSimplified

procedures ill suited to complex cases

Arbitrators reach cases not intended by the policy

Innocent defaults

Improved UDRP

Innocent defaults

Possible Remedies

Improved UDRP

Innocent defaults

Possible RemediesDisputes assigned

randomly to licensed providers, or

Improved UDRP

Innocent defaults

Registrars pick providers (Mueller)

Improved UDRP

Innocent defaults

Establish internal appellate process (loser pays)

Improved UDRP

Innocent defaults

Add discovery system, or

Improved UDRP

Innocent defaults

Reduce jurisdiction

Improved UDRP

Innocent defaults

Reduce jurisdiction

Improved UDRP

Innocent defaults

Reduce jurisdiction$1000 bond (Mueller)

Alternatives

1)1) Improved UDRPImproved UDRP2) More GTLDs3) Eliminate protection for generic domain

Alternatives

1) Improved UDRP2)2) More GTLDsMore GTLDs3) Eliminate protection for generic domain

Major gTLDs

.com and .net: 30,400,000

More gTLDs

Operator

.aero Aviation SITA

.biz Businesses NeuLevel

.coop Cooperatives dotCoop

.info Unrestricted Afilias

.museum Museums MuseDoma

.name Personal names Global Name Registry

.pro Professionals RegistryPro

Reducing Scarcity?

See Zittrain & Edelman at http://cyber.law.harvard.edu/tlds/001/

Alternatives

1) Improved UDRP2)2) More GTLDsMore GTLDs3) Eliminate protection for generic domain

Alternatives

1) Improved UDRP2) More GTLDs3)3) Eliminate protection for generic Eliminate protection for generic

domain namesdomain names4) Increased latitude for criticism and parody5) Return to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

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

Domain-Name practice currently deviates from this ruleTrademark 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

E.g., E-cards.com vs. Ecards.comGeneric domain names are protected

(by code) against identical domain names

Only one firm can use sex.com

Reversethis rule

Either:(a) Refuse registration, or(b) Mandatory index page(cf. Mattel v. Hasbro)

Alternatives

1) Improved UDRP2) More GTLDs3)3) Eliminate protection for generic Eliminate protection for generic

domain namesdomain names4) Increased latitude for criticism and parody5) Return to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

Alternatives

names4)4) Increased latitude for criticism and parodyIncreased latitude for criticism and parody5) Return to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

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

Alternatives

names4)4) Increased latitude for criticism and parodyIncreased latitude for criticism and parody5) Return to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

Alternatives

names4) Increased latitude for criticism and parody5)5) Return to first-come, first-servedReturn to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

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

Alternatives

names4) Increased latitude for criticism and parody5)5) Return to first-come, first-servedReturn to first-come, first-served6) Repudiate domain names altogether7) Domain names naturally atrophy

Alternatives

names4) Increased latitude for criticism and parody5) Return to first-come, first-served6)6) Repudiate domain names altogetherRepudiate domain names altogether7) Domain names naturally atrophy

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

Alternatives

names4) Increased latitude for criticism and parody5) Return to first-come, first-served6)6) Repudiate domain names altogetherRepudiate domain names altogether7) Domain names naturally atrophy

Alternatives

names4) Increased latitude for criticism and parody5) Return to first-come, first-served6) Repudiate domain names altogether7)7) Domain names naturally atrophyDomain names naturally atrophy

Domain Names Atrophy

Value of domain names may diminish naturally as search engines become more powerful and ubiquitous

Alternatives

Who Won?

Who Should be Awarded These DNs?Registrant Complainant 3rd party

Webergrill.com BBQ Pit Weber

Crew.com Nat Cohen J.Crew

Peta.com People Eating Tasty Animals

People for the Ethical Treatment of Animals

Kumbhmela.com Jaga Government of India

Southafrica.com Virtual Countries, Inc.

Government of South Africa

BruceSpringsteen.com Jeff Burgar Bruce Springsteen

Verizonreallysucks.com 2600 Magazine

Verizon

IntroducingMonday.co.uk B3TA Price Waterhouse Cooper Consulting

Actual WinnersRegistrant Complainant 3rd party

Southafrica.com Virtual Countries, Inc.

Verizonreallysucks.com 2600 Magazin Verizon

Typical Winners in Cases of this SortRegistrant Complainant 3rd party

Southafrica.com Virtual Countries

Verizonreallysucks.com 2600 Magazine

Verizon

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