Conflicts over Domain Names : Conflicts over Domain Names Program of Instruction for Lawyers
William Fisher
June 25, 2004 © 2004. All rights reserved
Types of Domain-Name Disputes : Types of Domain-Name Disputes
Cybersquatting : Cybersquatting Joshua Quittner registers “mcdonalds.com”
Typosquatting : Typosquatting Misrosoft.com
Conflicts between Competitors : Conflicts between Competitors Kaplan.com
Conflicts between Noncompetitors : Conflicts between Noncompetitors Howard Johnson registers “howardjohnson.com”
Retailers : Retailers weber.com
Retailers : Retailers weber.com
webergrills.com
Commerical v. Noncommerical Users (Reverse Domain Name Hijacking) : Commerical v. Noncommerical Users (Reverse Domain Name Hijacking) pokey.org Prima Toy Company
Slide15 : (December 2, 2000)
Fan Sites : Fan Sites
Parody and Commentary : Parody and Commentary
Slide31 : http://www.introducingmonday.com
http://www.introducingmonday.co.uk/
Slide35 : http://www.introducingmonday.com
http://www.introducingmonday.co.uk/
Initial Legal Responses : Initial Legal Responses
Types of Trademark Infringement : Types of Trademark Infringement
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products Similar Marks on
Competitive Products
Axes and Factors in Assessing Likelihood of Confusion : 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
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products Similar Marks on
Competitive Products
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products Similar Marks on
Competitive Products Similar Marks on
Noncompetitive
Products
Polaroid/McGregor Factors for Noncompetitive Products : Polaroid/McGregor Factors for Noncompetitive Products Ultimate issue: likelihood of confusion
Strength of the plaintiff’s mark
Similarity of the two marks
Proximity of the two products
Quality of the defendant’s product
Likelihood of the plaintiff “bridging the gap”
Actual confusion
Defendant’s “good faith”
Sophistication of buyers of the products
General equities
Varieties of “Consumer Confusion” : Varieties of “Consumer Confusion” Source
Endorsement (e.g., Rolls Royce Radio Tubes)
Post-sale (e.g., Ferrari)
Initial Interest (e.g., Brookfield)
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products Similar Marks on
Competitive Products Similar Marks on
Noncompetitive
Products
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products Similar Marks on
Competitive Products Similar Marks on
Noncompetitive
Products Dilution
Forms of Dilution (Clinique 1996) : 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 Doctrine : International Development of Dilution Doctrine Originates 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
Types of Trademark Infringement : Types of Trademark Infringement Identical Marks on
Competitive Products Similar Marks on
Competitive Products Similar Marks on
Noncompetitive
Products Dilution
Applications of TM Infringement Doctrine to Domain Names : 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
Problems : Problems “Use in Commerce”?
Consumer Confusion?
Federal Dilution Doctrine only applies to “famous” marks
Judicial proceedings are slow and expensive
The New Legal Regime : The New Legal Regime
Dispute-Resolution Systems : Dispute-Resolution Systems UDRP
Anticybersquatting Consumer Protection Act
UDRP governs “Abusive Registrations and Use” of DNs : 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 : 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” : 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” : 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 : Coverage All gTLDs
Aprx. 1/3 of ccTLDs
Procedure : 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 : UDRP Usage As 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 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
Plaintiffs 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
Slide61 : Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
The End of the “Land Rush”? : The End of the “Land Rush”? From: http://dcc.syr.edu/markle/markle-report-final.pdf
The End of the “Land Rush”? : 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
Slide64 : Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
UDRP Usage : UDRP Usage As 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 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
Plaintiffs 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
Examples of “Bad Faith” : 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 “Bad Faith” : 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
Other forms of bad faith
No bad faith
30% 14% 9% 39% 15% 14% Source: http://udrp.law.cornell.edu/udrp/stats.php
Dispute-Resolution Systems : Dispute-Resolution Systems UDRP
Anticybersquatting Consumer Protection Act
Dispute-Resolution Systems : Dispute-Resolution Systems UDRP
Anticybersquatting Consumer Protection Act (UDRP on Steroids)
ACPA, 15 U.S.C. sec. 1125 (d) : 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) : 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 : ACPA Factors
Safe Harbor: : 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 : 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 : 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
ACPA Factors : ACPA Factors
PETA : PETA
PETA : PETA
Applications of ACPA : Applications 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
Mattel v. Schiff (SDNY 2000): barbiesplaypen.com for commercial porn club
ACPA Factors : ACPA Factors
Mattel : Mattel
Doctrines : Doctrines
Doctrines : Doctrines UDRP
ACPA
Trademark Infringement -- Likelihood of Confusion
Trademark Dilution
Unfair Competition
Doctrines Types of Conflict : Doctrines Types of Conflict UDRP
ACPA
Trademark Infringement -- Likelihood of Confusion
Trademark Dilution
Unfair Competition Cybersquatting
Typosquatting
Competing Use
Noncompeting Use
Reverse Domain Name Hijacking
Retailers
Fan Sites
Parody and Commentary
Doctrines Types of Conflict : Doctrines Types of Conflict UDRP
ACPA
Trademark Infringement -- Likelihood of Confusion
Trademark Dilution
Unfair Competition Cybersquatting
Typosquatting
Competing Use
Noncompeting Use
Reverse Domain Name Hijacking
Retailers
Fan Sites
Parody and Commentary { }
Doctrines Types of Conflict : Doctrines Types of Conflict UDRP
ACPA
Trademark Infringement -- Likelihood of Confusion
Trademark Dilution
Unfair Competition Cybersquatting
Typosquatting
Competing Use
Noncompeting Use
Reverse Domain Name Hijacking
Retailers
Fan Sites
Parody and Commentary { }
Doctrines Types of Conflict : Doctrines Types of Conflict UDRP
ACPA
Trademark Infringement -- Likelihood of Confusion
Trademark Dilution
Unfair Competition Cybersquatting
Typosquatting
Competing Use
Noncompeting Use
Reverse Domain Name Hijacking
Retailers
Fan Sites
Parody and Commentary { }
Defects of UDRP : Defects of UDRP Complainant picks forum
No appellate process
Simplified procedures ill suited to complex cases
Arbitrators reach cases not intended by the policy
General Problems : General Problems Unnecessarily complex
Unpredictable outcomes
Trademark owners have too much power; domain-name owners too little
Excessive Impediments to Freedom of Speech
Alternatives to the Current Legal Regime : Alternatives to the Current Legal Regime
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Improved UDRP : 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
Improved UDRP : 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
Improved UDRP : 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
Improved UDRP : 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)
Improved UDRP : 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)
Improved UDRP : 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
Improved UDRP : 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
Improved UDRP : 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
Improved UDRP : 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)
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Major gTLDs : Major gTLDs .com and .net: 30,400,000
More gTLDs : More gTLDs
Reducing Scarcity? : Reducing Scarcity? See Zittrain & Edelman at http://cyber.law.harvard.edu/tlds/001/
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Trademark Doctrine: No protection for generic marks : 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 rule
Domain-Name practice currently deviates from this rule : Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names
E.g., crew.com
Domain-Name practice currently deviates from this rule : 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
Domain-Name practice currently deviates from this rule : 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
Domain-Name practice currently deviates from this rule : 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
Domain-Name practice currently deviates from this rule : 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
Domain-Name practice currently deviates from this rule : 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)
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Increased Latitude for Criticism and Parody : 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 : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Return to first-come, first-served : 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 : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Repudiate Domain Names : 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 : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Domain Names Atrophy : Domain Names Atrophy Value of domain names may diminish naturally as search engines become more powerful and ubiquitous
Alternatives : Alternatives Improved UDRP
More GTLDs
Eliminate protection for generic domain names
Increased latitude for criticism and parody
Return to first-come, first-served
Repudiate domain names altogether
Domain names naturally atrophy
Who Won? : Who Won?
Who Should be Awarded These DNs? : Who Should be Awarded These DNs?
Actual Winners : Actual Winners
Typical Winners in Cases of this Sort : Typical Winners in Cases of this Sort