DomainNamesPIL04

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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

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