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Conflicts over Domain Names

Conflicts over Domain Names. William Fisher November 23, 2009. Types of Disputes. Cybersquatting Typosquatting Conflicts between Competitors Conflicts between Noncompetitors Retailers Reverse Domain Name Hijacking Fan Sites Parody and Commentary. Initial Legal Responses.

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Conflicts over Domain Names

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  1. Conflicts over Domain Names

    William Fisher November 23, 2009
  2. Types of Disputes Cybersquatting Typosquatting Conflicts between Competitors Conflicts betweenNoncompetitors Retailers Reverse Domain Name Hijacking Fan Sites Parody and Commentary

  3. Initial Legal Responses

  4. 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
  5. Problems “Use in Commerce”? Consumer Confusion? Federal Dilution Doctrine only applies to “famous” marks Judicial proceedings are slow and expensive

  6. The New Legal Regime

  7. Dispute-Resolution Systems UDRP Anticybersquatting Consumer Protection Act
  8. 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
  9. 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
  10. 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
  11. Coverage All gTLDs Aprx. 1/3 of ccTLDs
  12. 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
  13. Approved UDRP Providers Asian Domain Name Dispute Resolution Centre National Arbitration Forum WIPO Czech Arbitration Court
  14. 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
  15. Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
  16. The End of the “Land Rush”? From: http://dcc.syr.edu/markle/markle-report-final.pdf
  17. 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
  18. Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf
  19. http://www.ipdn.tw/DomainNameResources/gTLDWorldsTopLevelDomainOverview http://www.ipdn.tw/DomainNameResources/gTLDWorldsTopLevelDomainOverview
  20. http://www.ipdn.tw/DomainNameResources/gTLDWorldsTopLevelDomainOverview http://www.ipdn.tw/DomainNameResources/gTLDWorldsTopLevelDomainOverview
  21. Q4, 2009
  22. WIPO – Total Numbers of cases (as of Nov. 22, 2009) http://www.wipo.int/amc/en/domains/statistics/cases.jsp
  23. WIPO – Total Numbers of Domain Names (as of Nov. 22, 2009) http://www.wipo.int/amc/en/domains/statistics/cases.jsp
  24. Terminated Transfer Transfer, cancellation in part Transfer, cancellation in part with dissent Transfer with dissent Transfer, denied in part Transfer, denied in part with dissent Cancellation Cancellation with dissent Cancellation, denied in part Cancellation, denied in part with dissent Cancellation, transfer in part Cancellation, transfer in part with dissent Denied Denied, cancellation in part Denied, cancellation in part with dissent Denied with dissent Denied, transfer in part Denied, transfer in part with dissent
  25. Source: http://udrp.law.cornell.edu/udrp/stats.php Examples of “Bad Faith” 30% 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 14% 9% 39% 15% 14%
  26. 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
  27. ACPA Factors
  28. 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”
  29. 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
  30. Applications of ACPA Sporty’s Farm v. Sportsman’s Market (CA2 2000) (GLK 750) Disgruntled former employee, entering aviation industry, registers sportys.com
  31. Sporty’s
  32. Applications of ACPA Lucas Nursery v. Gross (CA6 2004) (GLK 757) Dissatisfied customer registers lucasnursery.com to air grievances
  33. Lucas Nursery
  34. 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
  35. PETA
  36. 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
  37. Mattel
  38. 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 } {
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