<-- 2 CHI.-KENT J. INTELL. PROP. 2 -->
REINVENTING A SENSIBLE VIEW OF TRADEMARK LAW
IN THE INFORMATION AGE
I. INTRODUCTION
II. THE INTERPLAY BETWEEN DOMAIN NAMES AND TRADEMARKS
III. DOMAIN NAME DISPUTES
A. Cybersquatting Disputes
B. Competitor Disputes
C. "Palming Off" Disputes
D. Parody Disputes
E. Conflicting Interest Disputes
IV. THE LEGAL FRAMEWORK FOR RESOLVING DOMAIN NAME DISPUTES
A. Traditional Trademark Theories Used in Domain Name Disputes
i. Trademark Infringement
ii. Unfair Competition
iii. Dilution
B. New Developments
i. ICANN Uniform Domain Name Dispute Resolution Policy
ii. Anticybersquatting Consumer Protection Act
V. THE PROBLEM WITH BROADENING TRADEMARK RIGHTS
VI. CONCLUSION
I. INTRODUCTION
There is no place like cyberspace. It is vast, it has virtually no rules, and it is easy to get to. It is in high demand and everyone wants to stake a claim in this great new frontier. Of course, to pitch a flag, a domain name is needed.
Unfortunately,
obtaining the right to use a domain name is not always easy. Sometimes
the name you are looking for is already registered by someone else.[1] Other times, if you are lucky enough to get
the name you want, you may later face a lawsuit with a big company who is
claiming you are unlawfully using “their name” in your domain. Not only does this cause frustration, but it
also causes great confusion since the current laws have no straightforward
answers to domain name entitlements.
Over the past few
years, trademark owners have begun a strong fight to establish property rights
in cyberspace. Courts and Congress have
responded and are increasingly recognizing that property rights can exist in
domain names under trademark and unfair competition law.[2]
Furthermore, the U.S. Patent and Trademark Office has recognized
trademark rights in domain names and now allows federal registration of domain
names.[3] However, as the Lanham Act continues to
expand and trademarks gain increased property protection, the time has come to
reassess the purpose and benefits of protecting domain names as
trademarks.
This paper
discusses the impact domain names have had on trademark law. Part II describes how trademark laws apply to
domain names. It briefly discusses the
areas where trademarks and domain names overlap, as well as the areas where the
two are completely inapposite. Part III
categorizes the types of domain name disputes that commonly arise. This categorization facilitates understanding
of how trademark laws can and cannot apply in domain name disputes. Part VI discusses the legal framework by
which domain name disputes are currently resolved. Within that context, it discusses how
trademark laws have been significantly broadened to resolve domain name
disputes. Part V discusses problems
with broadening trademark rights to fit domain name disputes. Finally, Part VI concludes that courts and
administrative bodies deciding domain name disputes must be careful to insure
that they do not stretch trademark law too far to obtain the results they
desire. With a careful study of the
types of disputes and the facts involved in each case, a new body of law can be
formulated to effectively resolve domain name disputes without destroying the
foundations of trademark law.
A trademark is
“any word, name, symbol, or device, or any combination thereof” used “to
identify and distinguish” goods “from those manufactured or sold by others and
to indicate the source of goods, even if that source is unknown.”[4] The law has recognized limited property rights
in trademarks.[5] Specifically, the law recognizes the right of
a trademark owner to prevent others from using the mark in a manner that is
likely to confuse consumers.[6] More recently, the owners of “famous”
trademarks have been given the additional right to exclude others from
diluting, or “lessening the distinctive quality,” of their mark.[7]
Trademarks have
never been afforded the same broad intellectual property protections as patents
and copyrights. Trademark owners do not
enjoy a “right in gross” over their selected mark.[8]
This is partly because trademarks are not protected to reward or
encourage the creation of more trademarks.[9] Instead, they are protected to encourage
investment in product quality and to prevent consumer deception.[10] In accord with the purpose of protecting
consumers, trademark rights are subject to several limitations. First, trademarks are only protected from
commercial uses that infringe, meaning that they cause or are likely to cause
consumer confusion, or dilute, meaning they lessen the distinctiveness of, the
mark.[11] Therefore, if someone takes the Coca-Cola
logo and prints it on personal stationary without using it to market goods or
services, there is no commercial use.
Second, trademark
law allows concurrent use of the same mark, as long as the concurrent use does
not confuse customers.[12] Thus, both Delta Airlines and Delta Faucets
can use the same trademark without any problems. Third, trademark protection is limited
geographically. Under common law,
trademarks are protected only in the area in which they are actually used.[13] Federally registered trademarks are protected
within the entire United States.[14] There is no source of trademark law that
provides international protection.[15] Finally, trademark law allows “fair uses,” so
others may use the trademark in its descriptive function, rather than its
trademark function, as such use does not give rise to confusion.[16]
Given the limited
nature of trademark property rights, trademark owners do not have the “right”
to use their trademark in a domain name.[17]
While trademark owners may use their mark in a domain name, they
generally do not have the right to exclude others from using the domain name
unless the use gives rise to a likelihood of confusion or dilution.
However, as
commercial markets have globalized, and technology has increased the world’s
ability to communicate and advertise, trademark law has undergone significant
changes.[18] Specifically, the recognition of value in
domain names has caused courts and Congress to stretch the trademark laws to
give trademark owners more protection.
In fact, in some instances, it appears trademark owners do have property
rights in domain names.
Domain names are
incredibly valuable because they allow millions of customers to access goods
and services 24 hours a day at little to no cost.[19]
However, the fact that a domain name is valuable does not make it
protectible property.[20] Domain names warrant property protection
only when they are recognized as trademarks.
In some instances, domain names do serve as valuable source-identifying
trademarks.[21] Companies may register their trademarks in
domain names and then establish web sites to provide goods and services with
them. For example, CNN provides its news
services at “www.cnn.com.” However, many
times domain names are not used as trademarks.
In some circumstances, the domain names are used merely as addresses,
similar to telephone numbers. For
example, CNN could register “www.cnn.com” and post only a picture of a monkey
on the web page. The use of the domain
name would not constitute trademark use since it is not used to identify CNN’s
goods and services. Instead, it is just
an address for people to use to access a picture of a monkey. Similarly, domain names are not used as
trademarks when they consist of generic terms.[22]
For example, “www.wine.com” is generic, so it is not protectible as a
trademark, even if it is used to identify the source of goods and services.
Yet even when
domain names are also trademarks, they always serve as functional addresses.[23] They are used by consumers to reach desired
web pages, and to e-mail desired people.
Additionally, domain names are used globally since they are associated
with the Internet. Thus, the billion-dollar
question arises – under what circumstances should domain names obtain
protection as trademarks? To reach this
answer, it is necessary to first analyze the types of domain name disputes that
arise.
III. DOMAIN NAME DISPUTES
Domain name
disputes are complex because different people register different types of
domain names for different reasons.
Domain names are acquired to set up businesses, to provide information
to the public, to establish “personal” identities on the Internet, and even to
“pirate” for a profit. Unfortunately,
there are only a limited number of domain names, and it is difficult to
ascertain who should be able to use what domain name. For example, who is entitled to use the
domain name “www.atlas.com?” Should it
go to ATLAS, a large publicly traded moving company who has expended millions
of dollars advertising their name?
Should it go to the “mom and pop” grocery store, ATLAS, because they
have been in business six months longer than the moving company? Should it go to the two innovative kids who
want to set up a mapping and climate information web site? Should it go to the famous actress named
Cheryl Atlas? Should it go to anyone who
wants it even if that person does not use it?
There are no
existing laws that give exclusive “rights” in domain names. Furthermore, the nature and factual
backgrounds of each dispute differ so greatly that there is no one way to
resolve domain name disputes. To
understand the proper legal framework surrounding these disputes, it is essential
to categorize the type of disputes that arise.
A.
Cybersquatter Disputes
The first and
most well known type of domain name dispute involves cybersquatters. Cybersquatters register domain names for the express
purpose of later selling the domain names to someone else for a profit.[24] Some cybersquatting is perfectly legal. For example, registering the domain name
“www.eat.com” in hopes to later sell the name is legal. The word “eat” is generic, so registering the
name causes no trademark conflicts. This
type of cybersquatting has turned into a very valuable practice. In fact, the domain name “business.com” was
recently purchased for $7.5 million.[25]
However, it is illegal for cybersquatters to register domain names
containing trademarks and trade names with the intent of later selling the
domain name to the trademark owner.[26]
Some
cybersquatters pirate personal names instead of trademarks.[27]
These disputes are even more difficult.
Generally, cybersquatters register the names of celebrities, athletes
and politicians in hopes that the person whose name is incorporated in the
domain name will purchase the domain name for an incredibly high price. Problems arise when more than one person has
the same name. For example, Michael
Jordan is a former superstar basketball player.
However, another Michael Jordan is the former CEO of Westinghouse.[28] There are probably hundreds, if not
thousands, of other Michael Jordans around the world. Should trademark law allow one to take the
domain name “www.michaeljordan.com” over all the others? Current law gives celebrities, politicians,
and athletes some protection under state right of publicity laws and the Lanham
Act.[29] However, these disputes require a careful balancing
of free speech rights, private property rights and commercial interests before
courts should allow famous people to stake claims in their domain names.
B.
Competitor Disputes
The second type
of domain name dispute involves competitor registrations. One commentator has called these “preemption”
disputes.[30] In these situations, people register domain
names that contain the company name or trademarks of their competitors.[31] Usually this is done either to block the
competitor from using the domain name, or to link the domain name to their own
company site so people looking for a competitor company will be drawn to the
registrant’s company web site.
Generally, courts can resolve these disputes under trademark
infringement and unfair competition law.
C.
"Palming Off" Disputes
The third type of
domain name dispute involves domain names registered with the intent to “palm
off” the fame and goodwill of someone else’s trademark.[32]
For example, a pet store could register the name “www.cocacola.com” and
use it in connection with its company web site.
Although the store has no interest in the name Coca-Cola, it uses the
trademark as a domain name to attract people to the site. The pet store hopes once people get to its
site, they will stay a while and see what the store offers. This way the pet store generates new viewers
it never would have previously obtained.
Palming off disputes also arise in the context of competitor
disputes. In these situations, a company
registers the domain name of its competitor and then links the domain name to
its own company web site. This way
consumers looking for the competitor will come to them first. Courts generally can resolve these disputes
under unfair competition, trademark infringement, and dilution law.[33]
The fourth type
of domain name dispute involves parodies.[34]
In these situations, someone registers a domain name that resembles a
company name or trademark.[35] The domain name is then used in connection
with a web site that includes commentary or makes a political or satirical
point about the company or trademark it resembles.[36]
The legality of this practice is questionable. In some cases, parody uses of trademarks are
protected by the First Amendment.[37] However, in other cases courts have allowed trademark
rights to trump First Amendment rights, particularly when there are other
avenues of expression that the defendant could use that do not infringe a
trademark.[38]
These are
significant disputes considering there are hundreds, if not thousands of “sucks”
sites on the Internet. People frequently
register domain names such as “companysucks.com” to voice their dissatisfaction
with the company or its services. In
response, many companies are registering these domain names themselves to
prevent this type of parody use.[39] The unresolved question is whether trademark
owners can prevent critics from registering and using the domain names. These cases should bedecided by balancing the
First Amendment right of the domain name registrant against the likelihood of
confusion resulting from the use of another’s trademark.
E.
Conflicting Interest Disputes
The fifth type of
domain name dispute involves legitimate conflicting uses.[40]
Despite all of the hype over cybersquatters, conflicting interest
disputes are the most common.[41] In these disputes, the domain name registrant
has a legitimate reason for using the domain name it has chosen.[42] Usually, a business registers a name that
corresponds with its trade name or trademark.
Unfortunately for the domain name registrant, another person may also
have trademark interests in the domain name.[43]
For example, a small irrigation business could register the domain name
“www.delta.com” to correspond with its trade name. A year later, DELTA Airlines may want to sue
the small company asserting it has more
of an interest in the name, and thus deserves the domain name as well. These cases are very problematic.
Traditional
trademark law allows concurrent use of the same trademark.[44]
Therefore, there is nothing wrong with both the small irrigation company
and the airline using the name “DELTA.”
Problems arise only when the use of the same mark gives rise to a
likelihood of confusion or dilution.[45]
Unfortunately, only one person or entity can use the domain name
“delta.com,” even though there are hundreds of “DELTA” trademarks.[46] Does one company deserve the domain more than
the other?
The simple answer
is probably not. Whoever was smart
enough to register the name first should win.
Unfortunately, in some cases owners of famous, or at least well
financed, trademarks may try to overextend the scope of their trademark rights
to take a domain name away from the owner of a weaker trademark.[47] This is known as “reverse domain name
hijacking.”[48] Often times the owner of the weaker mark does
not have the financial ability to fight the large trademark owner in court and
is forced to give up its domain name.[49]
There are also
other legitimate conflicting uses that involve surnames and nicknames rather
than trademarks.[50] For example, the makers of Gumby and Pokey
toys threatened to sue a 12-year-old boy who registered his nickname,
“pokey.com.”[51] Similarly, Archie Comics threatened a family
that registered their newborn daughter’s name, “veronica.org,”[52]
and Ty Inc., the beanie baby creator, sued a man who registered his
three-year-old son’s name in “ty.com.”[53]
To date, most of the lawsuits involving surnames have either been
dropped or settled in favor of the domain name registrant.
While domain name
disputes are not always easy to characterize, it is important to understand
that the facts of each case may warrant completely different results in
different circumstances. Particularly,
it is essential to recognize that not all domain name disputes involve
cybersquatters, even though those disputes are the most publicized and the most
feared. In many cases, trademark owners
claim they have property rights in a domain name. However, they often are not, and should not
be, given the right without completely analyzing the circumstances.
IV.
THE LEGAL FRAMEWORK FOR RESOLVING DOMAIN NAME DISPUTES
Because the types of domain name disputes vary considerably,
resolving them has proven to be a difficult task. Likelihood of confusion, unfair competition
and dilution have all become recurrent themes in domain name disputes. More recently, two new theories have evolved
in an attempt to deal with domain name disputes, the Anticybersquatting
Consumer Protection Act and the ICANN Dispute Resolution Policy. This section will discuss the theories
available to trademark owners and the problems involved in applying them.
A.
Traditional Trademark Theories Used in Domain Name Disputes
Since the very
first domain name disputes, trademark owners have tried to assert rights in
domain names under established trademark law.
Many cases have been won and lost; yet little clarity has emerged on the
issue of who is entitled to which domain names.[54]
This is partly because the traditional trademark doctrines do not
adequately cover domain name disputes.
Therefore, courts have often used an expedited form of analysis to reach
ideal results.[55] Unfortunately, this has created a harmful
trend of overlooking many relevant issues, such as whether the domain name in
question is actually being used as a trademark and whether it is being used in
commerce. Additionally, courts have
greatly expanded certain concepts, such as the definition of a “famous” mark. This section discusses trademark
infringement, unfair competition and dilution.
It then explains that they do not quite “fit” domain name disputes, but
courts have broadened the doctrines to accommodate trademark owners.
i.
Trademark Infringement
In some
instances, trademark owners may challenge domain name registrations on the
basis of trademark infringement. Owners
of federally registered trademarks may use Section 32(1) of the Lanham Act to
enjoin another from making infringing use of their trademark.[56] A trademark owner has a cause of action if
the registrant is using a domain name that incorporates the owner’s trademark
or a term that is confusingly similar to the owner’s trademark to sell or
promote goods or services that are related to the trademark owner’s goods and
services.[57] To determine whether the registrant’s use of
the mark creates a likelihood of confusion, courts employ a multi-factor
balancing test.[58] The relevant factors include (1) similarity
of the marks; (2) relatedness or proximity of the two companies’ goods and
services; (3) strength of the plaintiff’s mark; (4) marketing channels used;
(5) degree of care likely to be used by purchasers in selecting the goods; (6)
defendant’s intent in selecting its mark; (7) evidence of actual confusion; and
(8) plaintiff’s likelihood of expansion in product lines.[59]
Generally
speaking, trademark infringement is most likely to occur in the context of
competitor disputes and “palming off” disputes.[60]
However, the other types of domain name disputes usually do not involve
trademark infringement because the marks involved are rarely used in interstate
commerce, or in a manner that is likely to cause confusion. In fact, a recent study showed that only 12%
of domain name disputes fit within the traditional trademark infringement
framework.[61] For example, parody disputes are unlikely to
give rise to a likelihood of confusion because the domain names are used to
provide information or comment about a product, not compete with it, or pass
itself off as the original. Furthermore,
in conflicting interest disputes, usually either the goods and services
involved are not competing or there is no commercial use. Cybersquatting disputes seem far from the
realm of trademark infringement as well because they usually do not involve
“commercial use,” “trademark use,” and there is simply no likelihood of
confusion. However, courts have not had
any difficulty stretching the trademark infringement doctrine to reach the
results they desire in domain name disputes.[62]
First, the “use
in commerce” requirement is frequently not met in domain name disputes. For example, cybersquatters often do not
actually use the domain names they register with a web site.[63] Instead, they simply “hoard” the marks and
wait for trademark owners to approach them with a buy-out offer.[64] In cases where cybersquatters do establish
web pages with the domain names, they frequently make noncommercial use of the
sites.[65] Accordingly, cases under those scenarios
would not fall within the Lanham Act because the marks are not used “in commerce.”[66] However, some courts have been willing to
stretch the meaning of “use in commerce” to stop cybersquatters.[67] For example, in Panavision v. Toeppen, the Ninth Circuit held that conducting
business as a cybersquatter constitutes commercial use.[68] Even
though the cybersquatter made noncommercial use of the web site used with the
domain name, the court held that the cybersquatter acted “as a ‘spoiler,’
preventing Panavision and others from doing business on the Internet under
their trademarked names unless they pay his fee.”[69]
Similarly, in Planned Parenthood
v. Bucci, the Southern District of New York held that the interstate
commerce element is met because the domain name registrant’s actions affect the
trademark owner’s ability to offer services and information over the Internet.[70] Furthermore, the court stated that the “in
commerce” requirement is met for purposes of the Lanham Act simply by
establishing a web page on the Internet, regardless of its content.[71]
To date, courts
have only stretched the “in commerce” requirement in cybersquatter cases, but
there is no telling if the same analysis would be used in all domain name
disputes, or even all trademark disputes.
This is unnerving since there are many people who legitimately establish
non-commercial web sites on the Internet or reserve domain names until they get
a web site established and operational.
Second, domain
names are not always used as trademarks in domain name disputes. As mentioned above, cybersquatters usually do
not put their domain names to “trademark use.”[72]
Because cybersquatters rarely use their pirated names at all, they
cannot possibly be used to identify the source of goods and services. Furthermore, when domain names are used in a
non-commercial manner, they only indicate an address on the Internet and are
not functioning as trademarks.[73] For example, use of a domain name for e-mail
seems not to be trademark use but merely use as an address.[74]
However, some courts completely skim over this requirement and simply
assume that using a domain name is trademark use.[75]
Courts have held
that using domain names to lure people that are looking for the trademark
owner’s company web site to gain new visitors to the domain name owner’s web
site is trademark use.[76] Accordingly, “palming-off” disputes and some
competitor disputes may involve trademark use.
In these cases, the domain name is used specifically to confuse
consumers as to the source or affiliation of the domain name.[77]
Finally, in many
domain name disputes, consumer confusion is simply unlikely. When consumers
type in a name looking for a specific company or product, and a different
company or individual’s page loads, the customers are not likely to be confused
about whose web site they are visiting.
However, courts have created a new theory called “initial interest
confusion,” which allows a finding of likelihood of confusion in these
situations anyway.[78] Initial interest confusion arises when a
consumer types in the web site of a company looking for specific products or
services.[79] Instead of the company’s web site loading, a
different company’s web site loads.[80]
Because the consumer likes what it sees at the web page, he stays there
instead of continuing to search for correct web page it was looking for, even
though he knows that he had not reached the intended web page.[81] Thus, the domain name user gains a new
customer by “appropriating the goodwill” of another’s trademark.[82] This concept is rather vague, however. In one case, a court found initial interest
confusion existed when a domain name was used with a web site that contained
content that was similar to the services offered by the trademark owner.[83] In another case, the court found that the
goods and services were so different between the trademark owner and the domain
name registrant that the “momentary confusion” was not “substantial enough to
be legally significant.”[84] So the question becomes, what is enough? If initial interest confusion arises only
when both the domain name registrant and the trademark owner have competing
goods and services, the initial interest doctrine does not seem necessary.[85]
The courts have
yet to determine the scope of this concept, but there is potential for extreme
interpretation. For example, if a
consumer is looking for the White House web page and types in
“www.whitehouse.com,” the page that loads will contain pornographic
information.[86] The majority of consumers will not think the
United States President created, or associated himself with, the web site. They would simply realize the White House web
page was located somewhere else.[87] However, this could be characterized as
infringing under the “initial interest confusion” concept if the consumer
stayed at the porn site instead of continuing a search for the real White House
web page.
ii.
Unfair Competition
Unfair
competition is very similar to trademark infringement, but it covers a broader
scope. Unfair competition law protects
trade names, as well as trademarks.[88]
This provides a remedy for people whose trade names are used in domain
names unlawfully, since trademark infringement does not extend to those
situations.[89] Section 43(a) of the Lanham Act generally
protects against three types of misleading commercial behavior. First, it protects against the commercial use
of “any word, term, name, symbol, device, or any combination thereof” that is
likely to cause confusion, mistake or deception as to the “affiliation,
connection, or association” of the domain name registrant with the trademark or
trade name owner.[90] Additionally, it protects against commercial
use of a name or mark that creates confusion as to the “origin, sponsorship, or
approval” of goods and services provided by the domain name registrant.[91] Finally, it prohibits the commercial use of a
name or mark in connection with false advertising.[92]
The test for
proving unfair competition is generally the same as the test used in trademark
infringement.[93] Like trademark infringement, there are
specific instances where domain name registrants do engage in unlawful unfair
competition. For example, “palming off”
disputes may very well fall within the ambit of unfair competition because the
domain name registrant is using someone else’s goodwill to attract consumers to
its web site. Further, competitor disputes
are likely to fall within the realm of unfair competition when the domain name
registrant uses its competitor’s trademark in a domain name to sell its own
goods and services, or to falsely represent that it is that company.
However, most
domain name disputes do not fall within unfair competition laws. Therefore, it is essential to look at the
facts involved and whether the behavior actually fits within the confines of
the statute when unfair competition is alleged.
iii.
Dilution
Since January
1996, trademark owners have also been able to use the trademark dilution
doctrine against domain name registrants.[94]
Dilution is easier to apply to domain name disputes because trademark
owners do not have to show likelihood of consumer confusion or competition
between the two parties.[95] Instead, to prevail on a dilution claim, the
trademark owner must show (1) that it owns a famous mark (2) defendant is
making commercial use of the mark; (3) the defendant’s use began after the mark
became famous; and (4) the defendant’s use of the mark in the domain name
dilutes the quality of the mark by diminishing the mark’s capacity to identify
and distinguish goods and services.[96]
The dilution
doctrine itself has created a large shift in trademark law by granting owners
of “famous” marks a right similar to a right-in-gross.[97]
This is even more true when the dilution doctrine is applied to the
Internet. For example, if dilution laws
allow one trademark owner to prevent others from using “www.famousname.com,”
concurrent use of trademarks on the Internet could be wholly eliminated.[98] That would provide the trademark owner with a
substantial property right – a right-in-gross.
As if the concept
of rights-in-gross for certain famous mark owners was not enough,[99]
courts have already broadened the doctrine beyond its intended scope. As with trademark infringement, courts have
stretched the “use in commerce” requirement to allow dilution claims to reach
cybersquatters. [100] Courts have held that “use of the Internet is
sufficient to meet the ‘in commerce’ requirement” of the Lanham Act.[101]
Further, courts
have construed the meaning of “famous” very broadly. The Lanham Act lists several factors that
should be used to determine whether a mark is famous.[102]
Only a small fraction of marks are indeed famous.[103]
These marks include Xerox, Exxon, and Coca Cola. However, courts have been willing to place
the “famous” label on otherwise-not-so-famous marks to stop cybersquatters. For example, does holding the mark “Intermatic”
is famous really pass the “straight-face” test?
The dilution
doctrine has been invoked by many large companies with well-known trademarks to
recover domain names containing their trademarked words. Unfortunately, this is often used as leverage
by large companies, regardless of the merits of their anti-dilution case. The big companies can afford to invoke costly
litigation, while frequently the small company domain name user cannot afford
to fight over the name.[104] The same is true for trademark infringement
and unfair competition claims.
B.
New Developments
By the end of 1999, little
clarity existed in the realm of domain name disputes. Thus, the Internet Corporation for Assigned
names and Numbers (“ICANN”) and Congress took steps to clarify the domain name
battlefield. Specifically, the steps
taken by Congress and ICANN were aimed at curtailing cybersquatting on the
Internet. Unfortunately, both the ICANN
policies and the new legislation promulgated by Congress have greatly expanded
trademark law in their attempt to combat cybersquatting.
i.
ICANN Uniform Domain Name Dispute Resolution Policy
ICANN[105]
recently established a Uniform Domain Name Dispute Resolution Policy specifically
aimed at curtailing and resolving domain name disputes.[106]
The mandatory dispute resolution policy (“ICANN Policy”) sets forth a
fast-track arbitration procedure whereby trademark owners may contest certain
domain name registrations.[107] In this process, a neutral arbitrator is
selected to decide the case within 45 days.[108]
This provides trademark owners with interests in domain names a quick
and cheap alternative to costly litigation.[109]
Furthermore, the procedure is implemented on a global scale, so
international disputes can be easily resolved without jurisdictional or choice
of law problems.
To invoke the
ICANN proceedings, the challenger must show (1) the registrant’s domain name is
identical or confusingly similar to a trademark or service mark that the third
party has rights in; (2) the registrant has no rights or legitimate interests
in the domain name; and (3) the registrant registered and used the domain name in bad faith.[110]
The ICANN Policy
enumerates four particular circumstances that provide evidence of registration
and use in “bad faith.”[111] First, bad faith is present where it appears
that the registrant acquired the domain name for the primary purpose of selling
or leasing the domain name to the owner of the trademark or to a competitor of
the trademark owner for a profit.[112]
Second, bad faith may be inferred where it appears that the registrant
acquired the domain name to prevent the trademark owner from using it.[113] This inference arises when the registrant has
engaged in a pattern of such conduct.[114]
Third, bad faith is present when the domain name is registered
“primarily for the purpose of disrupting the business of a competitor.”[115] Finally, bad faith occurs when the domain
name is used to intentionally attract Internet users to the site for commercial
purposes by creating a likelihood of confusion with the complainant’s mark.[116] The ICANN Policy states that the enumerated
circumstances are not exhaustive.[117]
Thus, the panel has discretion when finding bad faith.
The ICANN Policy
also enumerates the ways a domain name registrant can demonstrate that they do
have legitimate rights and interests in their domain name.[118]
A registrant may show that before notice of the trademark dispute was
received, the registrant used the domain name, or a name similar to the domain
name in connection with a bona fide offering of goods or services.[119] A registrant may also show that he or she has
been commonly known by the domain name.[120]
Additionally, a registrant may show that the domain name was used for
legitimate noncommercial or fair use purposes without intending to make
commercial gain by misleading customers or tarnishing the complainant’s
trademark or service mark.[121]
Remedies under
the ICANN Policy are limited to cancellation of the domain name, or a transfer
of the domain name registration to the complainant.[122]
Complainants with disputes can submit the case to a court of competent
jurisdiction before using the ICANN Policy, and all decisions under the ICANN
Policy may be appealed in court.[123]
Several cases
have already been decided under the ICANN Policy.[124]
While many of the cases seem to be clear-cut cybersquatting cases,[125]
there are other cases that are more questionable. Specifically, the interpretation of
“registration and use in bad faith” has already been greatly expanded. In the very first case decided under the
ICANN Policy, the panel held that the bad faith use requirement was met when
“respondent offered to sell the domain name to complainant ‘for valuable
consideration in excess of’ any out-of-pocket costs directly related to the
domain name.”[126] The panel concluded that it should look to
prior judicial decisions defining what constitutes a use in bad faith.[127] It used the definition of “use in commerce”
from the Panavision[128]
and Intermatic[129]
cases to come to this definition of the bad faith requirement.[130] This definition seems reasonable since both
of those cases were attempts to combat cybersquatters. However, the bad faith use requirement was
recently expanded. In Telestra Corp. Ltd. v. Nuclear Marshmallows,
the panel found bad faith even though there was no evidence of bad faith, and
none of the enumerated circumstances existed.[131]
In Telestra, the challenger
owned the mark TELESTRA, and challenged the respondent’s domain name
“telestra.org.”[132] To prevail, Telestra was required to prove
both “use in bad faith” and “registration in bad faith.”[133]
However, Telestra did not know who the domain name registrant was, and
there was no web site used with the domain name.[134]
Without this information it would appear to be nearly impossible to show
either use or registration in bad faith under the ICANN Policy. Accordingly, Telestra’s claim for bad faith
was tenuous at best.[135] The panel allowed Telestra to side step the
requirement, however, by stating that bad faith can be inferred through
inaction.[136] The panel allowed Telestra to prove bad faith
registration and use of the domain name by merely asserting that the registrant
did not use the domain name, and therefore the registrant could not possibly
have a good faith reason for registering it.[137]
Thus, the Telestra decision
almost seems to allow Trademark owners to win by default if the domain name
registrant cannot be contacted.
Furthermore,
recent decisions imply that the bad faith requirement can be stretched to cases
that clearly do not involve cybersquatters.
For example, a recent case involved two companies, one operating in the
United States under the trade name “Fiber-Shield Industries, Inc.,” the other
operating in Canada as “Fiber Shield LTD.”[138]
Both companies had been operating under the FIBER SHIELD name without
knowledge of the other.[139] The United States company had a federal
trademark registration for FIBER SHIELD and was the first to register the
domain name “fibershield.com.”[140] A while later, the Canadian company attempted
to register the same name, but discovered it was already registered by the
United States company.[141] Therefore, the Canadian company registered
the domain name “fibershield.net” instead.[142]
The United States company found out about “fibershield.net” and invoked
the ICANN Policy to strip the Canadian company of its domain name.[143] Arguably, both companies have the right to
use their name on the Internet. However,
the panel disagreed, and found that the Canadian company registered
“fibershield.net” in bad faith because they registered it after they became
aware that the United States company registered “fibershield.com.”[144] The decision did not mention exactly what the
goods and services of the respective companies were, but even if the two
companies offered the same services, is it fair to give the first company to
register a domain name the rights to all domain names containing that
mark? Furthermore, since Fiber Shield was clearly not a
cybersquatting case, should the panel have decided it at all? Is this an attempt to apply United States
trademark laws internationally?
While the purpose
of the ICANN Policy is laudable, its application is questionable, and seems to
expand trademark rights on the Internet just as much as the early court
decisions.
ii.
Anticybersquatting Consumer Protection Act
Congress has also
lent its eyes and ears to the issue of cybersquatting. Approximately one month after the ICANN
Policy was approved, President Clinton signed the Anticybersquatting Consumer
Protection Act (“ACPA”) into law.[145]
The ACPA amends the Lanham Act to specifically prohibit cybersquatting.[146]
The ACPA makes it
illegal for any person with a bad faith intent to profit to register, traffic in,
or use a domain name that contains a trademark that was distinctive or famous
at the time of registration.[147] This creates an entirely new doctrine of
infringement, which departs from traditional trademark principles in several
ways to effectuate its goal of combating cybersquatting.
First, like the
ICANN Policy, the ACPA requires trademark owners to prove that the domain name
was registered with a “bad faith intent to profit.”[148]
This is significant since the Lanham Act has always treated trademark infringement
and dilution as strict liability torts.[149] However, the ACPA requires bad faith,
and enumerates several non-exhaustive factors for courts to consider when
determining whether the domain name was registered in bad faith. Those factors include:
While these bad
faith factors may be helpful, they also leave open areas that could be
interpreted broadly. For example, the
sixth factor addresses whether the registrant ever tried to sell the domain
name for a profit.[151] Imagine a scenario where an individual
registers the name “newyorkknicks.com” to set up a fan web site. The individual spends hours of time
developing his site but does not get it online before the New York Knicks send
him a cease and desist letter, claiming he is infringing upon their famous
trademark. He knows he cannot afford to
fight the New York Knicks in court, but he does not want to hand over his
domain name for nothing after all of his hard work. Therefore, he offers to sell the domain name
to the New York Knicks for $500. Does
this offer alone make him a “bad faith” registrant under the ACPA? Apparently some trademark owners think so,
because many lawsuits similar to the scenario above have been recently filed
under the ACPA.
Second, the ACPA
has no general “use in commerce” requirement.[152]
While this allows courts to avoid stretching the Lanham Act to reach
cybersquatters, this can be problematic if the courts extend the ACPA to
situations that fall outside cybersquatting.
Third, the ACPA
completely disregards the types of goods and services provided in connection
with the trademark involved.[153] This implies that Congress is willing to
provide a much broader scope of trademark rights. Under the ACPA, the trademark will receive
protection from someone who uses it in a domain name, no matter what the name
is being used for.
Fourth, the ACPA
protects not only “famous” trademarks, but also “distinctive” trademarks.[154] This in and of itself is a huge leap for
trademark owners. One of the biggest
criticisms of applying the dilution doctrine to cybersquatting cases was that
the marks involved were not really famous.
Apparently it does not matter under the ACPA, because the mark will be
protected as long as a court finds it is “distinctive,” a quality every
registerable trademark has.
Fifth, the ACPA
provides interesting remedies to trademark owners. Under the ACPA, the courts can cancel domain
name registrations or transfer the domain name from the registrant to the
trademark owner.[155] Therefore, the court can not only declare
that the domain name registrant does not have rights in the domain name but also
that the trademark owner is entitled to use the domain name. Furthermore, trademark owners may elect
statutory damages instead of having to prove actual damages and lost profits.[156] Courts will award statutory damages between
$1000 and $100,000 per domain name infringed.[157]
Sixth, the ACPA
allows trademark owners to file in rem
actions in certain instances.[158] Generally, the ACPA allows in rem actions when the trademark owner
cannot obtain in personam
jurisdiction over the registrant or if the trademark owner cannot locate the
domain name registrant after diligently trying to.[159]
The remedies in in rem actions
are limited to cancellation or transfer of the domain name.[160]
This provision has already been used by Bell Atlantic to assume control
of over 20 domain names.[161] Bell Atlantic sued over 90 defendants who
registered domain names incorporating Bell Atlantic trademarks.[162] While most of the defendants relinquished the
domain names to Bell Atlantic, 20 either refused or could not be located.[163] Invoking the ACPA, a federal magistrate judge
allowed Bell Atlantic to take all 20 of the domain names.[164]
This provision allows large trademark owners to sue for control of
dozens of domain names at a time without having to sue each registrant
separately. This allows trademark owners
to assert their rights much more inexpensively and quickly. Furthermore, the in rem provisions allow trademark owners to sue domain name
registrants in other countries. They can
simply state that they cannot obtain personal jurisdiction over the registrant,
so they will sue the domain name instead.
This provides an otherwise unavailable international remedy that will
probably be very effective, since many international domain name registrants
will not come to United States courts to fight for the domain.
Seventh, the ACPA protects
personal names used in domain name registrations. The ACPA provides:
“Any person who registers a domain name that consists of the name
of another
living person, or a name substantially and confusingly similar
thereto, without
that person's consent, with the specific intent to profit from such
name by selling
the domain name for financial gain to that person or any third
party, shall be liable
in a civil action.”[165]
Violations of this section of the Lanham
Act can result in cancellation or transfer of the mark, and in the court’s
discretion, attorneys’ fees.[166] This is also a vast departure from
traditional trademark laws. Trademark
laws do not protect surnames unless the names are used as trademarks and have
acquired secondary meaning.[167] However, the ACPA engrafts a right of
publicity into the Lanham Act when domain names are involved. This raises several serious issues. As with trademarks, who is entitled to use their
name in a domain name? There are many
people with the same name, and there are also many fans and critics of
celebrities, athletes and politicians.
Apparently Congress decided that celebrities, athletes and politicians
are the ones that deserve more protection than anyone else. To date, there have been many lawsuits filed
under this provision as well.[168]
Finally, the ACPA codifies the case law rule that domain name registrars
shall not be held liable for infringement in domain name disputes unless the
registrant acted in bad faith.[169] Accordingly, trademark owners may not sue those who issue
domain name registrations.
Advocates of the
ACPA argue that this new law is designed only to stop cybersquatters without
having to expand the trademark doctrines any further. They say that the ACPA will only target
cybersquatters and leave the rest of trademark law untouched. Unfortunately, looking at the cases already
filed under the ACPA, many trademark owners are using the ACPA to claim
sweeping rights in domain names and are threatening legitimate users of domain
names. For example, The New York Yankees
recently sued Brian McKiernan for registering the domain name
“www.newyorkyankees.com”[170] While McKiernan had not yet established a web
site, he was planning to set up a personal fan page.[171]
The Yankees did not like the idea though and sued McKiernan under the
ACPA. Shouldn’t a die-hard Yankees fan
have a First Amendment right to set up a web page showing his love for his
baseball team? The Yankees already have
the domain name “www.yankees.com,” so why do they need another one? If anyone went to a fan page, he or she would
almost assuredly know that it was not the Yankee’s “official site. From the facts disclosed to the media,
McKiernan is not a cybersquatter, and his actions do not constitute a
likelihood of confusion or dilution.
Perhaps the New York Yankees are just going too far.
To date, only one
case applying the ACPA has been reported.[172]
The case dealt with a competitor dispute where the domain name was
registered merely to prevent a competing company from using the name.[173] While the case was not a typical
“cybersquatting case,”[174]
the court held that the ACPA applied because the domain name registrant was
acting in “bad faith.”[175] How far the courts will extend the ACPA
beyond actual cybersquatting disputes is yet to be determined.
Many critics also
worry that the ACPA will undermine the inexpensive and quick procedures
established by the ICANN Policy.[176] Trademark owners are unlikely to file under
the ICANN Policy when they can use the ACPA to obtain damages and to threaten
the domain name registrant with a long, and costly, process.
V. THE PROBLEM
WITH BROADENING TRADEMARK RIGHTS
As shown,
trademark law has recently drastically broadened to accommodate domain name
disputes. While in some instances it is
appropriate to apply trademark law to these disputes, there are many times that
it should not. For example, if there is
a genuine likelihood of confusion or dilution, trademark law certainly
applies. Additionally, in clear
cybersquatting cases, the ICANN Policy and the ACPA should apply. However, trademark law should not be
broadened to give trademark owners rights that they otherwise are not entitled
to.
While “domain name law” develops, a
clear trend is emerging. The law is
giving more protection to trademark owners.
The question is whether the law will eventually give large trademark owners
property rights in domain names, i.e. the ability to exclude others from using
them. In determining whether the
trademark laws should reach this far, perhaps it is necessary to revisit the
purpose of trademark protections.
Trademarks are protected to provide consumers with accurate information
about the goods and services the marks represent, and to give companies
incentives to invest in their marks and increase quality control.[177] Trademarks therefore lower consumer search
costs and promote the economic functioning of the market.[178]
Marks themselves are not protected, but the law protects the goodwill
the marks embody.[179]
In some circumstances, giving
monopolies in domain names can lower consumer search costs. It is well known that if a consumer is
looking for a company online, their first search will be typing in
“www.companyname.com.” This can be very
effective when there is only one company with that name. For example, it may lower search costs for
people looking for the Xerox Company, since there are probably no other
companies that use that name. However,
it is very inefficient for customers looking for a company that uses a mark
that many other companies also use. For
example, if a customer is looking for the irrigation company Delta, or the
Delta faucet company and types in “delta.com” only to find Delta Airlines,
consumer search costs are not lowered at all.
Furthermore,
allowing monopoly rights in domain names will discourage companies from using
names that are already taken.
Traditional economic justifications for trademark law rest on the
premise that there are an infinite number of marks available.[180] However, there are only a limited number of
domain names available.[181] Recent estimates indicate that 97% of the
names in the Webster's Dictionary have already been registered as domain names.[182] If trademark owners are given a right in
gross over domain names, concurrent uses of trademarks will become economically
infeasible. For example, if a startup
company knew it could never use any variation of the word DELTA in a domain name,
it certainly would not adopt such a mark to use in connection with its goods
and services.
Another area of
concern with such a right is that it would allow trademark owners to preclude
others from using not only one but several marks. It is becoming common practice for companies
to register all the domain names they can think of that contain their company
name. For example, Exxon currently holds
the rights over more than 120 domain names incorporating the word “EXXON.”[183] Accordingly, it is possible for Delta
Airlines to register, “www.delta.com,” “delta.org,” “delta.net,”
“flydelta.com,” “deltaonline.com,” and
“deltasucks.com” and link them all to the same company web page. But is it really fair to allow Delta Airlines
to have a complete monopoly over all these names when there are hundreds of
other companies that have an interest in the name DELTA? This hardly seems to promote “consumer
differentiation among products.”
Instead, it seems to promote protection of large companies who want
rights in every possible variation of their name.
From a realistic
point of view, the current expansion in laws gives trademark owners a
significant amount of leverage.[184] For example, many times people with
legitimate interests in their domain names cannot afford to fight trademark
owners. Litigation over domain names can
cost from $100,000 to $250,000 and may take a very long time.[185] Additionally, these cases are often very
uncertain and can lead to unpredictable results.[186]
Naturally, this will force many to simply turn over their rights in
order to avoid “corporate bullying.”
VI. CONCLUSION
Domain name disputes can and should fit within established
trademark law. However, these doctrines
should not be broadened to come to results- based decisions. The way the current Lanham Act and ICANN
Policy are written, all legitimate claims trademark owners may have can be
addressed properly if the facts involved in each dispute are carefully
considered. However, the laws can also be broadened drastically to give
trademark owners near rights in gross over their trademark in domain names if
courts and administrative panels decide these cases too quickly. Courts and administrative panels deciding
these cases should be aware of the problems such broad interpretations can
create, and should avoid stretching these rights.
[1] Domain names are registered on a “first come first
served” basis. See e.g., Network Solutions, Network
Solutions’ Domain Name Dispute Policy (visited Mar. 8, 2000) <http://www.networksolutions.com/legal/dispute-policy.html>.
They can be registered for $70 for two years if the registrant already has a
web site ready to be used in connection with the domain name or if the
registrant wishes to develop the site immediately. See
id. Otherwise, a domain name can be
reserved without any use requirement for $119.
See id.
[2] Courts have recognized
trademark rights in domain names through trademark laws. They have allowed trademark owners to prevent
uses of the marks in domain names that are likely to cause confusion or
dilution. See discussion infra
Section IV(A). Furthermore, Congress has
established a right of trademark owners to prevent others from
“cybersquatting.” See 15 U.S.C. §1125(d); see
also discussion infra Section
IV(B)(ii).
[3]
See United States Patent and
Trademark Office, Examination Guide No.
2-99 (Sept 29, 1999) [hereinafter Examination
Guide]. Second level domain names
may be registered as trademarks. See id.
Domain names can be broken down into different
parts. For example,
“http://www.cats.com” contains four parts.
The first part, “http://” refers to the protocol used to transfer
information. The second part, “www”
refers to the World Wide Web. The third
part, “cats” is the second-level domain.
This portion reflects company names, topics, last names, or whatever else
the domain name registrant chooses to use.
Sometimes people may have trademark rights in the second-level domain,
or perhaps the second level domain is their name. It is the second-level domain that usually
constitutes the heart of domain name disputes.
Finally, the fourth part, “.com” is the top-level domain (“TLD”). The top-level domains refer to the categories
the domain name is registered in. For
example, “.com” is the most frequently sought after TLD because it refers to a
commercial site. See GreatDomains.com Issues Criteria to Value Domain Names, With Values
From Worthless up to $10 Million, Business
Wire, Aug. 2, 1999. Other
examples include “.edu” for four-year universities; “.gov” for U.S. government
agencies; and “.us” for addresses geographically reflecting the United States
county code. See id.
[4]
15 U.S.C. §1127. Marks that cover
services rather than goods are known as “service marks.” See id.
[6]
See 15 U.S.C. §§ 1114(a) and 1125(a).
[8] See Lockheed Martin Corp. v. Network Solutions,
Inc., 1997 U.S. Dist. LEXIS 10314, 6 (C.D. Cal. 1997).
[9] See Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L. J.
1687, 1694 (May 1999).
[11] See 15 U.S.C. §§1114(a) and 1125(c); see also Roger D. Blair & Thomas F. Cotter, An Economic Analysis of Seller and User
Liability in Intellectual Property Law, 68 U. Cin. L. Rev. 1, 14 (Fall
1999).
[19] See e.g., Ira S. Nathenson, Comment:
Showdown at the Domain Name Corral: Property Rights and Personal Jurisdiction
Over Squatters, Poachers and Other Parasites, 58 U. Pitt. L. Rev. 911,
950-51 (Summer 1997); G. Gervaise Davis, Internet
Domain Names and Trademarks: Recent Developments in Domestic and International
Disputes, 21 Hastings Comm/Ent L.J. 601, 608 (Spring 1999).
[22] Generic terms are not
protectible as trademarks. See e.g., Big O Tire Dealers, Inc. v.
Goodyear Tire & Rubber Co., 408 F.Supp. 1219 (D. Col. 1976).
[23]
See Davis, supra note 19, at 618; Nathenson, supra note 19, at 950-51; Examination
Guide, supra note 3.
[24]
See Nathenson, supra note 19, at 925.
[25] See e.g., John Moran, VIEW
FROM AMERICA: Only Courts Should Evict ‘Cybersquats,’ The Moscow Times, Dec. 17, 1999, at No.
1861; Drew M. Wintringham & Michael S. Lemley, Cybersquatting in the Millennium, The
Metropolitan Corporate Counsel, Feb. 2000, at 22; Neil MacFarquhar, Those Dominant Yankees Fight For a Domain
Name, The New York Times,
Jan. 6, 2000 <http://www.lawyer-referral.com/recentnews_nyt.html>.
[27] See e.g., Brenda Sandburg, Lawyers Hit a Double Fault With a Net Racket,
Law News Network, Nov. 4, 1999
<http://www.lawnewsnetwork.com/stories/A8926-1999Nov3.html>.
[28]
See Mo Krochmal, Domain Names of the Deceased – What to Do?, Technology News, Oct. 26, 1999 <http://www.techweb.com/wire/story/TWB19991026S0020>.
[29] See id. Right of publicity
laws are available but vary greatly from state to state. Recently, the Lanham Act was amended to add a
civil cause of action against “any person who registers a domain name that
consists of the name of another living person, or a name substantially and
confusingly similar thereto, without the person’s consent, with the specific
intent to profit from such name by selling the domain name for financial gain
to that person or any third party.” 15
U.S.C. §1129(b)(1)(A).
[30] See Professor Milton Mueller, Trademarks and Domain Names: Property Rights
and Institutional Evolution in Cyberspace (visited May 15, 1999) <http://ist.web.syr.edu/~mueller/study.html>.
[31] See e.g., Green Prods. Co. v. Independence Corn By-Prods. Co., 992
F.Supp. 1070 (N.D. Iowa 1997).
[32] See e.g., Hasbro, Inc. v. Internet
Entertainment Group, Ltd., 40 U.S.P.Q.2d 1479 (W.D. Wash. 1996)(defendant preliminarily
enjoined from using “candyland.com” in connection with pornography web site
that was likely to dilute plaintiff’s famous mark CANDYLAND used in connection
with children’s board games); Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d 1836 (N.D.
Cal. 1996)(holding that domain name “adultsrus.com” used in connection with a
pornography web site diluted plaintiff’s Toys “R” Us trademark).
[33]
However, these disputes may also now fall under trademark infringement and
“initial interest confusion.” See discussion infra Section IV(A)(i).
[35]
See id.
[37] See e.g., Cliffs Notes, Inc. v. Bantam
Doubleday Dell Publ’g. Group, Inc., 886 F.2d 490, 497 (2nd Cir.
1989)(Parody cover of SPY NOTES, that conjures up the CLIFFS NOTES trademark a
fair use that outweighs the slight risk of consumer confusion); Bally Total
Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998)(Defendant’s
web page called “Bally Sucks” was protectible consumer commentary, not unfair
competition or dilution of plaintiff’s health club marks).
[38] See e.g.,
Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402 (8th Cir.
1988)(Since there are other avenues of expression that do not infringe a
trademark, injunction does not deprive the public or the defendant.).
[39] See e.g., Lee Copeland, Cyberbashers
Proliferate: Even as Threat of Cybersquatting Eases, Computerworld, Feb. 21, 2000, at 32.
[41] See Mueller, supra note 30. A recent study suggests that 49% of domain
name disputes involve conflicting interest, or “character-string”
conflicts. See id. Cybersquatter
disputes constituted 35%, while actual infringement only occurred in 12% of
cases. See id.
[46]
Currently there are 487 federally registered trademarks that contain the word
“Delta.” Additionally, 132 marks
containing the word “Delta” are pending federal registration. See
U.S. Patent and Trademark Office, Trademark
Text and Image Database (searched on Mar. 28, 2000) <http://trademarks.uspto.gov/access/search-mark.html>.
[48] See Carl Opperdahl, Recent
Trademark Cases Examine Reverse Domain Name Hijacking, 21 Hastings Comm/Ent L.J. 535, 543 (Spring
1999).
[51] See Mark Grossman, New Year, New Laws on Cybersquatting, Broward Daily Business Review, Jan.11, 2000, at A1.
[52] See Keith Rodes, A Rose is a
Rose is a Rose.com, The California
Aggie University Wire, Jan. 20, 2000.
[53] See Nathenson, supra note 19, at n.14 and n.72 (citing
Giacalone v. Network Solutions Inc., No. C-96 20434 RPA/PVT (N.D. Cal. June 14,
1996)). The complaint from the Giacalone
case and the subsequent preliminary injunction issued by the court are
available at <http://www.iplawyers.com>.
[55]
For example, some courts seem to assume that merely registering and holding a
domain name is illegal, without exploring or exposing any legal basis for the
assumption. See id. at 618.
[56] 15 U.S.C. §1114 (1). Owners of non-registered trademarks can look
to state common law, or can use Section 43(a) of the Lanham Act, which
prohibits unfair competition.
[57] See id. See also Marcus J.
Millet, Same Game in a New Domain – Some
Trademark Issues On The Internet, New
Jersey Lawyer, Aug. 1999, at 32.
To prevail, the trademark owner must prove that: it owns prior rights in
the registered trademark; the defendant is using the same or similar mark in
interstate commerce; in connection with the sales, advertising, distribution or
offering of goods or services; in a manner that creates a likelihood of
confusion, deception or mistake. See 15 U.S.C. §§ 1114(1)(a).
[59] See Brookfield Communications, Inc. v.
West Coast Entertainment Corp., 174 F.3d 1036, 1053-54 (9th Cir.
1999).
[60] See, e.g., Brookfield, 174 F.3d 1036, 1066 (“When a firm uses
a competitor’s trademark in the domain name of its web site, users are likely
to be confused as to its source or sponsorship.”); Green Products, 992 F.Supp. 1070 (court found likelihood of
confusion when firm registered the domain names of competitors although the
domain name was never actually used); Cardservice Int’l., Inc. v. McGee, 950
F.Supp. 737 (E.D. Va. 1997) (holding that the defendant’s use of
“cardservice.com” infringes competitor’s trademark, Cardservice International).
[61] See Stewart Deck, Big Firms
Have a Leg Up in Domain Name Disputes, Computerworld,
Jun. 26, 1998; see also Mueller, supra note 30.
[62] See Richard Martinelli, Cybersquatters
– Will Their Effect on Trademark Law Live On?, Mealy’s Litigation Reports: Intellectual Property, Nov. 15,
1999.
[63] See, e.g., Jennifer Golinveaux, What’s
In a Domain Name: Is “Cybersquatting” Trademark Dilution?, 33 U.S.F. L. Rev. 641, 652 (summer
1999); Mueller, supra note 30; Millet, supra note
57, at 35.
[65] For example, in Panavision Int’l., L.P. v. Toeppen, the
cybersquatter registered the domain name “Panavision.com” and placed only
aerial view photographs of Pana, Illinois on the web page. 141 F.3d 1316, 1325 (9th Cir.
1998).
[67] See id.; see also Planned Parenthood Fed. of Am. v. Bucci, 42
U.S.P.Q. 2d 1430, 1434 (S.D.N.Y. 1997).
[71]
See id. (The use in commerce
requirement is met because “Internet users constitute a national, even international
audience, who must use interstate telephone lines to access defendant’s web
site on the Internet. The nature of the
Internet, for access to all users, would satisfy the Lanham Act’s “in commerce”
requirement.”)
[72]
Courts have granted several preliminary injunctions under the mere assumption
that domain names are trademarks. See Davis,
supra note 19, at 616.
[78]
See Brookfield, 174 F.3d at 1057.
Although the court did not dub the type of confusion “initial interest
confusion” until it discussed meta tag infringement, the court explained the
concept in the context of trademark infringement as well. See
generally id. at 1057 and 1062.
[83]
See Richard Lehv, Cybersquatting in Focus; Are New Rules
Needed or Will Existing Laws Suffice?,
New York Law Journal, Jan.
18, 2000, at S4; see also Brookfield, 174 F.3d at 1058.
[86] See <http://www.whitehouse.com>.
[87] The White House web
page is at <http://www.whitehouse.gov>.
[89]
Trade names are not federally registerable as trademarks and are therefore not
protected from trademark infringement.
[93] See Nathenson, supra note 19, at 951.
[94] The Federal
Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985, 986
(1996)(codified at 15 U.S.C. §§ 1125(c) and 1127); see, e.g., Intermatic Inc. v. Toeppen, 947 F.Supp. 1227 (N.D. Ill.
1996); Akkaoui, 40 U.S.P.Q. 2d
1836; Hasbro, 40 U.S.P.Q. 2d
1479.
[95] See Golinveaux, supra note 63, at 654.
[103] See Carl Opperdahl, Analysis
and Suggestions Regarding NSI Domain Name Trademark Dispute Policy, 7
Fordham Intell. Prop. Media & Ent. L.J. 73, 101 (Autumn 1996).
[105] ICANN is a
non-profit, private sector corporation that was formed in October 1998 by a
broad coalition of the Internet's business, technical, and academic
communities. See Internet Corporation
for Assigned Names and Numbers, ICANN
Fact Sheet (last modified Jul. 16,
1999) (visited Mar. 5, 2000) <http://www.icann.org/general/fact-sheet.htm>. ICANN was established after the Clinton
Administration published an executive order in July 1997 calling for
privatization of the Internet Domain Name System (DNS) and after the
publication of a document entitled "Management of Internet Names and
Addresses," commonly known as the White Paper, in June, 1998. See Internet Corporation for Assigned
Names and Numbers, Frequently Asked Questions (FAQ) (visited Mar. 7, 2000) <http://www.icann.org/general/faq1.htm>. The objective was to create a private
corporation representing the broad and diverse interests of the global Internet
community that could develop uniform policies for the management of DNS. See generally id. Accordingly, ICANN’s members include
volunteer representatives from all over the globe. See id. The United States
government has designated ICANN to serve as the global consensus entity that is
responsible for coordinating key functions for the Internet, including
management of the DNS with regard to all .com, .net, and .org top-level
domains. See id.
[106] See Internet
Corporation for Assigned Names and Numbers, Uniform
Domain Name Dispute Resolution Policy
(as approved by ICANN on October 24, 1999)(visited Feb. 22, 2000) <http://www.icann.org/udrp/udrp-policy-24oct99.htm>
[hereinafter ICANN Policy].
[107] See Stephanie
Nebehay, Wrestlers Win Fight Over
Internet Address, Miami Herald,
Jan. 15, 2000 (visited Feb. 1, 2000)
<http://www.herald.com/content/tue/sports/wrestling/digdocs/076072.htm>.
[109] See id.
[124] ICANN publishes its Uniform Dispute Resolution Policy
decisions at <http://www.icann.org/udrp/proceedings-list.htm>.
[125] See e.g., World Wrestling Federation
Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (WIPO Arbitration and
Mediation Center Jan. 14, 2000), reprinted
at <http://arbiter.wipo.int/domains/decisions/html/d99-0001.html>;
Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc., Case No. D2000-0012
(WIPO Arbitration and Mediation Center Feb. 17, 2000), reprinted at <http://arbiter.wipo.int/domains/decisions/html/d2000-0012.html>.
[130] See World Wrestling
Federation, Case No. D99-0001, 6.3.
[131] See Telstra
Corp. Ltd. v. Nuclear Marshmallows, Case
No. D2000-0003 (WIPO Arbitration and Mediation Center Feb. 18, 2000), reprinted at <http://arbiter.wipo.int/domains/decisions/html/d2000-0003.html>.
[133] See id. at 5.2, 7.3 - 7.11.
[135] In claiming that
the respondent acquired the domain name in bad faith, Telestra alleged: (1) the
respondent never registered its trading name as a business name as required
under Australian business law; (2) respondent provided false address
information in its domain name registration; (3) Telestra is a well-known mark
so it is “inconceivable” that the respondent would not be aware of the Telestra
mark; (4) because the Telestra mark is so well-known, members of the consuming
public would likely think the domain name was owned by Telestra or associated
in some way with Telestra; and (5) any “realistic use of the domain name must
misrepresent an association” with Telestra and its goodwill. See id. at 6.3.
[138] See Fiber-Shield Indus. Inc. v. Fiber
Shield LTD, Case No. NAF FA0092054 (National Arbitration Forum Feb. 29, 2000), reprinted at <http://www.arbforum.com/domains/decisions/92054.html>.
[139] See id.
at 5.
[159] See id.
This provision overturns the holding in Porsche Cars North America, Inc. v. Porsche.com., 51 F.Supp.2d 707, 713 (E.D. Va.
1999)(holding that the Federal Trademark Dilution Act does not support an
exercise of in rem jurisdiction in
trademark suits).
[161] See e.g., David McGuire, Bell Atlantic Wins Landmark Cybersquatting
Ruling, Newsbytes, Feb. 3,
2000.
[167] The Lanham Act precludes registration of a
mark that is “primarily merely a surname.”
See 15 U.S.C.
§1052(e)(4). Only surnames that have
acquired secondary meaning and are recognized by the public to distinguish
goods and services are protectible.
[168] For example, John
Tesh, Kenny Rogers, and Brad Pitt have all sued people that registered their
names in domain names. To date, none of
these lawsuits have been decided.
[170] See David King, Dot.squatters Law Doesn’t Hamper All, San Antonio Express News, Jan. 16, 2000, at 1C.
[172] See Sporty’s Farm L.L.C., v. Sportsman’s
Market, Inc., 2000 U.S. App. LEXIS 1246 (2nd Cir. 2000).
[173] In Sporty’s
Farm, the defendant registered the domain name “sportys.com,” knowing that
SPORTY’S was a “famous” trademark used in connection with aviation products. See id. The court found that the
defendant had no interest in the name SPORTYS. See id. at 23. Further, the court concluded that the ACPA applied
because the defendant acted with a “bad faith intent to profit” when it
registered the name because (1) the defendant had no intellectual property
rights in the name when it registered it; (2) the defendant’s company, SPORTY’S
FARM, was not formed until nine months after registering the name, and did not
begin operations until after the lawsuit was filed; and (3) the defendant was
planning to enter the aviation product market and it appeared that the name was
registered to prevent the trademark owner from using it. See id. at 23-26.
[174] As discussed supra Section III(A), cybersquatters
generally register domain names with the specific purpose of later selling them
to the trademark owner for a profit.
[176] See e.g., Susan J. Kohlmann, et. al., Cyberpiracy Remedies and New
Dispute Resolution Procedures, The
Metropolitan Corporate Counsel, Feb. 2000, at 8; Grossman, supra note 51.
[179] [179] See e.g., Stephen L. Carter, The Trouble With Trademark, 99 Yale. L.
J. 759, 761 (1990).
[180] See id. at 760.
[181] HYPERLINK
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