Enforcing Trademark Rights Online Through The
ICANN Domain Name Dispute Resolution Policy &
The Anticybersquatting Consumer Protection Act[1]
Henry J. Fasthoff, IV[2]
May 2000
I. Introduction[3]
The hottest commodity in Cyberspace is the domain name. Between 1996 and 1999, the number of domain names registered in the United States exploded from 1 million to more than 6 million.[4] As a result, more than 97% of the words in Webster’s Dictionary have been registered.[5] Given the critical importance that a catchy, memorable domain name has for the success of a website, some people have been able to make significant sums of money by selling domain names. For example, the domain name “business.com” sold for $7.5 million in 1999, and “America.com” is currently on the auction block for a minimum bid of $10 million.
These facts demonstrate a momentous increase in competition for securing the right domain. Noticing this trend, many entrepreneurs have taken advantage of the domain name boom. These entrepreneurs fall into two categories—domain name traders and cybersquatters.[6] Domain name traders typically register generic names, such as business.com or wine.com, that were not at the time of registration or sale trademarks owned by third parties.[7] Domain name traders seek to sell their registered domains to other Internet entrepreneurs seeking to build and identify their Internet businesses.
Cybersquatters, on the other hand, routinely register and hold hostage domain names that are either identical or confusingly similar to trademarks owned by third parties, in an effort to block a trademark owner from using the domain until the owner agrees to pay what is often an exorbitant sum for the domain. The explosion of cybersquatters has spawned a significant amount of trademark infringement litigation.
II. Protection & Enforcement of Trademark Rights Online
It is a truism that the law develops much slower than technology. When widespread commercial use of the Internet began, there existed no laws or policies that specifically addressed Internet legal issues. With the Internet developing at warp speed, and new legal issues seemingly being raised on a weekly basis, lawmakers, regulators, and the courts have struggled with trying to apply laws which are not adapted to the technological marvels of the Internet.
In 1999, two new mechanisms were implemented to provide trademark owners with improved methods for protecting and enforcing their trademark rights in the context of domain name disputes. On October 24, 1999, the Internet Corporation for Assigned Names and Numbers (“ICANN”), a non-profit corporation which administers the domain name system,[8] implemented its Uniform Domain Name Dispute Resolution Policy (“UDRP”).[9] In addition, on November 29, 1999, the Anticybersquatting Consumer Protection Act (“ACPA”),[10] a U.S. federal law, took effect.
III. ICANN Uniform Dispute Resolution Policy
The UDRP is not a law; rather, it is a policy which is enforced through a contractual agreement, i.e., via the registration agreements entered into by each person who registers a domain name with a registrar (“Registrar”).[11]
The UDRP is designed to give trademark owners an alternative to litigation against cybersquatters. Upon a Registrar’s receipt of a complaint from a third party (“Complainant”) that a registered domain infringes upon the Complainant’s trademark rights, the UDRP requires the registrant of the domain name at issue (“Respondent”) to submit to a mandatory administrative proceeding.[12] A neutral administrative panel (“Panel”) is appointed by an ICANN-approved dispute resolution service provider, such as the World Intellectual Property Organization (“WIPO”)[13], to attempt to resolve the dispute.[14]
Importantly, only disputes that involve top-level domains ending in .com, .net, and .org are covered by the UDRP. Other country code domains, such as .co.uk for the United Kingdom or .ru for Russia, are not governed by the UDRP. Accordingly, as it currently stands a trademark owner whose rights are infringed by a domain ending in anything other than .com, .net, or .org must enforce its rights through other avenues, such as litigation.
During the pendency of an administrative proceeding, neither the Complainant nor Respondent are prevented from instituting court proceedings in a court of mutual jurisdiction, defined as a court in the location of (a) the principal office of the Registrar (provided that the Respondent submitted to the jurisdiction of the courts where the Registrar is located in the Respondent’s agreement with the Registrar), or (b) the domain-name holder’s address as shown in the WHOIS database[15] at the time the complaint is submitted.[16]
A. Elements Of A Claim Under The UDRP
The burden of proof is on the Complainant. A Complainant must prove each of the following elements in the mandatory administrative proceeding:
(1) the domain is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
1. Evidence Of Bad Faith Registration and Use Under The UDRP
To prove evidence of registration and bad faith, the Panel may take into consideration each of the following:
(1) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(2) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registration has engaged in a pattern of such conduct; or
(3) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By the using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
2. Evidence Of Legitimate Interest In Domain Name
The Panel may consider any of the following circumstances by the Respondent to demonstrate the Respondent’s rights and legitimate interests in the domain name:
(1) before any notice of the dispute, the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain in connection with a bona fide offering of goods or services; or
(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark right; or
(3) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
B. Remedies Under The UDRP
The Panel is vested with only limited authority—it can require either the cancellation of the domain name or the transfer of the domain name to the Complainant.[17] If the Panel determines that a Respondent’s domain name registration should be canceled or transferred, the Respondent has 10 business days[18] within which to file a lawsuit and provide evidence of the filing to ICANN, such as a file-stamped copy of the complaint. If within the 10-day period ICANN receives evidence that a lawsuit has been filed, ICANN will take no further action until it has received (1) evidence satisfactory to ICANN that the parties have settled the lawsuit, or that the case has been dismissed, or (2) a copy of a court order dismissing the lawsuit or ordering that the Respondent no longer has the right to use the domain name. If no lawsuit is filed during the 10-day period, ICANN will implement the Panel’s decision.[19]
IV. Anticybersquatting Consumer Protection Act
Like the UDRP, the Anticybersquatting Consumer Protection Act (“ACPA”) gives a trademark owner a mechanism by which to protect and enforce its trademark rights on the Internet. Unlike the UDRP, however, the ACPA is not a policy enforced through a contractual arrangement. Instead, it is a U.S. federal law, the violation of which can impose severe consequences on one who violates the law.
A. Elements Of A Claim Under The ACPA
The ACPA applies to all marks that are protected under Section 43 of the Lanham Act, which includes both registered and unregistered trademarks.[20] The ACPA distinguishes the between protection that is available for distinctive[21] marks and famous[22] marks.[23] If the mark is distinctive, the plaintiff must prove[24] that the person (1) has a bad faith intent to profit from the mark, (2) and either “registers, traffics[25] in, or uses” a domain name that is identical or confusingly similar to that mark.[26] If the mark is famous, the plaintiff must prove that the person (1) has a bad faith intent to profit from the mark, and (2) either “registers, traffics in, or uses” a domain name that is either identical or confusingly similar to that mark, or is dilutive of that mark.[27]
1. Evidence Of Bad Faith Intent To Profit From A Mark Under The ACPA
The ACPA identifies are nine nonexclusive factors which a court can consider in determining whether there exists a bad faith intent, including:
(1) the trademark or other intellectual property rights of the person in the domain name;
(2) the extent to which the domain name consists of the legal name or other name commonly used to identify the person;
(3) the person prior use of the domain in connection with the bona fide offering of any goods or services;
(4) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(5) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(6) the person’s offer to transfer, sell, or otherwise assign the domain to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(7) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(8) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to mark of other that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services; and
(9) the extent to which the mark incorporated in the persons’ domain name registration is or is not distinctive and famous within the meaning of 15 U.S.C. § 1125(c) [the Trademark Dilution Act].[28]
If the court determines, however, that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful use, the court cannot find that there was a bad faith intent to profit from the mark.[29]
B. Remedies
The ACPA entitles a successful plaintiff to temporary and permanent injunctive relief,[30] lost profits,[31] actual damages,[32] costs of court,[33] and attorney’s fees.[34] In addition, if the mark at issue is registered with the U.S. Patent & Trademark Office, the plaintiff may also be entitled to treble damages. Alternatively, instead of going to the expense of proving actual damages, a plaintiff may choose at any time before final judgment in rendered by the court to recover statutory damages of between $1,000 and $100,000, as the court considers just. The option of choosing statutory damages applies only to cases where the domain name was registered after the November 29, 1999 effective date of the ACPA. Finally, the remedies available to a plaintiff under the ACPA are in addition to any remedies that may otherwise be available to the plaintiff.[35]
C. Protection for Individual Names
The ACPA also provides cybersquatting protection for the names of individuals in certain circumstances.
1. Elements of a Claim for Individual Name Cyberpiracy
Specifically, 15 U.S.C. § 1129 of the Act provides that any person who registers a domain name consisting of
(1) the name of another living person, or a name substantially and confusingly similar thereto;
(2) without that person’s consent; and
(3) with the specific intent to profit from the name by selling the domain name for financial gain to that person or any third party,
shall be liable in a civil action to the person whose name consists of the domain name.[36] Section 1129 only prohibits the selling of the domain name itself; it does not prohibit a cybersquatter from using the individual’s name to profit by, for example, operating a gambling or pornographic website located at the subject domain name address. To stop such activities, an individual would be forced rely on other claims such as defamation or violation of rights of publicity, among others. If, however, the individual’s name is protected as a mark under federal trademark or unfair competition laws, i.e., Elvis Presley or Cindy Crawford, regardless of whether they are a “living person” as required by § 1129, that person would have a remedy under the ACPA as discussed in sections IV(A)-(B) above.
2. Exception to Liability
There is an exception to liability for registration of an individual’s name as a domain name if the registrant registers a domain name consisting of a living person’s name, or a name substantially identical and confusingly similar thereto, if
(1) the name is used in, affiliated with, or related to a work of authorship protected by federal copyright law;
(2) the registrant is the copyright owner or licensee of the work;
(3) the registrant intends to sell the domain name in conjunction with the lawful exploitation of the work; and
(4) the registration is not prohibited by a contract between the registrant and the named person.[37]
The exception set forth above applies only to claims brought under § 1129, and does not limit protections afforded under the Trademark Act of 1946 or other provisions of federal or state law.[38]
For example, assume that BMG Records (Britney Spears’ record label) owns the copyright in the sound recordings of the masters contained on the Britney Spears’ album “Oops…I Did It Again”, and that there exists no contractual provision between Spears and BMG prohibiting BMG from registering her name as a domain name. Section 1129 would not prohibit BMG from registering and selling the domain name www.britneyspears.com, as long as it was done “in conjunction with the lawful exploitation” of the album. If, however, Spears objected to BMG’s registration and sale of the domain name, she would be able to invoke other remedies available under the Trademark Act and other federal and state laws.
3. Remedies for Cyberpiracy of Individual Names
Under § 1129, a court is limited to awarding injunctive relief, including the forfeiture or cancellation of the domain name, or the transfer of the domain name to the plaintiff.[39] Additionally, a court has discretion to award attorney’s fees and costs to the party prevailing in an action brought under § 1129.[40]
D. In Rem Jurisdiction Available In Certain Cases
Recognizing that obtaining personal jurisdiction over a defendant in Japan, for example, would often be exceedingly difficult, and sometimes impossible, Congress wisely included a provision in the ACPA authorizing in rem jurisdiction (Latin for “jurisdiction over the thing”) in certain cases. In rem jurisdiction allows trademark owners to file suit against the domain name itself. In rem jurisdiction is available only when the court finds that the mark owner (1) is not able to obtain personal jurisdiction over the registrant of the domain, or (2) has exercised due diligence by following statutorily specified procedures[41] but been unable to locate the registrant. In these limited circumstances, a lawsuit may be brought in the judicial district in which the domain name registrar that registered or assigned the domain name is located.[42] In an in rem proceeding, a plaintiff’s remedies are limited to the forfeiture or cancellation of the domain, or transfer of the domain name to the owner of the mark.[43]
V. Conclusion
The United States’ and international laws are struggling to keep up with the breakneck speed at which the Internet is forcing a rewrite of the legal landscape. The UDRP and the ACPA are critical first steps in providing trademark owners with a mechanism for enforcing their intellectual property rights online. Other laws on the horizon, such as the Uniform Computer Information Transactions Act,[44] will undoubtedly have important ramifications on Internet intellectual property issues. Buckle down—it’s going to be a long, bumpy ride.
For further information regarding this subject, or if your rights as a trademark owner have been violated and you would like to discuss the options available to you to protect and enforce your trademark rights, please feel free to contact:
Henry J. Fasthoff, IV
Stumpf Craddock Massey & Pulman
1400 Post Oak Blvd., Suite 400
Houston, Texas 77056
713-871-0919
713-871-0408
www.scmplaw.com
[1] Copyright Ó 2000 Henry J. Fasthoff, IV. All Rights Reserved.
[2] Mr. Fasthoff is an attorney with Stumpf Craddock Massey & Pulman, a Houston-based full service law firm with additional offices in Austin, San Antonio, and Beaumont, Texas. Mr. Fasthoff’s practice encompasses the areas of Internet & e-commerce law, intellectual property law, entertainment law, telecommunications law, and business litigation. Mr. Fasthoff is licensed by the State Bar of Texas. Not Certified By The Texas Board Of Legal Specialization.
[3] The information provided in this article is not intended to be, and should not be construed as, legal advice or opinion. The information in this article is provided for informational purposes only. The transmission and receipt of any information contained in this article does not form or constitute an attorney-client relationship.
[4] C-NET News.com, Net Names Glitter for Entrepreneurs, December 28, 1999.
[5] Id.
[6] For purposes of this Article, “Cybersquatters” includes both cybersquatters and cyberpirates.
[7] Due to the inherent generic nature of many one-word domain names like business.com or wine.com, such names may not qualify for trademark protection. It is critical for business owners to seek advice from a qualified attorney before selecting domain names to determine whether they will infringe upon the trademark rights of third parties, or whether the proposed domain names may even qualify for trademark protection.
[8]See ICANN website, About ICANN. http://www.icann.org/general/abouticann.htm
[9] The UDRP was adopted pursuant to a report issued by the World Intellectual Property Organization (“WIPO”). See ICANN Board Resolution 99-81. http://www.icann.org/santiago/santiago-resolutions.htm#anchor16725
[10] 15 U.S.C. § 1125(c).
[11] A “Registrar” is an ICANN-accredited entity through whom domain names are registered. Examples of Registrars include Network Solutions, Inc., and Register.com, Inc.
[12] Uniform Dispute Resolution Policy ¶ 4(a).
[13] Four dispute resolution providers have been approved by ICANN: the World Intellectual Property Organization, the CPR Institute, Disputes.org/E-Resolution Consortium, and the National Arbitration Forum. Each dispute resolution provider adheres to its own set of supplemental rules.
[14] The Complainant selects which dispute resolution provider shall preside over the dispute. Uniform Dispute Resolution Policy ¶ 4(d).
[15] The WHOIS database is a compilation of the names, addresses, and other contact information for each registered domain name. See www.whois.org.
[16] One wonders what would happen if the registrant did not submit to jurisdiction at the location of the Registrar and he had moved from, say, Maine to California since her registered the domain name. Would the UDRP require any lawsuit to be brought in Maine even though Maine had no connection to the issues at hand? Presumably, forum non conveniens doctrine would allow any case brought in Maine to be transferred elsewhere.
[17] Uniform Dispute Resolution Policy ¶ 4(i).
[18] The “10 business days” that count are those which business days which are observed at ICANN’s principal office, which as of May 10, 2000 was 4676 Admiralty Way, Marina Del Ray, California, United States. Upon receiving a notice of a decision from the Panel, a practitioner would be well-advised to contact ICANN and determine whether any legal holidays as observed in the location of its principal office would have any effect on the timeline for filing a lawsuit. See Uniform Dispute Resolution Policy ¶ 4(k).
[19] Uniform Dispute Resolution Policy ¶ 4(k).
[20] 15 U.S.C. § 1117(a) (identifying persons entitled to relief).
[21] “By definition, all ‘trademarks’ are ‘distinctive’. . . . 4 McCarthy on Trademarks & Unfair Competition § 24:91, at 24-149 (4th ed. 1997). To be distinctive, “the word must serve to identify and distinguish the seller, not merely to describe a characteristic of the product.” 2 McCarthy on Trademarks & Unfair Competition § 11:18 (4th ed. 1997).
[22] A “famous” mark is a mark that is “instantly recognizable to the consuming public.” Gideons Int’l, Inc. v. Gideon 300 Ministries, Inc., 1999 WL 262451 (E.D. Pa. May 3, 1999) (No. Civ. A. 97-7251). In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to—
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
15 U.S.C. § 1125(c)(1).
[23] The ACPA also applies to a trademark, word, or name protected by reason of 18 U.S.C. § 706 (providing civil and criminal penalties for unauthorized use of the Red Cross words, insignia, or emblem), and 36 U.S.C. § 220506 (providing civil penalties for unauthorized use of the words or marks of the United States Olympic Committee, the International Olympic Committee, the Pan American Sports Organization, and other related words and symbols.
[24] A plaintiff must also prove the elements of a ownership of the mark and that the mark is otherwise protected under the section 43 of the Lanham Act.
[25] As defined in the ACPA, “traffics in” refers to “transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.” 15 U.S.C. § 1125(d)(1)(E).
[26] 15 U.S.C. § 1125(d)(1)(A)(ii)(I).
[27] 15 U.S.C. § 1125(d)(1)(A)(ii)(II).
[28] 15 U.S.C. § 1125(d)(1)(B)(i)(I)—(IX).
[29] 15 U.S.C. § 1125(d)(1)(B)(ii).
[30] 15 U.S.C. § 1116(a).
[31] 15 U.S.C. § 1117(a).
[32] Id.
[33] Id.
[34]Id.
[35] 15 U.S.C. § 1125(d)(3).
[36] 15 U.S.C. § 1129(1)(A).
[37] 15 U.S.C. § 1129(1)(B).
[38] Id.
[39] 15 U.S.C. § 1129(2).
[40] Id.
[41] 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(aa)—(bb).
[42] 15 U.S.C. § 1125(d)(2)(A) and (C).
[43] 15 U.S.C. § 1125(d)(2)(D)(i).
[44] As of the writing of this Article, only one state, Virginia, has adopted some form of the Uniform Computer Information Transactions Act. As with the Uniform Commercial Code, the remaining states are sure to follow in adopting some form of the UCITA.