Resolving Domain Name Disputes Sean M. Mead Mead, Mead & Clark, P.C. Salem, Indiana

Ways of Resolving Domain Name Disputes  Internet Corporation for Assigned Names and Numbers’ Uniform Domain Name Dispute Resolution Policy  Anticybersquatting Consumer Protection Act  Other Federal Trademark Litigation  State Unfair Competition Litigation

Prelude to ICANN  Internet Assigned Numbers Authority  National Science Foundation  Network Solutions, Inc.

Friction in the System  Concentration of Power – Jon Postel  Concentration of Power – Network Solutions  Network Solutions Domain Name Suspension Policy for Disputes  Foreign Nations’ Feeling of Insufficient Respect

Internet Corporation for Assigned Names and Numbers (ICANN)  Formed October 1998  Responsible for Administering All Global Top-Level Domains (gTLD)  Determines Registrar Eligibility  Determines Acceptable Global Top-Level Domains (e.g..aero,.biz,.coop,.info,.pro)  Designed to Represent Interests of Industry, Governments and Consumers

ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP)  Adopted August 26, 1999  Implementation Documents Approved October 24, 1999  Applies to All Global Top-Level Domains  Is Used by Some Country-Code TLDs  Renewals of gTLD Domain Names Required Acceptance of Policy

Uniform Domain Name Dispute Resolution Policy (UDRP)  The Policy  ICANN Rules for the Policy  Individual Dispute Resolution Provider Supplemental Rules for the Policy

Where To File UDRP Complaint  World Intellectual Property Organization  National Arbitration Forum  CPR Institute for Dispute Resolution  Asian Domain Name Domain Name Dispute Resolution Centre

Primary Complaint Elements  The contested Domain Name  Registrar that registered the name  Trademarks upon which complaint is based  Manner in which DN is confusingly similar  Why Respondent does not have legitimate interests in the name  Why Respondent’s use is in bad faith  Number of Panelists desired (one or three)  Agreement to UDRP procedures

Procedural Twist  The Complainant serves the chosen dispute resolution provider  The dispute resolution provider serves the Respondent

Indicators of Bad Faith  Obtaining name to sell to Complainant or its competitor  Registering name to prevent Complainant’s use of the name (if part of a pattern)  Registering the name to disrupt a competitor’s business  Registering a name to deliberately confuse consumers, when done for commercial gain

Defenses to Bad Faith  Respondent’s use of the name or a similar name in commerce prior to the dispute  Respondent being commonly known by the name (even where no trademark in name)  Legitimate noncommercial or fair use, where there is no attempt at commercial gain, misleading consumers, or tarnishing mark

Remedies Through UDRP  Cancellation of a name  Transfer of a name

Legal Proceedings in Relation to UDRP  Policy permits simultaneous pursuit of remedies in court  Can take an unfavorable decision to a court where Registrar or Respondent resides (although a losing Respondent must do so within 10 days) Respondent’s site of residence is presumed to be the location listed in the WHOIS lookup database

Dispute Resolution Provider Choices Prof. Geist, Univ. of Ottawa studied results:  Complainants won 82.2% when before WIPO  Complainants won 82.9% before NAF  Complainants won only 63.4% of time before eResolution (now out of business)  Complainants won 83% of cases before single member panels, but only 58% of cases before three member panels

Anticybersquatting Consumer Protection Act (ACPA)  15 U.S.C. 1125(d) & 1129  Plaintiff must show bad faith on part of registrant  Permits in rem actions against the name itself  Remedies may include cancellation, transfer, actual damages, statutory damages of $1,000 to $100,000 per name, and in exceptional cases, attorney’s fees are possible.

ACPA Bad Faith Considerations  What intellectual property rights are involved  Whether the name is a person’s legal or commonly used name  Whether the respondent used the name in connection with goods or services offered before the dispute  Whether there is non-commercial or fair use of the mark by Registrant

Bad Faith Considerations (cont’d.)  Whether the Registrant intended to divert or confuse consumers of Plaintiff’s products  Whether Registrant provided false or misleading registration information  Whether Registrant tried to sell name to Plaintiff  Whether the Registrant lacks a legitimate explanation or use for a particular name

Trademark Infringement  Traditional trademark actions are available to recover domain names  Anti-dilution trademark actions are available to recover domain names, even where there is no bad faith, if the Plaintiff’s mark is famous

Anti-dilution Famous Mark Test  Degree of distinctiveness of mark  Duration and extent of mark’s use  Duration and extent of advertising of mark  Geographical breadth of mark’s use  Channels through which mark is used  Recognition of mark in channels used by Plaintiff and by Respondent

Famous Mark Test (cont’d.)  Nature and extent of use of similar marks by third parties  Whether the mark was registered under previous trademark acts or on the principal register

Problems With Anti-Dilution  Noncommercial use of a mark  News reporting and news commentary

State Unfair Competition Law  Ind. Code recognizes common law trademark protection  Plaintiff must show that deception is the probable consequence of the domain name  May receive injunction prohibiting Respondent’s use of mark  Such injunction can support a UDRP complaint for transfer of the name

Selected Cases  Coca-Cola v. Svensson Panel found Respondent to have legitimate use of sprite.nu, despite attempt to sell to Coke  Sallen v. Corinthians Ct. found ACPA provided cause of action to prove non-violation of ACPA, and recovery of wrongfully transferred name  People for Ethical Treatment of Animals v. Doughney

Selected Cases (cont’d.)  Shields v. Zuccarini Misspellings of mark are confusingly similar under ACPA  Hasbro v. Clue Computing Use of clue.com did not dilute Hasbro’s mark