International Intellectual Property Profs. Atik and Manheim Fall, 2006 Cybersquatting [slides by David Steele]

Fall, 2006Int'l IP2 Cybersquatting  Federal cause of action  State cause of action  Cal Bus & Prof. Code § 17525(a)  It is unlawful for a person, with a bad faith intent to register, traffic in, or use a domain name, that is identical or confusingly similar to the personal name of another living person or deceased personality, without regard to the goods or services of the parties.

Fall, 2006Int'l IP3 Federal cause of action  Anticybersquatting Consumer Protection Act  Also known as the ACPA  15 U.S.C. 1125(d) 15 U.S.C. 1125(d)  §43(d) of the Lanham Act

Fall, 2006Int'l IP4 15 U.S.C. 1125(d) - Cyberpiracy  15 U.S.C. 1125(d)(1)(A)  provides a civil action by the owner of a mark  any mark protected under Lanham act  without regard to the goods or services of the parties, that person

Fall, 2006Int'l IP5 15 U.S.C. 1125(d)(1)(A)  bad faith intent to profit from that mark; and  registers, traffics in, or uses a domain name that--  identical or confusingly similar to a distinctive mark;  identical or confusingly similar to a famous mark;  dilutive of a famous mark

Fall, 2006Int'l IP6 15 U.S.C. 1125(d)(1)(B)  determining “a bad faith intent to profit”  consider factors (but not limited to)  Defensive factors  registrant’s rights in the domain name;  legal name or commonly known by name;  bona fide offering of any goods or services;  noncommercial or fair use of the mark

Fall, 2006Int'l IP7 15 U.S.C. 1125(d)(1)(B)  determining “a bad faith intent to profit”  consider factors (but not limited to)  Offensive factors  registrant’s intent to divert consumers to its site for commercial gain or to tarnish or disparage the mark  registrant’s offer to sell domain name  registrant’s uses fake contact information when registering  registrant’s registration of multiple domain names that are TMs  fame of mark within the meaning of subsection (c)(1) of section 43.

Fall, 2006Int'l IP8 Remedies II  15 USC 1117(d)  statutory damages $1,000 - $100,000 per domain name for violation of 1125(d)(1)  the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits,  as the court considers just

Fall, 2006Int'l IP9 Retroactive  injunctive relief also ok  damages ok if  registered after act; or  renewed after act; or  used after act.

Fall, 2006Int'l IP10 15 U.S.C. 1125(d)(2)(D)  Remedy for in rem action - injunction only  (D)(i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark

Fall, 2006Int'l IP11 15 U.S.C. 1125(d)(2)(D)  Immunity for registrars and registries  (D)(ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.

Fall, 2006Int'l IP12 In Rem actions in non-ACPA cases?  What if the domain name (the defendant) violates via dilution or infringement? Can a plaintiff sue the domain name in rem?  Split in circuits  4 th Cir. Says sure…

Fall, 2006Int'l IP13 Safe Harbor  15 U.S.C. 1125(d)(1)(B)  (ii) Bad faith intent shall not be found if court determines def. believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.  Def. Must BOTH  believe; and  have reasonable grounds to believe

Fall, 2006Int'l IP14 Understanding ICANN The Internet Corporation for Assigned Names and Numbers (ICANN) is a technical coordination body for the Internet. Created in October 1998 by a broad coalition of the Internet's business, technical, academic, and user communities, ICANN is assuming responsibility for a set of technical functions previously performed under U.S. government contract by IANA and other groups.ICANNIANA

Fall, 2006Int'l IP15 Understanding ICANN  Specifically, ICANN coordinates the assignment of the following identifiers that must be globally unique for the Internet to function:  Internet domain names  IP address numbers  protocol parameter and port numbers

Fall, 2006Int'l IP16 ICANN and Domain Name Disputes  one of the key functions of ICANN is to create and administrate disputes over domain names  one of the factions at the negotiating table was the TM lobby  the TM lobby pressured US Gov., who pressured ICANN  ICANN enacts the UDRPUDRP

Fall, 2006Int'l IP17 Uniform Dispute Resolution Policy  application of policy by contract  ICANN - Registrar - Registrant  policy issue - why do this at all?

Fall, 2006Int'l IP18 UDRP  Procedural issues  Dispute Providers  WIPO  National Arbitration Forum  CPR Institute for Dispute Resolution  # of panel member - one or three members  payment of fees  WIPO - $1,500; NAF - $1,150  Language of proceeding - same as language of registration agreement  Time deadline

Fall, 2006Int'l IP19 URDP - Prima Facie Elements  Complainant has burden to prove all of the following three elements:  The D.N. is identical or confusingly similar to Complainant’s mark;  Respondent has no rights or legitimate interest in the D.N.; and  Respondent registered and is using D.N. in bad faith.

Fall, 2006Int'l IP20 UDRP - Prong 1  The D.N. is identical or confusingly similar to Complainant’s mark;  Same language as ACPA  NOT likelihood of confusion test  ignore TLD string

Fall, 2006Int'l IP21 UDRP - Prong 2  Respondent Has No Rights or Legitimate Interest in the Domain Name  three expressly enumerated defenses, more available  before notice of dispute, use or preparation to use in connection with a bona fide offering of goods or services  N.B. unlawful is not bona  commonly known by the domain name  legitimate noncommercial or fair use of domain name without intent to misleading divert consumers or tarnish mark

Fall, 2006Int'l IP22 UDRP - Prong 3  Registration and Use In Bad Faith  not really both…  four expressly enumerated circumstances of bad faith, more available  1) acquired primarily to sell to Complainant / mark owner for $$  2) to prevent mark owner from using it - must also show pattern

Fall, 2006Int'l IP23 UDRP - Prong 3  four expressly enumerated circumstances of bad faith, more available  3) primarily for the purpose of disrupting the business of a competitor  4) intentionally attempted to attract, for commercial gain, Internet users to your web site by creating a likelihood of confusion with the complainant's mark

Fall, 2006Int'l IP24 Implementing UDRP decisions  time line  10 business days for registrant to file suit  n.b. suit should be filed in selected mutual jdx  but what if it’s not?? See ACPA 15 U.S.C (d)(2)(D)(i)(II) cited above  after 10 days, complainant sends registrar new whois details  registrar implements decision  what if registrar doesn’t?  what if registrar is told by local court not to?

Fall, 2006Int'l IP25 Appeals of UDRP  about the Federal Arbitration Act  promotes arbitration  promotes contracts  standard of review