Trademarks IV Domain Names & Trademarks

1. Trademarks IVDomain Names & Trademarks Class 23 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

2. Today’s Agenda • Domain Names & Trademarks • The ACPA • The UDRP • Marks & ‘Net Governance

3. Domain Names & Trademarks • Quick overview of Domain Names • Domain Names are an overlay to the internet network • They correspond to an “IP Address” www.law.upenn.edu = 130.91.144.50 • They are not necessary to use the ‘net; typing the ip address works just fine • When you type a domain name, your computer seeks to ‘resolve’ the name by querying ‘DNS servers’

6. Domain Names Disputes • Why are there disputes over domain names? • Lack of namespace? (more than 96-characters allowed) • Inability to find desired web sites? • Inability to determine desired from undesired web sites? • Desire for short, easily-remembered name (for marketing purposes)? • Control over references to your goods/services? • What is cybersquatting? Should there be anything wrong with it?

7. Domain Names Disputes • Three Basic Approaches • Federal trademark lawsuit (typically dilution claim) • Con: Required a series of awkward ‘stretches’ • The ACPA (15 USC § 1125) • Allows claims for ‘bad faith registration’ • Cons: • Jurisdictional problems • Federal litigation is expensive, time consuming • Federal courts are sensitive to 1st Amendment issues • The UDRP • Allows transfer when ‘bad faith’ exists • Cheaper and quicker than ACPA • No jurisdictional problems

8. The ACPA • Shields v Zuccarini (3rd Cir. 2001) • What is it that Zuccarini did? (Is that really so bad?) • What happened when someone visited Z’s sites? • What are the requirements for an ACPA claim? • Do you agree with the court that joecartoon.com is famous? • Are misspellings ‘identical or confusingly similar’? • Why is Z found to be acting in ‘bad faith’? Do you agree? (Should a commercially-motivated use of the domain name really be an element of bad faith?)

9. The ACPA • PETA v Doughney (4th Cir. 2001) • Note the peta.org tagline: “A resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research (and more!).” • How did Doughney act in ‘bad faith’? • Any practice tips (both for trademark holders and domain name holders) here?

10. The UDRP • How does the UDRP become effective against all domain names? • Overview of the UDRP process: • Trademark owner files a ‘complaint’ with an approved dispute resolution provider, alleging ‘bad faith’ in registering the mark • The respondent has a short period of time to respond (a majority do not) • One (or sometimes three) ‘panelists; decide the case on the basis of the submissions

11. The UDRP • Elements of a UDRP claim: • Identical/confusingly similarity between mark and domain name • No ‘legitimate rights’ in the domain name • Registration and use in bad faith • Bad faith: • Primary purpose of reselling domain name to the complainant or a competitor of complainant • Registration to prevent mark-holder from using the name • Registration to disrupt the business of a competitor • Attempts to attract ‘net users, for commercial gain, by creating a likelihood of confusion Legitimate rights • Use of domain name in bona fide business • You have been known by the domain name • Legitimate noncommercial fair use

12. Marks and ‘Net Governance • How does the dispute over trademarks and domain names implicate ‘net governance? • Are there other ways to deal with the issue, aside from establishing a complex dispute-resolution process? • Domain name inalienability • Repetitive domain name auctions • Massive reallocation of domain names • Domain name ‘reservation’ processes • Do nothing

13. Next Class • Intellectual Property & the Constitution I • Structural Limitations