Resolving Domain Name Disputes

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

2. 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

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

4. 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

5. 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

6. 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

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

8. 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

9. 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

10. Procedural Twist • The Complainant serves the chosen dispute resolution provider • The dispute resolution provider serves the Respondent

11. 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

12. 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

13. Remedies Through UDRP • Cancellation of a name • Transfer of a name

14. 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

15. 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

16. 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.

17. 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

18. 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

19. 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

20. 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

21. 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

22. Problems With Anti-Dilution • Noncommercial use of a mark • News reporting and news commentary

23. State Unfair Competition Law • Ind. Code 24-2-1-15 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

24. 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

25. 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