Conflicts over Domain Names Program of Instruction for Lawyers William Fisher June 25, 2004 © 2004. All rights reserved Types of Domain-Name Disputes Cybersquatting Joshua Quittner registers “mcdonalds.com” Typosquatting Misrosoft.com Conflicts between Competitors Kaplan.com Conflicts between Noncompetitors Howard Johnson registers “howardjohnson.com” Retailers weber.com Retailers weber.com webergrills.com Commerical v. Noncommerical Users (Reverse Domain Name Hijacking) pokey.org Prima Toy Company (December 2, 2000) Fan Sites Parody and Commentary http://www.introducingmonday.com http://www.introducingmonday.co.uk/ http://www.introducingmonday.com http://www.introducingmonday.co.uk/ Initial Legal Responses Types of Trademark Infringement Types of Trademark Infringement Identical Marks on Competitive Products Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Axes and Factors in Assessing Likelihood of Confusion Similarity of Appearance SQUIRT / QUIRST (for soft drinks) Similarity of Sound Huggies / Dougies (for disposable diapers) Similarity of Meaning Apple / Pineapple (for computer products) Good Morning / Buenos Dias (for bath products) Marketing Environment Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products Polaroid/McGregor Factors for Noncompetitive Products Ultimate issue: likelihood of confusion Strength of the plaintiff’s mark Similarity of the two marks Proximity of the two products Quality of the defendant’s product Likelihood of the plaintiff “bridging the gap” Actual confusion Defendant’s “good faith” Sophistication of buyers of the products General equities Varieties of “Consumer Confusion” Source Endorsement (e.g., Rolls Royce Radio Tubes) Post-sale (e.g., Ferrari) Initial Interest (e.g., Brookfield) Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products Dilution Forms of Dilution (Clinique 1996) “Dilution by blurring occurs where ‘the defendant uses or modifies the plaintiff's trademark to identify the defendant's goods and services, raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product.’ Like tarnishment, blurring is concerned with an injury to the mark's selling power and ‘need not involve any confusion as to source or sponsorship.’” “Tarnishment may occur when the plaintiff's mark is used by the defendant in association with unwholesome or shoddy goods or services. Tarnishment may also result from an association with obscenity, or sexual or illegal activity, but is not limited to seamy conduct.” International Development of Dilution Doctrine Originates in Germany, (Odol 1925) Gradually expands in United States Schecter, 1927 State anti-dilution statutes, 1947-present Federal Trademark Dilution Act, 1996 Slow introduction elsewhere Benelux countries, Germany adopt expansive doctrines EC Harmonization Directive (1988) and EC Community TM Regulation (1993) are ambiguous • Benelux countries and France favor generous reading • England and ECJ resist Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products Dilution Applications of TM Infringement Doctrine to Domain Names Amadeus Marketing (Italy 1997): TM owner must prove operation of similar DN is directly confusing or damaging to TM British Telecommunications (UK 1998): A DN incorporating a TM “shows an inherent tendency to confuse” consumers Champagne Céréales (France 1998): A DN mimicking an unregistered TM creates excessive likelihood of confusion Braunschweig (Germany 1997): DN incorporating name of a city creates likelihood of confusion Problems 1) “Use in Commerce”? 2) Consumer Confusion? 3) Federal Dilution Doctrine only applies to “famous” marks 4) Judicial proceedings are slow and expensive The New Legal Regime Dispute-Resolution Systems 1) UDRP 2) Anticybersquatting Consumer Protection Act UDRP governs “Abusive Registrations and Use” of DNs the domain name is identical or misleadingly similar to a trademark in which someone else has rights. the holder of the domain name has no rights or legitimate interests in that domain name the domain name has been registered and is used in bad faith. http://www.icann.org/dndr/udrp/uniform-rules.htm UDRP governs “Abusive Registrations and Use” of DNs the domain name is identical or misleadingly similar to a trademark in which someone else has rights. the holder of the domain name has no rights or legitimate interests in that domain name the domain name has been registered and is used in bad faith. http://www.icann.org/dndr/udrp/uniform-rules.htm Examples of “Bad Faith” Circumstances indicate that defendant’s main purpose was to sell DN to TM owner for more than the direct costs of registration History of registering DNs to prevent TM owners from registering Registering a DN in order to disrupt the business of a competitor attempting to divert Internet users to Defendant’s site for commercial gain by creating confusion concerning source or sponsorship Examples of “Legitimate Interests” Pre-dispute use or demonstrable preparations to use the DN in bona fide offering of goods or services Defendant was commonly known by the name Legitimate, noncommercial or fair use of the DN without intent to misleadingly divert or tarnish Coverage All gTLDs Aprx. 1/3 of ccTLDs Procedure Complainant picks forum Respondents have 20 days to respond No additional submissions typically are permitted Decision within 14 days of appointment of panelist(s) Respondents default 50% of the time Remedies: Cancellation of the registration Transfer of the DN to the complainant Losing respondent can postpone remedy by filing suit within 20 days UDRP Usage As of May, 2004, 9377 proceedings Roughly 15,000 domain names (out of a total of aprx. 60,000,000 DNs of all sorts) Rates of filing are declining gradually Most of the DNs challenged under UDRP were registered during the boom of early 2000 WIPO is the most popular provider, and becoming more so – aprx. 70% of the cases Plaintiffs win 71% of the time See Convergence Center Database: http://dcc.syr.edu/markle/mhome.htm; Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf The End of the “Land Rush”? From: http://dcc.syr.edu/markle/markle-report-final.pdf The End of the “Land Rush”? From: http://dcc.syr.edu/markle/markle-report-final.pdf But registration of country-code TLDs continue to rise Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf UDRP Usage As of May, 2004, 9377 proceedings Roughly 15,000 domain names (out of a total of aprx. 60,000,000 DNs of all sorts) Rates of filing are declining gradually Most of the DNs challenged under UDRP were registered during the boom of early 2000 WIPO is the most popular provider, and becoming more so – aprx. 70% of the cases Plaintiffs win 71% of the time See Convergence Center Database: http://dcc.syr.edu/markle/mhome.htm; Mueller Report (6/24/2002): http://dcc.syr.edu/markle/markle-report-final.pdf Examples of “Bad Faith” Circumstances indicate that defendant’s main purpose was to sell DN to TM owner for more than the direct costs of registration History of registering DNs to prevent TM owners from registering Registering a DN in order to disrupt the business of a competitor attempting to divert Internet users to Defendant’s site for commercial gain by creating confusion concerning source or sponsorship Source: http://udrp.law.cornell.edu/udrp/stats.php Examples of “Bad Faith” Circumstances indicate that defendant’s main 30% purpose was to sell DN to TM owner for more than the direct costs of registration History of registering DNs to prevent TM owners 14% from registering Registering a DN in order to disrupt the business 9% of a competitor attempting to divert Internet users to Defendant’s 39% site for commercial gain by creating confusion concerning source or sponsorship 15% Other forms of bad faith 14% No bad faith Dispute-Resolution Systems 1) UDRP 2) Anticybersquatting Consumer Protection Act Dispute-Resolution Systems 1) UDRP 2) Anticybersquatting Consumer Protection Act (UDRP on Steroids) ACPA, 15 U.S.C. sec. 1125 (d) TM owners have civil cause of action against defendants who, with bad faith intent to profit from the goodwill of a TM, register or use a DN that is: identical or confusingly similar to a distinctive mark, or dilutive of a famous mark ACPA, 15 U.S.C. sec. 1125 (d) TM owners have civil cause of action against defendants who, with bad faith intent to profit from the goodwill of a TM, register or use a DN that is: identical or confusingly similar to a distinctive mark, or dilutive of a famous mark ACPA Factors 1. Does have IP rights in the DN? 2. Is the DN ’s legal or customary name? 3. ’s prior use of DN to offer goods/services 4. ’s prior noncommercial or fair use of DN 5. ‘s intent to divert business from and harm good will by causing likelihood of confusion 6. ‘s offer to sell DN – or habit of doing so 7. Did provide false contact information 8. Did acquire multiple DNs similar to TMs 9. How distinctive or famous is ’s mark? Safe Harbor: “Bad faith intent” shall not be found where the defendant “believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful” Remedies Injunctive Relief (retroactive) Damages (nonretroactive) Statutory Damages (nonretroactive) $1000 - $100,000 per domain name In rem jurisdiction Registrars may sua sponte refuse to register marks that they deem to violate the rules Application of ACPA People for Ethical Treatment of Animals v. Doughney (EDVa 2000): peta.org used for parody site: “People eating tasty animals” Links to leather-goods and meat websites ACPA Factors 1. Does have IP rights in the DN? 2. Is the DN ’s legal or customary name? 3. ’s prior use of DN to offer goods/services 4. ’s prior noncommercial or fair use of DN 5. ‘s intent to divert business from and harm good will by causing likelihood of confusion 6. ‘s offer to sell DN – or habit of doing so 7. Did provide false contact information 8. Did acquire multiple DNs similar to TMs 9. How distinctive or famous is ’s mark? PETA 1. Does have IP rights in the DN? 2. Is the DN ’s legal or customary name? 3. ’s prior use of DN to offer goods/services 4. ’s prior noncommercial or fair use of DN 5. ‘s intent to divert business from and harm good will by causing likelihood of confusion 6. ‘s offer to sell DN – or habit of doing so 7. Did provide false contact information 8. Did acquire multiple DNs similar to TMs 9. How distinctive or famous is ’s mark? PETA 1. Does have IP rights in the DN? 2. Is the DN ’s legal or customary name? 3. ’s prior use of DN to offer goods/services ? 4. ’s prior noncommercial or fair use of DN ? 5. ‘s intent to divert business from and harm good will by causing likelihood of confusion 6. ‘s offer to sell DN – or habit of doing so ? 7. Did provide false contact information ? 8. Did acquire multiple DNs similar to TMs 9. How distinctive or famous is ’s mark? Applications of ACPA People for Ethical Treatment of Animals v. Doughney (EDVa 2000): peta.org used for parody site: “People eating tasty animals” Links to leather-goods and meat websites Mattel v. Schiff (SDNY 2000): barbiesplaypen.com for commercial porn club ACPA Factors 1. Does have IP rights in the DN? 2. Is the DN ’s legal or customary name? 3. ’s prior use of DN to offer goods/services 4. ’s prior noncommercial or fair use of DN 5. ‘s intent to divert business from and harm good will by causing likelihood of confusion 6. ‘s offer to sell DN – or habit of doing so 7. Did provide false contact information 8. Did acquire multiple DNs similar to TMs 9. How distinctive or famous is ’s mark? Mattel 1. Does have IP rights in the DN? 2. Is the DN ’s legal or customary name? 3. ’s prior use of DN to offer goods/services 4. ’s prior noncommercial or fair use of DN 5. ‘s intent to divert business from and harm good will by causing likelihood of confusion 6. ‘s offer to sell DN – or habit of doing so 7. Did provide false contact information 8. Did acquire multiple DNs similar to TMs 9. How distinctive or famous is ’s mark? Doctrines Doctrines UDRP ACPA Trademark Infringement -Likelihood of Confusion Trademark Dilution Unfair Competition Doctrines UDRP ACPA Trademark Infringement -Likelihood of Confusion Trademark Dilution Unfair Competition Types of Conflict Cybersquatting Typosquatting Competing Use Noncompeting Use Reverse Domain Name Hijacking Retailers Fan Sites Parody and Commentary Doctrines UDRP ACPA Trademark Infringement -Likelihood of Confusion Trademark Dilution Unfair Competition } Types of Conflict Cybersquatting Typosquatting Competing Use Noncompeting Use Reverse Domain Name Hijacking Retailers Fan Sites Parody and Commentary { Doctrines UDRP ACPA Trademark Infringement -Likelihood of Confusion Trademark Dilution Unfair Competition } Types of Conflict Cybersquatting Typosquatting Competing Use Noncompeting Use Reverse Domain Name Hijacking Retailers Fan Sites Parody and Commentary { Doctrines UDRP ACPA Trademark Infringement -Likelihood of Confusion Trademark Dilution Unfair Competition } Types of Conflict Cybersquatting Typosquatting Competing Use Noncompeting Use Reverse Domain Name Hijacking Retailers Fan Sites Parody and Commentary { Defects of UDRP Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy General Problems Unnecessarily complex Unpredictable outcomes Trademark owners have too much power; domain-name owners too little Excessive Impediments to Freedom of Speech Alternatives to the Current Legal Regime Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Registrars pick providers (Mueller) Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Registrars pick providers (Mueller) Establish internal appellate process (loser pays) Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Registrars pick providers (Mueller) Establish internal appellate process (loser pays) Add discovery system, or Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Registrars pick providers (Mueller) Establish internal appellate process (loser pays) Add discovery system, or Reduce jurisdiction Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Registrars pick providers (Mueller) Establish internal appellate process (loser pays) Add discovery system, or Reduce jurisdiction Improved UDRP Defects: Complainant picks forum No appellate process Simplified procedures ill suited to complex cases Arbitrators reach cases not intended by the policy Innocent defaults Possible Remedies Disputes assigned randomly to licensed providers, or Registrars pick providers (Mueller) Establish internal appellate process (loser pays) Add discovery system, or Reduce jurisdiction $1000 bond (Mueller) Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Major gTLDs .com and .net: 30,400,000 More gTLDs .aero .biz .coop .info .museum .name .pro Aviation Businesses Cooperatives Unrestricted Museums Personal names Professionals Operator SITA NeuLevel dotCoop Afilias MuseDoma Global Name Registry RegistryPro Reducing Scarcity? See Zittrain & Edelman at http://cyber.law.harvard.edu/tlds/001/ Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Trademark Doctrine: No protection for generic marks Inherently generic marks E.g., Alaska Salmon; Convenience Store Marks that become generic through use E.g., thermos, kleenex; lite beer Basis of the rule: excessive threat to competition Domain-Name practice currently deviates from this rule Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names E.g., crew.com Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names E.g., crew.com Generic domain names are protected (by law) against “confusingly similar” domain names E.g., E-cards.com vs. Ecards.com Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names E.g., crew.com Generic domain names are protected (by law) against “confusingly similar” domain names E.g., E-cards.com vs. Ecards.com Generic domain names are protected (by code) against identical domain names Only one firm can use sex.com Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names E.g., crew.com Generic domain names are protected (by law) against “confusingly similar” domain names E.g., E-cards.com vs. Ecards.com Generic domain names are protected (by code) against identical domain names Only one firm can use sex.com Reverse this rule Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names E.g., crew.com Generic domain names are protected (by law) against “confusingly similar” domain names E.g., E-cards.com vs. Ecards.com Generic domain names are protected (by code) against identical domain names Only one firm can use sex.com Reverse this rule Reverse this rule Domain-Name practice currently deviates from this rule Trademark owners are sometimes able to control generic domain names E.g., crew.com Generic domain names are protected (by law) against “confusingly similar” domain names E.g., E-cards.com vs. Ecards.com Generic domain names are protected (by code) against identical domain names Only one firm can use sex.com Reverse this rule Reverse this rule Either: (a) Refuse registration, or (b) Mandatory index page (cf. Mattel v. Hasbro) Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Increased Latitude for Criticism and Parody Permit registration of all DNs whose critical purpose is apparent on their face E.g., verizonsucks.com; yahooka.com Doctrinal basis: not “confusingly similar” Recognize criticism as a legitimate use under UDRP, ACPA, and dilution doctrine E.g., PETA case and Jews for Jesus case would be decided differently Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Return to first-come, first-served Analogy to buying up rights to newly discovered valuable resource E.g., Edison and bamboo Rely on the market to get DNs into the hands of firms best able to use them Limit relief to the conduct of a website in a fashion likely to cause consumer confusion Cf. Amadeus Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Repudiate Domain Names DNs are not essential to navigation of the Internet Dispense with the system in favor of IP Addresses Consumers will rely on search engines, links, and bookmarks Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Domain Names Atrophy Value of domain names may diminish naturally as search engines become more powerful and ubiquitous Alternatives 1) Improved UDRP 2) More GTLDs 3) Eliminate protection for generic domain names 4) Increased latitude for criticism and parody 5) Return to first-come, first-served 6) Repudiate domain names altogether 7) Domain names naturally atrophy Who Won? Who Should be Awarded These DNs? Registrant Complainant Webergrill.com BBQ Pit Weber Crew.com Nat Cohen J.Crew Peta.com People Eating Tasty Animals People for the Ethical Treatment of Animals Kumbhmela.com Jaga Government of India Southafrica.com Virtual Government of Countries, Inc. South Africa BruceSpringsteen.com Jeff Burgar Bruce Springsteen Verizonreallysucks.com 2600 Magazine Verizon IntroducingMonday.co.uk B3TA Price Waterhouse Cooper Consulting 3rd party Actual Winners Registrant Complainant Webergrill.com BBQ Pit Weber Crew.com Nat Cohen J.Crew Peta.com People Eating Tasty Animals People for the Ethical Treatment of Animals Kumbhmela.com Jaga Government of India Southafrica.com Virtual Government of Countries, Inc. South Africa BruceSpringsteen.com Jeff Burgar Verizonreallysucks.com 2600 Magazin Verizon IntroducingMonday.co.uk B3TA Bruce Springsteen Price Waterhouse Cooper Consulting 3rd party Typical Winners in Cases of this Sort Registrant Complainant Webergrill.com BBQ Pit Weber Crew.com Nat Cohen J.Crew Peta.com People Eating Tasty Animals People for the Ethical Treatment of Animals Kumbhmela.com Jaga Government of India Southafrica.com Virtual Countries Government of South Africa BruceSpringsteen.com Jeff Burgar Bruce Springsteen Verizonreallysucks.com 2600 Magazine Verizon IntroducingMonday.co.uk B3TA Price Waterhouse Cooper Consulting 3rd party