Munich Intellectual Property Law Center (MIPLC) Master Thesis (2011/12)

What is in a name? A Comparative Look at the ICANN Uniform Domain Name Dispute Resolution Policy and the United States Anti-Cybersquatting Consumer Protection Act

Terrence Fernbach
MIPLC Class of 2012

Suggested Citation:
Fernbach, Terrence; What is in a name? A Comparative Look at the ICANN Uniform Domain Name Dispute Resolution Policy and the United States Anti-Cybersquatting Consumer Protection Act MIPLC Master Thesis (2011/12) http://www.miplc.de/research/ Available at SSRN: http://ssrn.com/abstract=2226375

Electronic copy available at: http://ssrn.com/abstract=2226375

II

Table of Contents
Table of ContentsII Abstract..III Acronyms and AbbreviationsIV I. Introduction 1 A. Scenarios 2 1. Same name, different game 2 2. Classic cybersquatter case 3 3. Protest site (a ____sucks.com site) 3 B. The Domain Name System 4 II. ICANNs Uniform Domain Name Dispute Resolution Policy 6 A. History 6 B. UDRP Basics 7 C. UDRP Domain Name Infringement Test 8 D. UDRP Arbitration Procedures 9 E. Advantages of the UDRP 12 F. Disadvantages of the UDRP 14 III. The U.S. Anti-Cybersquatting Consumer Protection Act 17 A. History- the Federal Trademark Dilution Act 17 B. Cause of Action 19 1. Basics 19 2. The Bad Faith Requirement 19 C. Remedies under the ACPA for Cybersquatting 21 D. In Rem Jurisdictional Provisions of the ACPA 21 E. Safe Harbors under the ACPA 22 F. Advantages of the ACPA 23 G. Disadvantages of the ACPA 24 IV. Litigating the Scenarios 26 A. Scenario 1: www.tomcruise.com 26 1. UDRP Proceeding 26 2. ACPA Proceeding 29 B. Scenario 2: www.nfldraft.com 32 1. UDRP Proceeding 32 2. ACPA Proceeding 34 C. Scenario 3: www.proctorandgamblesucks.com 37 1. UDRP Proceeding 37 2. ACPA Proceeding 40 V. Conclusion 44 List of Works Cited 46

Electronic copy available at: http://ssrn.com/abstract=2226375

III

Abstract
Since the establishment and rise of the Internet, there have been situations where others have tried to capitalize on the unique nature of domain names by registering domain names of popular trademarks and/or individuals names, and then turning around and selling these domain names to the owners of the trademark or to the individual. This action, known as cybersquatting, has been the reason for the enactment of multiple dispute resolution systems by both governments and private institutions. Further, the amount of cybersquatting cases has increased over the years, with the World Intellectual Property Organization reporting increases in cybersquatting cases over the past few years. This thesis is designed to be more of a practical guide for an American attorney who is faced with domain name dispute case. As a result, this thesis will focus on the International Corporation for Assigned Names and Numbers (ICANN) Dispute Resolution Policy, and the AntiCybersquatting Consumer Protection Act (ACPA). This thesis will provide three different hypothetical scenarios that may arise in domain name disputes: where two parties have the same name, or where an individual in engaging in a form of cybersquatting, or where a group has created a website for the purposes of criticizing a corporation. This thesis will also highlight the advantages and disadvantages of the ICANN procedures as laid out in the Uniform Domain Name Dispute Resolution Policy (UDRP) and the procedures available under United States federal law as laid out in the ACPA, and discuss legal strategies and probable outcomes for the three different hypothetical scenarios. Finally, this thesis will conclude that while ICANNs Dispute Resolution Policy has some disadvantages when compared to the ACPA, it is the better dispute resolution option to use for most cybersquatting activities due to its relative speed, efficiency and lower cost, but the Lanham Act provisions as outlined by the ACPA are better suited for those cases where the client wishes for more remedies than just the transfer or the cancellation of the disputed domain name.

IV

Acronyms and Abbreviations

ACPA = Anti-Cybersquatting Consumer Protection Act ADNDRC = Asian Domain Name Dispute Resolution Centre Art. = Article CAC = Czech Arbitration Court ccTLD = Country code top-level domain name EURid = European Registry for Internet Domains FTDA = Federal Trademark Dilution Act gTLD = Generic top-level domain name ICANN = International Corporation for Assigned Names and Numbers Inc. = Incorporated LLC = Limited Liability Company MB = megabytes NAF = National Arbitration Forum NFL = National Football League NSI = Network Solutions, Inc. P&G = Proctor & Gamble, Inc. TC Graphics = Tom Cruise Graphics UDRP = Uniform Domain Name Dispute Resolution Policy U.S. = United States WIPO = World Intellectual Property Organization

I.

Introduction
Imagine you are sitting in your office one day and you get a

telephone call from a potential new client. This individual is the owner of a trademark, who, while doing an internet search, has discovered that his trademark has already been made into a domain name by another party. Frustrated, this potential client wants to know if there are any options available in acquiring the claimed domain name. But how to go about advising this potential client in proceeding with a case, and advising on which dispute resolution system to use, depends on the particular facts of the case. This thesis will present the options available in the United States in pursuing a domain name dispute. Since the establishment and rise of the Internet, there have been situations where others have tried to capitalize on the unique nature of domain names by registering domain names of popular trademarks and/or individuals names, and then turning around and selling these domain names to the owners of the trademark or to the individual. This action, known as cybersquatting, has been the reason for the enactment of multiple dispute resolution systems by both governments and private institutions. Further, the amount of cybersquatting cases has increased over the years, with the World Intellectual Property Organization reporting increases in cybersquatting cases over the past few years.1 This thesis is designed to be more of a practical guide for an American attorney who is faced with domain name dispute case. As a result, this thesis will focus on the International Corporation for Assigned Names and Numbers (ICANN) Dispute Resolution Policy, and the United States Anti-Cybersquatting Consumer Protection Act (ACPA), and will not discuss other domain name dispute resolution systems that are also currently in use.2 This thesis will provide three different hypothetical scenarios that may arise
1

See, New, William, WIPO says Cybersquatting Filings Sharply Up, Watches ICANNs Domain Name Expansion, Intellectual Property Watch (31.March.2011). See also, Estavillo, Maricel, Cybersquatting Cases Reached New Record in 2011, WIPO Reports, Intellectual Property Watch (3.April.2012) 2 There are various other domain name dispute resolution systems currently in use. For example, the European Registry for Internet Domains (EURid) maintains a domain name dispute resolution system for the .eu domain name. Nominet, which handles the .uk domain name, does not use the UDRP, opting to use its own policy and procedures instead. Also, the Chinese Domain Name Consortium, according to its constitution, handles domain name disputes within the Peoples Republic of China.

2 in domain name disputes, with one of them being an actual domain name dispute case, examine the International Corporation for Assigned Names and Numbers (ICANN) Dispute Resolution Policy as well as those of ICANNs approved Arbitration Panels,3 and look at the Anti-Cybersquatting Consumer Protection Act (ACPA). 4 This thesis will also highlight the advantages and disadvantages of the ICANN procedures as laid out in the Uniform Domain Name Dispute Resolution Policy (UDRP) and the procedures available under United States federal law as laid out in the ACPA, and discuss legal strategies and probable outcomes for the three different hypothetical scenarios. Finally, this thesis will conclude that while ICANNs Dispute Resolution Policy has some disadvantages when compared to the ACPA, it is the better dispute resolution option to use for most cybersquatting activities due to its relative speed, efficiency and lower cost, but the Lanham Act provisions as outlined by the ACPA are better suited for those cases where the client wishes for more remedies than just the transfer or the cancellation of the disputed domain name.

A.

Scenarios
1. Same name, different game

In 1995, a computer programmer and graphic designer named Tom Cruise registered the domain name www.tomcruise.com. At his website, Mr. Cruise displays information about himself, his professional resume, samples of his computer artwork and contact information about himself for those who wish to employ him as a freelance graphic designer. Also displayed on the home page of his website is a notice stating this is not a website devoted to the actor Tom Cruise, and a link is provided to the web page of the actor Tom Cruises agency, which has a separate section devoted to Tom Cruise. 5 In 2000, the actor Tom Cruise discovered the graphic designers website and decided he wanted to own the website
3

ICANN has approved four arbitration panels to hear cases under the Uniform Domain Name Dispute Resolution Policy. They are the World Intellectual Property Organization, the National Arbitration Forum, the Czech Arbitration Court, and the Asian Domain Name Dispute Resolution Centre. 4 15 USC 1125 (2006), Lanham Act 43(d) 5 This is just for hypothetical purposes only. In actuality, www.TomCruise.com is the official website of Tom Cruise (last visited 13.Aug.2012).

3 www.tomcruise.com. Actor Tom Cruise contacted graphic designer Tom Cruise about acquiring the domain name. Graphic designer Tom Cruise responded to actor Tom Cruise, expressing his desire to keep the domain name. Also, the website www.tomcruise.net and 23 country code Tom Cruise domain names are currently in use, all of which are owned by fans of the actor.6 Classic cybersquatter case7

2.

This scenario involves Lee Schulman, a New York physician who also registers various domain names as an extra source of income.8 One of the various domain names Mr. Schulman has registered is www.nfldraft.com, 9 on which Mr. Schulman has a photograph of a Yorkshire terrier on the main page, with the phrases World of Yorkies and Yorkshire terriers of the World on the top of the main page. The national Football League, after discovering the existence of Mr. Schulmans website, contacted Mr. Schulman, sending a cease and desist letter in March, 2001.10 Mr. Schulman has not contacted the National Football League (NFL) regarding selling the domain name, figuring someone, somewhere would give me something for it11, and also claims the National Football League does not have a trademark right in the phrase nfldraft.

3.

Protest site (a ____sucks.com site)

In this scenario, a group of environmentalists and animal rights activists has chosen to inform the public about the environmental and
6

The author does not know if this is factual. This is being used as part of this fictional scenario. 7 Unlike the other two scenarios in this thesis, this scenario was a real story. Everything listed in this scenario actually happened and with the same parties involved. The information found for this scenario is from an article found in the Chicago Sun-Times. Greg Couch, Draft Day is Going to the Cyberdogs, Chicago Sun-Times, Vol. 54, No. 56, p.148, 11.April.2001. 8 Mr. Schulman stated he also owned the domain names www.buyinsurance.com, www.viagraonline.com, www.homeownersinsurance.com, and www.hugsandkisses.com, in reference to the Hersheys Kiss chocolate candy. Ibid. 9 First visited on 11.April.2001 and the website was still operating as discussed in the Chicago Sun-Times article. Visited again on 30.April.2001, and the website had been taken down. Last visited on 15.August.2012, and the website is still down. The NFL uses www.nfl.com/draft as the official website of the NFL Draft, which will automatically forward the visitor to the most recent draft year, which now is www.nfl.com/draft/2013. (Last visited on 15.August.2012) 10 See Couch, at note 7, supra. 11 Ibid.

4 animal abuses done by the Cincinnati, Ohio Corporation Proctor & Gamble. To this end, the protestors have registered the domain names www.proctorandgamblesucks.com, www.proctor-and-gamblesucks.com,

www.proctor_and_gamblesucks.com, and www.pandgsucks.com in an effort to get their information about this corporation out to the public. Of these, the main site is www.proctorandgamblesucks.com, and the other domain names lead the internet surfer to the main website. At this website, visitors are greeted with photographs of animals who have been tested upon by Proctor & Gamble (P&G) scientists, statistics regarding the environmental disasters caused by P&G, and contact information of P&G executives (e-mail addresses and work telephone extensions) so people can voice their disapproval of P&G practices. Finally, the website also contains banners advocating the boycott of all P&G products. Proctor & Gamble discovered this website and has demanded that all of the domain names be turned over to P&G, threatening legal action if the domain names are not turned over.

B.

The Domain Name System

Domain names are unique signifiers, similar to a street address, and

have been called the human-friendly address of a computer. 12 Domain names are only available on a first come-first served basis. Domain names basically consist of two parts: the second-level domain and the top-level domain.13 The second-level domain name is a term or a series of terms, such as facebook or youtube, and the top-level domain, also known as a generic top-level domain (gTLD), is the enterprise identifier, such as .com for commercial or .edu for education.14 All of the gTLDs have a registry that is responsible for maintaining that gTLDs database,15 and each registry has various registrars that register
12

Froomkin, A. Michael, Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 DUKE LAW JOURNAL 17, 38 (2000), citing The Management of Internet Names and Addresses: Intellectual Property Issues Final Report of the WIPO Internet Domain Name Process, World Intellectual Property Organization 13 Interactive Prods. Corp. v. A2Z Mobile Office Solutions, Inc., 326 F.3d 687, 691 (6th Cir. 2003) 14 Ibid. 15 Ballon, Ian C., E-Commerce and Internet Law, 7.02[1] (2d ed. 2011). A complete listing of the registries associated with the individual gTLDs can be found at www.icann.org/en/resources/registries/listing (last visited 15.August.2012)

5 domain names. 16 All that an individual who wishes to register a domain name needs to do is visit a particular registrars website, complete the domain name registration information and pay the registrars fee. The registrant now has a domain name and the registrar collects the registrants information and downloads it into a database. This database is known as the WhoIs record, and it is accessible to the public. The registrars are required by ICANN to maintain various items of information on the WhoIs database, including the registrants name, postal address, e-mail address, telephone number, and the same contact information for the administrative contact for the registrant, along with the creation and expiration dates of the registration. 17 The WhoIs database has been criticized as a violation of privacy rights and as a way to help spammers and stalkers.18 However, the WhoIs database is useful as a way for individuals to find who owns a particular domain name in order for an individual to communicate with a registrant regarding business matters, legal matters or other issues involving the particular website. Due to the first come-first served nature of the domain name registration process, there are times when a trademark owner is unable to register their trademark as a domain name because an individual has already registered it earlier. When this is done for the purposes of profiting off of the domain name, either by selling the domain name to the trademark owner or by gaining from the goodwill established by the trademark owner, this is known as cybersquatting. 19 Since this original definition of cybersquatting, three separate categories have been developed, which are known as the typosquatter, the pseudo-cybersquatter and the cyberpirate. 20 The typosquatter registers common misspellings of trademarks in order to lure web users, who misspell the intended domain name, to their website.21 The pseudo-cybersquatter registers the domain name without a website, does
16 17

Id., at 7.02[1] ICANN Registrar Accreditation Agreement, at 3.3.1 (21.May.2009; updated 2.August.2012) www.icann.org/en/resources/registrars/raa/ra-agreement-21may09-en.htm (last visited on 16.August.2012) 18 Thompson, Nicholas, Masters of the Domain, Foreign Policy, No. 142 (May Jun., 2004), 79-81 19 Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1233 (N.D. Ill. 1996) 20 Efroni, Zohar, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum Shopping?, 26 COLUM. J.L. & ART S 335, 337 (2003) 21 Ibid.

6 nothing with the domain name and does not offer it for sale.22 Finally, the cyberpirate does not offer to sell the domain name, but instead uses the goodwill attached to the trademark to bring web users to their website.23 It is the activities of these various types of cybersquatters that have led to the enactment of the Uniform Domain Name Dispute Resolution Policy and the Anti-Cybersquatting Consumer Protection Act, which shall be discussed in the next section.

II.

ICANNs Uniform Domain Resolution Policy

History

Name

Dispute

A.

The International Corporation for Assigned Names and Numbers (ICANN) enacted their Uniform Domain Name Dispute Resolution (UDRP) on 24.October.1999 as a response to the problems present in the earlier system used by Network Solutions, Inc. (NSI). The NSI policy only permitted the owner of a trademark registration to challenge the domain name. 24 If the domain name involved a registered trademark and if the domain name holder could not show a domain name registration prior to the trademark registration, NSI would place the domain name on hold until a settlement or a court order resolved the matter. 25 The NSI policy had problems for various reasons. First, it did not recognize common law trademark rights, and it did not recognize claims based upon similar but not identical rights, such as intentional misspellings. Second, the NSI policy did not have any enforcement provisions: the matter would have to be resolved outside of the NSI system, thereby needing a court order or a settlement to resolve the dispute. Third, the NSI policy only honored claims based upon trademark registration without regard to the nature of the goods or services involved, thus permitting overreaching by

22 23

Ibid. Ibid. 24 Squyres, Mary, Enforcement of Domain Name Rights through ICANN, The John Marshall Law School Center for Intellectual Property Law 45th Annual Conference on Developments on Intellectual Property Law, 23.Feb.2001, at 4. 25 Ibid.

7 trademark owners. 26 This potential over-reaching could be done in part because the NSI policy did not take into account the intentions of the domain name registrant, who may have had legitimate interests in the domain name but did not have a trademark registration.27 Finally, the best that can be done by the NSI policy would be a slap on the wrists of the cybersquatter, which is not much of a deterrent considering the cost of the litigation that would be needed in order to resolve the matter. Because of these problems, in 1997 President Clinton directed the Secretary of Commerce to privatize the management of the domain name system. 28 Subsequently, ICANN was established in 1998 as a California not-for-profit corporation for the purposes of lessening the burdens of government and promoting the global public interest in the stability of the Internet.29 With the establishment of ICANN, an alternative to traditional infringement or cybersquatting litigation has been made available for trademark holders in acquiring infringing domain names from

cybersquatters. While it can be argued whether the UDRP has become a substitute for traditional litigation,30 the UDRP alternative dispute resolution process has become a leading forum for resolving domain name disputes, with tens of thousands having been initiated, and decided, since 1999.31

B.

UDRP Basics
The ICANN UDRP procedure can be used against any .aero, .asia,

.biz, .cat, .com, .coop, .edu, .gov, .info, .int, .jobs, .mil, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel generic top level domain name (gTLD) registered with an ICANN-accredited registrar and certain country

26 27

Ibid. Greene, Philip J., Questioning Faith An Examination of the Fair Use Defense within Internet Domain Name Disputes, and the Role of Good or Bad Faith, 4 LOY. U. NEW ORLEANS SCH. L. L. & TECH. ANN. 45, 53-54 (2004) 28 Delaney, John F. and Ford, M. Lorrane, The Law of the Internet: A Summary of U.S. Internet Caselaw and Legal Developments, 631 PLI/PAT 31 (2001) 29 Ibid. 30 See generally, Sharrock, Lisa M., The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework, 51 DUKE LAW JOURNAL 817 (2001) 31 For example, at the time of this writing, since 1999, WIPO has handled 24,081 domain name disputes (http://www.wipo.int/amc/en/domains/statistics/cases.jsp), with 43,141 domain names being at issue (http://www.wipo.int/amc/en/domains/statistics/cases.jsp) (last visited on 16.August.2012).

8 code domain name registrars that have voluntarily adopted the policy. 32 Of these, only the .com, .info, .net and .org gTLDs can be registered without restrictions.33 Under the UDRP, anyone who registers, renews or maintains a domain name in one of the approved generic top-level domains (.aero, .asia, .biz, .cat, .com, .coop, .edu, .gov, .info, .int, .jobs, .mil, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel) or an applicable country code top-level domain name with an ICANN-accredited registrar consents to application of the UDRP in domain name disputes. 34 Also, during the registration process, the UDRP states the registrant warrants his statements in the application are complete, the domain name applied for will not infringe on anyone elses rights, the domain name is not being registered for an unlawful purpose and the registrant will not knowingly use the domain name for an unlawful purpose.35 As a result, the UDRP is based entirely on private contract instead of regulations, which allows the complainant to get around a decent number of jurisdictional issues that may arise in the course of litigation.36

C.

UDRP Domain Name Infringement Test

In order to obtain a decision from an UDRP arbitration panel

ordering the transfer of a domain name, the complainant must satisfy the following three elements: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being
32

www.icann.org/en/tlds (last visited on 15.August.2012). Note that ICANN does not list the country code domain name registrars that have adopted the UDRP. The UDRP also applies to fifty-eight country code top level domains (ccTLDs), which can be accessed here: www.wipo.int/amc/en/domains/cctld/ (last visited on 15.August.2012). Interestingly enough, for purposes of this thesis, the country code for the United States, .us, is not one of the ccTLDs listed. Also, .post and .xxx are also listed as other gTLDs at www.icann.org/en/resources/registries/listing (last visited on 15.August.2012). 33 www.icann.org/en/tlds (last visited on 15.August.2012). The .info gTLD is also listed as an unrestricted gTLD at www.icann.org/en/resources/registries/listing (last visited on 15.August.2012) 34 UDRP, at 2 35 Ibid. 36 Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 747 (E.D. Va. 2001) (the UDRP is enforced through contract rather than regulation.). The author would like to point out there are a few jurisdictional issues that may arise within a UDRP arbitration proceeding, such as in cases with multiple parties or in appealed cases. However, these jurisdictional issues are a little outside the scope of this thesis, and could possibly form a thesis on its own.

9 used in bad faith. 37 The UDRP provides a non-exclusive list for both the legitimate interest and bad faith elements. For example, if one (which includes businesses and organizations as well as individuals) is commonly known by the domain name,38 or one is making a legitimate noncommercial use or fair use of the domain name,39 a legitimate interest in the domain name is established. Fair use of a domain name under the UDRP consists of any use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. 40 Also, if one has registered a domain name with the intent to prevent the trademark owner from registering the domain name41 or the individual registered the domain name for the purpose of selling or renting the domain name to the trademark owner,42 bad faith is established under the UDRP. Also, it should be pointed out that while under the UDRPs domain name infringement test the burden of proof lies with the complainant, some arbitration panels have stated that once the complainant has established a prima facie case that the respondent does not have a legitimate interest in the domain name, the burden of proof shifts to the respondent to prove that he does have a legitimate interest in the domain name.43

D.

UDRP Arbitration Procedures44

In regards to disputes resolved under the UDRP, it is important to

note that ICANN is in no way involved in the dispute resolution process; ICANN does not participate in the administration of the dispute in any capacity. 45 Instead, ICANN has appointed four organizations to provide arbitrators for domain name disputes under the UDRP. These organizations
37 38

UDRP, at 4(a)(i)-(iii) Id., at 4(c)(ii) 39 Id., at 4(c)(iii) 40 Ibid. 41 Id., at 4(b)(ii) 42 Id., at 4(b)(i) 43 Do the Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 (2000) 44 The ICANN Domain Name Dispute Resolution Procedure is not really an arbitration in the classic New York Convention sense of the term. For example, parties do not give oral arguments in front of an arbitrator in UDRP proceedings. As a result, the UDRP proceeding is really an administrative procedure. However, the procedure is commonly known as an arbitration, despite the differences between the UDRP and an arbitration proceeding under the New York Convention. For the sake of simplicity, this thesis will refer to the UDRP proceedings as an arbitration throughout. 45 UDRP, at 4(h)

10 are the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), the Czech Arbitration Court (CAC), and the Asian Domain Name Dispute Resolution Centre (ADNDRC). Each of these organizations has their own set of supplemental rules regarding procedural matters in domain name disputes, such as fees, length of submissions, etc., which generally follow the provisions set forth by the UDRP Policy and Rules. In order to initiate a dispute using the UDRP, the complainant submits the complaint with an ICANN-approved provider (one of the four listed above).46 The complaint is to be submitted in e-mail format.47 The complaint shall include a wide array of information, such as the contact information of the complainant; the specified communication method for the complainant; the desire for a single or a three-person arbitration panel; the respondents name and all contact information of the respondent known to the complainant; the domain name(s) in question; the trademark(s) and/or service mark(s) on which the complaint is based; the grounds on which the complaint is based; and the remedy sought (in accordance with the remedies available under the UDRP).48 Here, it should be pointed out that each of the four arbitration organizations has different rules regarding the makeup of the complaint. For example, WIPO requires the complaint to be filed electronically, 49 but can not be more than 5,000 words long 50 and the electronic file can not be larger than 10 MB (ten megabytes) in size without a prior arrangement with the Center. 51 Likewise, the NAF has a 10 MB limitation on files, with a preferred file size limitation of 5 MB.52 Further, the NAF does not allow a particular case file to exceed 50 MB in size in the aggregate, without prior approval by the NAF.53 However, the NAF rules do

46 47

ICANN Rules for Uniform Dispute Resolution Policy (ICANN Rules), at 3(a) Id., at 3(b) 48 Id., at 3(b)(i)-(xv) 49 World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (WIPO Rules), 4(a) 50 Id., at 11(a) 51 Id., at 12(a), and Annex E 52 National Arbitration Forums Supplemental Rules to ICANNs Uniform Domain name Dispute Resolution Policy (NAF Rules), Annex A, 2(a), 3(a) 53 Id., at Annex A, 2(b)

11 contain a fifteen-page limit on complaints.54 Meanwhile, the CACs rules require the complaint shall be filed electronically using an online form provided at the CACs website, but does not have a page limit for complaints or any other items submitted. 55 Similar to the CAC, the ADNDRC provides an online complaint form for the complainant to fill out.56 Also, under the ADNDRCs rules, the summary of the factual and legal basis of the complainants complaint can not exceed three-thousand words.57 Finally, the ADNDRC allows the complainant to select whether the matter will be heard by the Beijing Office, the Hong Kong Office, the Seoul Office or the Kuala Lumpur Office of the ADNDRC.58 The dispute resolution procedure under the UDRP Policy and Rules work as follows. After the complainant submits their complaint, stating that a registrants domain name has been registered and is being used in bad faith and in violation of the complainants trademark or service mark, and all other procedure requirements have been met (such as payment of fees), the approved arbitration provider will forward the complaint to the registrant. 59 The registrant then must submit a written response within twenty days after the complaint was forwarded to the registrant. 60 The response shall address the statements and allegations contained in the complaint, and may include any bases as to why the registrant should retain the registration and use of the disputed domain name.61 If the registrant does not file a response, the arbitration panel shall decide the case based solely upon the contents of the complaint.62 Further, in the case of a default (i.e. the registrant does not file a response), the arbitration panel shall draw any

54

Id., at 4(a). These rules say nothing about whether the exhibits are included in the page limit, so the author assumes this limit includes any annexes and exhibits that may be attached to a complaint. 55 CACs UDRP Supplemental Rules of the Czech Arbitration Court, at Art. 3, Annex B, Annex C. See also, www.adr.eu (last visited 15.August.2012) 56 See, www.adndrc.org/hk_download.html (last visited 15.August.2012) 57 See, www.adndrc.org/doc/complaint_hk.doc, at Art. 8 (last visited 15.August.2012) 58 ADNDRC Supplemental Rules to the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy and the Rules for the Uniform Domain Name Dispute Resolution Policy (ADNDRC Rules), at Art. 5(1) (in effect as of 26.July.2012). 59 ICANN Rules, at 4(a) 60 Id., at 5(a) 61 Id., at 5(b)(i) 62 Id., at 5(e), 14(a)

12 inferences from the lack of a response as it considers appropriate.63 A oneperson or a three-person arbitration panel will be appointed within five days after receiving the registrants response,64 with the default panel consisting of a one-person arbitration panel unless one of the parties requests a threeperson panel.65 The appointed arbitration panel will review the statements and documents submitted by the parties 66 and shall forward a written decision to the appropriate provider within fourteen days of the panels appointment.67 This dispute procedure is designed to provide an efficient, fast and relatively inexpensive means of dealing with disputes concerning rights to domain names.

E.

Advantages of the UDRP

There are quite a few advantages to filing a domain name dispute

with one the ICANN approved providers. First, the process is relatively quick. As previously stated, the entire process will take about forty days to resolve from the date of filing the complaint, not including the possibility of any extensions being granted. While this process is longer than acquiring a temporary restraining order from a court, this is still a very fast method for resolving a domain name dispute. Second, the proceedings under the ICANN Policy are inexpensive. Even though the filing fees vary between the different organizations68 and

63

Id., at 14(b). A complainant must still make/prove their case to the satisfaction of the arbitration panel in the event of a default from the respondent/registrant. 64 Id., at 6(b) 65 Ibid. 66 Id., at 15(a). 67 Id., at 15(b) 68 WIPO charges a fee of $1,500 for a dispute consisting of one to five domain names presided over by a single panelist, and the fee is increased to $4,000 for a dispute consisting of one to five domain names presided over by three panelists. WIPO Rules, at Annex D. Meanwhile, the NAF has a sliding fee scale which ranges from $1,300 to $4,500 depending upon the number of domain names in dispute and the size of the arbitration panel requested by the parties. NAF Rules, at 17. The CAC also has a sliding fee scale which ranges from $500 to $7,100 depending upon the number of domain names at issue in the dispute and the size of the arbitration panel requested. CACs UDRP Supplemental Rules of the Czech Arbitration Court, at Annex A. However, there are additional UDRP fees that range from $1,600 to $2,600, which must be paid by the complainant within five days of notification by either the CAC or the arbitration panel when either a response has been filed, or whether the panel determines it is appropriate for the complainant to pay the additional fees. Ibid. Finally, the ADNDRC also has a sliding scale that ranges from $1,300 to $3,800, also depending upon the number of domain names at issue and the number of panelists on the arbitration panel. ADNDRC Rules, at Art. 15. The ADNDRCs website has a fee webpage (www.adndrc.org/p_schedule_fees.html) that has a differing fee scale which ranges from

13 the fees are higher than filing fees in a United States Federal Court, the total fees for resolving a dispute in this method, including a partys attorneys fees, should not go above the mid-to-high four figures, which is significantly less expensive than a contested case in federal litigation. Further, according to WIPOs fee schedule, in the event of the cases termination after the arbitration panel has been appointed, WIPO shall determine whether any part of the fees shall be refunded to the party or parties, which is typically 25% of the fees paid.69 This particular advantage is arguably one of the most attractive advantages to parties involved in a domain name dispute. Third, one is able to avoid various jurisdictional issues under the ICANN Policy. The ICANN dispute resolution policy and procedures can also apply to registrants who have used a foreign registrar that have adopted the ICANN Policy. As a result, a foreign registrant can be brought into the dispute under the UDRP. Meanwhile, jurisdictional issues may arise with a foreign registrant in a dispute using the U.S. Anti-Cybersquatting Consumer Protection Act, except in cases involving the ACPAs in rem provision, which will be discussed further below. The agreements that some foreign registrars have made with ICANN have lead to the client having access a larger jurisdictional realm than what would be available under the ACPA. Fourth, arbitrators chosen to sit on arbitration panels for matters using the UDRP procedures tend to be private attorneys and are typically experts in trademark law. This assures that a UDRP proceeding will be adjudicated by someone who has specialized knowledge in the area of trademark law. This can be a significant advantage over a federal case, where the judge assigned the case may not have much knowledge in trademark issues. Finally, for most cybersquatting cases, the UDRP is more than sufficient in handling the dispute. If all the complainant wants is to get the domain name away from the registrant, the UDRP is a fast and inexpensive

$1,000 to $7,000. (last visited 15.August.2012). However, the author thinks the webpage may be out of date, especially since the latest policy has been effective for less than one month at the time of this writing. 69 See generally, WIPO Schedule of Fees, found at the following website: (http://www.wipo.int/amc/en/domains/gtld/name/erdrp/fees.html) Last visited 29.Aug.2012

14 way for a trademark holder to get a domain name away from the average Cybersquatter.

F.

Disadvantages of the UDRP

While there are a few advantages to using the ICANN Procedures,

there are some disadvantages in using this dispute resolution system. First, the only remedy available to the complainant is either the cancellation of the domain name or the transfer of the disputed domain name to the complainant.70 If the complainant also wants to seek monetary damages, the complainant must pursue an ACPA claim in U.S. federal court. However, the limitation in remedies available may not be that much of a disadvantage since the registrant may not have any money to satisfy a monetary judgment, or may be anonymous, in which case the only feasible remedy may be the transfer of the domain name to the complainant or the cancellation of the domain name. Whether or not this limitation really is a disadvantage really depends on what the client wants as a remedy in the matter, so the clients decision will ultimately decide just how much of a disadvantage this limitation really is, or even if it is one at all. Second, the arbitration panels decisions are non-binding in the sense that it does not preclude a subsequent or contemporaneous court proceeding. 71 Also, it is not clear what weight courts will give to an arbitration panel decision. In one case in particular, Weber-Stephen Products v. Armitage Hardware,72 the federal court for the Northern District of Illinois held that it was not bound by the outcome of UDRP proceedings and also declined to state that standard it would use to review UDRP arbitration panel decisions. Another potential drawback with the UDRP procedures is that a trademark owner must consent to jurisdiction in any subsequent litigation where either the registrant or the registrar of the domain name is located.73 This could create a problem if the registrant files a suit, as jurisdiction can play a significant role in the choice of law used for the proceeding. This can

70 71

ICANN Policy, at 4(i) Id., at 4(k) 72 54 U.S.P.Q. 2d 1766 (N.D. Ill. 2000) 73 Ballon, Ian C., supra note 14, at 7.04[2]

15 also become a huge issue in the case of a foreign registrant, and could cause the trademark owner to litigate the matter in a foreign court. Fourth, the ICANN Procedures do not allow for discovery. Generally, if the arbitration panelist(s) do not request any additional information the parties cannot submit anything further. However, there are instances where a party can request to submit an additional filing, such as in a situation where a party wishes to present new evidence that was not previously available until after that partys initial submission. Such a request will not always be granted though, so one should be careful and make sure all information is in their submission.74 This disadvantage can lead to a few problems. For example, if the registrant has any affirmative defenses in their response, such as fair use or acquiescence, the complainant cannot write a rebuttal unless directed to do so by the arbitration panel. Another related problem with the lack of discovery is that the arbitration panelists cannot easily evaluate the credibility of the written submissions, since both the complainant and the respondent state the information in their respective submissions are accurate to the best of their knowledge. This may result in the arbitration panel denying the requested relief and suggesting the claims be taken to another forum where the credibility of testimony can be evaluated. Coupled with the lack of discovery, is that under the ICANN Procedures, the burden of proof is on the complainant to prove each of the three elements (similarity, lack of rights or legitimate interests and bad faith).75 Since the burden of proof is on the complainant and there is no discovery provision in the ICANN Policy, it may be difficult for the complainant to succeed in their case. In most of the published arbitration panel decisions under the ICANN Policy, an e-mail exchange is probably the only prior contact between the parties and sometimes there is no contact

74

Generally, unsolicited supplemental filings will not be considered in UDRP proceedings, except in exceptional circumstances, such as the existence of new relevant facts or arguments that were not known until after submission of the original Complaint or facts that the complainant could have reasonably anticipated. Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920 (2010), citing Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609 (2006) and Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001 (2006) 75 ICANN Policy, at 4(a)(i)-(iii)

16 at all.76 Because of this lack of communication between the parties coupled with ICANNs lack of discovery provisions, the complainant can potentially be placed in a bad position in not being able to state anything specific about the registrants lack of rights or legitimate interests or about the registrants bad faith. While the UDRP does have a larger jurisdictional base than the ACPA, there is a potential drawback to the UDRP in that country code top level domains (ccTLDs) are not required to bind their registrant to the UDRP. 77 As stated earlier, only fifty-eight ccTLDs are bound by the UDRP, 78 and one of the ccTLDs that is not bound to the UDRP is the country code for the United States, .us. 79 If the domain name at issue happens to be a ccTLD that is not bound by the UDRP, the client will not be able to proceed using the ICANN UDRP to resolve the dispute. However, it should also be pointed out that unless that particular website was registered with a registrar located within the United States, the ACPA might not be a viable option either. Finally, under the ICANN Policy, a domain name dispute involving a trade name may not necessarily be successful. This is because the UDRP Rules require the dispute to involve a trademark or a service mark.80 Due to the varied advantages and disadvantages that are inherently in the UDRP, one has to think before deciding to use ICANNs dispute resolution policy instead of using the cause of action in the Lanham Act provided by the ACPA. However, the UDRP is simpler, far less expensive and faster than the federal litigation needed for the Lanham Act and because of these characteristics most complainants should probably utilize the UDRP procedures as these procedures will afford most complainants with a speedy resolution and grant the relief they are seeking in most domain name disputes.

76

Matorin, Mitchell J., and Boudett, Michael, Domain Name Disputes: Cases Illustrate Limitations of ICANN Policy, 45-APR B. B.J. 4, 4 (2001) 77 Sharrock, 51 DUKE LAW JOURNAL, 841. 78 See note 31, supra 79 Ibid. However, the .us Policy through the NAF is very similar to the UDRP Policy (See, http://domains.adrforum.com/main.aspx?itemID=534&hideBar=False&navID=253&news= 26) (last visited 20.August.2012) 80 UDRP, at 4(a)(i), 4(b)

17

III. The U.S. Anti-Cybersquatting Consumer Protection Act81

A. History the Federal Trademark Dilution Act
On 29.November.1999, President Clinton signed into law the AntiCybersquatting Consumer Protection Act.
82

The ACPA amended the

Lanham Act by adding Section 43(d), providing for a trademark remedy for cybersquatting. Prior to the ACPA, the only litigation based solution to a domain name dispute was to file a trademark infringement or a trademark dilution action. 83 When it was enacted in 1995, the Federal Trademark Dilution Act84 (FTDA) was originally thought of as a powerful tool for trademark holders to use against cybersquatters.85 The FTDA provides the owner of a famous mark an injunction against another persons commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the famous mark.86 While seemingly a powerful tool, the previous text from the FTDA contained a few problems that made it difficult to adequately prosecute causes of action against cybersquatters. First, the text indicates the alleged cybersquatters use of the trademark domain name must be commercial in nature. This limitation in the FTDA prevented relief against some cybersquatters who would just register the domain name and do nothing with it, holding the domain name until someone made an offer to purchase the domain name.87

81 82

15 USC 1125 (2006), Lanham Act 43(d) Delaney and Ford, 631 PLI/PAT 31, 171 83 See, Panavision Intl, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998) (applying Federal Trademark Dilution Act to a cybersquatting case and ordering the transfer of the domain name from the cybersquatting defendant to the plaintiff trademark holder) 84 15 U.S.C.A. 1125(c) (2006) 85 Mohr, Stephen F., The New Federal Trademark Dilution Act: Expanding the Rights of Trademark Owners, in Annual Advanced Seminar on Trademark Law 1997, at 9 (PLI Patents, Copyrights, Trademarks & Literary Prop. Course, Handbook Series No. G-476, 1997) (The Dilution Act has already proven to be an effective weapon for owners of arguably well-known or famous trademarks to prevent a wide range of third party uses of marks similar or identical to such marks.) 86 15 U.S.C.A. 1125(c)(1) 87 Martin, Elizabeth Robison, Too Famous to Live Long!: The Anticybersquatting Consumer Protection Act Sets its Sights to Eliminate Cybersquatter Opportunistic Claims on Domain Names, 31 ST. MARYS L.J. 797, 822 (2000). See also, HQM, Ltd. V. Hatfield,

18 Another problem that arose from the wording of the FTDA is the implication that the FTDA provided protection for the owner of a famous mark, and some courts even suggested the mark had to be famous and distinctive. For example, the Second Circuit Court of Appeals has held that heightened distinctiveness is required under the FTDA, ruling that antidilution protection should only go to highly distinctive marks that are the product of the imagination and evoke no associations with human experience that relate intrinsically to the product.88 Further, the court in Nabisco stated, It seems unlikely that the statute contemplates allowing the holders of such common, albeit famous, marks to exclude all new entrants. That is why the statute grants the privilege only to holders of distinctive marks.89 Rulings such as this one led to many trademark holders not being able to gain relief against cybersquatters using the FTDA.90 As a result of the wording in the FTDA and in light of court decisions, trademark owners were finding themselves faced with a difficult task in gaining relief against cybersquatters, as some registrants would engage in pseudo-cybersquatting or the court found the claimants trademark was not famous, distinctive, or famous and distinctive. The Second Circuit Court of Appeals, in Sportys Farm LLC v. Sportsmans Market, Inc., 91 discussed the limitations of the FTDA and Congress reasoning and response to those limitations when it stated cybersquatters have become increasingly sophisticated as the case law has developed and now take the necessary precautions to insulate themselves from liability (under the FTDA).92 As a result, the ACPA was passed specifically to provide courts with an alternative to stretching federal dilution law to apply in cybersquatting cases.93

71 F. Supp. 2d 500, 506 (D. Md. 1999); Acad. of Motion Picture Arts & Scis. v. Network Solutions, Inc., 989 F. Supp. 1276, 1278-79 (C.D. Cal. 1997) 88 Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 (2d Cir. 1999) 89 Ibid. 90 See generally, Nguyen, Xuan-Thao N., Blame it on the Cybersquatters: How Congress Partially Ends the Circus among the Circuits with the Anticybersquatting Consumer Protection Act, 32 LOY. U. CHI. L.J. 777 (2001) 91 202 F.3d 489 (2d Cir. 2000) 92 Sportys Farm LLC v. Sportsmans Market, Inc., 202 F.3d at 495, citing S. REP. NO. 106140, at 7 93 Id., at 497

19

B.

Cause of Action
1. Basics The ACPA, drafted in response to the limitations created by the

FTDA, provides liability for cybersquatting when a person who, with a bad faith intent to profit, registers, traffics in, or uses a famous or distinctive trademark as a domain name.94 In particular, the ACPA creates a cause of action against anyone who: (1) with bad faith intent intends to profit from anothers mark, including a personal name which is protected as a mark;95 and (2) registers, traffics or uses a domain name that (a) is confusingly similar to a distinctive trademark at the time of registration, or (b) is confusingly similar or dilutive of a famous trademark at the time of registration. 96 Also, under the ACPA, the trademark only needs to be distinct at the time the domain name was registered and the trademark need not be registered.97

2.

The Bad Faith Requirement

The ACPA, through Lanham Act Section 43(d)(1)(B)(i), provides a non-exclusive list of nine factors that courts may consider when determining whether a person has the requisite bad faith intent under Section 43(d)(1)(A). Out of these factors, the first four are indicative of good faith while the remaining five are indicative of bad faith. The five bad faith factors are as follows: (1) the persons intent to divert customers from the mark owners online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site; (2) the persons offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use the domain name in the bona fide offering of any goods

94

Scaturro, Tanesa S., The Anticybersquatting Consumer Protection Act and the Uniform Domain Name Dispute Resolution Policy the First Decade: Looking Back and Adapting Forward, 11 NEV. L.J. 877, 885 (2011), citing 15 U.S.C. 1125(d)(1)(A) (2006) 95 Lanham Act, at 43(d)(1)(A)(ii), 15 USC 1125(d)(1)(A)(ii) 96 Id., at 43(d)(1)(A)(ii), 15 USC 1125(d)(1)(A)(ii) 97 Id., at 43(d)(1), 15 USC 1125(d)(1)

20 or services, or the persons prior conduct indicating a pattern of such conduct; (3) the persons provision of material and misleading false contact information when applying for the registration of the domain name, the persons intentional failure to maintain accurate contact information, or the persons prior conduct indicating a pattern of such conduct; (4) the persons registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive a the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (5) the extent to which the mark is incorporated in the persons domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section.98 The four factors that are indicative of good faith under the ACPA are as follows: (1) the trademark or other intellectual property rights of the person, if any, in the domain name; (2) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify hat person; (3) the persons prior use, if any, of the domain name in connection with a bona fide offering of any goods or services; and (4) the persons bona fide noncommercial or fair use of the mark in a site accessible under the domain name.99 In addition to these four good faith factors, Section 43(d)(1)(B)(ii) states that bad faith shall not be found in any case where the court determines the registrant/defendant believed he had reasonable grounds to believe that the use of the domain name was a fair use or was otherwise lawful.100 Courts have stated the ACPAs bad faith criteria should be applied in a holistic manner and not viewed as a mechanical exercise,101 so these factors should be balanced qualitatively in light of the circumstances102 present in a particular case, and not just lined up to see which party has more factors

98 99

Id., at 43(d)(1)(B)(i), 15 USC 1125(d)(1)(B)(i) Ibid. 100 Id., at 43(d)(1)(B)(ii), 15 USC 1125(d)(1)(B)(ii) 101 Carnivale v. Staub Design LLC, 456 Fed.Appx. 104, 108 (3rd Cir. 2012), citing Carnivale v. Staub Design LLC, 754 F.Supp.2d 652, 658 (D.Del. 2010), quoting Green v. Fornario, 486 F.3d 100, 106 (3rd Cir. 2007). 102 Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658

21 checked off in their favor. Finally, other courts have held that every bad faith factor does not need to be considered, stating the factors are intended to serve as a guide while the court carefully considers whether the conduct at issue is motivated bad faith intent to profit.103

C.

Remedies under the ACPA for Cybersquatting

The ACPA amended Sections 34(a) and 35(a) of the Lanham Act,

allowing courts to grant the same injunctive relief and monetary relief for cybersquatting that is allowed for trademark infringement, trademark dilution and false advertising under the Lanham Act. In addition, the ACPA adds Section 35(d) to the Lanham Act, providing statutory damages, under which the complainant/plaintiff may elect at any time before the final judgment is rendered by the trial court to recover an award of statutory damages in an amount between $1,000 and $100,000 per domain name, as the court considers just.104 The statutory damages are used in place of any actual damages and lost profits. Statutory damages are only available for domain names that were registered after the ACPA was enacted (29.November.1999). While the ACPA does provide for the awarding of attorneys fees and costs, courts have held they may be rewarded in exceptional cases, where the defendants conduct was malicious, fraudulent, willful or deliberate in nature.105 Finally, similar to the UDRP remedies, the ACPA also allows for courts to order the forfeiture or cancellation of the domain name or alternatively, the transfer of the domain name to the owner of the trademark or service mark.106 This relief can be applied retroactively, unlike the statutory damages provision of the ACPA.

D.

In Rem Jurisdictional Provisions in the ACPA

When enacting the ACPA, it seems that Congress also had concerns

regarding cybersquatters who live outside of the United States as well as those who live within the United States, but provide false contact
103

Volvo Trademark Holding AB, v. Volvospares.com, 703 F.Supp.2d 563, 567 (E.D. Va. 2010), quoting Lamparello v. Falwell, 420 F.3d 309, 319-20 (4th Cir. 2005) 104 Lanham Act, at 35(d) 105 Pinehurst, Inc. v. Wick, 256 F. Supp. 2d 424, 433 (M.D.N.C. 2003), citing People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 370 (4th Cir. 2001) 106 Lanham Act, at 43(d)(1)(C), 15 USC 1125(d)(1)(C)

22 information to their registrars, allowing the registrants to avoid service of process and effectively causing the registrants to disappear.107 As a result, the ACPA created an in rem cause of action by adding Section 43(d)(2) to the Lanham Act. This provision allows the owner of a trademark to file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry or other domain name authority is located if the complainant/plaintiff meets certain factors. These factors are as follows: (1) the domain name violates any right owner of a mark; and (2) the court finds the mark owner is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action; or (3) through due diligence the mark owner was not able to find a person who would have been a defendant in a civil action by either sending notice to the domain name registrar, who sends it to the contact information provided by the registrant, and publishing notice of the action promptly after filing the action.108 This now allows a trademark holder to go after the website, and means that a foreign website operator could have their domain name seized and transferred provided the website operator registered the domain name with an American domain name registry, even though the website operator has no other connections to the United States. The in rem jurisdiction is in addition to any other jurisdiction that may already exist in a particular case. The remedies available in an in rem action are limited to a court order for forfeiture or cancellation of the domain name, or its transfer to the mark owner.109 Further, courts have held the in rem provision is not limited to claims of bad faith registration with the intent to profit, but can also be allowed for trademark infringement and dilution claims.110

E.

Safe Harbors under the ACPA

While the ACPA provides causes of action and remedies for

trademark and service mark owners vis--vis cybersquatters, the ACPA also
107

Hwang, Jinku, Is the ACPA a Safe Haven for Trademark Infringers?Rethinking the Unilateral Application of the Lanham Act, 22 J. MARSHALL J. COMPUTER & INFO. L. 655, 661 (2004) 108 Lanham Act, at 43(d)(2), 15 USC 1125(d)(2) 109 Ibid. 110 Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 228 (4th Cir. 2002). See also, Hartog & Co. AS v. Swix.com, 136 F.Supp.2d 531, 538 (E.D. Va. 2001)

23 provides an exemption from liability to domain name registrars and registries that take action to prevent cybersquatting and have acted in good faith. Specifically, the ACPA adds a new section limiting the liability of domain name registrars and registries for registering a trademark infringing domain name absent bad faith.111 Here, a showing of bad faith is the intent to profit from the registration and maintenance of the domain name. 112 Similarly, there are also safe harbor provisions for domain name registrants. In particular, courts have held that bad faith will not be found if the registrant reasonably believed the use of the domain name was a fair use of the trademark or was otherwise lawful. 113 However, courts have held that if a registrant acts partially in bad faith in registering a domain, then the defendant can not fall within the safe harbor provision. 114 Finally, under the ACPA, a domain name registrant is protected against a trademark owner who knowingly and materially misrepresents to a domain name registrar or registry that the registrants domain name is infringing.115

F.

Advantages of the ACPA

There are a few advantages in using the ACPA. First, the ACPA is a

good method to use in trying to acquire an infringing domain name from a foreign cybersquatter. This is because of the ACPAs in rem provisions, and the ACPA does not have the same burdens of proof that are found in the UDRP. However, it is important to note that the in rem provisions only apply if the disputed domain name was registered with a registrar or other domain name authority that is located within the United States. Second, the ACPA also allows for monetary damages, statutory damages and injunctive relief, in addition to the same remedies available under the UDRP. This gives a wide array of remedies available to a plaintiff, most of which are unavailable by the UDRP. Also, the ACPA has the same
111 112

Lanham Act, at 32(2)(D)(iii) Ibid. 113 Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 947 (9th Cir. 2002) 114 Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1203-04 (9th Cir. 2009). In particular, the court stated the courts should use the reasonable belief defense very sparingly and only in the most unusual cases, for more frequent use of this defense would undermine the rest of the statute because [a]ll but the most blatant cybersquatters will be able to put forth at least some lawful motives for their behavior. Id., at 1203, citing Virtual Works, Inc. v. Volkswagen of American, Inc., 238 F.3d 264, 270 (4th Cir. 2001) 115 Lanham Act, at 32(2)(D)(iv)

24 remedies at its disposal as the UDRP, so the plaintiff can still seek the same relief that would be afforded by the UDRP while also seeking other remedies. Third, unlike the UDRP, the parties can freely engage in discovery. This allows the plaintiff to access information regarding prior registrations done by the defendant, if any, and to access other information that could help establish the bad faith aspects of the plaintiffs claim. Also, since this is a federal court action and not an arbitration panel, the parties can attack the credibility of each others testimony. This can not happen in the UDRP proceedings, which has the potential of becoming a sort of I said he said situation, with both parties stating their respective submissions are accurate to the best of their knowledge. Fourth, under the ACPA, the plaintiff can also seek damages from the domain name registrar, provided the plaintiff can prove the registrar acted with bad faith to profit from the registration and maintenance of the infringing domain name. While the UDRP does not have any liability provisions for domain name registrars, the ACPA, through its safe harbor provisions, only waives a registrars liability if they act in due diligence and in good faith. This provision allows a plaintiff a cause of action against domain name registrars who basically aid in cybersquatting. Combined with the in rem provisions of the ACPA, the plaintiff can get a cause of action against the domain name itself and, if applicable, get monetary damages from the domain name registrar. Finally, unlike the ICANN arbitration panels, the federal courts are better suited to handle more complex litigation issues, such as affirmative defenses of acquiescence and fair use. Also, false advertising and unfair competition claims are outside the realm of the UDRP arbitrators. Meanwhile, these issues can be dealt with fairly in the federal courts. As a result, if a plaintiff would have a more complex domain name dispute issue, they would probably be better off using the ACPA instead of the UDRP.

G.

Disadvantages of the ACPA

While there are benefits in using the ACPA for a domain name

dispute, there are some disadvantages as well. First, federal litigation is not

25 very fast. In fact, it may take months or even years to finally get a case resolved in federal court. This is not a great option for the plaintiff who wants to quickly get a domain name from the registrant/defendant. Second, federal litigation is expensive. While arbitration under the UDRP may cost around the mid four-figure range, including agency and arbitration panel fees and attorneys fees, federal litigation will cost a lot more, and could range in the tens of thousands of dollars at least. Considering the usual remedies involved in a domain name dispute, the plaintiff in an ACPA action might end up winning a Pyrrhic victory, spending a huge sum of money for what could have been achieved, at a much lower cost, using an arbitration proceeding under the UDRP. Third, while the in rem provisions seem like an advantage, it may not prove to be much of an advantage when compared to the UDRP. In the ACPA, the plaintiff can get in rem jurisdiction only if the applicable domain name registrar is within a federal judicial district. On the other hand, the UDRP Policy applies to any domain name registrar that has agreed to be bound by the UDRP Policy. This gives the complainant an opportunity to get relief under the UDRP with a foreign domain name registrant as opposed to the in rem provisions of the ACPA, since the UDRP Policy can apply to domain name registries and registrars outside of the United States, which the ACPA only applies to American registries and registrars. Considering the remedies are the same for these two different provisions, it might be a better option for a plaintiff to use the UDRP Policy instead of the ACPA. Fourth, as eluded to earlier, federal judges may not necessarily be experts in trademark law. It is quite possible that a federal litigation using the ACPA may be presided over by a judge with no real experience in trademark law or with domain name issues. While having a case presided over by a judge who is unfamiliar with the nuances of the legal issues behind the case is a potential problem with any federal litigation, it could be a problem in a domain name dispute case, especially when dealing with concepts such as parody and fair use. Just like the UDRP, the ACPA has a series of advantages and disadvantages that will require the plaintiff to consider whether they want to use the ACPA or use the cheaper and faster UDRP arbitration proceedings.

26

IV. Litigating the Scenarios

This section will look at the potential strategies of the three different scenarios for both the UDRP and the ACPA provisions. This section will also look at the probable outcomes of the three different scenarios under both procedures.

A.

Scenario 1: www.tomcruise.com
1. UDRP Proceeding If this case went before an ICANN arbitration panel, the complainant

would want to accumulate as much information as possible before filing the suit, such as keeping e-mails and any information from the registrar regarding when the domain name was registered. The complainant/plaintiff would also want to get screen shots of the website before suit is filed, since the issue of the registrant/defendant using the website for his own commercial gain could possibly swing the case to the complainants favor. Similarly, in UDRP proceedings, the registrant/defendant would want to keep his e-mails to the complainant, showing that he did not offer to sell the domain name. The registrant/defendant would also want to attach a screen shot of a search engine search for Tom Cruise showing the various domain names that use the phrase Tom Cruise, including the .net website and the various country code websites. The first thing the complainant will have to do in this case is show that he has a trademark right in the name Tom Cruise, and that the domain name is confusingly similar to his trademark rights. Previous WIPO cases have held that in order for an individual to rely on an unregistered trademark rights,116 he or she must demonstrate use of the mark in commerce, and that merely having a famous name will not necessarily be sufficient to demonstrate unregistered trademark rights. 117 A complainant in such a situation must demonstrate their name has been used in commerce and has acquired a sufficient secondary association in order to establish that a

116

The actor Tom Cruise does not have a registered trademark in the name Tom Cruise. Tom Cruise v. Networks Operations Center/Alberta Hot Rods, WIPO Case No. D20060560 (2006) 117 Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563 (2009)

27 common law trademark exists. 118 Finally, WIPO panels have stated that a trademark consisting of a personal name has acquired a secondary association, or secondary meaning, when a substantial segment of the public understand the designation, when used in connection with services or business, not as a personal name, but referring to a particular source or organization.119 In this case, complainant should succeed in showing a trademark right in the name Tom Cruise. Complainant has starred in major motion pictures since 1981, and his film Top Gun was the highest grossing film of 1986.120 Complainant has also starred in, or has his name associated with, about forty major motion pictures since 1981, continuing to the present day, and also has producer, director and writer credits to his name. 121 An arbitration panel should find that complainants name has acquired a secondary association with a substantial segment of the public. 122 Likewise, an arbitration panel should find the domain name to be identical or confusingly similar since the domain name is the complainants name. It is in the second part of the UDRP test, that respondent has no rights or legitimate interests in respect to the domain name, where the complainant may lose this particular case. Here, the respondent is using his own name, which happens to be identical to the complainants name, as his domain name. Even though their two names are identical, the respondent clearly has an interest in the domain name, since it is his actual name. However, there is a chance that the respondent is really not using his own name for his business, and could actually be using another name, such as Tom Cruise Designs or TC Graphics, as the name of his freelance business. Should this be the case, the arbitration panel may find this factor in favor of the complainant, as the respondent is not using his own name for

118 119

Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (2000) Jim Carrey v. BWI Domains, citing Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858 (2000) 120 Top Gun has grossed a worldwide box office total of over $350 million. (http://www.boxofficemojo.com/movies/?id=topgun.htm) (last visited 20.August.2012) 121 http://www.imdb.com/name/nm0000129/ (last visited 20.August. 2012) 122 In the actual arbitration proceeding involving Tom Cruise, the respondent waived a challenge to Tom Cruises rights in a trademark and service mark. The Panel still held that Tom Cruise had a trademark and service mark rights in his name for purposes of that proceeding. Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560

28 his business and could have registered the business name as his domain name instead of registering his own name. The respondent may attempt to bolster his claim of having a right or legitimate interest in the domain name by stating that since he has placed a notice on the home page to his website stating that his site is in no way related to the complainant, and that he has also placed a link to the complainants agencys Tom Cruise website that there is no confusion with his use of the domain name. However, WIPO arbitration panels have held that disclaimers do not cure any initial interest confusion or illegitimate diversion that could accompany having the disputed domain name. 123 Some WIPO arbitration panels have held the inclusion of a disclaimer is irrelevant when weighing the identical or confusing similarity factor.124 As a result, the inclusion of a disclaimer on respondents website should not play a role in respondents favor. Should the arbitration panel think the respondent does not have any rights or legitimate interests in using the domain name, due to the possibility of the respondent using a different company name, the use of the disclaimer will not alter the decision towards the respondents favor for having a legitimate interest in using the domain name. Regardless of whether the second factor is ruled in favor of the complainant or the respondent, the third factor in the UDRP test, the domain name has been registered and used in bad faith, should also favor the respondent. While ICANN arbitration panels do not follow stare decisis, a previous WIPO arbitration panel decision held against Bruce Springsteen in his bid to get www.brucespringsteen.com from a fan who registered the domain name in 1996.125 The arbitration panels ruling was based upon their holding that the complainant failed to show the registrant/respondents bad faith because he never tried to sell the domain name to Mr. Springsteen. The majority of the panel also held that the complainants business was not interrupted by not having this domain name, nor did the complainant not having this domain name result in any customer confusion.

123

Este Lauder, Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (2000), citing Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615, and DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181 124 A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900 (2001) 125 Springsteen v. Burgar, WIPO Case No. D2000-1532 (2000)

29 Here, the respondent with the identical name as the famous complainant has registered their mutual name as his domain name. The complainant will also probably not be able to find bad faith under the UDRP since the respondent never offered to sell the domain name to the complainant, nor did the respondent register the domain name to hinder the complainants business. Further, the respondent is using the domain name in relation to himself and his own business, and is, in theory, not benefitting from the goodwill attached to the complainant. However, it is arguable that the respondent is actually trying to gain commercially from the use of the famous domain name, using his famous name to lure web users to his website. Here, the respondent uses the website containing their mutual famous name to display his own artwork on the website along with contact information regarding freelance employment. Also, the respondent could have used another name, such as a business name that the respondent may be using, to achieve the same purpose. However, even with this argument, looking at the factors previously discussed, the complainant will still probably not be able to show bad faith on the part of the respondent. As a result, the respondent will probably be able to keep the domain name in a UDRP proceeding.

2.

ACPA Proceeding

In an ACPA proceeding for this scenario, the plaintiff would want to use discovery to see how much freelance employment the defendant acquired as a result of the website, as well as how much money the defendant earned from these assignments. Likewise, the defendant would want to get information regarding actor Tom Cruises agencys website, including how many daily hits the website receives and if any merchandise has been sold through that website. Under the ACPA, the plaintiff will have to show bad faith in order to win its case, since the defendant is using a domain name that is identical to a famous mark.126 In this case, the most significant bad faith factors should be the following: the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify
126

The level of fame attached to the name Tom Cruise has already been discussed in the UDRP Proceeding section above. See also, notes 120-122, supra.

30 that person127; and the persons prior use, if any, of the domain name in connection with a bona fide offering or any goods or services.128 This is because the defendant registered his own legal name as a domain name, which also happens to be identical to the plaintiffs famous name and common law trademark. Another potential important bad faith factor in this case could be the following: the persons intent to divert consumers from the mark owners online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site. 129 Here, the defendant is essentially using the website for commercial purposes: the defendant has posted samples of his graphic designs, his professional resume and his contact information on the website as a way to possibly garner some freelance work as a graphic designer. As a result, the extent of the commercial nature of the website should be examined in determining the outcome of this case. Courts have traditionally held that. it was considered ones sacred right to use ones personal name in connection with his or her business operating under that same name. 130 While courts in traditional trademark disputes involving personal names will look at a series of different factors in balancing out the interests between the parties,131 here the main concern is whether the registrant/defendant has a good faith interest in being able to register a domain name that consists of the registrants legal name. An issue may arise if the defendant does not actually use his legal name in the course of conducting his business, as was discussed in the UDRP Proceeding section above. If the defendant really

127 128

Lanham Act, at 43(d)(1)(B)(i)(II), 15 USC 1125(d)(1)(B)(i)(II) Id., at 43(d)(1)(B)(i)(III), 15 USC 1125(d)(1)(B)(i)(III) 129 Id., at 43(d)(1)(B)(i)(V), 15 USC 1125(d)(1)(B)(i)(V) 130 Robin Woods, Inc. v. Woods, 815 F.Supp. 856, 870 (W.D. Penn. 1992), citing Mandell, Personal Name Trademarks Your Name May Not Be Your Own, 70 TMR 326, 327 (1980); Basile, S.P.A. v. Basile, 899 F.2d 35, 38 (D.C. Cir. 1990) 131 Robin Woods, Inc. v. Woods, 815 F.Supp. at 870. (courts will endeavor to accommodate and reach a judicial compromise between the competing interests of: (1) the plaintiff (usually the senior user) in protecting the good will in her or his trademark; (2) the public in being free of confusion; and (3) the defendant (usually the junior user) in the use of her or his own family name in connection with a business.), citing Mandell, 70 TMR at 332; Taylor Wine Co. v. Bully Hill Vineyards, 569 F. 2d 731, 733-34 (2d Cir. 1978)

31 operates his freelance graphic design business under a name other than his legal name, this could sway the court into finding this factor towards the plaintiff, even though both parties have the exact same legal name, because it could then be argued the defendant registered the domain name as a way to either confuse the public or to lure users to his website, and the defendant could have simply registered his business name as his domain name instead.132 A potential defense that may arise in this case is basically a laches or an acquiescence defense. The defendant operated his website for five years without hearing any protest from his famous namesake. However, this defense will probably not succeed. In Nissan Motor Co., Ltd. v. Nissan Computer Corp.,133 the court in the Northern District of California held that even though Nissan Computer had been operating the www.nissan.com website for five years and that Nissan Motors knew of the defendants website for about four years, that Nissan Motors had acted in a timely fashion when protesting the existence of advertisements on Nissan Computers website that were designed to maximize consumer confusion.134 Here, there is no evidence that the plaintiff knew of the defendants website during the previous five years after the defendant registered the domain name. As a result, a court in this case will probably reject a laches or an acquiescence defense. Looking at the factors in this case qualitatively in light of the circumstances,135 it seems that the plaintiff will probably lose in a federal ACPA proceeding as well as in an UDRP arbitration, provided the defendant can afford to engage in federal litigation. The defendant will probably win because the defendant has a significant good faith factor supporting his case; his legal name is identical to the plaintiffs. Also, the defendant has not attempted to sell the domain name to the plaintiff and has taken steps to ensure that a web user will not be confused as to the content of the defendants website once the web user visits the defendants website.
132

See, Robin Woods, Inc. v. Woods, 815 F. Supp. at 871 (The law is reluctant to preclude an individuals business use of her or his own name where no attempt to confuse the public or to arrogate the goodwill of the senior user has been made.), citing Friend v. H.A. Friend and Co., 416 F.2d 526, 531 (9th Cir. 1969) 133 89 F. Supp. 2d 1154 (N.D. Cal. 2000) 134 Id., at 1164-65 135 Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658, at note 102, supra

32 However, this outcome is largely based on whether the defendant uses his legal name in the course of business or whether the defendant uses a different name, such as Tom Cruise Designs or TC Graphics, with a greater chance a court will side with the plaintiff should the defendant use a different name for his business, as that would look more towards the defendant using the goodwill associated with the plaintiffs name/trademark for the defendants commercial gain. In reality, it is probably safe to assume that if the plaintiff filed this case in federal court, the chances are pretty good the defendant would quickly settle the case and transfer the content of his website to a different domain name. Federal litigation would be expensive, and there is no guarantee the defendant would find any pro bono legal assistance, causing a large expense for the defendant and creating more problems than the case is worth. Couple the expense factor with the possibility that a court may not find in the defendants favor due to a possibility he may actually use a name other than his legal name as a business name, a quick settlement seems to be the most prudent course of action for the defendant in this scenario.

B.

Scenario 2: www.nfldraft.com
In this scenario, the plaintiff will probably not get much information

from the defendant before filing this case, since the defendant publicly stated he did not even read any of the letters sent to him by the plaintiffs attorneys. 136 From this, it is clear that the defendant has not had any communication with the plaintiff.

1.

UDRP Proceeding

The general lack of communication means that under the UDRP proceeding, the complainant will only be able to present the infringing website in their complaint. Based upon the facts, the chances are the respondent will not even respond to the complainants complaint,137 leaving

136 137

See Couch, at note 7, supra In the Sun-Times article, Mr. Schulman stated that the NFL sent him all this paperwork, and he has not read any of it. Later in the article, Mr. Schulman stated he also threw out a threatening letter from Hersheys regarding his registration of the domain name www.hugsandkisses.com. Ibid.

33 the complainant to probably have to prove their case solely on the merits of their own complaint. Under the first part of the UDRP test, showing the complainant has a trademark right in the name and that the domain name is identical or confusingly similar to its trademark rights, the complainant will probably be able to show it has a common law trademark right in the name NFL Draft. The NFL has been in existence since 1920, and has consistently held a draft of eligible college football players since 1936.138 This event, the NFL Draft, is a fairly significant day for the NFL and their fans. Both the Entertainment and Sports Programming Network and the NFL Network broadcast the entire draft live on cable television, and many fans watch the event live at Madison Square Garden. The phrase NFL Draft carries only one meaning among many individuals, especially Americans, which is the time when the NFL franchise teams select players from various collegiate football programs to play for a particular team in the NFL. The NFL has clearly gained a common law trademark right in the phrase NFL Draft, and the respondents domain name is identical to the complainants trademark. The complainant should succeed on this part of the UDRP test. Under the second part of the UDRP test, whether respondent has no rights or legitimate interests in respect to the domain name, the complainant should also succeed. UDRP panels have held there are four elements in determining if a legitimate use exists. These factors are as follows: (1) respondents use must be legitimate noncommercial or fair use; (2) the use must be without intent for commercial gain; (3) the use must be without intent to misleadingly divert consumers; and (4) the use must be without intent to tarnish the complainants trademark.139 Here, the respondent is not using the domain name for any purpose other than to hold it for someone else to purchase. Respondents registration and use of the domain name is for a commercial gain and that was the intent when the domain name was registered. Accordingly, the respondent does not have any rights or legitimate interests in the domain name at issue in this scenario. Finally, under the third part of the UDRP test, the domain name has been registered and used in bad faith, the complainant should also succeed.
138 139

http://en.wikipedia.org/wiki/National_Football_League_Draft (last visited 30.Aug.2012) Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (2000)

34 The respondent has already stated that he registered the domain name, along with a couple hundred of other domain names, to sell them to their respective trademark holders, or to anyone else who wishes to purchase them.140 This is in violation of paragraph 4(b) of the UDRP, which states that registering or acquiring a domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant, who is the owner of the trademark, for valuable consideration is bad faith.141 The respondents actions in this scenario are textbook bad faith, and it is activity like this that the UDRP was designed to prevent. As a result, the complainant should win in this scenario.

2.

ACPA Proceeding

In an ACPA proceeding for this scenario, the most important bad faith factors should probably be the following: the persons offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the persons prior conduct indicating a pattern of such conduct142 ; and the persons registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties. 143 This is because the defendant has registered a domain name in which he has no legitimate rights primarily for the purposes of selling the domain name to the plaintiff or to anyone who wishes to purchase it.144 Another possible bad faith factor that could be examined in this case is the following: the persons bona fide noncommercial or fair use of the mark in a site accessible under the domain name. 145 But this factor should probably not be as important as the previous factors listed since this case involves a defendant

140 141

See Couch, at note 7, supra UDRP, at 4(b)(i) 142 Lanham Act, at 43(d)(1)(B)(i)(VI), 15 USC 1125(d)(1)(B)(i)(VI) 143 Id., at 43(d)(1)(B)(i)(VIII), 15 USC 1125(d)(1)(B)(i)(VII) 144 See Couch, at note 7, supra 145 Lanham Act, at 43(d)(1)(B)(i)(IV), 15 USC 1125(d)(1)(B)(i)(IV)

35 who has shown a pattern of cybersquatting and any noncommercial use the defendant may have made with the website should not be much of a factor here, especially when looking at a case qualitatively in light of the circumstances.146 Looking at the applicable factors in this case, this seems to be a fairly open and shut matter. As described above in the UDRP Proceeding section above, the NFL Draft is a fairly significant event in the NFL that has been inexistence since 1936 and is broadcast on multiple television networks in the United States which reaches a global audience. The NFL has acquired a common law trademark right in the term NFL Draft, and the defendant does not have a trademark right in the term nor does the defendant have a legitimate interest in using the term. The defendant has done nothing more with the common law trademark at issue other than register the allegedly infringing domain name. Courts have held that simply registering a domain name is not sufficient to establish any trademark or other intellectual property rights in the domain name.147 Courts have also stated that a defendants use of a disputed domain name can not fall within a safe harbor provision in the ACPA when the defendant had no reasonable grounds to believe the defendants sue of the domain name was fair or otherwise lawful.148 Here, the defendant bought a series of domain names for the primary purpose of selling them to other parties. While the defendant may argue that he was using the website to promote Yorkshire terriers, it is not reasonable to assume that a web user is going to expect to find information about Yorkshire terriers at www.nfldraft.com. As a result, the court will probably not find the defendant has an intellectual property right or a legitimate interest in using the disputed domain name. Further, the defendant has shown a history of registering a couple hundred domain names that are also trademarks of other parties.149 While the defendant has not explicitly offered to sell the domain name to the plaintiff,150 the defendant has shown that his intent in registering the domain name was for the purpose of selling it another party when he stated he
146 147

Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658, at note 102, supra Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp.2d 507, 511 (E.D. Va. 2009) 148 Id., at 512 149 See Couch, at note 7, supra 150 Ibid.

36 assumed someone, somewhere would give me something for it. 151 Courts have pointed out that Congress claimed the crucial elements of bad faith to mean the intent to trade on the goodwill of anothers mark. 152 Further, courts have held that registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA. 153 While the defendant in this case has not offered to sell the domain name to the plaintiff or to anyone else, it is clear from his statements that his primary, if not sole, intention when he registered the domain name was to sell it. The plaintiff, after using a reverse WhoIs search154, will be able to show bad faith on the defendants part by showing all of the couple hundred of domain names the defendant has registered, indicating his desire to sell these names to others at a later time. This case is basically the gardenvariety cybersquatting case, and it is activity like this that the ACPA was designed to prevent. As a result, the plaintiff should win in this scenario. This scenario does pose a more interesting strategic consideration as opposed to the other two scenarios. While this case seems to be fairly open and shut, this scenario also deals with a defendant who has shown a pattern of cybersquatting activities. Because of this, the plaintiff might not even consider using the UDRP proceedings, and sue the defendant in federal court instead. Here, the plaintiff might use the discovery process to supplement or confirm any previous investigation done by the plaintiff using an online search service to find out what domain names the plaintiff has registered and how many of them are infringing on others trademarks or service marks. This extra discovery could allow the plaintiff to build a case against the defendant for the awarding of statutory damages and possibly attorneys fees. However, the plaintiff would need to show the defendant has repeatedly engaged in a sufficient amount of cybersquatting activities that would rise to the level of malicious, fraudulent, willful or deliberate in
151 152

Ibid. Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004), citing S.Rep. No. 106-140, at 9. 153 Id., at 810, quoting Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003) 154 Various websites, such as www.domaintools.com, offer an online search where, for a small fee, customers are able to perform a search to discover the owner of a domain name. While the author is not sure if such a search is reliable enough to be admitted as evidence in federal litigation, these searches should be good enough for a plaintiff to look beforehand to see if a cybersquatter has had a pattern of registering trademarks as domain names.

37 nature as required by courts for the awarding of attorneys fees.155 Also, since courts have been reluctant in awarding attorneys fees in ACPA cases, there is a chance that a court may not award attorneys fees in this case either. The court might award statutory damages though, as a deterrent to any potential future cybersquatting activities by the defendant. The extra remedies available to the plaintiff by the ACPA give this scenario an extra wrinkle not present in the other scenarios, but these options might also make the selection between the ACPA and the UDRP a harder choice for the plaintiff.

C.

Scenario 3: www.proctorandgamblesucks.com
1. UDRP Proceeding In this scenario, chances are the respondents will not have much

communication with the complainant before the suit is filed, so the complainant will probably have to use the information they are able to get out of the registrar, along with a screen shot of the disputed website. However, since the respondents are a group of protesters who feel they are exercising their free speech rights, they will probably file a response. So, the complainant will probably not have to prove the case based solely on their complaint. The first factor in the UDRP test, showing the complainant has a trademark right in the name and that the domain name is identical or confusingly similar to its trademark rights, will probably be met with some controversy. The controversy will not come in the first part of this test. Proctor and Gamble is a registered trademark that has been in continuous use for over 150 years, and owns numerous brands of consumer goods.156 Instead the controversy will come from the identical or confusingly similar part of the test. UDRP arbitration panel decisions are split over whether a domain name that includes the word sucks at the end of the trademark is confusingly similar to the trademark. For example, some UDRP arbitration panels have held that the critical inquiry under this test is whether the mark and the domain name, when directly compared, are
155 156

Pinehurst, Inc. v. Wick, 256 F. Supp. 2d at 433 See, http://en.wikipedia.org/wiki/List_of_Procter_%26_Gamble_brands (last visited 30.August.2012)

38 identical or confusingly similar, and that including a derogatory term such as sucks does not dispel such confusing similarity.157 Also, other UDRP arbitration panels have held that an added derogatory word to a trademark can be considered confusingly similar because the added word is not the most prominent or obvious feature of the name. 158 Other UDRP arbitration panels have held a sucks domain name to be confusingly similar because the sucks website will appear in a search engine result list, thereby confusing internet search engines.159 Finally, UDRP arbitration panels have held that a domain name consisting of a trademark and a negative term are confusingly similar to the trademark because non-native English speakers may not recognize the negative connotations of a pejorative slang term included in a domain name.160 On the other side of the decisions, various UDRP arbitration panels have held that those current web users who do not know the negative meaning of the word sucks is too small number to be anything more than de minimis and should not be factored in assessing any potential confusing similarity between the trademark and the domain name. 161 Other UDRP panels have held that no reasonable internet user would believe that a sucks domain name is affiliated with or sponsored by the trademark owner, and the domain name could not be considered confusingly similar,162 and that no speaker of modern English would find it likely that a trademark owner would identify itself with a sucks domain name. 163 As a result, the complainant will probably want to stress that it is a multinational corporation with many consumers who are not native English speakers. These consumers/web users may not understand the negative

157

Vanguard Trademark Holdings USA, LLC v. European Travel Network, WIPO Case No. D2008-1325 (2008), citing Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D20080647. See also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (2000) 158 Socit Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327 (2009). See also, Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (2006) 159 Socit Air France v. MSA, Inc., WIPO Case No. D2007-0143 (2007) 160 Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D20080430 (2008), citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.3. See also, Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020 (2009) 161 Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253 (2008). See also, Asda Group Limited v. Mr. Paul Kilgour, WIPO Case No. D2002-0857 (2002). 162 Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (2001) 163 Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662

39 connotation attached to the word sucks which may lead these web users to think the respondents website is actually affiliated with the complainant. The complainant will also want to argue that an internet search engine will only take notice of the trademark part of the domain name and include the respondents website in a search of the complainants trademark. On the other side, the respondents will probably argue that no one could reasonably believe that a web user would think the respondents website is associated or affiliated with the complainant. The outcome of this issue seems to be a toss-up. Many panels have gone in both directions on this issue, which has left this issue to be one of the less clear issues in this scenario. As a result, the complainant may wish to choose a foreign arbitrator, as a foreign arbitrator could possibly be more sensitive to an issue that a non-native English could face when looking at domain names. If the arbitrators on the panel are American, they may be more apt to side with the respondent on this issue. It is in the second factor of the UDRP test, right or legitimate interest of the respondent in the domain name, where it is clearer. UDRP panels have consistently stated that individuals have a legitimate interest in operating and maintaining a domain name used for a criticism website.164 However, these panels have also stated the website must be a genuine criticism website and not a website that is really being used as a sham to sell the domain name, to settle another dispute between the parties, to advertise the goods or services of a competitor, or to provide links to a competitors website.165 Simply put, a showing of the respondents intent for commercial gain to misleadingly divert consumers or intent for commercial gain in tarnishing the complainants trademark or service mark will defeat any proposed legitimate interest in a criticism website.166

164

Bakers Delight Holdings Ltd. V. Andrew Austin, WIPO Case No. D2008-0006 (2008). See also, Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (2000), TMP Worldwide Inc. V. Jennifer L. Potter, WIPO Case No. D2000-0536 (2000), Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (2004), Dello Russo v. Guillaumin, WIPO Case No. D2006-1627 (2006), Socit Air France v. MSA, Inc., WIPO Case No. D2007-0143, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (2008), Sutherland Institute v. Continuative LLC, WIPO Case No. D20090693 (2009). 165 Bakers Delight Holdings Ltd. V. Andrew Austin, WIPO Case No. D2008-0006 166 Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014

40 Under this part of the test, chances are the respondents will prevail and eventually keep their domain names. The respondents are using the website for free speech criticism purposes. There has been no indication the respondents have offered to sell the domain names to the complainant or to anyone else. The respondents are not advertising the goods of a competitor of the complainant, nor are there any links to any competitors websites. Further, there is no indication of any previous dispute between the parties, so it would seem the respondents are not using their website to pressure the complainant into settling any other dispute. Finally, there is no indication the respondents are making any profit off of the use of the website. The respondents are using their website in a way that gives them a legitimate interest in the website, and as a result, the complainant will probably lose in an UDRP proceeding.

2.

ACPA Proceeding

In an ACPA proceeding for this scenario, the most important bad faith factor should probably be the following: the persons bona fide noncommercial or fair use of the mark in a site accessible under the domain name.167 There are other factors which would probably be significant in this case too, such as the persons offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the persons prior conduct indicating a pattern of such conduct168, along with the persons intent to divert consumers for the mark owners online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site. 169 However, the biggest issue in this scenario should be whether the defendants have a fair use in using the plaintiffs trademark as a domain name and the website as a means to criticize the practices allegedly done by the plaintiff.
167 168

Lanham Act, at 43(d)(1)(B)(i)(IV), 15 USC 1125(d)(1)(B)(i)(IV) Id., at 43(d)(1)(B)(i)(VI), 15 USC 1125(d)(1)(B)(i)(VI) 169 Id., at 43(d)(1)(B)(i)(V), 15 USC 1125(d)(1)(B)(i)(V)

41 Before even getting to the issue of whether the defendants actions in this scenario qualify as a permitted fair use of the plaintiffs trademark, the defendants may argue their actions are not of a commercial nature and as a result, are not subject to the ACPA. The courts have been split over this issue. For example, the Fifth Circuit Court of Appeals, in TMI, Inc. v. Maxwell,170 held the defendants actions in maintaining a gripe website criticizing the plaintiff was not considered as use in commerce, and that use in commerce is required by the Lanham Act. 171 However, the Ninth Circuit Court of Appeals, in Bosley Medical Institute, Inc. v. Kremer,172 held a year later that the ACPA does not contain a commercial use requirement, using the bad faith requirement instead. 173 In particular, the court stated the bad faith factor of bona fide noncommercial or fair use of the mark in a site accessible under the domain name would be meaningless is the statute exempted all noncommercial uses of a trademark within a domain name.
174

The Sixth Circuit Court of Appeals, in

DaimlerChrysler v. The Net, Inc,175 has also held the ACPA does not require commercial use. 176 The decisions claiming that commercial use is not required under the ACPA seem more reasonable, especially since, as the Ninth Circuit Court of Appeals pointed out, there is a noncommercial use in the bad faith factors. Another issue that could be addressed before looking at the defendants actions as a permissible fair use is the issue of whether the use of the domain name www.proctorandgamblesucks.com creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website as found in the bad faith factors of the ACPA.177 While there have been split UDRP arbitration panel decisions on this issue, 178 there has
170 171

368 F.3d 433 (5th Cir. 2004) See generally, TMI, Inc. v, Maxwell, 368 F.3d 433 (5th Cir. 2004) 172 403 F.3d 672 (9th Cir. 2005) 173 Id., at 680 174 Id., at 681 175 388 F.3d 201 (6th Cir. 2004) 176 In particular, the Sixth Circuit held a trademark owner asserting a claim under the ACPA action must establish the following: (1) it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendants domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owners mark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit. Id., at 204 177 Lanham Act, at 43(d)(1)(B)(i)(V), 15 USC 1125(d)(1)(B)(i)(V) 178 See UDRP Proceeding section for this scenario above.

42 generally not been such a divide in U.S. federal courts over this issue. Courts have generally held that a web user is not likely to think a domain name featuring a trademark with the word sucks afterwards is associated or sponsored by the trademark holder.179 Here, the defendants have created a domain name by taking the plaintiffs trademark and adding the word sucks after it in connection with a website criticizing various environmental and animal testing practices by the plaintiff. Following the decisions from previous cases regarding similar situations, it seems reasonable to think that a court in this scenario would also find that no reasonable web user would think the defendants website is connected in any way with the plaintiff. The most significant of the ACPAs bad faith factors in this case would probably be whether the defendants have a bona fide noncommercial or fair use of the plaintiffs trademark in a website accessible under the disputed domain name. 180 In this scenario, this factor brings with it two separate issues. First, there is a First Amendment issue in operating and maintaining a gripe site. Courts have held the First Amendment protects the rights of those who speak on the internet, including those who speak anonymously. 181 Also, courts have consistently held that trademark rights may be limited by First Amendment concerns.182 Here, the defendants are exercising their First Amendment rights in maintaining a web site that criticizes the plaintiffs policies towards animal testing and the environment. As the defendants criticisms of the plaintiff are generally regarded as protected free speech, it seems unlikely that a court will find in favor of the plaintiff exercising its trademark rights over the defendants First Amendment rights.183

179

Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp.2d 1161, 1164, 1165 n.2 (C.D. Cal. 1998); Salehoo Group Ltd. v. ABC Company, 722 F.Supp.2d 1210, 1217 (W.D. Wash. 2010) 180 Lanham Act, at 43(d)(1)(B)(i)(IV), 15 USC 1125(d)(1)(B)(i)(IV) 181 Salehoo Group, Ltd. v. ABC Company, 722 F.Supp.2d at 1213, citing Doe v. 2TheMart.com Inc., 140 F. Supp.2d 1088, 1092 (W.D. Wash. 2001), Reno v. Am. Civil Liberties Union, 521 U.S. 844, 853 (1997) 182 Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp.2d at 1166, citing L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.), cert denied, 483 U.S. 1013 (1987) 183 The Constitution does not permit the range of the anti-dilution statute to encompass the unauthorized use of a trademark in a noncommercial setting such as an editorial or artistic context. Bally Total Fitness Holding Corporation v. Faber, 29 F. Supp.2d at 1167

43 The second issue this factor brings is in the defendants actual use of the website. Courts have consistently held that comment and criticism constitute a bona fide noncommercial or fair use within the ACPAs bad faith factors.184 Here, the defendants website contains critical commentary on the plaintiffs practices regarding animal testing and the environment. Because of the critical commentary on the defendants website, the court in this scenario will probably hold this constitutes a fair use of the trademark provided by 43(d)(1)(B)(iv) of the Lanham Act. Finally, another bad faith factor that could be addressed in this scenario comes from the fact the defendants have not made any attempt to sell the domain names at issue. In Lamparello v. Falwell, the Fourth Circuit Court of Appeals held that since Lamparello only registered the domain name www.fallwell.com and made no attempt to sell the domain name, there was no evidence of any bad faith intent to profit under the ACPA.185 While it is possible that an argument showing the defendants bad faith could be made by the fact the defendants have registered four domain names in this scenario, a court looking at the ACPA factors in this case qualitatively in light of the circumstances186 will probably rule in favor of the defendants. The defendants use the domain names and the website for free speech purposes of criticism, no effort has been made to sell or transfer the domain names and there is no evidence of the defendants making any profit from the operation and maintenance of the website. Following the applicable case law relevant to this scenario, an ACPA proceeding here should probably favor the defendants. At first glance, despite the probability of the court probably ruling in favor of the defendants in this case, the plaintiff might still want to file an ACPA action, because of a possibility of the defendants defaulting rather than trying to engage in any expensive federal litigation. Since the defendants are a small group of activists, there is a chance the defendants would not able to afford the costs of federal litigation, which would leave them defaulting on this case and causing the domain names to be turned

184

Lamparello v. Falwell, 420 F.3d at 320, citing H.R. Rep. No 106-412, 1999 WL 970519 at *11 185 Id., at 321-22, citing S. Rep. No. 106-140, 1999 WL 594571, at *14 186 Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658, at note 102, supra

44 over to the plaintiff. However, there is also a distinct possibility of the defendants either defending the case pro se, or seeking pro bono assistance, as this is a matter where the defendant activist group would want to get their message heard. Also, with the possibility of a more favorable decision for the plaintiff in an UDRP Proceedings, especially if the plaintiff selects a foreign arbitrator, a proceeding under the UDRP might actually end up being a better option for the plaintiff in this scenario. As a result, this is a matter that should be considered carefully before advising a client about a cause of action in this scenario.

V.

Conclusion
The UDRP is a quick and inexpensive way to resolve domain name

disputes. A matter can be resolved within forty days, and it is less taxing on the clients time after filing the complaint. The UDRP does have a few shortcomings though, such as the lack of alternative remedies and no discovery provisions. However, it should be pointed out that the UDRP process is an alternative to litigation, and should not be seen as a substitute for domain name dispute litigation. The ACPA, on the other hand, since it is a litigation process, has a wider range of remedies, including injunctive relief, statutory damages and in rare cases, the awarding of attorneys fees and costs. Domain name registrars acting in bad faith can also be held accountable under the ACPA. However, the ACPA is a slower and far more expensive process than the UDRP arbitration proceedings. Also, the most typical remedy a plaintiff can get under the ACPA can also be achieved with an arbitration proceeding under the UDRP. Each of these policies has benefits and drawbacks that must be considered when entering into a domain name dispute. These differences allow a plaintiff different ways in which to pursue a resolution in a domain name dispute, depending upon the complexity of the case at hand as well as the remedy sought by the plaintiff. For most domain name dispute matters, the UDRP is usually the better process to use. The UDRP arbitration proceeding is very fast, relatively inexpensive, will avoid various jurisdictional issues and will use

45 arbitration panels consisting of experts in the field of trademark law. The ACPA will give a client more options in terms of relief, and will be a better option for certain cases, such as when a client wishes to pursue a cause of action against a domain name registrar, or when a client is seeking monetary relief. Naturally, what the client wants to achieve through a domain name dispute will determine the method used. But if all a client wants is to secure the infringing domain name from a cybersquatter and to get that domain name as quickly as possible, then the UDRP process will probably be the method used in such a matter.

46

List of Works Cited

Law Review Journal Articles
Delaney, John F. and Ford, M. Lorrane, The Law of the Internet: A Summary of U.S. Internet Caselaw and Legal Developments, 631 PLI/PAT 31 (2001) Efroni, Zohar, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum Shopping?, 26 COLUM. J.L. & ART S 335 (2003) Froomkin, A. Michael, Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 DUKE LAW JOURNAL 17 (2000) Greene, Philip J., Questioning Faith An Examination of the fair Use Defense within Internet Domain name Disputes, and the Role of Good or Bad Faith, 4 LOY. U. NEW ORLEANS SCH. L. L. & TECH. ANN. 45 (2004) Hwang, Jinku, Is the ACPA a Safe Haven for Trademark Infringers?Rethinking the Unilateral Application of the Lanham Act, 22 J. MARSHALL J. COMPUTER & INFO. L. 655 (2004) Martin, Elizabeth Robison, Too Famous to Live Long!: The Anticybersquatting Consumer Protection Act Sets its Sights to Eliminate Cybersquatter Opportunistic Claims on Domain Names, 31 ST. MARYS L.J. 797 (2000) Matorin, Mitchell J., and Boudett, Michael, Domain Name Disputes: Cases Illustrate Limitations of ICANN Policy, 45-APR B. B.J. 4 (2001) Nguyen, Xuan-Thao N., Blame it on the Cybersquatters: How Congress partially Ends the Circus among the Circuits with the Anticybersquatting Consumer Protection Act, 32 LOY. U. CHI. L.J. 777 (2001) Scaturro, Tanesa S., The Anticybersquatting Consumer Protection Act and the Uniform Domain Name Dispute Resolution Policy the First Decade: Looking back and Adapting Forward , 11 NEV. L.J. 877 (2011) Sharrock, Lisa M., The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework, 51 DUKE LAW JOURNAL 817 (2001)

Statute
15 USC 1125 (2006)

47

Administrative Rules
Asian Domain Name Dispute Resolution Centres Supplemental Rules to ICANNs Uniform Domain Name Dispute Resolution Policy Czech Arbitration Courts Supplemental Rules to ICANNs Uniform Domain Name Dispute Resolution Policy ICANN Registrar Accreditation Agreement ICANN Rules for Uniform Domain Name Dispute Resolution Policy ICANN Uniform Domain Name Dispute Resolution Policy National Arbitration Forums Supplemental Rules to ICANNs Uniform Domain Name Dispute Resolution Policy World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Treatises
Ballon, Ian C., E-Commerce and Internet Law (2d ed. 2011) Mohr, Stephen F., The New Federal Trademark Dilution Act: Expanding the Rights of Trademark Owners, in Annual Advanced Seminar on Trademark Law 1997 (PLI Patents, Copyrights, Trademarks & Literary Prop. Course, Handbook Series No. G-476, 1997)

Cases
United States Appellate Cases Taylor Wine Co. v. Bully Hill Vineyards, 569 F. 2d 731 (2d Cir. 1978) Panavision Intl, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) Sportys Farm LLC v. Sportsmans Market, Inc., 202 F.3d 489 (2d Cir. 2000) People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214(4th Cir. 2002) Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) Interactive Prods. Corp. v. A2Z Mobile Office Solutions, Inc., 326 F.3d 687 (6th Cir. 2003)

48 Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) TMI, Inc. v, Maxwell, 368 F.3d 433 (5th Cir. 2004) DaimlerChrysler v. The Net, Inc., 388 F.3d 201 (6th Cir. 2004) Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005) Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009) Carnivale v. Staub Design LLC, 456 Fed.Appx. 104 (3rd Cir. 2012)

United States Federal District Cases Basile, S.P.A. v. Basile, 899 F.2d 35 (D.C. Cir. 1990) Robin Woods, Inc. v. Woods, 815 F.Supp. 856 (W.D. Penn. 1992) Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) Acad. of Motion Picture Arts & Scis. v. Network Solutions, Inc., 989 F. Supp. 1276 (C.D. Cal. 1997) Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998) HQM, Ltd. V. Hatfield, 71 F. Supp.2d 500 (D. Md. 1999) Nissan Motor Co., Ltd. v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (N.D. Cal. 2000) Weber-Stephen Products v. Armitage Hardware, 54 U.S.P.Q. 2d 1766 (N.D. Ill. 2000) Hartog & Co. AS v. Swix.com, 136 F.Supp.2d 531 (E.D. Va. 2001) Parisi v. Netlearning, Inc., 139 F. Supp.2d 745 (E.D. Va. 2001) Pinehurst, Inc. v. Wick, 256 F. Supp.2d 424 (M.D.N.C. 2003) Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp.2d 507 (E.D. Va. 2009) Volvo Trademark Holding AB, v. Volvospares.com, 703 F.Supp.2d 563 (E.D. Va. 2010) Salehoo Group Ltd. v. ABC Company, 722 F.Supp.2d 1210 (W.D. Wash. 2010) Carnivale v. Staub Design LLC, 754 F.Supp.2d 652 (D.Del. 2010)

49 WIPO Administrative Panel Decisions Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (2000) Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (2000) Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (2000) TMP Worldwide Inc. V. Jennifer L. Potter, WIPO Case No. D2000-0536 (2000) Do the Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 (2000) Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D20000662 (2000) Este Lauder, Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (2000) Springsteen v. Burgar, WIPO Case No. D2000-1532 (2000) A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900 (2001) Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (2001) Asda Group Limited v. Mr. Paul Kilgour, WIPO Case No. D2002-0857 (2002) Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (2004) Tom Cruise v. Networks Operations Center/Alberta Hot Rods, WIPO Case No. D20060560 (2006) Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (2006) Socit Air France v. MSA, Inc., WIPO Case No. D2007-0143 (2007) Bakers Delight Holdings Ltd. V. Andrew Austin, WIPO Case No. D2008-0006 (2008) Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253 (2008) Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D20080430 (2008) Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (2008) Vanguard Trademark Holdings USA, LLC v. European Travel Network, WIPO Case No. D2008-1325 (2008) Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020 (2009)

50

Socit Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327 (2009) Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563 (2009) Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693 (2009) Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920 (2010)

News Articles/ Journal Articles

Couch, Greg, Draft Day is Going to the Cyberdogs, Chicago Sun-Times, Vol. 54, No. 56, (11.April.2001), p. 148 Estavillo, Maricel, Cybersquatting Cases Reached New Record in 2011, WIPO Reports, Intellectual Property Watch (3.April.2012) New, William, WIPO says Cybersquatting Filings Sharply Up, Watches ICANNs Domain Name Expansion, Intellectual Property Watch (31.March.2011). Squyres, Mary, Enforcement of Domain Name Rights through ICANN, The John Marshall Law School Center for Intellectual Property Law 45th Annual Conference on Developments on Intellectual Property Law, 23.Feb.2001 Thompson, Nicholas, Masters of the Domain, Foreign Policy, No. 142 (May Jun., 2004)