international intellectual property profs. atik and manheim fall, 2006 cybersquatting [slides by...

International Intellectual Property

Profs. Atik and ManheimFall, 2006

Cybersquatting[slides by David Steele]

Fall, 2006 Int'l IP 2

CybersquattingFederal cause of actionState cause of action

Cal Bus & Prof. Code § 17525(a)It is unlawful for a person, with a bad faith

intent to register, traffic in, or use a domain name, that is identical or confusingly similar to the personal name of another living person or deceased personality, without regard to the goods or services of the parties.


Federal cause of actionAnticybersquatting Consumer Protection

ActAlso known as the ACPA15 U.S.C. 1125(d)§43(d) of the Lanham Act

http://www.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001125----000-.html


15 U.S.C. 1125(d) - Cyberpiracy

15 U.S.C. 1125(d)(1)(A)provides a civil action by the owner of a

markany mark protected under Lanham actwithout regard to the goods or services of

the parties, that person


15 U.S.C. 1125(d)(1)(A)bad faith intent to profit from that

mark; andregisters, traffics in, or uses a domain

name that--identical or confusingly similar to a

distinctive mark;identical or confusingly similar to a

famous mark;dilutive of a famous mark


15 U.S.C. 1125(d)(1)(B)determining “a bad faith intent to profit”consider factors (but not limited to)

Defensive factorsregistrant’s rights in the domain name;legal name or commonly known by name;bona fide offering of any goods or services;noncommercial or fair use of the mark


15 U.S.C. 1125(d)(1)(B)determining “a bad faith intent to profit”consider factors (but not limited to)

Offensive factorsregistrant’s intent to divert consumers to its site for

commercial gain or to tarnish or disparage the mark

registrant’s offer to sell domain name registrant’s uses fake contact information when

registeringregistrant’s registration of multiple domain names

that are TMsfame of mark within the meaning of subsection (c)

(1) of section 43.


Remedies II15 USC 1117(d)

statutory damages $1,000 - $100,000 per domain name for violation of 1125(d)(1)

the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits,

as the court considers just


Retroactiveinjunctive relief also okdamages ok if

registered after act; orrenewed after act; orused after act.


15 U.S.C. 1125(d)(2)(D)Remedy for in rem action - injunction

only(D)(i) The remedies in an in rem action

under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark


15 U.S.C. 1125(d)(2)(D)Immunity for registrars and registries

(D)(ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.


In Rem actions in non-ACPA cases?What if the domain name (the

defendant) violates via dilution or infringement? Can a plaintiff sue the domain name in rem?

Split in circuits4th Cir. Says sure…


Safe Harbor15 U.S.C. 1125(d)(1)(B)(ii) Bad faith intent shall not be found if

court determines def. believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

Def. Must BOTH believe; and have reasonable grounds to believe


Understanding ICANNThe Internet Corporation for Assigned Names

and Numbers (ICANN) is a technical coordination body for the Internet. Created in October 1998 by a broad coalition of the Internet's business, technical, academic, and user communities, ICANN is assuming responsibility for a set of technical functions previously performed under U.S. government contract by IANA and other groups.

http://www.icann.org/

http://www.iana.org/


Understanding ICANNSpecifically, ICANN coordinates the

assignment of the following identifiers that must be globally unique for the Internet to function:Internet domain namesIP address numbersprotocol parameter and port numbers


ICANN and Domain Name Disputes one of the key functions of ICANN is to create and

administrate disputes over domain names one of the factions at the negotiating table was the

TM lobby the TM lobby pressured US Gov., who pressured ICANN

ICANN enacts the UDRP

http://www.icann.org/udrp/


Uniform Dispute Resolution Policy

application of policy by contractICANN - Registrar - Registrantpolicy issue - why do this at all?


UDRPProcedural issues

Dispute ProvidersWIPONational Arbitration ForumCPR Institute for Dispute Resolution

# of panel member - one or three memberspayment of fees

WIPO - $1,500; NAF - $1,150Language of proceeding - same as language of

registration agreementTime deadline


URDP - Prima Facie ElementsComplainant has burden to prove all

of the following three elements:The D.N. is identical or confusingly similar

to Complainant’s mark;Respondent has no rights or legitimate

interest in the D.N.; andRespondent registered and is using D.N.

in bad faith.


UDRP - Prong 1The D.N. is identical or confusingly

similar to Complainant’s mark;Same language as ACPANOT likelihood of confusion testignore TLD string


UDRP - Prong 2Respondent Has No Rights or

Legitimate Interest in the Domain Namethree expressly enumerated defenses, more

availablebefore notice of dispute, use or preparation to use in

connection with a bona fide offering of goods or servicesN.B. unlawful is not bona

commonly known by the domain namelegitimate noncommercial or fair use of domain name

without intent to misleading divert consumers or tarnish mark


UDRP - Prong 3Registration and Use In Bad Faith

not really both…four expressly enumerated

circumstances of bad faith, more available1) acquired primarily to sell to

Complainant / mark owner for $$2) to prevent mark owner from using it -

must also show pattern


UDRP - Prong 3four expressly enumerated

circumstances of bad faith, more available3) primarily for the purpose of disrupting

the business of a competitor4) intentionally attempted to attract, for

commercial gain, Internet users to your web site by creating a likelihood of confusion with the complainant's mark


Implementing UDRP decisions

time line10 business days for registrant to file suit

n.b. suit should be filed in selected mutual jdxbut what if it’s not?? See ACPA 15 U.S.C.

1114 (d)(2)(D)(i)(II) cited aboveafter 10 days, complainant sends

registrar new whois detailsregistrar implements decision

what if registrar doesn’t?what if registrar is told by local court not to?


Appeals of UDRPabout the Federal Arbitration Actpromotes arbitrationpromotes contractsstandard of review

international intellectual property profs. atik and manheim fall, 2006 cybersquatting [slides by...

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