ssrn-id2045222-conflicts between trademarks and domain names a critical analysis

7/29/2019 SSRN-Id2045222-Conflicts Between Trademarks and Domain Names a Critical Analysis

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Conflicts between Trademarks and

Domain Names:

A Critical Analysis

Compiled by:Snehlata Singh

([email protected])


2/49Electronic copy available at: http://ssrn.com/abstract=2045222

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ACKNOWLDGEMENTS:

First of all, I would like to thank my Mother and my guru Shree Sainath for their blessings

throughout. I thank my supervisors Mr Howard Johnson and Dr Mike Adcock for their

valuable advice and support. I would also like to thank the module tutor Dr Jonathan

Mukwiri for helping me understand the basic concepts underlying the issue and finally, I

thank Durham University for giving me access to their library and databases.


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ABSTRACT:

The essay discusses the issue of conflicts between trademarks and domain names. It discusses

in detail the causes and kinds of the disputes and what the legal system has to offer to this

condition. As the essay proceeds, it is made apparent that the current legal system is

incapable of handling these issues effectively. The essay concludes with the same remark and

suggestions that might help in settling these disputes.


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LIST OF CONTENTS

Acknowledgements2Abstract ..................... 3List of Contents...... 4List of Figures 5List of Abbreviat ions. 6

Chapter 1: Introduction............................................................. 7

Chapter 2:Domain Names and Trademarks: An Overview.. 82.1. What is a Domain Name?....................................................................... 82.2. What is a Trademark?.............................................................................102.3. Domain Names vs. Trademarks..11

Chapter 3: The Kind of Disputes Between Trademarks and Domain Names...143.1. Cybersquatting143.2. Reverse Domain Name Hijacking...163.3. Typosquatting..17

Chapter 4: Protection of Domain Names: UK Trademark Law 194.1. Trademark Infringement. 19

4.1.a. Section 10(1) TMA 1994. 204.1.b. Section 10(2) TMA 1994. 214.1.c. Section 10(3) TMA 1994. 23

4.2. Domain Name and Passing Off.. 25Chapter 5: The Protection of Domain Names: International Law 27

5.1. The Need, Purpose and Creation of ICANN. 275.2. The UDRP. 28

Chapter 6: Analysis of ICANNs UDRP: Is UDRP the Required Solution.. 346.1. Critical Examination of Grounds Laid Down by UDRP for Initiating aClaim.. 346.2. Allegation of Being Biased Towards the Trademark Holders 366.3. General Criticisms....................................................................................38

Chapter 7: Conclusion and Siggestions......................................................................397.1. Conclusion ..............................................................................................397.2. Suggestions..............................................................................................39

Bibliography...............................................................................................................42


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LIST OF FIGURES

Figure 1...... 9Figure 2...... 10Figure 3...... 10Figure 4...... 10Figure 5...... 10Figure 6.......26


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LIST OF ABBREVIATIONS

IP Internet Protocol

SLD Second Level DomainTLD Top Level Domain

gTLD generic Top Level Domain

ccTLD country code Top Level Domain

DNS Domain Name System

ICANN Internet Corporation for Assigned Names and Numbers

IANA Internet Assigned Numbers Authority

US United StatesUDRP Uniform Dispute Resolution Policy

RDNH Reverse Domain Name Hijacking

DCI Digital Consulting Incorporation

Inc. Incorporation

NSI Network Services Incorporation

UK United Kingdom

TMA Trademarks Act 1994ECJ European Court of Justice

WIPO World Intellectual Property Organization

SCT Standing Committee on the Law of Trademarks

EU European Union

BT British Telecommunications

NAF National Arbitration Forum

CPR Conflict Prevention and Resolution

eRes eResolution

ADNDRC Asian Domain Dispute Resolution Centre

CAC Czech Arbitration Court

USA United States of America

INTA International Trademark Association


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CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES

A CRITICAL ANALYSIS

CHAPTER 1:

INTRODUCTION

The conflict between trademarks and domain names is a topic of intensive discussion

throughout the world. The essay analyses the conflicts and the contribution of the law

(domestic and international) to resolve those conflicts. A trademark distinguishes the goods

and services of one origin from the others. In this youth age of internet where e-commerce

is so popular, the owners would like their domain names to be distinctive and possess all

other characteristics as that of their trademark, which encourages them to use their trademarks as domain names. The essay is divided in further six chapters. The next chapter

introduces the trademarks, domain names and the reasons that have led to the conflicts among

the both. The third chapter lays down the kinds of conflicts that have arised (Cybersquatting,

typosquatting and reverse domain name hijacking). The fourth chapter details on the

provisions offered by the UK Trademark law for the purpose of protecting the domain names.

Further detailed is a chapter introducing the ICANN and UDRP and their motive to resolve

the issues arising out of domain names and trademarks. The sixth chapter criticises thegrounds laid down by UDRP and how it acts bias towards the complainants not leaving much

for the respondents. The ambiguity, non-uniformity and other drawbacks are discussed in

detail in this chapter. Finally, the essay comes to an end with conclusions and suggestions in

chapter seven. The entire analysis intends to show how the current legal system fails to deal

effectively with this problem. However, it cannot be denied that a fair attempt has been made

to do so. Apparently, much stringent laws are required to deal with the vast world of internet

and the conflicts therein.


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CHAPTER 2:

DOMAIN NAMES AND TRADEMARKS: AN OVERVIEW

2.1. What is a Domain Name?

The Internet can be defined as a vast global network that links millions of computers for the

purpose of communication and sharing information. 1 A huge number of websites and web

pages can be accessed via Internet. 2The websites are identified by their Internet Protocol (IP)

addresses which are in the form of four octets (numbers) separated by full stops. 3 For

example, 192.168.1.1 is the default IP address of Linksys Broadband Routers. Since these

numbers are extremely difficult to memorize and are not associated with the name of the

brand or the website, a corresponding and user-friendly alphanumeric address called domainnames is preferred. 4 A domain name identifies a website by using a unique name, which is

usually the brands name or the trademark. 5For example, www.debenhams.com is the website

for the department stores called Debenhams and its IP address is 129.35.75.202. So when the

user types a domain name, the computer locates the site with the help of the IP address and

thus provides access to the information. For example, when a user enters in

the search field, he will be directed to the homepage of the website of Debenhams.

Structure of the Domain Name System

A domain name is a unique identifier for a location on the internet. 6

1 Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights (2007) Stanford's Center for Internet and Society Accessed 5 September 2011Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 3

2Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267

3Paul Todd, E-Commerce Law (Cavendish 2005) at Page 25

4Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 3

5Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267

6Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169


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www. debenhams . com

Figure 1

A Domain name is compiled of three parts (Figure 1)7

. Each of these parts is separated by adot . The first part fulfils the purpose of identifying the server. In the above example,

www identifies the World Wide Web Server. The second part is a very important part and

is called Second Level Domains (SLDs). It is the most important part because it identifies the

user/company. In the example above, it is easy to guess that the website belongs to the

Debenhams stores. The exclusivity of the SLDs is the sole criteria of registering a domain

name. For example, the SLD oxford was taken first by a consulting firm having website

www.oxford.com . Therefore, the University of Oxford had to use only ox as the SLD in

their website www.ox.ac.uk .Another similar example is the domain name of Kingfisher

Airlines. Since the domain name www.kingfisher.com was taken by some retail business

group, the popular group of airlines had to use flykingfisher as their SLD in their website

www.flykingfisher.com . Apparently, no two websites can possess the same SLD as it must be

distinctive. The third part of the domain name is called Top Level Domains (TLDs). It can

serve many purposes. One of them is that it helps in identifying the category of the user. To

name a few, the TLD .org is used by non-profit organizations ( www.watchtower.org ),

.int is used by international treaty based organizations ( www.wipo.int ), .com is used

bycommercial entities ( www.wwe.com ), .gov is used by governmental organizations

(www.direct.gov.uk ), .edu is used by educational institutions ( www.wwu.edu ).These are

called the generic Top Level Domains (gTLDs). The TLDs can also identify the origin

country of the company as they use the two letter ISO Country Code. For example,

www.argos.co.uk implies that the company is based in the UK. Similarly www.bsnl.co.in

7 Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution (1998-1999) 33 USFLRev 641

Identifies theServer

Top Level Domain Name(TLD)

Second Level Domain (SLD)


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implies that the company is based in India. This is called country code Top Level Domain

(ccTLD).

2.2. What is a Trademark?

Section 1(1) of The Trade Mark Act 1994 defines a trademark in the following words:

Any sign capable of being represented graphically which is capable of distinguishing goods

or services of one undertaking from those of other undertakings 8

A Trademark may be any sign that is distinctive. The distinctiveness of this mark is important

as the main purpose of a trademark is to help the consumers in identifying the unique source

of the product or services. In other words, a trademark portrays the authenticity of a business. 9

A trade mark may, in particular, consist of words (including personal names), designs,

letters, numerals or the shape of goods or their packaging. 10

A trademark could be any kind of unique representation as long as it is capable of being

distinctive. It may be a letter or combination of letters, a logo, a picture or a slogan, a sound

or a shape. Examples of some well known trademarks are given below:

Figure 2 Figure 3 Figure 4 Figure 5

Figures 2, 3, 4 and 5 represents the trademarks of the famous brands Apple Computers,

McDonalds restaurants, Coca Cola soft drink and Unilever Group respectively.

8Section 1 (1) of Trade Marks Act 1994

9 Accessed 1 September 2011

10Section 1(1) of the Trade Marks Act 1994


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2.3. Domain Names vs Trademarks

The system of domain names is one of the more important ways in which the internet is

humanised and made comprehensible to non specialists. 11

Electronic Commerce is rapidly gaining in popularity and taking an increasing proportion of

consumer transactions. Therefore, keeping the electronic trade and advertisements into

consideration, the brands choose domain names that often correspond wholly or in part to

their registered or unregistered trademarks. In the article Domain Name and Dispute

Resolution 12 , Ian Tollett lays down three major differences in the registration of domain

names and trademarks. Firstly, unlike trademarks, the concept of confusingly similar does

not exist in the domain names. 13 It is absolutely possible for two domain names to be

extremely closely similar. Say there is a possibility of existence of www.abcd.com and

www.ab-cd.com .In case of trademarks, even a little similarity may result in the refusal to

register the mark. For instance, a beverage manufacturing company could not register the

trademark Koka Kola as it resembles the well known trademark Coca Cola. 14Secondly,

unlike domain names, the registration of trademarks is subjected to the classification system

meaning identical trademarks that are used to identify different products and services can

exist. 15 A domain name can be owned by one person only irrespective of the goods and

services offered by the owner of the domain name. And thirdly, national boundaries are not

recognized by the domain name system. 16The gTLD could be registered and accessed from

any region. The ccTLD are registered in the country where the company operates but can be

accessed from any country. It is argued that the main reason for the disputes between

trademarks and domain names is that the trademark law is territorial, whereas the internet law

is global. 17

11Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2005) at Page 165


13Ibid

14David V Radack, Likelihood of Confusion-The Basis for Trademark Infringement Accessed 4 September 2011


16Ibid

17 Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 135


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The registration of domain names is based on the principle of First-Come-First-Served. The

Domain Name System (DNS) is managed by Internet Corporation for Assigned Names and

Numbers (ICANN). The gTLD must be registered with an ICANN Accredited Registrar. 18

(The list of all the registrars with an authority to register a gTLD under ICANN is available

on the website of ICANN) 19 The ccTLD are registered by the country code administrator of

each country. 20 These administrators get their authority of registration by Internet Assigned

Numbers Authority (IANA), which is operated by ICANN. 21

It is also important to note that there are fewer formalities with the domain registration

system than most trade mark systems and thus less inquiry into the validity of the registration.

It should also be noted that even if a company has not formally registered a trade mark they

may have common law rights based on actual use and which can be protected by the commonlaw tort of passing off at common law and unfair competition law in civil law systems. Many

actions involved both action for breach of a registered trade mark and passing-off.

All these reasons have the potential to lead to conflicts between owners of domain names and

registered trademarks. There are many cases dealing with this issue. In Pitman training Ltd v

Nominet UK 22 , dispute arose over the domain name pitman.co.uk as the same domain name

was allocated to two parties. As a result, the party who was allocated the domain name first

was given the ownership.

The most recent case involving the domain name and trademark controversy is British

Telecommunication plc v One in a Million Ltd. 23The defendant faced many legal suits against

him accusing him of infringement of trademarks by blocking the domain names of many

well-known trademarks. The defendant along with Mr Richard Conway (owner of Global

Media Communications) and Mr. Julian Nicholson (owner of Junic) reserved various

trademark-based domain names and called themselves dealers in internet domain names.The domain names blocked by them included cadburys.com, burger-king.com,

18 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267


20 Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169


22[1997] EWHC Ch 367

23[1999] 4 All ER 476, [1999] RPC 1


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sainsbury.com, marksandspencer.com, macdonalds.com, buckinghampalace.org,

ladbrokes.com, spice-girls.net and cellnet.net (blocked by One in a Million) and virgin.org,

spicegirls.com, orange.net, leedsunited.com, itn.org and marksandspencer.co.uk (Blocked by

Global Media Communications) and the domain name spicegirls.org was blocked by Junic.

An attempt was made to sell the domain names of burger king and British Telecom for

25000 and 4700 respectively. The English Court of Appeal held the defendant liable, using

the common law civil wrong of passing off and confirmed that the intention of the

defendant was only to suck money from the trademark owners.


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CHAPTER 3:

THE KIND OF DISPUTES BETWEEN TRADEMARKS

AND DOMAIN NAMES

The previous chapter discussed in detail the reasons of conflicts arising between trademarks

and domain name owners. This chapter will discuss the types and purpose of conflicts that

arises between the two and some of the popular cases discussing the same issue.

It is a well proven fact that no crime is committed without a benefit. For the purpose of

commercial benefit, the following ways are often adopted; Cybersquatting, Reverse Domain

Name Hijacking and Typosquatting.

3.1.Cybersquatting

A cybersquatter is a party who possesses no legitimate interest in a trademark and attempts

to profit by registering the trademark as a domain name before the rightful trademark owner

can do so. 24

Apparently , cybersquatting (also called domain squatting) is a situation where a person

acquires a domain name in which he has no legal interest, with a mala-fide intention to gain

profit for selling or licensing it to the company to whom the domain name rightfully belongs.

It is a common practice for companies to use their trademarks as their domain names.

Cybersquatters beat a company to the punch by registering a domain name which they think

the company wants own for the purpose of online advertising and will be prepared to spend a

huge amount for acquiring the same. It is to note that a cybersquatter has no intention to use

the domain name or maintain an active website. The most popular defendant involved in

cybersquatting was Dennis Toeppen, who had blocked over hundred domain names that

corresponded to well-known trademarks and was successful in selling them to the companies

for prices as high as $15000. These trademarks-based-domain names included high profile

organizations such as Delta Airlines and Lufthansa. One of his victims, Panavision

International filed a law suit against him ( Panavision v Toeppen 25). The case along with some

of the landmark cybersquatting cases are discussed below:

24 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267

25141 F. 3d 1316 (9 th Cir. 1998)


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Panavision v Toeppen 26

In this US case, the plaintiff Panavision International held the ownership of marks

Panavision and Panaflex. The defendant Dennis Toeppen had registered the domain

names panavision.com and panaflex.com and demanded $13,000 when Panavision asked

him to relinquish the domain name. He had no interest in the domain name was proven by the

fact that he did not use the websites. The website panavision.com simply contained images

of Pana, Illinois and the website panaflex.com just contained one word HELLO. 27 The

District Court and the Appellate Court held that Toeppens act was clearly done with an

intention of arbitraging and was not benign as he blocked hundreds of domain names with the

mala-fide intent to profit from the goodwill of the trademark owners and "act[s] as a

'spoiler,' preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee." 28

Avery Denninson Corporation v Sumpton 29

The facts of this US case involved the defendant reserving 12,000 domain names that

correspond to common last names and licensing those names to be used as e-mail addresses.

The court held the defendant as a cybersquatter as he registered the domain name not for his

own use, but for preventing others from using them without his consent. 30This case raised avery interesting question. The defendant argued that licensing the domain name was his

business. Unexpectedly the courts did not held the alleged business...[was] a sham as a

matter of law 31 and the plaintiffs must pay a sum of $300 for each domain name avery.net

and dennison.net so that the defendants are not deprived of the appropriate profit of their

business.

Apart from the unfair sucking of money from the trademark owners, Cybersquatting is

capable of doing severe damage. Since online shopping is so popular these days ,

26 Ibid


28 Sam Tahmassebi, Panavision International v Toeppen (2001-2002) 12 J Contemp Legal Issues 513

29999 F. Supp.1337 (C.D.Cal.1998)

30Ibid at Page 1337

31 Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution (1998-1999) 33 USFL Rev641


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cybersquatting might lead to the users on a fake website and enter their bank account or credit

card details, thus constituting another serious cyber crime called phishing. 32Sometimes

cybersquatting might have been committed not for the purpose of money but just for drawing

people to the website. In other words to draw on the magnetism that attaches to the

mark. 33Recently, the famous toy manufacturer company Lego recently made a comment

that Cybersquatters cant be beaten and trademark is helpless against infringement after

filing 275 UDRP complaints of cybersquatting. 34

Therefore, cybersquatting is an important issue which must be looked upon seriously.

3.2. Reverse Domain Name Hijacking

Reverse Domain Name Hijacking (RDNH), also called reverse cybersquatting, involves the

trademark owner making a false claim in order to acquire a domain name. It is defined in

Rule 1 of the UDRP Rules as using the Policy in bad faith to attempt to deprive a registered

domain-name holder of a domain name. 35Also the burden of proof lies on the respondent to

prove the presence of the element of bad faith and mala-fide intention of acquiring the

domain name. 36 Rule 15(e) further holds any complain made in bad faith, as an abuse of the

administrative process. 37

One recent instance of this type of conflicts is the case of Data Concepts Inc v Digital

Consulting Inc 38 . Digital Consulting Inc. registered the trademark DCI (in 1987) whereas

Data Concepts Inc had registered the domain name dci.com in 1993. Digital Consulting Inc

initiated a claim for the possession of the domain name and won in the NSI and Federal

District Court. However, in an appeal to the Sixth Circuit Court of Appeals, the earlier

32Reid Goldsborough, Cybersquatting and its possible remedies Business Journal (New York 18 September 2009) Accessed 3 September 2011

33Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 135


35Rule 1 of UDRP Policy

36Zinatul A Zainol , The Chronicles of Electronic Commerce: Reverse Domain Name Hijacking under the Uniform DisputeResolution Policy (2010) 16 European Law Journal 233 at Page 235

37Ibid, Rule 15 (e) of UDRP Policy

38150 F3d 620, 47 USPQ2d 1672 (6 th Cir. 1998)


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decisions were reversed saying that the petitioner was unaware of the trademark of the

defendant during the time of registration of its domain name and held that not all the

domain names function as trademarks. 39In this case, the trademark owner was even warned

by the court regarding weakening his trademark rights in future. 40

3.3. Typosquatting

Another way of gaining commercial benefit is by buying a domain name which is

confusingly similar to a well known existing domain name. There is only slight difference in

the domain name from the actual domain name so that in case the user ends up making a

typing error, they are automatically redirected to the replica website and get caught in

mousetrapping. In this scenario, the user gets barraged with advertisements. 41A domain

name which is strikingly similar to another domain name is considered to be registered in

bad faith according to the Article 4b(iv) of the UDRP. For instance, Microsoft had filed

more than 300 cases complaining the registration of misleading and confusingly similar

domain names. 42

The most popular case involving typosquatting is the US case of Shields v Zuccarini 43 , the

accused John Zuccarini registered the misspelled domain names of many popular websites

and when the user would be diverted to those websites, he was mousetrapped and will have toclick on the succession of advertising window in order to exit, which profited the accused

with ten to twenty-five cents a click. 44 The first claim against him was brought by the artist

owner of Joe Cartoon Joseph Shields and was made to pay a compensation of $10,000

along with a permanent injunction, but he continued with his activities. Afterwards came a

series of claims by individuals and corporations. It was then found that Zuccarini activities

extended to some popular brands and celebritys websites. Claims were also brought by the

Wall Street Journal, Encyclopaedia, Calvin Klien, Yahoo! and Britannica. The court imposed 39 Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking (1998-1999) 21 Hastings Comm &Ent LJ 535 at page 543

40Ibid at Page 544

41 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267 at page 275

42Accessed 6September 2011

4389 F.Supp. 2d 634 (E.D.Pa.200)

44 Regan Lane Williams, Trademark Law on the Internet-Mousetrapped-Shields v Zuccarini, 89 F Supp 2d ^34(E.D.Pa.2000) (2001-2002) 6 Computer L Rev & Tech J 329 at Page 329


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a total of $88,000 fine but he still did not stop. On further claims, he remained unavailable for

the hearings. The courts addressed him as a person who had discovered a simple, yet highly

lucrative moneymaking scheme. While never leaving his apartment, he could collect nearly a

million dollars a year in advertising royalties. 45

In another type of typosquatting, the typosquatter registers some trademarks and owns the

related domain names and publishes information on those websites which are contradictory to

the original trademark owners website. 46

45Ibid at Page 334

46 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267 at page 275


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CHAPTER 4:

PROTECTION OF DOMAIN NAMES: UK TRADEMARK LAW

The first two chapters discussed the trademarks, domain names, causes of disputes and kinds

of disputes that exist between them. This chapter deals in particular with what Trademark

Law in UK has to offer to the situation. UK law does not have any specific legislation dealing

with the domain names. Also there are very few cases that have been resolved in courts,

probably because litigation is not the first choice of the parties. 47 To name a few of the

popular cases dealt by UK courts ; Harrods Ltd v UK Network Services Ltd 48 , Pitman

Training Ltd v Nominet UK 49 and Prince plc v Prince Sports Group Inc 50 . However, these

cases did not succeed in providing a clear insight into the trademark issue surrounding these

conflicts. 51

A very important thing to keep in mind is that the trademark can be a domain name but it is

not necessary that the domain name is the trademark of the company. A domain name does

not function as a trademark. 52 In order to resolve the trademark-domain name disputes, the

court relies on two main legal grounds:

Trademark Infringement

Passing off

4.1. Trademark Infringement

In order to constitute infringement, the three conditions should meet:

Confusing similarity Bad faith

No rights and legitimate interests


48(Ch.D, unreported, 1996) (1997) 19 EIPR 401

49[1997] FSR 797

50[1998] FSR 21


52 Ibid at Page 137


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Apparently the domain names have been treated like trademarks that are capable of being

infringed. 53Section 10 (1), 10(2) and 10(3) of Trademarks Act 1994 (Hereinafter TMA) deals

with the issue of infringement of trademarks. The relationships of these sections with domain

names are discussed in detail below:

4.1.a. Section 10(1) TMA 1994

Section 10(1) of TMA 1994 says:

A person infringes a registered trade mark if he uses in the course of trade a sign which is

identical with the trade mark in relation to goods or services which are identical with those

for which it is registered 54

In order to establish infringement under this section, the domain name must satisfy the

following conditions:

It must be deceptively similar or substantially identical to the registered trademark. It must be used in relation to identical goods and services with respect to which the

trademark was registered.

It is to note that the likelihood of confusion condition need not be fulfilled to proveinfringement under this section. 55For the purpose of better understanding of this section, it is

important to know what the terms identical mark and identical goods or services mean.

Identical Mark: For the purpose of this section, it must be taken into account that in

order to prove infringement, the term identical does not mean absolutely

identical. 56For instance, in the case of Compass Publishing v Compass Logistics 57 ,

the Laddie J held that Compass Logistics could not be considered identical to

Compass and held that Identity exists where the marks look and sound identical


54Section 10(1) of TMA 1994

55Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education TechnologyAssociation (April 2006) at Page 17

56Ibid

57[2004] EWHC 520 (Ch)


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save to the eye or ear of an expert. Differences which ordinary members of the public

will not notice...can be ignored. 58

Identical Goods or Services: Not only the mark, but also the goods and services of the

alleged infringer must be identical, to be held liable under this section.

Avnet Inc v Isoact Limited 59

The case of Avnet Inc v Isoact Limited 60 can be seen as one of domain name envy. 61The

petitioners carried the business of advertising various manufacturers through catalogues and

were the owner of trademark Avnet. The defendants on the other hand registered

avnet.co.uk, a website which privileged the customers to display their own advertisements.

Avnet Inc. claimed that Isoact infringed their trademark under Section 10(1) TMA as the

mark was used in relation to identical goods and services. Jacob J however held that no such

infringement took place as Avnet was registered under Class 35 (advertising and promotional

services), whereas Isoact acted as an Internet Service Provider (Class 42). Hence, Isoact was

allowed to keep the domain name. This case clearly held that in order to constitute

infringement under Section 10(1) TMA, not only the name, but also the goods and services

rendered must be identical.

4.1.b. Section 10(2) TMA 1994

The section says that a registered trademark is infringed when :

...there exists a likelihood of confusion on the part of the public, which includes the

likelihood of association with the trade mark. 62

The section lays down the condition of likelihood of confusion along with extending the

identical to similar marks, goods and services. 63 Typosquatting would fall under this

58Ibid

59[1998] FSR 16

60Ibid


62 Section 10(2 TMA 1994

63 Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education TechnologyAssociation (April 2006)


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section as the main objective of the typosquatter is to create confusion in the mind of the

public.

For the purpose of analysing whether a domain name has constituted trademark infringement,

the below mentioned four steps are to be followed: 64

Whether the domain name is similar or identical to the mark? 65 Whether the domain name is used in course of trade? 66 Whether the goods and services provided by the domain name and registered

trademark are similar or identical? 67

And lastly, whether the public is likely to be confused with the trademarks and

domain names?68

In Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc 69 , the ECJ held that the distinctive

character of the mark and in particular its reputation plays the most important role in

determining whether the act had amounted to infringement under this section and said :

The more distinctive the mark and the greater its reputation, the wider the ambit of goods

and services which should be considered similar to those represented by the mark, which are

therefore more likely to give rise to a likelihood of confusion. Thus, a mark which isdistinctive and has a reputation will have protection over wide range of goods; a weak mark

will have protection over a narrow range of goods. 70

64Ibid

65 Ibid

66 Ibid

67 Ibid

68Ibid

69[1998] All ER (EC (934)Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 141

70Ibid


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Yahoo Inc v Akash Arora 71

In this case, the trademark and domain name owner of yahoo (yahoo.com) and was in the

process of registering itself in 69 countries. In the meantime, the defendant started offering

the same services as that of yahoo.com on the name of Yahoo India. Such a scenario would

be perfect to make the defendant liable under Section 10(2) TMA. (The case was decided in

India and the defendant was liable under the ground that the two domain names were capable

of creating confusion in the mind of an Internet user because of the similarity in names and

services.)

Also, in the case of Avnet Inc v Isoact Limited 72 (discussed above), the services of both

parties did not qualify to be identical but they were similar and thus, the infringement had

occurred under Section 10 (2) and not 10(1) of TMA as claimed. The confusion arises the

moment the search engine turn in hits and does not require accessing the website. 73

Therefore, when compared both the sections, it can be observed that s-10(1) is a lot narrower

and difficult to claim protection than s-10(2). 74

4.1.c. Section 10(3) TMA 1994

According to this section, a trademark is infringed when:

...where the trade mark has a reputation in the United Kingdom and the use of the sign,

being without due cause, takes unfair advantage of, or is detrimental to, the distinctive

character or the repute of the trade mark. 75

For the purpose of this section, the basic requirement is that the infringed trademark must be

a reputed mark in the UK and the domain name was used only to take advantage of the

reputation of the trademark. 76 In this case, the questions that arise are:

71 Anupama Y, Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi High Court) Accessed 5 September 2011

72[1998] FSR 16


74Ibid

75Section 10(3) TMA 1994

76 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 57


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What is a reputed mark for the purpose of this section? What is meant by taking advantage of the reputation of a mark or dilution?

It appears that famous marks are those well known marks that are so famous that protection

is accorded in respect of dissimilar goods and services 77 whereas well known marks are

those which require protection against use in connection which with the same or similar

goods or services for which the well known mark is registered. 78

The Paris Convention, Article 6b talks about well-known marks and so does the Section 56

of TMA 1994. The term reputation is used in Trade Marks Directive as well as in the TMA.

So after several attempts to define these terms, the WIPO SCT (Standing Committee on the

Law of Trademarks, Industrial Design and Geographical Indications) laid down a list of criteria which would determine if the mark qualifies to be well-known. 79 The reputation of

the mark would result in high sales, thus benefitting person using the infringed mark, but is

also capable of harming the reputation of the mark via dilution. It is not necessary to prove

the occurrence of any confusion. 80

One of the recent cases illustrating Section 10 (3) is the case of LOreal S.A. v Bellure N.V

and others 81 where the defendant was involved in manufacturing and selling the perfumes

that smelled alike LOreal and were sold in packing that resembled LOreals packaging. The

Court held that the defendant was liable under Section 10(3) TMA as it has infringed

LOreals trademark and took unfair advantage of LOreals reputation.


78Ibid

79 1. The degree of knowledge or recognition of the mark in relevant sector of the public;2. The duration, extent and geographical area of any use of the mark;3. The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and

the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies.4. The duration and geographical area of any registrations, and/or applications for registration, of the mark, to the

extent that they reflect use or recognition of the mark;5. The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was

recognized as well known by courts or other competent authorities; and 6. The value associated with the mark.

80 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 63.

81[2010] EWCA Civ 535


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4.2. Domain Name And Passing Off

What is Passing-off?

Passing off is a tort developed at common law, with no statutory provisions or EU harmonisation initiatives 82 and it is based on the conduct of the defendant, rather than any

idea of a property right in the claimant. 83

When a party seeks to prevent the use of a domain name, but does not possess a registered

trademark, they may invoke the tort of passing off which has the capacity to protect

unregistered marks. In order to establish the tort of passing off, the five requirements laid

down by Lord Diplock in Erven Warnink BV v. J.Townsend & Sons (Hull) Ltd 84 must be

fulfilled:

A misrepresentation must have been made. The misrepresentation was been made in the course of business. The misrepresentation should was made to potential customers or to the ultimate

consumers of his goods and services.

The misrepresentation was calculated in order to injure the business or goodwill of

another trader. The misrepresentation had caused actual damage to the business or goodwill of the

trader who brought the action or is likely to do so.

Passing off requires the domain name to be confusingly similar to the mark. Cybersquatting

and typosquatting often amounts to passing off. For instance, in the case of Yahoo India

(Yahoo Inc v Akash Arora ) discussed above, although the domain names were not identical,

but they were sufficiently similar to give rise to confusion. Passing off against cybersquatting

initiated from BT v One in a Million & Others 85 . In the process of assessing whether the tort

of passing off is committed, factors like similarity in names, goodwill of the business,

82David I Bainbridge, Intellectual Property (5 th edn, Longman 2002) at Chapter 23, Paul Todd, E-Commerce Law(Cavendish 2005) at Page 64


84[1979] A.C. 731 at 742

85 [1999] 4 All ER 476, [1999] RPC 1


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intention of the defendant, type of trade and surrounding circumstances are taken into

consideration. 86

Rickett & Colman Products Ltd v Broden Inc and other 87 (The Jif Lemon Case)

The plaintiffs were involved in the business of selling lemon

juice in yellow coloured lemon shaped squeeze packets, with

Jif embossed and printed on it (Figure 6). For this reason, the

product was popularly known as Jif lemon. The defendants

also launched a similar product which was sold in similar bottle

with little differences in colours and quantity. The significance

of this case is that Lord Oliver laid down the classic trinity rule which means the claimant

must show that the below mentioned elements in order to establish a right of action: 88

The goods or services have a distinct get up that has become associated with the

product in the minds of substantial numbers of the purchasers.

Whether intentionally or unintentionally, there has been a misrepresentation of the

goods and services of the complainant, which have led the public to believe that the

origin of the product is the claimant.

The claimant might suffer from damages if the misrepresentation continues.

Agreeing that all the three conditions were fulfilled, the House of Lords issued a permanent

injunction on the defendants barring them from selling lemon juice in lemon shaped

containers.


87(1990) 1 WLR 491

88Ibid

Figure 6


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CHAPTER 5:

THE PROTECTION OF DOMAIN NAMES: INTERNATIONAL LAW(Global Solution to a Global Problem)

5.1. The need, purpose and creation of ICANN

The NSI (Network Solutions Inc) managed the allocation of domain names until 1998, but

received various criticisms. Some of the most common opinions were that due to lesser

competition and any no other means to register a domain name, the NSI had a very high

registration fees and a very bad customer service. 89 The worst criticism was received by the

policies adopted by NSI for settling the domain name disputes. Prior to 1995, the NSI did not

have any formal dispute resolution policy but allowed the first-come-first-servedregistration and kept the burden on the shoulder of domain name holder to ensure that the

domain name does not infringe any trademarks. In 1995, the NSI took a step further and

adopted a formal dispute resolution policy which privileged the trademark owners to

challenge a domain name any registration on valid grounds and evidence. 90 The new policy

adopted by NSI in 1998 further permitted the trademark owners to place the domain name

on hold till the settlement of the dispute. In all the policies, the basic principle of

registration was first-come-first-served.

The NSI was not appreciated by either domain name holders or trademark owners. It failed to

consider the requirement of likelihood of confusion for infringing a trademark and thus for

trademark owners, the policy was under-inclusive because it deprived them of invoking an

action if the domain name is a non-identical mark that is capable of creating likelihood of

confusion. On the other hand, the domain name holders found the policy overbroad since it

gave the right to keep a domain name on hold even if they have a weak claim and the domain

name bore no resemblance to the goods and services of the trademark user.

Responding to the criticisms, the Commerce Department expressed its views on domain

name system through issuing a White Paper 91. This White Paper demanded privatization of

89 Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 at Page 294

90Ibid, Page 295

91 United States Department of Commerce, Management of Internet Names and Addresses Accessed 3 September 2011


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technical coordination of the Domain Name System. 92A coalition of internets communities

formed ICANN in 1998, following the release of White Paper. 93 ICANN realised the increase

in competition and immediately started registering registrars who would offer domain name

registering services and also made an agreement with NSI where NSI recognised ICANNs

authority and operate according to ICANNs Registrar Accreditation Agreement. 94 In 1999,

ICANN came up with the first dispute resolution policy adapted from the WIPO proposal and

therefore, after a long wait and series of disappointments, finally came the UDRP.

5.2.The UDRP 95

As mentioned earlier, ICANN has been in charge of administration and regulation of domain

name since 1998. 96 The top level domain name within the countries is allocated by authorized

agencies. In the UK, it is allocated by Nominet (UK) since 1996. 97 In order to resolve the

disputes concerning domain names and trademarks and avoid any issues relating to the

jurisdiction of the domestic courts, ICANN adopted a dispute resolution process called

Uniform Domain Name Dispute Resolution Policy (UDRP). This regulation was

implemented by four of ICANN accredited organizations; WIPO (World Intellectual Property

Organization), NAF (National Arbitration Forum), CPR (CPR Institute for Dispute

Resolution) and eRes or DeC (eResolution). 98 The eRes was shut down in December 2001. 99

In February 2002 and January 2008, two new providers of UDRP Policy were approved

which are ADNDRC (Asian Domain Name Dispute Resolution Centre) and CAC (Czech

Arbitration Court) respectively. 100

92 Jason M Osborn, Effective and Complementry Solutions to Domain Name Disputes: ICANNs Uniform Domain NameDispute Resolution Policy and the Federal Anticybersquatting Consumer Protection Act of 1999 (2000-2001) 76 NotreDame L Rev 209

93 Ibid

94Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 at Page 298



97Ibid

98 John G White, ICANNs Uniform Domain Name Dispute Resolution Policy in Action (2001) 16 Berk Tech LJ 229 atPage 232

99Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual PropertyReview 351

100Abida Chaudri, Internet Domain Names and the Interaction with Intellectual Property (2010) 26 Computer Law &Security Review 38 at Page 39


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Under the policy, most types of trademark-based domain-name disputes must be resolved by

agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a

domain name. 101

ICANN currently holds monopoly over the domain name system, which makes the UDRP

unavoidable. 102(Though in recent times attempts to make system more global and more

democratic and less dominated by USA). The UDRP stands applicable to registered as well

as unregistered marks. 103 According to UDRP rules 3(a), any person can initiate a claim by

simply submitting the hard copy and email with the complaint, to any forums or service

providers approved by ICANN. 104 The complaint must contain the choice of the complainant

of conducting the dispute by a three member panel or a single-member panel. UDRP rules

3(b) facilitates the complainant to choose the panellists of his choice. The complainant mustshow that all the grounds mentioned in the Rule 4 (a) are fulfilled. The registrant must

respond to the complaint within twenty days. Relying on its findings, the panel further

provides the remedy to the complainant. The remedies available to the complainant are

limited to cancellation and transfer of domain names.

The three-prong test set out in the Rule 4(a) of the UDRP for the purpose of continuing the

claim are:


102Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Namesand Trademark Rights (2007) Stanford's Center for Internet and Society Accessed 5 September 2011

103Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 497

104 Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual PropertyReview 351


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If the domain name is identical or confusingly similar to the mark in which the

complainant has rights 105

WIPO lays down that the test for confusing similarity should be a comparison between the

trademark and the domain name to determine the likelihood of confusion 106 and also the

similarity in the content of the website stands irrelevant while determining the confusingly

similar factor. 107

The rules hold valid for registered as well as unregistered marks. First of all, if the domain

name is identical to the mark in question, the complainant need not prove the clause of

confusingly similar, but it is important to find out whether the domain name is merely

similar or actually identical. For this purpose, the gTLD suffix is not considered. 108Advocate

General Jacob held that A domain name may be regarded as identical to the complainants

mark if the only differences are minor variants such as hyphen between the

words. 109 Therefore, in cases involving the issue of identical or similar domain name, the

UDRP follows the traditional principles of trademark law. 110

If the registrant does not have any legitimate interests in the domain name in issue 111 ;

It is also mandatory to prove the registrant does not own any legal rights or interest in the

domain name (UDRP Policy 4(a)) and when the complainant succeeds in doing so, the

burden falls on the registrant to prove any of the circumstances mentioned in UDRP Policy

4(c) in order to prove their legitimate interest in the name. They are :

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in

connection with a bona fide offering of goods or services; or

105Rule 4(a)(i) of UDRP Policy

106 H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 JTech l & Poly 301 at Page 329

107Ibid

108Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 143

109 LTJ Diffusion v SADAS [2003] All ER (D) 297 (Mar)


111Rule 4(a)(ii) of UDRP Policy


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(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trade mark or service

mark rights; or

(iii) you are making a legitimate non commercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trade mark or service mark at issue. 112

These grounds are not exhaustive and any other evidence proving the legitimate rights and

interests in the domain name is acceptable. 113

If the domain name is registered and used in bad faith. 114

The most important requirement to initiate any proceeding against a cyber crime is to show

that the registrant had acted in bad faith. Article 4 b of the UDRP lays down circumstances

which lead to the conclusion whether the act was done in bad faith or not. 115

If the motive of obtaining the name is to prevent the rightful owner from using it and

the party have had a previous record of doing the same.

The domain name was obtained with a motive of selling, licensing or transferring it

either to the owner of the trademark or to his competitor, in return for money. The domain name is registered with a motive to disrupt the business of the trademark

owner.

The domain name is used for the purpose of attracting users online by creating a

striking similar domain name as that of the true trademark owner.

It is to note that a mere registration of a domain name that resembles some registered

trademark does not constitute bad faith. A registered trademark does not provide with any

automatic rights in the domain name. 116 Neither does any attempt to sell the registered

112Rule 4 (c) of UDRP Policy

113 Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 352

114Rule 4(a)(iii) of UDRP Policy

115Rule 4 (b) of UDRP Policy



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domain to the owner of the trademark amounts to abusive registration. 117 The burden to prove

the presence of bad faith always lies on the shoulders of the plaintiff.

The efforts by a respondent to sell a domain name tend to weigh in favour of finding bad

faith, but are not necessarily fatal. 118

The case of Car Toys Inc. v Informa Unlimited Inc. 119 laid down a very important principle.

It was held that merely carrying the business of buying and selling domain names does not

constitute abusive registration. It is mandatory that the act is done in bad faith. In this case,

the defendants Informa had registered the domain name cartoys.net and the plaintiff was the

owner of the trademark Car Toys. The Arbitrator found that the requirement of no

legitimate interest in the name, which is mandatory to prove bad faith, was not fulfilled by

the defendant and so they have the right to keep the domain name.

The UDRP process became very popular because of the advantages attached to it. The

process is faster, cheaper and provides much effective remedy than any other dispute

resolution process. 120It is private, international and predominantly online (Clause 13 of the

UDRP Rules) procedure. 121 According to UDRP Section 4 (k), the registrar must transfer the

domain name within 10 business days from the day of the panels decision. 122 The time

duration of UDRP cases never exceeds 47 to 57 days (or rather shorter if the registrar files hisresponse earlier than twenty days), which makes the process a perfect model for dispute

resolution. 123 Also, the rules are simple enough to be understood by a non-legal

practitioner. 124

117Car Toys Inc. v Informa Unlimited Inc. National Arbitration Forum File No FA 0002000093682


119 Ibid at Page 164 National Arbitration Forum File No FA 0002000093682


121Jacqueline D Lipton, Beyond Cybersquatting: Taking Domain Name Disputes Past Trademark Policy (2005) 40 WakeForest L Rev 1361 at Page 10


123Ibid

124Ibid


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Also UDRP had three major advantages over the NSI dispute resolution policy. Firstly, the

trademark owners no longer enjoyed the right of keeping the domain name on hold till the

settlement of the dispute. Secondly, the trademark owner does not have the right to invoke

the UDRP proceedings unless the domain name is held in bad faith and thirdly, ICANN will

not alter the status of the domain name without any settlement or conclusion reached by the

parties in the matter of traditional trademark infringement or dilution claims. 125

However, there have been some criticisms also. One of the main criticisms of the policy are

that any claim can be instituted very easily as it is very cheap. Also there is no penalty on a

false claim. 126 Also, although it succeeds in protecting the interests of the trademark owners,

but completely ignores other kinds of disputes which might have arisen in the same matter,

for instance, more than one legitimate trademark owners having interests in the disputed domain name. 127Moreover, the only remedy it offers is either transfer of the domain name to

the complainant or cancellation of the registrants domain name but no financial relief is

provided. 128 Some more criticisms and drawbacks will be discussed later in the next chapter.

125 Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289


127Jacqueline D Lipton, A Winning Solution for Youtube and Utube? Corresponding Trademarks and Domain NameSharing (2008) 21 Harvard Journal of Law & Technology 509



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CHAPTER 6:

ANALYSIS OF ICANNs UDRP: IS UDRP THE REQUIRED SOLUTION?

The UDRP, although came after many failed attempts to set a perfect dispute resolution

process, but still received criticisms. Instituting a claim under UDRP sounds easy,

inexpensive and does not involve any loss. However, this chapter discusses the shortcoming

of the procedure adapted by the UDRP.

6.1.Critical Examination of Grounds Laid Down by UDRP for Initiating a Claim

To begin with, a UDRP proceeding is triggered under the following three grounds:

Domain Name is identical or confusingly similar to the complainants mark.

The UDRP does not define the term confusingly similar, which raises ambiguity ad debate.

The question of relevancy of the website comes into picture only when the domain name in

question is confusingly similar to the trademark. It is to note that UDRP does not consider

geographical indications as trademarks. Trademarks are protected irrespective of their

location, but the trademarks that were registered automatically might enjoy lesser

protection. 129A domain name that is partly translated in some other language is considered to

be confusingly similar. On the other hand, a domain name with a negative term along with

the trademark constitutes confusing similarity is a debate. The Panel often find the situation

to be abusive registration as it believes that this situation might result in confusion in the

mind of people who do not speak very fluent English whereas some panellists believe that

domain name consisting of a trademark and a negative term is not confusingly similar

because internet users are not likely to associate the trademark holder with a domain name

consisting of the trademark and a negative term. 130

It is to note that the content of the website does not come into consideration while

determining the similarity of the domain name to the trademark. 131 So even if the content is

129 Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 351

130 H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 JTech l & Poly 301 at Page 329 at Page 330

131 Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 497


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absolutely different from the business of the trademark, it would be held for being

confusingly similar.

In order to assert unregistered trademark rights, the complainant needs to show that the name

had developed a secondary meaning and is a distinctive identifier for its goods or

services. 132 First of all, the ownership of a domain name can be challenged by comparing it

with any trademark in any country because the internet is accessible from anywhere in the

world. All this factors conclude that the condition is debatable and UDRP has been

inconsistent in its decisions.

Domain Name holder has no legitimate rights and interests in the mark.

Although the burden of proving this condition, like the other two, falls on the complainant

but in this case, the complainant is merely required to make a prima facie case accusing the

respondent of lacking any legal rights or interests in the domain name and then the burden

shifts to the respondent to prove otherwise. It is debatable whether using domain name for

criticising trademark is legal use or not. 133 Panel has shown confusion in this regard as on one

side, it decided that since the domain name is just an internet address, which is different from

trademark, using any name sans commercial benefit should not be a problem whereas on the

other side, it has also decided that the right to criticise a trademark does not impliedly givethe right to register a confusingly similar domain name.

The Domain Name has been registered in Bad Faith

The UDRP fails to provide any definition of Bad Faith but lays down some non-exhaustive

circumstances which helps in concluding whether the registration was made in bad faith or

not. They are mentioned in UDRP Policy Rule 4(b):

(i) circumstances indicating that you have registered or you have acquired the

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 trade mark or service mark or to a competitor of that complainant, for

132Ibid

133Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 352


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valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade

mark or service mark from reflecting the mark in a corresponding domain name,

provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for

commercial gain, Internet users to your web site or other on-line location, by

creating a likelihood of confusion with the complainants mark as to the source,

sponsorship, affiliation, or endorsement of your web site or location or of a

product or service on your web site or location. 134

These conditions are both questionable and inconsistent to the Panel. Some Panels requires

any one of the four conditions to be fulfilled by the complainant whereas some requires any

one of the first three related to the registration and the fourth one related to the use of the

domain name. 135Some of the instances in which the UDRP has held that the domain name has

been registered in bad faith has raised question about the clarity of the concept to UDRP.

For example, even if the domain name was registered before the trademark or thecomplainant has got nothing to do with the domain name, UDRP has held the registration to

be done in bad faith. 136

6.2. Allegation of Being Biased Towards the Trademark Holders

The UDRP has been many a times accused of being biased towards the trademark

owners/complainants. In the report named A New Profile of Domain Name Trademark

Disputes under ICANNs UDRP, Dr Milton Mueller gave a statistical study reporting the bias nature of UDRP proceedings and raising concern about its independence. 137 The study

criticised WIPO and NAF for being biased towards the claimants and since they had obtained

134Rule 4(b) of UDRP Policy

135H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 JTech l & Poly 301 at Page 329 at Page 332

136Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 498

137Dr. Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICANNs UDRP Accessed 4 September 2011


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the majority of the market shares by mostly making decision in favour of trademark

interests. 138 The WIPO obtained 61% and NAF obtained 31% of the market shares. When

calculated in percentage, 82% of the cases in WIPO and 81% of the cases in NAF were won

by the complainants. 139 It is apparent that the shares have been obtained by adapting more

complainant friendly ways. 140 However, Muellers study was criticised by INTA

(International Trademark Association) under the ground that it undermined the cost efficient

ways of UDRP and that Mullers assumption of achieving 50/50 result via a non-biased

procedure is not possible as the UDRP is designed for abusive cases. 141

Another criticism of UDRP is the provision which allows the complainant to choose the

dispute resolution service provider. Obviously, the complainant will choose the service

provider in which he has more chances of winning. As per the statistics discussed above,apparently WIPO and NAF are the first choices of the complainants. Further the

complainants get to choose the panellists also. Studies show that 778 out of 1379 cases in

NAF have been decided by six panellists and the winning rate of the complainants is

95.1%. 142 The complainants are also offered to choose whether the proceedings be decided by

a single member panel or three-member panel. Critics may argue that complainants often

choose one member panel because it is easier for one person to misinterpret the policy and

make incorrect decision rather than three persons doing it at the same time.143

This does notseem a right scenario especially when UDRP is often blamed to be favouring the

complainants.

Another factor that adds towards UDRPs decisions being mostly in favour of the

complainants is the fact that it goes on to make a decision even if the respondent fails to

respond to the complain before the prescribed time. It is also noted that 50-60% of the times,

138Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 353

139Ibid

140Ibid

141Ibid

142John Magee, Domain Name Disputes: An Assessment of the UDRP as against Traditional Litigation (2003) U Ill JLTech & Poly 203

143Patrick D Kelley, Emerging Patterns in Arbitration under the Uniform Domain Name Dispute Resolution Policy (2002)17 Berkeley Tech LJ 181


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the respondent default occurs which contributes to the complainant being victorious nearly

80% times. 144

Three other flaws of UDRP that ends up acting in favour of the complainants are:

UDRP does not ensure that the domain name owner has received the notice disclosing

that a complaint has been filed against him. 145

Too much freedom is given to the service providers to add supplemental rules 146 and The maximum time limit provided to the respondent to respond to the claim i.e. twenty

days is not sufficient. 147

6.3. Some General Criticisms

Some other criticisms received by UDRP are:

The lack of uniformity in the decisions of the panel is inevitable. Although the panel

uses prior decisions in order to resolve a dispute, but they do not serve as binding

precedent irrespective of the similarity in the issue. 148

The only alternative available to the party that lost is to bring a suit to quash the

decision of the panel. Again the party just only has ten working days to file the suit. It

is often argued that this limited amount of time and jurisdictional obstacles often

result in no appeal against the UDRP decisions. 149

Low cost of complaints often encourages reverse domain name hijacking. 150

All of these criticisms fail to build a standard cluster of rules to be followed in order to

resolve the disputes between the trademark owners and the domain name holders and

demands a clearer picture of the grounds as well as rules set up by UDRP.

144Ibid

145Ibid

146Ibid

147Ibid

148Ibid

149Ibid

150 Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &

Security Report 349 at Page 357


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CHAPTER 7:

CONCLUSION AND SUGGESTIONS

7.1. Conclusion

The essay discussed the conflicts between trademarks and domain names, their causes, kinds

and the attempts made to resolve the conflicts. The registration process of domain names

started with the first-come-first-served principle, which is still followed and can be

considered as the root cause of the conflicts. There is no specific law dealing with the domain

name. All that is required is exclusivity of SLDs. All these factors give rise to cybersquatting,

typosquatting and reverse domain name hijacking. UDRP was formed to handle to disputes,

but was criticised on various grounds. This has left the problem unanswered. If the present

scenario is considered, neither the trademark law nor the ICANN is capable of protecting the

domain names. Cases such as Shields v Zuccarini 151 makes one think of the extent to which

cyber criminals have gone to earn money via violating the laws governing domain names.

The question arises is why wouldnt an individual like to earn millions by just sitting at

home. Also, say he is caught and held liable, the maximum that he will have to do is transfer

the domain name or pay some small portion of his huge earnings as compensation. Another

drawback to the scenario is the fact that internet is accessed worldwide and any domain name

would resemble some trademark used in some corner of the world, and therefore is capable of

being challenged. The lack of stringent laws always makes the situation worst. The grounds

mentioned by the UDRP to initiate a claim are so ambiguous that it would be difficult for the

claim to sustain. Even if the claim sustains, the further criticisms laid down by critics

(mentioned in chapter 6) do not guarantee justice. Considering this scenario, it is hard to

imagine any improvement in the situation. It cannot be seen how UDRP can help

cybersquatting and other conflicts. Therefore, based on the present laws, the situation seems

impossible to deal with and the world is yet to see a stronger, effective and non biased law

with enough protection towards the trademark owners and domain name holders.

7.2. Suggestions

Clearly, the present laws are incapable of dealing with the issues of trademarks and domain

names. The very basic principle of first-come-first-served needs reform. It is practically

impossible to protect every trademark in the world and then approve of a domain name

151 89 F.Supp. 2d 634 (E.D.Pa.200)


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registration. I propose that like trademarks, even if not that strictly, but an attempt must be

made to prevent registration of domain names that resemble well known or famous

trademarks. This would, to a large extent prevent cybersquatting and infringement of well

known trademarks. Supposing that such a law existed, Microsoft would not have had to file

324 suits against cybersquatters. Another problem as discussed is the worldwide nature of

internet would give rise to the domain name being challenged by some trademark in some

corner of the world. This situation is practically possible 100% times. To this, I recommend

that every X, Y and Z trademark owner must NOT be allowed to initiate a claim against a

domain name. Suppose a domain name www.abc.com has been registered in Russia and

there exists a local business in California holding the trademark abc11, the question of

infringement of the trademark should not be entertained. Only a well known trademark must

be permitted to challenge a similar domain name in any part of the world. It should then not

matter whether the infringement occurred in a different country or not.

Another weakness of the system is that the complainant has nothing to lose even if he/she

initiates a false claim. Since there is a higher percentage of the complainant winning, he

might as well try his luck. In order to deal with this situation, criminal liability must be

imposed on the complainant if he is found to have initiated the claim in bad faith. Along with

the ownership of the domain name, some financial relief also must be granted to the trueholder of the domain name in case a false claim was proved. This might scare a cybersquatter

or a reverse domain name hijacker before committing the crime or initiating a false claim.

ICANNs UDRP has not succeeded in its purpose. Although UDRP became very popular

when it was introduced, it could not satisfy the requirement of an effective legal policy.

Therefore, some changes are inevitable. I propose the following changes be made to the

UDRP Rules:

The three grounds set under UDRP for initiating a claim should be made clearer. A

clear definition of terms like confusingly similar and bad faith must be given.

UDRP must maintain the uniformity in its policy and must follow its previous

decisions in similar matters.

The provision containing choosing the service provider and panellists must be stroked

off. An effective legal system must be laid down to decide the matters and non-biased

panellists must be appointed for the same.


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Like all the courts, the panel must make a decision only after listening to the

respondents and not without that.

The time limit prescribed for the respondent to respond to the notice of complaint

must be extended.

And finally, in order to deal with a cross border conflict, I would suggest formation of a

global convention like UN in order to ensure that the basic domain name protection is at least

enjoyed by the member states. The implementation of the protection can be ensured by the

domestic law.

In my opinion, if these suggestions are implemented, the conflict would at least look closer to

being resolved rather than the present condition which is not even close to be reaching asolution. Hopefully, we get to see the trademarks and domain names in the cyberspace with

no conflicts soon.


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BIBLIOGRAPHY

Books:

Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002)

Paul Todd, E-Commerce Law (Cavendish 2005)

Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006)

Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for

Electronic Commerce (Hart 2000)

David I Bainbridge, Intellectual Property (5th

edn, Longman 2002)

Legislation:

UK-Trade Marks Act 1994

Cases:

Pitman training Ltd v Nominet UK [1997] EWHC Ch 367

British Telecommunication plc v One in a Million Ltd [1999] 4 All ER 476, [1999] RPC 1

Panavision v Toeppen 141 F. 3d 1316 (9 th Cir. 1998)

Avery Denninson Corporation v Sumpton 999 F. Supp.1337 (C.D.Cal.1998)

Data Concepts Inc v Digital Consulting Inc 150 F3d 620, 47 USPQ2d 1672 (6 th Cir. 1998)

Shields v Zuccarini 89 F.Supp. 2d 634 (E.D.Pa.200)

Harrods Ltd v UK Network Services Ltd (Ch.D, unreported, 1996) (1997) 19 EIPR 401

Pitman Training Ltd v Nominet UK [1997] FSR 797

Prince plc v Prince Sports Group Inc [1998] FSR 21

Compass Publishing v Compass Logistics [2004] EWHC 520 (Ch)

Avnet Inc v Isoact Limited [1998] FSR 16


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Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] All ER (EC (934)

LOreal S.A. v Bellure N.V and others [2010] EWCA Civ 535

Erven Warnink BV v. J.Townsend & Sons (Hull) Ltd [1979] A.C. 731 at 742

BT v One in a Million & Others [1999] 4 All ER 476, [1999] RPC 1

Rickett & Colman Products Ltd v Broden Inc and other (1990) 1 WLR 491

Websites:

www.wipo.int

www.iana.org

www.managingip.com

www.domainnews.com

Conference Paper :

Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current

Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK

Jurisdictions? British and Irish Law Education Technology Association (April 2006)

Accessed 5 September 2011

Policy Document :

United States Department of Commerce, Management of Internet Names and Addresses

Accessed 3 September 2011

Articles:

Abida Chaudri, Internet Domain Names and the Interaction with Intellectual Property(2010) 26 Computer Law & Security Review 38

Accessed 6September 2011


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A Michael Froomkin, Wrong Turn in Cyberspace: Using ICANN to Route around the APAand the Constitution (2000) 50 Duke Law Journal 17 Accessed 4 September 2011

Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25European Intellectual Property Review 351

Anupama Y, Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi HighCourt) Accessed 5 September 2011

Assafa Endeshaw, The Threat of Domain Names to the Trademark System (2005) 3 TheJournal of World Intellectual Property 323 Accessed 6 September 2011

Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking (1998-1999) 21 Hastings Comm & Ent LJ 535 Accessed 9 September 2011

Catherine Sevelle, Trade Mark Law: The Communitys Thinking Widens and Deepens(2004) 53 The International and Comparative Law Quarterly 1013 Accessed 6 September 2011

Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRPQuestions (2005) 21 Computer Law & Security Report 496 Accessed 4September 2011

Danielle Weinberg Swartz. The Limitations of Trademark Law in Addressing Domain NameDisputes (1997-1998) 45 UCLA L Rev 1487 Accessed 4 September 2011

David V Radack, Likelihood of Confusion-The Basis for Trademark Infringement Accessed 4 September 2011


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Dr. Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICANNs UDRP Accessed 4 September 2011

Dr Assafa Endeshaw, WIPOs Proposals for the Resolution of Domain Name Disputes(2000) 16 Computer Law & Security Report 173 Accessed 5September 2011

Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters,

ssrn-id2045222-conflicts between trademarks and domain names a critical analysis

Documents