chapter 11: domain names and other trademark issues on the internet by: adrian lui
TRANSCRIPT
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Chapter 11: Domain Names and Other Trademark Issues on the Internet
By: Adrian Lui
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Introduction• Expansion of the
Internet ▫ Raised many challenging
issues for law and policy-makers
▫ Major issue of trademark policy: domain names Who has priority in
registering a domain name?
What laws apply when there are disputes?
Where can these disputes be resolved?
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Domain Name History• Coined in 1983• Domain name every website’s unique address on
the Internet• 7 generic domain names (gLTDs)
▫ .com, .org, .net, .edu, .gov• Country code domain names (ccTLDs)
▫ .us, cn, .de• In 1992, the U.S. government commercialized the
Internet ▫Entered into a private contract with Network
Solutions Inc to register domain names .com quickly became the most popular sought by
commercial businesses
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Cybersquatting• Initially, domain name
registration was on a first-come, first-served basis
• Opened the door for “cybersquatting” ▫ Cybersquatters are users
who register as many famous trademarks as possible Legitimate owners of the
trademarks may be desperate to buy them out
▫ For cybersquatters, lucrative business with little financial risk
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Suggestions to Resolve Domain Name Problems
•Increase the Number of Domain Name Registrars▫NSI should no longer solely control
allocation of domain names•Increase the Number of Generic TLDs
▫No longer exclusively relies on .com▫Apple Music should apple.mus, and
Apple Computer should be Apple.cpu May cause greater consumer confusion May cause difficulty for trademark owners
to police their rights
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Suggestions to Resolve Domain Name Problems Continued
•More reliance on Country-Code TLDs (ccTLDs)▫Registered under authority of respective
governments▫May resolve conflicts between trademark
owners from separate countries, since each can use their own country ccTLD
•Use of Online Dispute Resolution Systems▫Inexpensive compared to suing in court▫Disputed domain names may not be used
until lawsuits have been completed
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Anti-Cybersquatting Consumer Protection Act
• In 1999, the U.S. adopted the APCA▫ Address cybersquatting activities▫ Prevent deceitful techniques of
unfairly profitting from registration process
▫ Modifications to first-come, first served basis Applicable when there’s no bad
faith• Users may be liable for civil
action by the owner, if the person ▫ Has a bad faith intent to profit
from that mark▫ Uses a mark that is identical or
confusingly similar to a distinctive mark
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How to Determine Bad Faith?• Under the ACPA, there is no exact definition of “bad faith”
▫ Interpretation is up to the courts▫ However, there is an evaluation criteria.
• Legitimate Interests▫ You used the domain name before the dispute to offer
services▫ You or your business is commonly known as the domain
name▫ You are making a fair use of the name without intending to
divert or mislead customers to your site• Evidence of Bad Faith
▫ You acquired the domain name for the purpose of reselling▫ You have a pattern of registering domain names to prevent
trademark owners from obtaining them▫ You use the domain name to profit by confusing Internet
users to visit by mistake
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FIRACT: Lahoti v. Vericheck Inc.Background• Vericheck, Inc., the defendant, is a Georgia corporation
that provides electronic financial transaction processing services.
• In 2001, Vericheck gained a state registration for its service mark.
• However, in 2003, the U.S. Patent and Trademark Office denied Vericheck a federal registration because it was already registered to Lahoti’s company in Arizona.
• David Lahoti obtained the domain name www.vericheck.com in 1996, but did not use the website to offer any goods or services.
• In the past, David Lahoti has been found liable for cybersquatting activities, registering over 400 domain names such as Nissan.org.
• Lahoti asked for as much as $72,500 to sell the domain name
• In 2006, Vericheck sued for trademark infringement• Lahoti countersued arguing that his use of the domain
name was fair and lawful.
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ICANN• By 1997, international
communities objected U.S.’s control over the Internet
• Transfer of Internet responsibilities to a new private nonprofit organization▫ Internet Corporation for
Assigned Names and Numbers (ICANN)
• By early 2009, ICANN had accredited over 950 different registrats (compared to 1 in 1992)
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The Uniform Dispute Resolution Policy
•Developed by ICANN▫Simple and efficient way to deal with
cybersquatters and other bad faith registrations
•In 2009, all registrars are required to incorporate UDRP into their registration agreements▫Trademark disputes can be resolved by
an independent arbitration panel
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Dispute Resolution Process• Most popular independent dispute
resolution provider has been the World Intellectual Property Organization
• Submit your complaint to the WIPO’s Arbitration and Media Center
• Request for a one-member ($1,500) or a three-member panel ($4,000).
• WIPO sends the complaint to the domain name registrant, who then has 20 days to respond
• Then, the panel has 14 days to issue their response▫ If the panel decides in your favor,
they will direct the registrar to cancel the domain name
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Trademark problems with Twitter
• Fake accounts representing celebrities, corporations, and politicians
• New variant of cybersquatting. ▫ Misusing and tarnishing of
trademark• Tony La Russo sues Twitter
▫ Tweets about him drunk driving.
▫ Damaged reputation and trademark rights
• Fake BP Oil tweets▫ Fake account’s followers
outnumbered legitimate account
▫ 20,000 followers versus 4,700
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Trademark Issues with Auction Sites• Websites such as eBay.com
offer merchandise through their auctions.▫ Many counterfeit goods in
their auctions• Similar issues with peer-to-
peer file sharing and copyrights
• Contributory trademark infringers?
• No general consensus on the responsibilities of Internet auction businesses for counterfeit listings
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Take Home Message
Trademark issues on the Internet is constantly a work in progress. Despite the available avenues for complaints, the protection system is challenging to implement on a global scale. In addition, the domain name registration system has continued to evolve while the dispute resolution system has not.