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Trademark & Domain Names: Trends in
Cybersquatting
and Forum Shopping |
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By: Philip R. Green |
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© 2001 Philip Green, Law Offices of Green &
Green |
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www.greenandgreen.com |
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(415) 457-8300 |
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First Amendment Trends |
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Defamation, “sucks” sites, |
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ICANN ADR may not apply First Amendment! |
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Choice of Forum |
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ICANN’s ADR Rules (UDNDR) |
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U.S.A.: Court via ACCPA 15 U.S.C. Section 1125
(d) (2) (A) |
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Famous Personalities Names 15 U.S.C. Section
1129 vs ICANN UDRP |
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California’s New Anti –Cybersquatting Act |
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New Gtlds |
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.biz (claim)-In litigation over “illegal
lottery”, .info, .name, .pro (sunrise) |
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Get ‘em while they’re available! Watch out for Scams! |
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Nature of a Domain Name |
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Intellectual Property? |
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Mere contractual right? |
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Mere link to a server? |
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Defamation |
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Bihari And Bihari Interiors, Inc., V. Gross
2000 WL 1409757 United States District Court, S.D. New York. No. 00
Civ. 1664(SAS). (Sept. 25, 2000) shows how the first Amendment can become
involved over arguments about use of a Domain Name to defame: In Bihari the owner of a family name and
service mark "Bihari Interiors," for interior design brought an
action for the infringement of the mark by the owner of a website that is
critical of the Bihari’s services. |
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Web Sites That Suck |
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If your company finds a website
“yourcompanysucks.com” it might impair your company’s reputation. |
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Depending on jurisdiction of the dispute, your
company, Inc. might have to live with it. |
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Chose: U.S.A. with litigation under anti
dilution, trademark and ACPA laws that seek to enjoin the SUCKS site and
may award money damages or, |
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Chose: ADR under the ICANN UDRP rules,
arbitrators do not necessarily apply U.S. law to the dispute, the sucks
site might have to stop or lose the URL to the original trademark
owner. Witness the Wal-Mart WIPO
ADR. Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,
Case No. D2000-0477, (July 20, 2000) |
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Caution in Choice of Law and Jurisdiction
clauses. |
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U.S.A. LAW ACPA |
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Broader In Rem Damages |
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Money Damages & Statutory Measures |
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Consistency of Decision Stare Decisis |
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INTERNATIONAL ICANN ADR |
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Fast and Inexpensive |
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Use Caution choosing panel |
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Best Practice: Use Contract Language to specify
limits, powers on arbitrators, Jurisdiction, Choice of Law. |
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What Choice?
Jurisdiction a MAJOR issue |
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One who “Registers, traffics in, or uses a
domain name of |
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a mark that is distinctive at the time of
registration of the domain name |
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that is identical or confusingly similar to that
mark or |
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of a famous mark that is famous at the time of
registration of the domain name, |
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is identical or confusingly similar to or
dilutive of that mark. |
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With the bad faith intent to profit from that
mark… |
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Statutory factors tend to be consistent. |
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Applies Traditional US trademark notions of
first to use and nature and extent of use. |
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Jurisdiction over the Res and In Rem |
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Personal Jurisdiction can be difficult to
obtain. |
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Virginia and California are target states |
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California because ICANN is here. |
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Best Practice: Register important Trademarks |
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Note that over 250,000 marks were applied for in
2000. |
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Offers to sell: to the trademark owner or others
(hold the Domain Name for ransom) |
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The quantity of the Domain Name user’s content vs. “valid” content |
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1st Amendment “content” concerns –
The “Sucks” cases Verizon |
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The story of why a Domain Name was chosen and |
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Did the Domain Name registrant know the offended
trademark? |
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SPORTY'S FARM L.L.C., v.SPORTSMAN'S MARKET, INC,
Docket Nos. 98-7452(L), 98-7538(XAP) U.S.C.A., 2nd Cir. Feb. 02,
2000, 2000 WL 124389. |
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“Cybersquatting involves the registration as
domain names of well-known trademarks by non-trademark holders who then try
to sell the names back to the trademark owners.” |
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15 U.S.C. 1125 (d) (2) (A) provides for an In
Rem action – Domain Name as Property? |
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In Rem -
against the property rights in a Domain Name |
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If you cannot locate the Domain Name owner by notice to the registered owner |
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Then you may, by publication of notice as
ordered by a court, obtain in rem jurisdiction into the district of the |
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Court where the register has its offices. |
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Best Practice: Be sure to follow the exact
statutory requirements of attempted notice and other steps to insure proper
jurisdiction. |
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To what extent is a URL property? |
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Recent case: Network Solutions Inc vs. Umbro
International Va. S. Court 4/21/00 No 991168, suggests that if the URL is a
or permits a service, it is not garnishable under Virginia’s garnishment
laws. |
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Sec. 1125 (d) allows courts to order the Domain
Name register to turn over a URL to a trademark owner. |
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No Money Damages in an In rem Action. |
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NSI position: URL is service connecting
computers by an alphanumeric system. |
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One registers a domain name that consists of the
name of another living person substantially and confusingly similar
thereto, without that person's consent with the specific intent to profit
from such name by selling the domain name or using it for financial gain. |
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Character names are trademarks, not treated as
personal names. |
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BIG Exception: © If name is used in, affiliated with, or related to a work of
authorship protected under Title 17, and IF registrant is the copyright
owner or licensee of the work, …there may be no liability. |
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injunctive relief, including: the forfeiture or
cancellation of the domain name or the transfer of the domain name to the
plaintiff Discretion to award costs and attorneys fees to prevailing party.
Not retroactive: to domain names registered on or after November 29, 1999. |
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Some who would otherwise be “cybersquatters” are
able to create such content and use the 1st Amendment to make
such a defense. |
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Applies to domain names that were registered
before and used after the law's enactment, however: |
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Injunctive relief and transfer of the domain
name are the only available remedies if the domain name was registered
before the law's enactment. |
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Damages (whether actual or statutory) are
available only if the domain name was registered after the law's enactment
(which was Nov. 18, 1999). |
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Joseph C. Shields dba Joe Cartoon Co.v.
Zuccarini (April 24, 2001 U.S.C.A. 3rd CIR. No. 00-2236) |
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The Joe’s Cartoons Case has the distinction that
it awards Statutory Damages $10,000/Domain Name. |
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Fame measured by Hits, Awards won, Advertising
efforts. |
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“Typosquatting”
“Mouse trapping” disfavored. |
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Harrod’s:
Even if a Domain Name registrant had prior legitimate use of
trademark they can be lost to make use of Domain Name bad faith. |
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WIPO – ICANN UDRP Rules Apply See www.icann.org |
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Uniform Domain Name Dispute Resolution PolicyAs
Approved by ICANN on October 24, 1999 as amended Nov, 1999. |
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ICANN Remedies. The remedies available to a
complainant are limited to:
requiring the cancellation of the infringing domain name or the transfer of the infringing domain
name registration to the complainant. |
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Elements: Conflicting domain name is identical
or confusingly similar to a trademark or service mark in which the
complainant has rights; and (ii) Conflicting URL owner has no rights or legitimate
interests in respect of the domain name; and (iii) a conflicting domain
name has been registered and is being used in bad faith. |
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Sometimes this can Turn on who the arbitrators
are chosen to decide the facts. It is recommended that the ICANN web site
and each Arbitrator Provider be carefully searched to determine the
arbitrators. A Best Practice would
be to allow, within the ICANN UDRP, contracting parties the most freedom of
selection possible. |
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CASES SUBJECT TO WIPO ADR: |
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NOTE Bruce Springsteen Case – Domain Name
holders have rights also. |
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The panel “under 4(b)(ii) of the UDRP held that
the registration of the Domain Name had to prevent the owner of a trade
mark or service mark from reflecting the mark "in a corresponding
domain name“… Bruce had been able
to register a “.NET” version, he lost. |
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Criticism:
It may not be good faith to use the ONLY “.COM” available because many
might believe the “COM” to be the true official site for an artist. Bruce
Springsteen -v- Jeff Burgar and Bruce Springsteen Club Case No. D2000-1532. |
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Present ALL evidence you have on trademark
rights |
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BEST PRACTICE: have REGISTERED Trademarks
Internationally! |
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U.S.A. Law: |
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ACPA 15 U.S.C. 1125 (c ), 1127; |
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California’s Rights of Publicity (CC 3344) Business
& Professions Code Section 17525; (CC 3344.1 deceased personalities). |
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ICANN UDRP: |
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Julia Roberts Won with WIPO, later was sued but
prevailed. |
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Madonna – lots of proof, different panel and
continuing, registered trademarks makes a difference. Case No. D2000-0847 |
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Celine Dion case, Celine Dion and Sony Music
Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on
business as Celine Dion Club, Case No. D2000-1838 |
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BigStar vs Next Big Star 105 F.Supp.2d 185
S.D.N.Y.,2000.
Next Big Star was held “Not confusingly similar enough” for Bigstar to stop
Nextbigstar.com. Next B.S. were talent agents and Big Star was a video
retailer.
One may not usurp a trademark as a source indicator of unrelated services
and goods. |
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Need not be famous for Right of Publicity See
Civ. Code 3344 (live) and |
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Civ.
Code 3344.1 (deceased) – See Three Stooges Case The Noive of That Guy Comedy
III Prod vs. GARY SADERUP, INC., et al LA Super Ct #EC020205, S076061 |
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Drawings of the comedians sold on useful items,
even if drawings may have been original, does not overcome the rights of
publicity and Trademark rights in famous likenesses is an infringement. |
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A “BALANCED APPROACH to 1st Amendment
vs. IP rights. |
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Another such balance is struck between IP,
secrecy and anti-competitive behavior. |
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S.B. No. 1319:
Aug., 2000: “It is unlawful for a person, with a bad faith intent to
register, traffic in, or use a Domain Name |
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that is identical or confusingly similar to the
personal name of another living person or deceased personality, |
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without regard to the goods or services of the
parties….” |
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Copyright Act use Preempts: section shall not
apply if the name registered as a domain name is connected to a work of
authorship, including, but not limited to, fictional or nonfictional
entertainment, and dramatic, literary, audiovisual, or musical works. |
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A domain name registrar, a domain name registry,
or any other domain name registration authority that takes any action
described in subdivision (a) that affects a domain name shall not be liable
to any person for that action, regardless of whether the domain name is
finally determined to infringe or dilute a trademark or service mark. |
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Nov 16, 2000 ICANN announced NEW gTLDs: .PRO
(FOR PROFESSIONALS), .BIZ (FOR BUSINESSES), . COOP (NON PROFITS) .AERO (AIR
TANSPORT), .INFO (UNRESTRICED), .MUSEUM (GUESS), .NAME (INDIVIDUALS). |
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FTC WARNING: Under ICANN Rules there is NOW SOME
LIMITED PROTECTION FOR TRADEMARK
OWNERS but NO guaranteed pre-registration of these new gTLDs. |
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How-Whenè See www.icann.org Some (.info, .Name, .biz) are slowly
registered after submittals of trademark ownership and others provide for
trademark claims (.pro), “sunset” |
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This JUST IN: .BIZ in litigation over whether
the pre-”registration” process is an “illegal Lottery.” |
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Intellectual Property? |
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Not Capable of Being Converted: Kremen v. Cohen,
99 F.Supp.2d 1168 (N.D.Cal. May 30, 2000) where the Domain Name “sex.com”
was fraudulently stolen but not converted. Can be legally retrieved as if
it were intellectual property. |
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Mere contractual right? |
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NSI Agreement
Domain Name Transferable in tm |
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New: conflict registration services. |
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Va Court – No garnishment Virginia courts say
Domain Name is not garnishable. Network Solutions Inc vs. Umbro
International Va. S. Court 4/21/00 No 991168, suggests a URL “is or permits
a service” and not garnishable under Virginia’s garnishment laws. |
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Yet ACPA allows courts to order the Domain Name
register to turn over a URL to a trademark owner in an IN REM action. This may remain a conflict for some
time. |
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Generic “T M.COMs” May gain secondary meaning like Amazon.com. |
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Phil Green |
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© 2001 Philip R. Green, Law Offices of Green
& Green |
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www.greenandgreen.com |
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(415) 457-8300 |
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Notes