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					             Class 5
    Trademarks 3:
    Domain Names
Introduction to Intellectual Property
           Law & Policy
            Professor Wagner
      Today’s Agenda


•The ACPA
•The UDRP
•Trademarks, Domain Names &
‘Net Governance
       0
Domain Names: The
    Overview
            Domain Names
•Domain Names are an overlay to the
internet network
 o   They correspond to an “IP Address”

 o   www.law.upenn.edu = 130.91.144.50

 o   They are not necessary to use the ‘net; typing the
     ip address works just fine

 o   When you type a domain name, your computer
     seeks to ‘resolve’ the name by querying ‘DNS
     servers’
Domain Name Hierarchy
  Domain Names Disputes
  Why are there disputes over domain
               names?

    Lack of namespace? (more than 96-
            characters allowed)
     Inability to find desired web sites?
Inability to determine desired from undesired
                  web sites?
 Desire for short, easily-remembered name
Domain Names Disputes

What is “cybersquatting”?
 Is there anything wrong
          with it?
 Should it be outlawed?
          How?
 Domain Names Disputes
•Three Basic Approaches
1.Federal trademark lawsuit (typically
dilution claim)
  o Con: Required a series of awkward
    ‘stretches’
 Domain Names Disputes
•Three Basic Approaches
2.The ACPA (15 USC § 1125)
  o Allows claims for ‘bad faith
    registration’
  o Cons:
  o Jurisdictional problems
  o Federal litigation is expensive, time
    consuming
  o Federal courts are sensitive to 1st
 Domain Names Disputes
•Three Basic Approaches

3.The UDRP
  o Allows transfer when ‘bad faith’
    exists
  o Cheaper and quicker than ACPA
  o No jurisdictional problems
   1
The ACPA
Shields v Zuccarini (3rd Cir.
           2001)
Shields v Zuccarini (3rd Cir.
           2001)
• What is it that Zuccarini did?   (Is that really so
  bad?)

• What happened when someone visited
  Zuccarini’s sites?

• What are the requirements for an ACPA claim?
• Do you agree with the court that
  joecartoon.com is famous?

• Are misspellings ‘identical or confusingly
  similar’?
PETA v Doughney (4th Cir.
         2001)
PETA v Doughney (4th Cir.
         2001)
• Note the peta.org tagline: “A resource
 for those who enjoy eating meat,
 wearing fur and leather, hunting, and
 the fruits of scientific research (and
 more!).”
• How did Doughney act in ‘bad faith’?
• Any practice tips (both for trademark
 holders and domain name holders)
 here?
   2
The UDRP
                The UDRP
1. How does the UDRP become effective against
   all domain names?

2. Overview of the UDRP process:
 o   Trademark owner files a ‘complaint’ with an
     approved dispute resolution provider, alleging
     ‘bad faith’ in registering the mark
 o   The respondent has a short period of time to
     respond (a majority do not)
 o   One (or sometimes three) ‘panelists; decide the
     case on the basis of the submissions
             The UDRP


•Elements of a UDRP claim:
 1.Identical use or confusing similarity
  between mark and domain name
 2.No ‘legitimate rights’ in the domain
  name
 3.Registration and use in ‘bad faith’
             The UDRP
•“Bad Faith” in the UDRP:
 1.Primary purpose of reselling domain
  name to the complainant or a
  competitor of complainant
 2.Registration to prevent mark-holder
  from using the name
 3.Registration to disrupt the business
  of a competitor
 4.Attempts to attract ‘net users, for
  commercial gain, by creating a
  likelihood of confusion
              The UDRP


•“Legitimate Rights” in the UDRP:
 1.Use of domain name in bona fide
  business
 2.You have been known by the domain
  name
 3.Legitimate noncommercial fair use
The UDRP
    Opportunity.com $150,000
      Censored.com $58,500
  EmergencyClinic.com $11,000
    FuneralParlor.com $7,000
       Inherited.com $6,100
     MaritalAids.com $6,000
      Opposites.com $6,000
        Blondes.org $5,500
PrescriptionDrugPlans.com $5,000
 ProfessionalAthletes.com $3,100
        Bartab.com $1,500
   AntiSpyWare.com $520,000
           3
Domain Names, Trademarks &
      Net Governance
Marks and ‘Net Governance
1. How does the dispute over trademarks and
   domain names implicate ‘net governance?

2. Are there other ways to deal with the issue,
   aside from establishing a complex dispute-
   resolution process?
 o   Domain name inalienability
 o   Repetitive domain name auctions
 o   Massive reallocation of domain names
 o   Domain name ‘reservation’ processes
 o   Do nothing
            Next Class
       Trademark 4:
Initial Interest Confusion
  Introduction to Intellectual Property
             Law & Policy
              Professor Wagner

				
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