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
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Domain Names: The Overview
Domain Names
Domain Names are an overlay to the internet network
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They correspond to an “IP Address” www.law.upenn.edu = 130.91.144.50 They are not necessary to use the ‘net; typing the ip address works just fine When you type a domain name, your computer seeks to ‘resolve’ the name by querying ‘DNS servers’
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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 (for marketing purposes)? Control over references to your goods/services?
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 Amendment issues
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
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The ACPA
Shields v Zuccarini (3rd Cir. 2001)
Shields v Zuccarini (3rd Cir. 2001)
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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’? Why is Zuccarini found to be acting in ‘bad faith’? Do you agree? (Should a commercially-motivated use of the domain name really be an element of bad faith?)
PETA v Doughney (4th Cir. 2001)
PETA v Doughney (4th Cir. 2001) • Note the peta.org tagline: “A resource for those who • How did Doughney act in ‘bad faith’? • Any practice tips (both for trademark holders and
domain name holders) here? enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research (and more!).”
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The UDRP
The UDRP
1. How does the UDRP become effective against all domain names? 2. Overview of the UDRP process:
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Trademark owner files a ‘complaint’ with an approved dispute resolution provider, alleging ‘bad faith’ in registering the mark The respondent has a short period of time to respond (a majority do not) One (or sometimes three) ‘panelists; decide the case on the basis of the submissions
The UDRP
Elements of a UDRP claim:
use or confusing similarity between mark and domain name 2. No ‘legitimate rights’ in the domain name 3. Registration and use in ‘bad faith’
1. Identical
The UDRP
“Bad Faith” in the UDRP:
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
1. Primary
The UDRP
“Legitimate Rights” in the UDRP:
of domain name in bona fide business 2. You have been known by the domain name 3. Legitimate noncommercial fair use
1. 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
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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?
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Domain name inalienability Repetitive domain name auctions Massive reallocation of domain names Domain name ‘reservation’ processes Do nothing
Next Class
Trademark 4: Initial Interest Confusion
Introduction to Intellectual Property Law & Policy
Professor Wagner