Lex 8256: The Law in Cyberspace Seminar

Cybersquatting, the UDRP, and the ACPA

-- Anne Marie Carrier

Definition (from http://en.wikipedia.org/wiki/Cybersquatting):

Cybersquatting is defined as the practice of registering famous brand names as Internet domain names in the hope of later selling them to the appropriate owner at a profit.

Overview of Trademark Law

For an introduction to trademark law read these FAQs.

15 U.S.C. §1114 (Lanham Act §32(1))

Any person who shall, without the consent of the registrant –

(a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake, or to deceive…shall be liable in a civil action by the registrant for remedies hereinafter provided…

Courts determine likelihood of confusion under an eight-factor test. These factors include (in the 6^th Circuit these factors are called the Frisch Factors):
• Strength of the plaintiff’s mark;
• Relatedness of the goods or services;
• Similarity of the marks;
• Evidence of actual confusion;
• Marketing channels used;
• Likely degree of purchaser care;
• Intent of the defendant in selecting the mark; and
• Likelihood of expansion of the product lines.

· For an introduction into the technical basics surrounding domain name disputes, please read the following except from Jessica Litman, “The DNS Wars: Trademarks and the Internet Domain Name System”

Cybersquatting and the UDRP

One way of dealing with such domain name disputes is found in ICANN’s Uniform Dispute Resolution Process. (Read through the ICANN’s UDRP, which is hyperlinked in the heading to this section). Read the case The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and Center Entertainment. Does you think that the decision by the panel would be the same under US Trademark laws? This decision was issued by a WIPO arbitrator. Do you think that the same decision would have been handed down by another arbitrator? Or if the matter were brought in a different forum? Please read the following two cases which have been decided under the UDRP. Notice while reading the cases that it is the same plaintiff and defendant in both arbitrations.

·        http://www.arbforum.com/domains/decisions/94964.htm

·        http://www.arbforum.com/domains/decisions/94963.htm

There were several other arbitrations between the same two defendants (thought I didn’t feel the need to have you read through them all). We can see from the inconsistent outcomes of these two decisions that there are many problems with resolving domain name disputes under the UDRP. Read Dr. Milton Muller’s article “Rough Justice: An Analysis of ICANN’s Uniform Dispute Resolution Policy”. Do any of the suggestions by Dr. Muller seem a feasible way to solve the problems or inconsistencies we are finding in the decisions under the UDRP? Or instead, do you think that the UDRP policies for dealing with domain name disputes, though not perfect, should be left as they are?

OPTIONAL: Read Ned Branthover’s article “UDRP – A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Muller in ‘Rough Justice’”. Which of Mueller and Branthover do you agree with? Can you think of any other possible solutions to the problems we are finding under the UDRP?

ACPA

Sometimes the trademark owners feel that they want more relief than can be achieved under the UDRP. In the

, complainants can file suit under the Anti-Cybersquatting Protection Act (Read only section (d) since this is the ACPA). Read through this overview of the ACPA. Read Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004), paying attention to the analysis of the ACPA by the 6^th Circuit. Compare this case to Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000). The Supreme Court has yet to hand down a decision interpreting the ACPA, so we see many inconsistencies within the circuits. Read through this article by Sarah Mazzie-Briscoe. Do you think that the Supreme Court should take up the issue of bad faith under the ACPA? Or do you think that we should let each circuit interpret bad faith on a case by case basis as they have been doing?

Another problem with the ACPA is the in rem provision of the ACPA which allows a court to gain jurisdiction over the domain name itself when the person who the domain name is registered can not be found. OPTIONAL: Read Polk Wager and Catherine Struve's article Realspace Sovereigns in Cyberspace: Problems with the Anticybersquatting Consumer Protection Act. Do you agree that courts should have jurisdiction over these domain names? Does your opinion vary depending on whether or not the person registering the domain name can be found or is anonymous?