Chapter 11: Domain Names and Other Trademark Issues on the Internet By: Adrian Lui
Mar 28, 2015
Chapter 11: Domain Names and Other Trademark Issues on the Internet
By: Adrian Lui
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?
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
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
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
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
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
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
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.
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)
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
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
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
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
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.