Inta useof tmsindomainnamespresentation

Editor's Notes

• #3: Domain names are the words users enter into the address bar of their browser to visit a website. The Domain Name System simply translates these domain names into Internet Protocol (IP) addresses. Each website on the Internet has an IP address behind the name.
• #11: Since 1999, Internet Corporation for Assigned Names and Numbers ("ICANN") has been responsible for managing the domain name system. It is responsible for facilitating the technical, managerial and policy decisions on the Internet. Actual registration of domain names is delegated to various accredited registrars. Individual countries control their respective ccTLDs and establish their own policies for registration and use. After the registrant has provided contact and technical information to the chosen registrar, the registrar verifies that the domain name is available and then submits the technical information to a central directory known as the "registry." This registry provides other computers on the Internet the necessary information to send you email or locate your website. When a domain name is registered, an entry is added to a directory of all the domain names and their corresponding computers on the Internet.
• #12: There are several types of domain name disputes that involve bad faith. The most common type of dispute—both in terms of relevance to abuse of trademarks and in terms of prevalence on the Internet—is cybersquatting. Cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Some cybersquatters then offer to sell the domain names directly to the company or person involved, at prices exceeding the cost of registration. In other cases, the registrant uses the domain to host a website that is, for instance, filled with advertising links or content competitive with the trademark owner.
• #13: Although this presentation will focus on cybersquatting, it should be noted that there are other types of abuse related to domain names. Typosquatting Registration of a domain name that constitutes an intentional misspelling of a third-party trademark with a view to securing financial or commercial benefit. If a user accidentally enters an incorrect website address, he or she may be led to an alternative website owned by a cybersquatter (e.g., registration of cocacolla.com in an attempt to capture traffic from cocacola.com). Domain Name Tasting Following the initial registration of a domain name, there is a five-day grace period during which the registration may be deleted. The term “domain name tasting” refers to the practice whereby registrants use the five-day grace period to test the profitability of domains. The registrants conduct a cost-benefit analysis to determine whether they will derive income from advertisements placed on the domain's website. If the amount of income generated by traffic to the website exceeds the annual registration fee, the registrant will keep the domain name. Otherwise, the registrant will cancel the registration. As a result of domain name tasting, ICANN imposed penalties that would ensure that any group that performed an excessive number of these premature domain name cancellations wound up with a substantial bill. ICANN announced in August 2009 that its actions essentially eliminated domain name tasting.
• #15: In 2001, ICANN devised the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is an international arbitration process for the resolution of domain name disputes. The UDRP permits trademark holders to seek the transfer or cancellation of domain names that they believe infringe on their trademark rights, without resorting to litigation. All accredited registrars now use the UDRP. The dispute resolution procedure is incorporated into the agreement between the registrar and domain name registrant at the registration stage. A business or person who believes that a name or trademark is being used by a cybersquatter or another party who lacks the rights to the domain name may have grounds to initiate a proceeding under the UDRP.
• #16: ICANN provides a list of approved service providers for Uniform Domain-Name Dispute-Resolution Policy. When choosing an appropriate dispute resolution provider, it is important to consider factors such as the location, cost, language skills, the type of domain at issue, and availability of each provider.
• #17: The UDRP has been adopted by all accredited gTLD domain-name registrars. Thus the UDRP is incorporated into every gTLD domain name registration agreement, which is the agreement between the accredited registrar and the registrant, providing for registration of a domain name. The UDRP is also applied by the registrars of certain country code top-level domains (ccTLDs) that have adopted the UDRP Policy on a voluntary basis.
• #19: Complaints: Some organizations (e.g., National Arbitration Forum, WIPO) provide sample complaints online. Response: If the domain name registrant does not file a response, it is in default. However, that does not mean that the complainant automatically prevails. The panelist(s) will still consider the complaint to determine if the complainant has established the necessary elements of its claims. Panelists: The UDRP panelists are trained in trademark law or similar fields, and have a rich body of relevant case law on which to base their decisions. The complainant can specify whether it wants one or three panelist(s). If the complainant opts for one panelist, the respondent can select three panelists (but must share the applicable fee). The proceeding is often complete within a few months of filing the complaint.
• #20: To be successful under the UDRP, the trademark owner must establish: 1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second-level domain name; 2. that the party that registered the domain name has no legitimate right or interest in the domain name; and 3. that the domain name was registered and used in bad faith. If the trademark owner successfully proves all three points in the UDRP administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel or transfer the domain name.
• #21: Proving the complainant’s rights in a mark under the first element can be accomplished relatively easily if the complainant has obtained a registration for its mark or has well-established common law rights. Proving the remaining portion of the first element then requires an argument that the domain name is identical or confusingly similar to that mark.
• #22: The second element can be proven by showing that the registrant had notice of the complainant’s mark (e.g., a U.S. domain name registrant had notice of complainant’s famous U.S. mark or constructive notice of complainant’s federal registration), or made no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (e.g., registrant had no website up). This element can also be proven by showing that the registrant has not been commonly known by the disputed portion of the domain name, or has not made a legitimate, commercial or fair use of the domain name (e.g., the registrant instead intends to misleadingly divert customers or tarnish the trademark or service mark at issue for commercial gain). 
• #23: A domain name owner can prove a legitimate right or interest in a domain name by showing, among other things: 1. use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; 2. that the domain name owner has been commonly known by the second-level domain name; or 3. that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue.
• #24: There can be bad faith when the domain name is not actively used (and is instead passively held), depending on the circumstances. Examples demonstrating bad faith in such circumstances: concealing identity, impossibility of conceiving a good faith use of the domain name.
• #25: A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including by showing that the domain name owner: 1. registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out-of-pocket costs; 2. engaged in a pattern of registering trademarks of others to prevent the use of the domain names by the trademark owners; 3. registered the domain name primarily to disrupt the business of a competitor; or 4. is attempting to attract users to a website for commercial gain by creating a likelihood of confusion with the trademark owner's trademark.
• #26: If the trademark owner successfully proves all three points in the UDRP proceeding, then the administrative panel will either cancel or transfer the domain name to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel or transfer the domain name. However, under the UDRP, either party retains the option to take the dispute to a court for independent resolution. Thus, it is possible that the dispute won't end at arbitration. However, in practice, these matters are rarely taken to court after arbitration.
• #27: NIC-Mexico (the Network Information Center in Mexico) devised its own policy for the administration and registration of .mx domain names and, as of December 1, 2000, enacted the General Domain Name Policies. The Israeli domain name dispute resolution policy is an alternative dispute resolution procedure intended to provide expedited resolution to disputes regarding the allocation of domain names under the .il ccTLD.
• #28: The ACPA made it easier for individuals and companies to take over domain names that are confusingly similar to their names and trademarks. To do so, however, they must establish that the domain name registrant acted in bad faith. One portion of the ACPA relates to famous individuals. It allows individuals to file a civil action against anyone who registers their name as a second-level domain name for the purpose of selling the domain name for a profit. The more general portion of the statute protects companies against persons who, in bad faith, register a domain name that is the same or confusingly similar to an existing trademark. The statute lists several factors that a court may consider when determining whether the domain name was registered in bad faith.
• #31: Advantages: ACPA Under ACPA's liberal jurisdiction rules, you don’t have to personally serve the defendant. This makes it possible to bring the lawsuit even if you can’t find the domain name owner. This was necessary because WhoIs data is often inaccurate and/or defendants are located in foreign countries. Disadvantages: ACPA Expensive; lengthy proceedings; uncertain; action limited to the United States. Advantages: UDRP UDRP Arbitration is much cheaper and faster than a lawsuit. On average, proceedings are concluded within two months. Prices vary depending on how many domain names you are challenging and whether any of the parties elect to have three panelists hear the case instead of a single arbitrator. Also, you don’t need a lawyer to initiate a UDRP arbitration, although many people feel more comfortable with one. Because it’s based on ICANN’s policies, and not on U.S. law, if ccTLDs are involved, you need to follow the dispute resolution policies specific to each country. They are often similar to the URDP.  The best alternative to pursuing a domain name dispute through the courts is to take advantage of the domain name dispute policies that have been developed by the organizations that assign domain names. Disadvantages: UDRP There is no possibility of monetary damages in a UDRP proceeding. That is one reason that some people prefer to file a lawsuit. Also, there is no opportunity for discovery, as there is in a civil lawsuit. It is possible that the arbitration won't be the end of the dispute. Under the UDRP, either party retains the option to take the dispute to court. In practice, it is quite rare for a case to be taken to court after arbitration.
• #32: Adopt a watch service that will notify you of domains that are confusingly similar to your trademark. Register domain names defensively—the easiest (and cheapest) way to prevent most cybersquatting is to register a few basic variations of your company name before the damage is done. It may not prevent all cases of typosquatting, but if you register the popular options (including common misspellings), then the mark is exposed to less abuse.