Uniform Domain Name Dispute Resolution

Domain Name Dispute Resolution Policy

The Structure of the Domain Name System Client Software User’s ISP Local Domain Name Server Root Server Top-Level Domain Name Server Second-Level Domain Name Server 1 2 3 4 5 6 7 8 9 10 1 of 13 servers (A-M) e.g., .com, .edu, .org e.g., yahoo.com

Significance of the Domain Name Structure for Trademarks In order for domain names to be properly resolved into IP addresses, each domain must be unique. The registry for the “.com” domain name is VeriSign. The registry that maintains the list of second-level domain names within any TLD has the ability to determine who among the parties disputing has ownership of the domain name and is entitled to use the domain name. The registry essentially decides what second-level domain names servers should “point” to. Second Level Domain Top Level Domain Identifies the Web Server www.yahoo.com

ACPA: History of Domain Names and Trademarks: Panavision International v. Toeppen In 1995, Panavision attempted to register the URL www.panavision.com and discovered it was already registered to Dennis Toeppen. Panavision sued for trademark infringement when Toeppen asked for $13,000 to relinquish the domain name. Holding: Toeppen violated the Federal Trademark Dilution Act, because: Panavision’s inability to use the panavision.com website diminished the “capacity of the Panavision marks to identify and distinguish Panavision’s goods and services on the internet.”

ACPA: Problems and Solutions in Trademark and Domain Names Problem 1: Those who are legitimately using a domain name of a famous mark could be held across the globe to relinquish the mark. Problem 2: Different countries will interpret their trademark laws expansively, thereby reducing trademark rights - blocking or at least interfering with the online use of marks recognized in other countries. Problem 3: Each party claiming ownership of a trademark can receive different judgments in different countries because of differences in substantive law. Solution: The Anticybersquatting Consumer Protection Act provides in rem jurisdiction over the domain name itself thus attempting to resolves Problem 3. The domain name is “located” where it is registered and the property can form the basis for jurisdiction even if there is insufficient bassi for jurisdiction. New Problem: Is this solution in line with International Shoe? Are there sufficient “minimum contacts” with the state to satisfy a claim of jurisdiction?

ACPA: Cable News Network L.P. v. Cnnews.com Cable News Network, L.P. (CNN). sued Maya Online Broadband Network Co. Ltd (Maya) for Trademark Infringement in the Eastern District of Virginia for the use of the domain name “cnnews.com”. Maya provides news content for China. Maya claimed they were not infringing on CNN’s trademark because “cn” is a common abbreviation for “China” and their goal was to provide news to the Chinese, many of which have never heard of CNN. Maya’s target audience for its online services is based in China. Maya does not advertise any of its services outside of China, sells no products or accept payments from any source outside of China. None of Maya’s business is conducted in the United States. Issue: Whether the court can assert in rem jurisdiction on the basis of the domain name registry location over a Chinese company with no contacts within the forum state and who conducts no business within the forum state?

ACPA: Cable News Network L.P. v. Cnnews.com Holding: Yes. In rem jurisdiction can be asserted over a Chinese company with no contacts in the forum state and who conducts no business within the forum state because: The court prefers a narrow interpretation of Schaffer and asserts the minimum requirements test identified in International Shoe is only required for quasi in rem II-type cases. In this case the dispute is as to “true in rem ” jurisdiction and therefore there is no requirement that the owner or person claiming the res have minimum contacts with the forum state. The court states, “More particularly, in the ACPA in rem action, it is not necessary that the allegedly infringing registrant have minimum contacts with the forum state; it is enough, as here, that ht registry is located in the forum.”

ACPA: GlobalSanteFe Corp. v. Globalsantafe.com On September 3, 2001 Global Marine and Santa Fe entered into an agreement to merge into the corporation, GlobalSantaFe Corporation. The following day Jongsun Park registered the domain name <globalsantafe.com> with the Korean registrar Hangang Systems, Inc. Johnsun Park used the domain name as a placeholder and marked it “under construction”. GlobalSantaFe Corp. filed a suit against Park under the ACPA asserting in rem jurisdiction against the domain name. Park failed to appear and a judgment was entered against him. Park filed an application for an injunction and won in the District Court of Seoul, Korea, preventing the transfer of the domain name on the basis of lack of jurisdiction.

ACPA: GlobalSanteFe Corp. v. Globalsantafe.com Issue 1: Whether a remedy under the ACPA includes the disablement of a domain name when the registrar fails to cooperate with a court order? Holding: Cancelation of the domain name and removing the domain name information is the best option when a registrar refuses to cooperate with a court order and an appropriate remedy under ACPA because: The use of the domain name <globalsantafe.com> will directly infringe on the trademark rights of GlobalSantaFe in the U.S. and the domain name relies on the VeriSign registry, an entity located within this district. The other alternatives to cancellation require cooperation from the registrar or allow the cybersquatter to continue to sit on the domain name and prevent the domain from being used by the trademark holder until the cybersquatter relinquishes his active registration.

ACPA: GlobalSanteFe Corp. v. Globalsantafe.com Issue 2: Whether the U.S. can ignore an order directed by the Korean courts? Holding: Yes, the U.S. court can ignore an injunction ordered by the Korean courts because: The U.S. court relies on First-In-Time. The proceedings were not concurrent: The Korean court attempted to block a U.S. judgment six months after it had been ordered. The Korean judgment was ordered to prevent the enforcement of the U.S. judgment. The U.S. judgment supports public policy concerns under U.S. law.

David G. Post, Governing Cyberspace, or Where is James Madison When We Need Him: ICANN performs internet governance despite all the protests and statements to the contrary. ICANN is the one place on the internet where conduct regulation is possible without any jurisdictional problems. There are no checks on the on ICANN’s exercise of its power: Ex1: $1 fee for each new domain name created (taxation without representation) Ex2: Requirements that all domain name registrars collect and make available accurate contact data on those who register domain names. (lack of anonymity) Ex 3: “Bad Faith” claims of trademark infringement are submitted to a single, uniform, worldwide, dispute resolution process for adjudication. Conclusion: ICANN has too much power, there needs to be fragmentation of its power and checks and balances in place to prevent it form usurping its power.

Uniform Domain Name Dispute Resolution Policy (UDRP) Uniform Domain Name Dispute Resolution Policy*: Paragraph 4(a) – The Complainants must prove the following: Disputed domain name (registered by Respondent) is identical or confusingly similar to service marks or trademarks, to which Complainants has rights. Respondent has no rights or legitimate interest in domain name. Bad faith (*see http://www.icann.org/en/dndr/udrp/policy.htm )

Uniform Domain Name Dispute Resolution Policy (UDRP) Uniform Domain Name Dispute Resolution Policy Rules: Paragraph 15(a) – This Rule instructs the arbitration panelist to make a decision based on the statements, the documents submitted, as per the policy, the UDRP Rules and any applicable rules and principles of law. Remedy: Transfer or Cancellation of the domain name.

National Arbitration Forum Sina.com online, Sina Corporation and Sina.com Technology (China) Co. Ltd. v. CyberTavern, LLC c/o DNS Admin Disputed Domain Name: sina.tv Complaint (in summary): Sina.com Online – registered mark since June 22, 1999 CyberTavern’s domain name is confusingly similar to Sina’s mark and domain names. “.tv” – generic top level domain. CyberTavern lacks rights and legitimate interest. Domain name registered in bad faith – customer confusion, $500 -$150K offer.

National Arbitration Forum CyberTavern’s Response: CyberTavern claims website legitimately promotes travel and news for China. Denys bad faith registration and use of $150K unwritten offer. sina.tv – common geographical term for China. Sina has no real rights to this term. Additional Submissions by the parties: SINA is not commonly known for China, Sino is. CyberTavern’s site –links with no information on China. SINA mark – used since June 1995, registered in 1999. Sina’s site-most visited site in China and ranks in top 15 worldwide sites. CyberTavern – restated position on generic marks. CyberTavern’s site is legitimate. CyberTavern – disagreed with Sina’s version of the story relating to the $150K offer.

National Arbitration Forum Sina.com online, Sina Corporation and Sina.com Technology (China) Co. Ltd. v. CyberTavern, LLC c/o DNS Admin Decision: Sina established all 3 elements of Paragraph 4(a) in the Policy, so relief was granted. Dissenting Opinion (in sum): General rule - Additional submissions should only be considered based on exceptional circumstances. Sina failed to prove bad faith (Paragraph 4(a)(iii)). The Panelist stated Sina failed to prove the bad faith element and the complaint should be dismissed

National Arbitration Forum The Reverand Dr. Jerry Falwell and the Liberty Alliance v. Lamparello International Disputed Domain Name: fallwell.com Complaint (in summary): “ Listen America with Jerry Falwell”, pending mark “Jerry Falwell”, book entitled “Falwell” in 1997 (same title as website). Commercially marketable goods and services on the web are sold under personal name of Complainant “Falwell”, as well as his book. Respondent’s domain name is confusingly similar to complainant's unregistered use of his last name and portions of the registered pending mark. Respondent lacks rights and legitimate interest. Domain name registered in bad faith

National Arbitration Forum The Reverand Dr. Jerry Falwell and the Liberty Alliance v. Lamparello International Lamparello International’s Response: Last name of complainant is not a commercial source. No intent to mislead, divert customers or tarnish the trademark or service mark at issue. “ Falwell” is fair use and respondent has a legitimate use for using domain name that identifies the subject of his criticism. Disclaimer is included to resolve any initial interest conflict and there is a provided link to complainant’s website to avoid customer confusion. The book entitled “Falwell” is no longer in print and therefore no longer commercially active. Domain name is not a typosquat, but a parody in the words “fall” and “well.”

National Arbitration Forum The Reverand Dr. Jerry Falwell and the Liberty Alliance v. Lamparello International Decision: Falwell established all 3 elements of Paragraph 4(a) in the Policy, so relief was granted. Dissenting Opinion (in sum): Falwell failed to prove bad faith (Paragraph 4(a)(iii)). Falwell failed to prove Lamparello had no rights or legitimate interests in the domain. This case involved a variation of Falwell’s name as a domain name for the purpose of criticism. The UDRP was not designed to handle such narrow cases of abusive registrations. The complaint should have been dismissed. 4 th Circuit: Found for Lamparello on Trademark Infringment and Cybersquatting: Confusion: No Confusion since the purpose of Lamparello’s website is to criticize Falwell’s religious opinions. No initial interest confusion either because not applicable in this case. Bad Faith: Falwell failed to prove bad faith.

National Arbitration Forum MercedesShop.com: Daimler AG v. Wood Disputed Domain Name: mercedesshop.com Complaint (in summary): “ Mercedes” is trademarked by the complainant and “shop” only adds to confusion. No legitimate rights and interests under 4(c) Used in Bad Faith: Respondent know the domain name is trademarked and respondent’s domain name is confusing to customers who believe they are affiliated with complainant.

National Arbitration Forum MercedesShop.com: Daimler AG v. Wood Response: Not Confusingly Similar because disclaimer on the website and consumers are unlikely to type in Mercedes Shop when searching for Mercedes. Legitimate Rights and Interests: (i) the facts scarcely differ from the original proceedings; (ii) the most extensive feature of the site is the “Shop Forum”; (iii) the website is extensively used and has been used for many years; (iv) MercedesShop.com is not a simple parts vendor or retailer and therefore it does not fit into “re-seller” cases such as Oki Data; (v) the website has a remarkable and well-known reputation; (vi) users are perfectly aware that it is a third party site not sponsored by Mercedes; (vii) the Respondent has a legitimate interest in continued operation of the website and also claims an interest on behalf of the thousands of users and participants of the website. Respondent contends that the Complainant’s argument on the point of bad faith revolves primarily around “bait and switch” of the type discussed in the Oki Data decision. Respondent rejects Oki Data application: Oki Data test does not apply automatically to all selling sites MercedesShop.com is the premier community of Mercedes enthusiasts and not just a parts vendor, or reseller, website. The Respondent finally contends that the Complainant has not shown how any of the alleged changes of the website since the transfer occurred relate to any bad faith intention on the part of the Respondent.

National Arbitration Forum MercedesShop.com: Daimler AG v. Wood Decision: Confusingly Similar : Adding “shop” to the end of Mercedes does not decrease the likelihood of confusion. Legitimate Purpose: The use of the domain name and the website has been increasingly commercial and increasingly away from an exclusive association with Mercedes-Benz spare parts, to non-Mercedes Benz spare parts, followed by Mercedes Benz vehicles and finally non-Mercedes vehicles. Thus, the respondent failed to use the website for a legitimate purpose. Second element is satisfied. Bad Faith: The Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. For all the foregoing reasons : in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mercedesshop.com> be transferred to the Complainant.

WIPO Arbitration and Mediation Center Per the Word Intellectual Property Organization (WIPO) Arbitration and Mediation Center*: 2,329 domain name complaints filed under UDRP in, over 100 countries, in 2008 (up 8% from 2007). Over 14,000 complaints filed, over multiple countries, since the center was launched in 1999. Of the 2,329 in 2008: Appox. 30% settled without a panel decision. Of the remainder, 85% were decided in favor of the complainant. 15% -complaints were denied. Meaning, registered holder retains possession of the domain names. (*See http://www.wipo.int/pressroom/en/articles/2009/article_0005.html#2)

Questions? Do you think the non territorial domain name disputes process addresses the internet jurisdictional problem? Some say the process is bias to the complainant. Give the fact that 85% of the findings are in favor of the complainant, do you agree? Is it fair that a Trademark always wins out in a domain name dispute? What if the domain name user is legitimately using the domain but decides against Trademark registration? Is that fair? Does it concern you or comfort you that ICANN is finally out of U.S. control and do you feel ICANN will be perceived as more legitimate?

http://www.youtube.com/watch?v=7FZ1M_UmQes And a Bit of Humor

Uniform Domain Name Dispute Resolution

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Uniform Domain Name Dispute Resolution