Who is the Primary Owner of All the Domain Names?

Trademarks, Copyrights, and Domain Names

• I need to know the case laws, and statuartory laws, regarding registering domain names that may infringe on trademarks or copyrights. Do these laws vary from state to state? Are they federal? Are there international laws or cases? If a person owned a disputed domain name, are there any jurisdictions in which litigation would be more difficult to pursue for the trademark owner? Are there jurisdictions that would be better for the trademark owner? If there is a disputed domain name, does it give the owner any advantage if he or she is using it for some legitimate purpose? For example, if somebody owned the name www.microsoftXP.com and created a site that described bugs in the software, are they more protected than if they just registered the name and "squatted" on it? Finally, the name of top attorneys handling these types of cases would also be useful. I understand that there was a landmark case of sorts involving Julia Roberts in which the domain www.juliaroberts.com was ordered handed over to her. I need a very thorough understanding of these issues, thus the high price. Thanks!!!

• Answer:

  Hi! Thanks for the question. I will try to lump your questions in this manner, the first paragraph as basics of domain name disputes while the second paragraph analysis of disputes and different interpretations while the third one will be a list of lawyers involved in high-profile cases. A. DOMAIN NAME DISPUTES: BASICS 1. History of Domain Name Disputes “In 1996, NSI first adopted its Domain Name Dispute Resolution Policy. Under this policy, if a domain name was identical to a federally registered trademark, then the complainant (trademark owner) could prove written notice of the conflict to the domain name holder, provide satisfactory evidence of trademark ownership to NSI and thus effect a domain name change transfer.” “From a trademark owner's perspective, this dispute resolution policy was quite limited. If the disputed domain name was not identical to the registered mark, the trademark owner would have no recourse through NSI and would have to resort to court action.” “The ‘first-come, first-served’ system of registration of domain names has spawned a host of disputes, ranging from traditional trademark infringement and dilution disputes to battles with a new breed of infringer -- the ‘cybersquatter.’” “On October 24, 1999, ICANN approved its Uniform Domain Name Dispute Resolution Policy ("UDRP") and accompanying Rules of Procedure.” “Under the UDRP, when a complaint is filed, the domain name holder is required to submit to a mandatory administrative proceeding, conducted before one of the administrative dispute resolution service providers approved by ICANN. Currently, there are three such providers, the World Intellectual Property Organization ("WIPO"), Disputes.org, and The National Arbitration Forum.” “In the first proceeding under the UDRP, filed on December 9, 1999, the World Wrestling Federation successfully effected the transfer of the domain name "worldwrestlingfederation.org." Since that time, more than 40 domain names have been challenged under the UDRP.” “Battling Cybersquatters: New Tools for Trademark Holders” http://www.gigalaw.com/articles/2000-all/kubiszyn-2000-02-all.html 2. Process “On the battlefield between trademark owners and alleged cybersquatters, one of the accepted rules of engagement in recent years has been that most domain name disputes would be resolved according to the Uniform Domain Name Dispute Resolution Policy (UDRP), an administrative policy created by the Internet Corporation for Assigned Names and Numbers (ICANN).” “…if unsuccessful trademark owners wanted to go further and start a court case, either in conjunction with or after, a UDRP proceeding, they could, either under the Anticybersquatting Consumer Protection Act (ACPA) or under other trademark or unfair competition statutes and court precedents. Some have chosen this dual-track course, but most haven't.” “The Relationship Between the Domain Dispute Policy and the Anticybersquatting Act” http://www.gigalaw.com/articles/2002-all/hollander-2002-05-all.html “Companies that do bring a court action must present legal arguments on why a domain name registered to someone else should be cancelled or transferred to an organization who wasn't fast enough to register the name first. Historically, these arguments were based on trademark law or dilution law (which are discussed in more detail on the BitLaw section on trademarks on the Internet). It was sometimes difficult to present a strong case under the traditional principals of trademark law, especially when the party seeking to obtain a domain name either could not prove a likelihood of confusion (which is required under trademark law) or was a famous individual who never technically established trademark rights in their name.” “In response to intense lobbying from trademark owners and famous individuals, Congress passed the Anticybersquatting Consumer Protection Act in November of 1999. This act made it easier for individuals and companies to take over domain names that are confusingly similar to their names or valid trademarks. To do so, however, they must establish that the domain name holder acted in bad faith.” “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. Disputes prior to December of 1999 were handled under the domain name dispute policy created by NSI. Under this much maligned policy, NSI created a procedure under which a third-party can challenge the right of a domain name owner to use a particular domain name. If the challenge were successful, the domain name would be suspended. This policy only protected parties that had a nationally registered trademark identical to another party's second level domain name (i.e., Microsoft in "www.microsoft.com").” “Domain Name Disputes” http://www.bitlaw.com/internet/domain.html#disputes 3. Applicable Laws & Regulations: Uniform Domain-Name Dispute-Resolution Policy Rules of Engagement http://www.icann.org/udrp/ Anticybersquatting Consumer Protection Act http://www.gigalaw.com/library/anticybersquattingact-1999-11-29-p1.html Other federal laws, statutes and court precedents that maybe cited http://www.kentlaw.edu/classes/gdinwood/trademark_fall2003/sup_mat/index.html?/classes/gdinwood/trademark_fall2003/sup_mat/main.html --------------------------------------------- B. Analysis of Disputes and Legal Interpretations 1. Discussions / Comments “Is the Domain Name Used as a Trademark? “The first and most important inquiry is whether the domain name is actually used as a trademark. That is, does the domain name function as a source identifier?” “A domain name that simply serves to identify the user's location on the Internet does not function as a source identifier, only as an address. For instance AMAZON.COM serves as a source identifier, and not merely an address, as the name of the company and the name on the web site is AMAZON.COM.” “Conversely, my law firm's web site is accessible by the domain name "www.barw.com". If you go to that address, you will see the home page for Bradley Arant Rose & White LLP. The domain name only serves as an address where you can find my law firm on the web, and therefore it does not serve as a source identifier.” “When is a Domain Name Considered a Trademark?” http://www.gigalaw.com/articles/2001-all/kubiszyn-2001-01-all.html “The new domain name dispute policy generally has been working well and has been applauded as a useful and long-needed weapon against cyberspace pirates intent on holding someone else's intellectual property hostage. The UDRP has resulted in opinions favoring trademark owners over domain name owners at a pace of more than 3-to-1, including easy decisions involving adobeacrobat.com, hewlettpackard.com and microsoft.org” “Unfortunately, however, what the UDRP offers in convenience it lacks in authority. Not only have the arbitration panels' decisions been inconsistent, but at least one U.S. federal court already has undermined the power of the policy by clearly stating that it ‘is not bound by the outcome of the ICANN administrative proceedings.’" “Domain Name Disputes Offer Confusing Legal Lessons” http://www.gigalaw.com/articles/2000-all/isenberg-2000-07-all.html 2. Penalty: “The penalty for choosing a problematic domain name is that you may find yourself accused of being a ‘cybersquatter.’" “The ACPA takes a stab at these terms by saying that several things are improper. For example, it's improper for you to use another's trademark or personal name with a "bad faith intent" to make a profit. It's also improper for you to register, traffic or use a domain name that's the same or confusingly similar to a mark that was distinctive or famous at the time you registered the name.” “A court will use many factors to determine your "bad faith intent." One part of the analysis is for the court to see if you have any trademark or other intellectual property rights in the domain name. Other factors include the extent to which your legal name is represented by the domain name, your previous use of the domain name in "bona fide" commerce, your "bona fide noncommercial use or fair use" of the mark, your intent to divert consumers from the proper online site and using false or misleading information when registering or holding the mark.” “A Legal Primer on Domain Names and Trademarks” http://www.gigalaw.com/articles/2001-all/grossman-2001-01-all.html 3. International Disputes: In this area we can see that legal analysts are still at odds on how to go about settling disputes of international conflict of domain name cases. The next articles provide examples of the complications of domain name trademark legalities. I will cite here the interpretations of the author but I highly recommend reading the example they are educational and presents themselves to further discussions. ” Notwithstanding the bad-faith problems possible given the current registration process, there is no clear solution to even good-faith disputes over country-code top-level domains.” “The dispute resolution policy of the Internet Corporation for Assigned Names and Numbers (ICANN) applies only to generic top-level domains, and would not apply to acme.ca or any domain name incorporating a country-code top-level domain. Furthermore, even if ICANN amended its policy to apply to a dispute involving a country code, ICANN requires the aggrieved party to allege that the present domain name holder has no rights to or legitimate interest in the domain name at issue. A foreign trademark owner would arguably always have an interest in a domain name formed by combining such trademark, used as a second-level domain, with the given trademark owner's country code. Thus, the issue remains unresolved.” “Country-Specific Domain Names Raise Difficult Trademark Issues” http://www.gigalaw.com/articles/2000-all/daggett-2000-06-all.html “There are two problems with the ACPA. Luckily, the courts have correctly resolved the first ambiguity by holding that an "in rem" action (that is, suing the domain name itself) requires that the plaintiff show bad faith by the defendant. The federal courts are currently struggling with the second ambiguity by trying to decide who has rights to a domain name in the situation where one company has a U.S. trademark and the other company has an identical trademark in a different part of the world.” “…trademarks are geographical, but domain names are global. Only one person can have the domain name while many may possess the same trademark in different parts of the world.” “If the U.S. courts hold that U.S. trademarks have superior rights to foreign trademarks, then it will be irrelevant if a foreign trademark holder registers the domain name first at a U.S. registry. The only circumstance that will matter is if the owner has a U.S. trademark. Such a result would force all foreign trademark owners to register their domain names anywhere but the United States. As a result, U.S. domain registries would lose a significant amount of business since companies tend to register their trademark including multiple deviations (such as, Harods.com (with one "r") or Harrodssucks.com). It might also force all countries to have their own domain registries as a means of protecting their own trademark holders.” “How the U.S. Anticybersquatting Act May Adversely Affect Foreign Trademark Owners” http://www.gigalaw.com/articles/2000-all/mcginley-2000-11-all.html 4 Case Studies: These cases will provide additional information for your research. http://cyber.law.harvard.edu/property/domain/main.html --------------------------------------- C. LAWYERS INVOLVED IN HIGH-PROFILE DOMAIN NAME CASES: LINKS REPRESENT ACTUAL LEGAL DECISIONS. Julia Fiona Roberts (AKA: Julia Roberts) Lawyer for Julia Roberts: Armstrong Hirsch Jackoway Tyerman & Wertheimer, 1888 Century Park East 18th Floor, Los Angeles, California 90067 USA http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0210.html Microsoft Corporation Lawyers: Suzanne V. Wilson, Esq. and James S. Blackburn, Esq. of Blanc Williams Johnson & Kronstadt, LLP located at 1900 Avenue of the Stars, 17th Floor, Los Angeles, CA 90067-4403 http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0053.html Nokia Corporation Lawyers: John P. Reiner, Esq. and Shannon M. Hudnall, Esq., White & Case LLP, 1155 Avenue of the Americas, New York, NY 10036, United States of America http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0102.html Qwest Communications International, Inc. Lawyers: Townsend and Townsend and Crew, LLP http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0002.html Philip Morris Incorporated Lawyers: Arnold & Porter http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0004.html Amazon.com, Inc. Lawyers: Jones, Day, Reavis & Pogue http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0071.html Search terms used: “domain name” trademark disputes anticybersquatting cases I hope these links would help you in your research. Before rating this answer, please ask for a clarification if you have a question or if you would need further information. Thanks for visiting us. Regards, Easterangel-ga Google Answers Researcher