Domain Name Disputes
A domain name is an address on the Internet where a web page can be found.
There are different levels of domain names. Top levels conclude the web address, such as .com, .gov, .edu, .net, and .org. Countries are also top level web sites (Ex. Canada = .ca, Ireland = .ie). Second-level domains are directly to the left of the top level (Ex. mtv.com – MTV = second level, .com = top level).
How can I obtain a domain name?
Domain names are usually assigned on a first-come, first-serve basis. First, you must register with an agency for the domain name you want. Then, the agency will conduct a domain name search to see if it is already taken. You may also search on your own at https://www.networksolutions.com/whois
Prior to 1999, Network Solutions, Inc. (NSI) was the sole registrar for domain names. Today, there are numerous registrars, all of whom work with the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a non-profit entity that manages and coordinates domain name registration to ensure that every address is unique and that all domain names map to the correct IP address.
What if the domain name I want is already taken?
Domain name disputes usually arise when a domain name someone wants is already taken, is similar to a trademark, or is similar to an individual’s name. A complainant is likely to have cause for a domain name transfer if she either owns or has a common law trademark right to the words in dispute. Such disputes are litigated under trademark law, and it is a slow process.
The Anticybersquatting Consumer Protection Act (also known as the Truth in Domain Names Act or the ACPA), passed by Congress in 1999, made it easer for companies to challenge domain names that are similar to corporate names or trademarks. The Act targets individuals who register domain names that are similar to individuals’ names or trademarks with the sole intent to sell the rights of the domain name to the individual or trademark holder for profit. Those who violate the Act are liable in a civil action.
Courts will consider several factors in domain name disputes. They must determine: (1) whether the holder of the domain name registered it in bad faith, (2) whether the holder is trying to benefit off the trademark holder, (3) how similar the domain name is to the trademark, (4) how unique the trademark is, and (5) whether the sale of goods is involved.
What is a cybersquatter?
Cybersquatters are people who knowingly reserve a trademark as a domain name with the intent to profit.
Most often, this attempt at profit comes in the form of selling the domain name to the trademark holder or a third party. Sometimes, the cybersquatter will set up a business whereby potential consumers are attracted by the notoriety of a trademark. Additionally, there are cases in which trademarks are diluted or tarnished by the posting of offensive material on an unauthorized site that is similar to a trademark.
Are there any non-judicial alternatives to domain name disputes?
Yes. Like most disputes, domain name conflicts can also be resolved by mutual agreement or voluntary arbitration.
Additionally, ICANN has developed the Uniform Domain Name Dispute Resolution Policy (UDRP), which is a speedy, low-cost procedure implemented to resolve bad faith registration of domain names. The standards set forth are similar to those used by the courts.
Trademark owners must prove that (1) he or she owns a trademark that is identical or confusingly similar to the domain name, (2) the party who holds the domain name has no right or interest in the trademark, and (3) there is some evidence of bad faith or abuse.
T-Mobile, Ralph Lauren, Yahoo, and Pepsi have all won disputes over domain names held by cybersquatters.
How similar do domain names have to be a trademark?
They do not have to be identical to a trademark, only confusingly similar. The UDRP tends to construe words, spellings, or misspellings that resemble a trademark in any way to be confusingly similar.
For example, Abercrombie and Fitch won the rights to the domain names abacrombie.com, abercrombeifinch.com, and abercromie.com.
Additionally, domain names that add words to a trademarked word or phrase are likely to be construed as confusingly similar.
The National Collegiate Athletic Association won the rights to the domain names ncaabasketballbracket.com, ncaabasketballschedule.com, ncaacollegebasketball.com, ncaaresults.com, ncaamensbasketball.com, and ncaafootballscores.com because of their similarity to the “NCAA,” “NCAA basketball,” and “NCAA football” trademarks.
What constitutes bad faith?
The UDRP often looks for elements of bad faith by determining if the registrant (1) is trying to sell a domain name similar to the name of a well-known business or individual, (2) wants to prevent the business or individual from using the domain name, (3) is trying to disrupt the business of a competitor or an individual, or (4) is attempting to gain commercially from the confusion that arises in viewers resulting from the similarity to a well-known name.
Do either the ACPA or the UDRP apply to personal names?
The ACPA prohibits the unauthorized registration of a domain name that is confusingly similar to the name of another living person that was done with the intent to profit either by selling the domain name to the person or a third party.
The UDRP only safeguards personal names that are protected by a trademark. However, the modern trend is to recognize common law trademark rights in well-known names. Prominent artists, authors, performers, and business people are likely to be judged to have a common law trademark right to their names.
Julia Roberts, Dan Marino, and Mick Jagger have all won UDRP disputes over domain names bearing their names (Ex.: juliaroberts.com) despite not having formally registered trademarks. Each of these disputes involved the registration of web sites by people who were not associated with these names and were looking for commercial gain from the sale of the domain name. Thus, elements 2 and 3 of the UDRP standards were satisfied as well.
People with recognizable names do not always succeed in UDRP disputes, however. For example, in a battle for the domain name brucespringsteen.com, the registrant of the address was found not to be using it in bad faith. The web site routed viewers to a fan site called celebrity1000.com. Because the registrant was judged to have a legitimate use and was not trying to profit from Bruce Springsteen’s name, the iconic singer was denied ownership of the domain name.
How can I bring a UDRP complaint?
ICANN has a several dispute resolution providers listed at . A trademark holder can select any of the providers and follow the instructions to file a complaint.
Each provider sets its own fees, usually starting in the range of $1,000 to $2,000 for a proceeding involving a single panelist. Fees increase for cases involving multiple domain names or where one or both parties request a three-member panel to decide the case.
How long does it take to resolve a case through the UDRP?
Cases are usually decided in about two months.
Should I use the UDRP or ACPA to bring a domain name claim?
The UDRP offers a faster, less expensive resolution to domain name disputes, and is the preferred method for most claimants.
The ACPA is the better option when the claimant is seeking damages.
What are the penalties for violating the Anticybersquatting Consumer Protection Act?
Courts may order the domain name to be shut down or transferred to the trademark holder. Additionally, statutory damage awards range from $1,000 to $100,000 per domain name. The award is determined by the discretion of the court.
How do I defend myself if a domain name I hold is being challenged?
Common defenses are: (1) the domain name is not being used in bad faith, (2) the domain name is a common name, and (3) there is no intent to achieve commercial gain, to mislead consumers, or tarnish the trademark.
An example of the importance of bad faith occurred when the magazine Motorcyclist challenged a motorcycle enthusiast’s ownership of the domain name motorcyclist.com. Despite publishing under that name since 1912 and having a trademark application in progress, the magazine lost because the owner of domain name was not trying to create or profit from any confusion associated with the name. Because of the absence of bad faith, the UDRP panel felt it did not have to address whether there was a common law trademark right to the term “motorcyclist” outside the context of magazine publishing.
How does the 1st Amendment come into play with domain names?
Domain name owners can assert a 1st Amendment defense if the names are simply an expression of their views. Specifically, they can argue they have a right to criticize whatever or whomever they choose, that a domain name is used as a parody, or that it is used for non-commercial fair use.
Therefore, disgruntled fans of the University of Florida football team were able to maintain the domain name FireRonZook.com, under which they established a web site critical of the Gators’ former coach. After Ron Zook was replaced by Urban Meyer, the domain name FireCoachMeyer.com was registered and surfaced as a web site.
