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Domain Name Diputes Part 2

After a recent dispute between a bulk registrar company and one of my client's here are some excerpts of the laws that are helpful.

 

The Anticybersquatting Consumer Protection Act (ACPA)

 15 U.S.C. § 1125(d), is an American law enacted in 1999 and that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.[1][2] The law was designed to thwart “cybersquatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party.


15 U.S. Code § 1125

False designations of origin, false descriptions, and dilution forbidden(a) Civil action(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.(2) As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.(3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.


(d) Cyberpiracy prevention(1)(A)

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and(ii) registers, traffics in, or uses a domain name that—(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36

Domain Name Disputes

Domain Name Dispute Policies:

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"). An owner of an unregistered trademark could not initiate an action under this policy, nor could an owner of a trademark that was confusingly similar (but not identical). If the date that the trademark was first registered predated the domain name registration, the domain name owner had to supply their own trademark registration for the second-level domain name. If the domain name owner could not provide such a trademark registration, NSI would suspend all use of the domain name. This is true even if the challenging party could not properly prove a claim of trademark infringement (see the BitLaw discussions on trademark infringement in general and trademark infringement on the Internet for more information).

This policy has now been replaced with a Uniform Domain Name Dispute Resolution Policy created by ICANN and used by all accredited registrars. Under this new policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to prevail, the trademark owner must show:

  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 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 nor transfer the domain name.

Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:

  • 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;
  • that the domain name owner has been commonly known by the second level domain name; or
  • 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

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:

  • 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;
  • engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
  • registered the domain name primarily to disrupt the business of a competitor; or
  • is attempting to attract users to a web site for commercial gain by creating a likelihood of confusion with the trademark owner's trademark

Content of this article was from: http://www.bitlaw.com/internet/domain.html