International Domain Name Disputes Persist

For most businesses, a domain name is now as critical and integral a part of their corporate identity as a trademark. Because these readily accessible addresses for Web sites are easy to remember and use, domain names have become business identifiers and, in some cases, even trademarks themselves, such as Amazon.com.

Although it's been nearly 10 years since domain names became commonplace, the intersection between trademark rights and domain name registration and use is still teeming with potential problems. These difficulties are compounded when considered internationally. While trademark law jurisprudence can extend back several hundred years, the rules for working with domain names are still being written. Companies with their eye on international markets should pay especially close attention to the variety of rules ' or lack thereof ' in these jurisdictions.

Domain name disputes regarding the three most well-known unrestricted top-level domains (.com, .org, .net) fall under the Uniform Domain Name Dispute Resolution Policy (UDRP). This policy was established in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN) to meet the need for a set of internationally uniform and mandatory procedures to deal with what would frequently become cross-border disputes. There have been four primary providers: World Intellectual Property Organization (WIPO), eResolution Consortium, the National Arbitration Forum and CPR Institute for Dispute Resolution. Most recently on the scene is the American Arbitration Association.

Neither a court nor a true arbitration, the UDRP is a procedure for resolving disputes over use of a particular domain name. The proceedings take place entirely on paper and generally only a complaint and a response are allowed. The provider's sole power is to order deletion or transfer of domain names. There are no monetary damages, and no other injunctive relief is available. Accredited registrars are required to take the necessary steps to enforce a decision. However, under the UDRP, either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution. Jurisdiction would be either the jurisdiction of the registrant or where the registrar is located.

The UDRP rules define the process for filing or responding to a complaint, how the panelists make their decisions, how the parties are notified of the results, the availability and effect of remedies and/or, ultimately, court proceedings. For a fixed fee, a qualified panelist from a list of practicing attorneys, law professors and former judges will render a decision in about 90 days.

The following factors guide the panelists' decisions:

• Is the domain name identical or confusingly similar to a trademark or service mark to which the complainant has rights?
• Does the respondent have any rights or legitimate interests in the domain name? That is, does the respondent offer legitimate goods and services under the same name or did it acquire the domain name before the trademark owner acquired trademark rights in the name?
• Was the domain name registered and is it being used in bad faith?

Cybersquatters Still at It

The issue of bad faith revolves around cybersquatters – those who pre-emptively register trademarks held by third parties as domain names solely for the purpose of selling or renting the domain names to the trademark owner for money or other value that greatly exceeds the cost of the domain names. In the early years of the Internet, a handful of exorbitant sales ' for example $7.5 million

for the domain name business.com ' encouraged cybersquatting as a business.

The Internet boom may be over, but cybersquatters still “troll” the registries for domain names that are up for renewal in the hope of snatching them first to make a profit reselling to the legitimate owner ' or its competitor.

They also register common misspellings or typos as domain names for the same reason. Ben Edelman, a student fellow at the Berkman Center for Internet and Society at Harvard University, has published a new study sponsored by the center titled “Large-Scale Registration of Domains with Typographical Errors” that profiles the many registrations of infamous “typosquatter” John Zuccarini. See http://cyber.law.harvard.edu/people/edelman/typo-domains/. Edelman reports that although the Federal Trade Commission issued a permanent injunction against Zuccarini in May 2002, Zuccarini still owns more than 8000 misspelled domain names.

Indeed, going after a confirmed cybersquatter can also be exceedingly difficult and frustrating. Zuccarini was, until recently, still playing games with trademark owners. He moved to Nassau, the Bahamas, in an apparent effort to evade trademark owners and the U.S. government. Also, he has used a registrar located in Germany for his domain registration activities. When decisions went against him (as they nearly always did), he would file an appeal in German courts. Filing a court complaint within the permitted time prevents the transfer of the domain name and forces the trademark owner to answer in a foreign jurisdiction ' exponentially increasing costs.

For example, in Classmates Online Inc. v. John Zuccarini, WIPO Case D2002-0635 (Sept. 6, 2002), the WIPO panel ruled in favor of Classmates Online Inc., but in John Zuccarini v. Classmates Online Inc., Landgericht Dusseldorf (filed Oct. 11, 2002), the German court entered an injunction preventing the registrar from transferring the “classmat.com” and “classmates.com” domain names to Classmates Online.

Zuccarini's typosquatting antics finally caught up with him on Sept. 3, 2003. While staying in Hollywood, FL, he was arrested under the Truth in Domain Names Act that was enacted in April. See Ashley Fantz, “Famous names spell out Web scam,” Miami Herald, Sept. 5, 2003, at A1. Under the Act, “whoever knowingly uses a misleading domain name with the intent to attract a minor into viewing a visual depiction of sexually explicit conduct on the Internet” will be subject to fines and/or imprisonment. 18 U.S.C. 2252B. Evidently, many of his misspelled domain names redirected visitors to sexually explicit content.

Cybersquatting is not an inconsequential matter, as demonstrated by another recent court ruling. On April 4, U.S. District Judge Claude Hilton issued an order that granted control of over 818 domain names containing the Olympic marks to the U.S. Olympic Committee, International Olympic Committee and the organizing committee for the 2002 Salt Lake City Olympic Winter Games. Thirty-six other domain names were dismissed. The decision is the largest transfer award ever issued under the AntiCybersquatting Consumer Protection Act, 15 U.S.C. 1125[d]. U.S. Olympic Comm. v. 2000Olympic.com, No. 00-1018-A (E.D. Va. April 4, 2003).

Going International

The complexities of resolving disputes over domain names and trademarks increases dramatically when a business decides to go international.

As recognized in the U.S. Department of Commerce White Paper that led to the creation of ICANN, governments have a role in “manag[ing] or establish[ing] policy for their own [country code top-level domain names].” U.S. Department of Commerce, Management of Internet Names and Addresses (June 1998) (Statement of Policy, Docket No. 980212036-8146-02).

As countries weigh in to manage their country code top-level domain names, however, procedures for resolving disputes remain inconsistent. The development of a policy is as much affected by nationalism, economics, language, culture, legal environment and relations with other governments as any other aspect of international relations. Just as wary stateside businesses should research ahead of time the ownership of a generic top-level domain name, they should investigate carefully not only the availability of names in other countries, but also the recourse available should the name come into conflict. In this, as in any other aspect of business, it pays for the buyer to beware and to do the research ahead of time. This kind of research can be done quickly and easily on the Internet. The WIPO Web site (http://www.wipo.org) links to an alphabetized list of all country code top-level domain names. Clicking on any such country code will take you to the site of registrars for that country, which will tell you the registration requirements and what dispute resolution policies are in place.

New Zealand's site, for example, lists 34 registrars in random order that can research and register a desired domain name. The site also notes that New Zealand – whose country code top-level domain name is “.nz” ' at this point in time has no dispute resolution policy in place. Ireland's site indicates that it has established a working group to help set up a dispute resolution a policy and that a questionnaire regarding the proposed policy is available for public comment. Armed with this information, a lawyer would probably want to go to greater lengths to protect a client's trademark-domain name by researching ownership of related names, misspellings and typos and to register more of those names than he or she would in, say, Australia, which has adopted a variation of the UDRP to resolve disputes.

Doing business in Australia would be pretty much similar to doing business under the UDRP in the U.S. (the Australian version is named “auDRP”). That is, domain names that correspond to trademarks can be reclaimed if there is bad faith – provided that the domain name was registered or renewed after the effective date of the auDRP. Moreover, WIPO is a dispute resolution provider for the auDRP, so cases can be filed in a forum that is familiar to most practitioners. A further benefit is that the arbitrations are conducted in English and there is no requirement that the party's representatives be admitted to practice in Australia.

Yet cases can still be lost for a failure to demonstrate rights and legitimate interests in a trademark. In The Crown in Right of the State of Tasmania Trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case DAU2003-0001 (April 16, 2003), the complainant's request to transfer the “discovertasmania.com.au” domain name was denied because the asserted Tasmania trademark was geographically descriptive and therefore unprotectable.

Italy (whose country code top-level domain is “.it”), on the other hand, has created a policy that is a modified version of the UDRP, and while the portions of its Web site that involve the researching and registering of names are in several languages, the Italian Dispute Resolution Procedure itself is only in Italian. In order to reclaim the “speedo.it” domain name, the owners of the Speedo trademark were forced to hire local counsel to navigate the arbitration system and to file the complaint with an Italian dispute resolution provider. Speedo Holdings N.V. v. Alessi Mauro, Centro Risoluzione Dispute Domini, Nov. 27, 2002.

As many countries have ineffective or nonexistent domain name dispute policies for their country code top-level domains, many trademark owners are forced to consider their options in the courts in the local jurisdictions and attempt to enforce their rights through trademark law. Local counsel must be engaged to navigate these waters. This is unquestionably much more expensive than an administrative procedure and is fraught with additional hurdles, the least of which being that the trademark owner needs to have superior trademark rights (often necessarily evidenced by a local trademark registration) to prevail. Another difficulty is that under most countries' trademark laws, there must be infringing use of a trademark in order to bring suit, and in most cases simply holding a domain name does not qualify as use. As a result, local courts often are not able to provide the requested relief.

The simplest and easiest approach for effective domain name policy is to stay with the original .com extension, as this is the one that most people conducting Internet searches gravitate toward first, regardless of the country in which they live. Despite the proliferation of domain name extensions, .com continues its unchallenged reign as king of the jungle. Having a universally acknowledged domain name for an online presence carries the same benefits that have motivated companies to invest in and protect their trademarks. They protect themselves from fraudulent competition and their customers from getting cheated by shoddy imitators. Their investment of time, money and effort to protect their trademarks demonstrates their commitment to quality, which is the reward their customers get for loyalty.

Important Considerations

Efforts to develop and protect one's domain names should be no less focused than efforts on behalf of one's trademarks. Be aware, however, of a fundamental distinction between trademarks and domain names.

Trademark law generally allows multiple uses of the same mark. A trademark can be used successfully by companies for goods and services that aren't related, such as United Airlines, United Genetics and the United Way. Unlike a trademark, a domain name doesn't have the flexibility of allowing multiple uses. There is only one “united.com”, so it then becomes a race for the first person to register the domain name. The winner will have additional protection, especially in international commerce with countries like Australia, Ireland and Italy, if they have also registered corresponding country code domain names such as “united.au”, “united.ie” and “united.it”.

Perhaps because domain names are relatively easy to come by and are relatively inexpensive, companies can have a laissez-faire attitude that results in some dangerous and expensive quandaries. One company spent months in preparation of its product launch and produced top-quality marketing material. The articles and press releases promoting its business and Web site had already gone out to magazines and newspapers when someone checked and found that the domain name they were advertising was already in use by someone else. It took some serious scurrying around to find the domain name registrant, followed by intense negotiations with the existing owner and significant additional dollars to purchase ownership of the name.

While it is somewhat of a jungle out there in domain name land, an enterprising researcher can still navigate the terrain in relative safety by using plain old common sense. Companies should start with the most traveled sector of the Internet, which is the .com territory. They should research the name they want thoroughly, including variations that they might want to adopt for future enterprises, obvious misspellings and typos. Once the name is registered, companies should stay ahead of the renewals and not miss any deadlines for paying registration fees. If country code top-level domains make sense for a business plan, however, a company should dig deeply into the domain-name policies of the country where it is headed. Common sense is simply a matter of looking ahead and planning appropriately. Remember the old adage, “Fail to plan. Plan to fail.”

For most businesses, a domain name is now as critical and integral a part of their corporate identity as a trademark. Because these readily accessible addresses for Web sites are easy to remember and use, domain names have become business identifiers and, in some cases, even trademarks themselves, such as Amazon.com.

Although it's been nearly 10 years since domain names became commonplace, the intersection between trademark rights and domain name registration and use is still teeming with potential problems. These difficulties are compounded when considered internationally. While trademark law jurisprudence can extend back several hundred years, the rules for working with domain names are still being written. Companies with their eye on international markets should pay especially close attention to the variety of rules ' or lack thereof ' in these jurisdictions.

Domain name disputes regarding the three most well-known unrestricted top-level domains (.com, .org, .net) fall under the Uniform Domain Name Dispute Resolution Policy (UDRP). This policy was established in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN) to meet the need for a set of internationally uniform and mandatory procedures to deal with what would frequently become cross-border disputes. There have been four primary providers: World Intellectual Property Organization (WIPO), eResolution Consortium, the National Arbitration Forum and CPR Institute for Dispute Resolution. Most recently on the scene is the American Arbitration Association.

Neither a court nor a true arbitration, the UDRP is a procedure for resolving disputes over use of a particular domain name. The proceedings take place entirely on paper and generally only a complaint and a response are allowed. The provider's sole power is to order deletion or transfer of domain names. There are no monetary damages, and no other injunctive relief is available. Accredited registrars are required to take the necessary steps to enforce a decision. However, under the UDRP, either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution. Jurisdiction would be either the jurisdiction of the registrant or where the registrar is located.

The UDRP rules define the process for filing or responding to a complaint, how the panelists make their decisions, how the parties are notified of the results, the availability and effect of remedies and/or, ultimately, court proceedings. For a fixed fee, a qualified panelist from a list of practicing attorneys, law professors and former judges will render a decision in about 90 days.

The following factors guide the panelists' decisions:

• Is the domain name identical or confusingly similar to a trademark or service mark to which the complainant has rights?
• Does the respondent have any rights or legitimate interests in the domain name? That is, does the respondent offer legitimate goods and services under the same name or did it acquire the domain name before the trademark owner acquired trademark rights in the name?
• Was the domain name registered and is it being used in bad faith?

Cybersquatters Still at It

The issue of bad faith revolves around cybersquatters – those who pre-emptively register trademarks held by third parties as domain names solely for the purpose of selling or renting the domain names to the trademark owner for money or other value that greatly exceeds the cost of the domain names. In the early years of the Internet, a handful of exorbitant sales ' for example $7.5 million

for the domain name business.com ' encouraged cybersquatting as a business.

The Internet boom may be over, but cybersquatters still “troll” the registries for domain names that are up for renewal in the hope of snatching them first to make a profit reselling to the legitimate owner ' or its competitor.

They also register common misspellings or typos as domain names for the same reason. Ben Edelman, a student fellow at the Berkman Center for Internet and Society at Harvard University, has published a new study sponsored by the center titled “Large-Scale Registration of Domains with Typographical Errors” that profiles the many registrations of infamous “typosquatter” John Zuccarini. See http://cyber.law.harvard.edu/people/edelman/typo-domains/. Edelman reports that although the Federal Trade Commission issued a permanent injunction against Zuccarini in May 2002, Zuccarini still owns more than 8000 misspelled domain names.

Indeed, going after a confirmed cybersquatter can also be exceedingly difficult and frustrating. Zuccarini was, until recently, still playing games with trademark owners. He moved to Nassau, the Bahamas, in an apparent effort to evade trademark owners and the U.S. government. Also, he has used a registrar located in Germany for his domain registration activities. When decisions went against him (as they nearly always did), he would file an appeal in German courts. Filing a court complaint within the permitted time prevents the transfer of the domain name and forces the trademark owner to answer in a foreign jurisdiction ' exponentially increasing costs.

For example, in Classmates Online Inc. v. John Zuccarini, WIPO Case D2002-0635 (Sept. 6, 2002), the WIPO panel ruled in favor of Classmates Online Inc., but in John Zuccarini v. Classmates Online Inc., Landgericht Dusseldorf (filed Oct. 11, 2002), the German court entered an injunction preventing the registrar from transferring the “classmat.com” and “classmates.com” domain names to Classmates Online.

Zuccarini's typosquatting antics finally caught up with him on Sept. 3, 2003. While staying in Hollywood, FL, he was arrested under the Truth in Domain Names Act that was enacted in April. See Ashley Fantz, “Famous names spell out Web scam,” Miami Herald, Sept. 5, 2003, at A1. Under the Act, “whoever knowingly uses a misleading domain name with the intent to attract a minor into viewing a visual depiction of sexually explicit conduct on the Internet” will be subject to fines and/or imprisonment. 18 U.S.C. 2252B. Evidently, many of his misspelled domain names redirected visitors to sexually explicit content.

Cybersquatting is not an inconsequential matter, as demonstrated by another recent court ruling. On April 4, U.S. District Judge Claude Hilton issued an order that granted control of over 818 domain names containing the Olympic marks to the U.S. Olympic Committee, International Olympic Committee and the organizing committee for the 2002 Salt Lake City Olympic Winter Games. Thirty-six other domain names were dismissed. The decision is the largest transfer award ever issued under the AntiCybersquatting Consumer Protection Act, 15 U.S.C. 1125[d]. U.S. Olympic Comm. v. 2000Olympic.com, No. 00-1018-A (E.D. Va. April 4, 2003).

Going International

The complexities of resolving disputes over domain names and trademarks increases dramatically when a business decides to go international.

As recognized in the U.S. Department of Commerce White Paper that led to the creation of ICANN, governments have a role in “manag[ing] or establish[ing] policy for their own [country code top-level domain names].” U.S. Department of Commerce, Management of Internet Names and Addresses (June 1998) (Statement of Policy, Docket No. 980212036-8146-02).

As countries weigh in to manage their country code top-level domain names, however, procedures for resolving disputes remain inconsistent. The development of a policy is as much affected by nationalism, economics, language, culture, legal environment and relations with other governments as any other aspect of international relations. Just as wary stateside businesses should research ahead of time the ownership of a generic top-level domain name, they should investigate carefully not only the availability of names in other countries, but also the recourse available should the name come into conflict. In this, as in any other aspect of business, it pays for the buyer to beware and to do the research ahead of time. This kind of research can be done quickly and easily on the Internet. The WIPO Web site (http://www.wipo.org) links to an alphabetized list of all country code top-level domain names. Clicking on any such country code will take you to the site of registrars for that country, which will tell you the registration requirements and what dispute resolution policies are in place.

New Zealand's site, for example, lists 34 registrars in random order that can research and register a desired domain name. The site also notes that New Zealand – whose country code top-level domain name is “.nz” ' at this point in time has no dispute resolution policy in place. Ireland's site indicates that it has established a working group to help set up a dispute resolution a policy and that a questionnaire regarding the proposed policy is available for public comment. Armed with this information, a lawyer would probably want to go to greater lengths to protect a client's trademark-domain name by researching ownership of related names, misspellings and typos and to register more of those names than he or she would in, say, Australia, which has adopted a variation of the UDRP to resolve disputes.

Doing business in Australia would be pretty much similar to doing business under the UDRP in the U.S. (the Australian version is named “auDRP”). That is, domain names that correspond to trademarks can be reclaimed if there is bad faith – provided that the domain name was registered or renewed after the effective date of the auDRP. Moreover, WIPO is a dispute resolution provider for the auDRP, so cases can be filed in a forum that is familiar to most practitioners. A further benefit is that the arbitrations are conducted in English and there is no requirement that the party's representatives be admitted to practice in Australia.

Yet cases can still be lost for a failure to demonstrate rights and legitimate interests in a trademark. In The Crown in Right of the State of Tasmania Trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case DAU2003-0001 (April 16, 2003), the complainant's request to transfer the “discovertasmania.com.au” domain name was denied because the asserted Tasmania trademark was geographically descriptive and therefore unprotectable.

Italy (whose country code top-level domain is “.it”), on the other hand, has created a policy that is a modified version of the UDRP, and while the portions of its Web site that involve the researching and registering of names are in several languages, the Italian Dispute Resolution Procedure itself is only in Italian. In order to reclaim the “speedo.it” domain name, the owners of the Speedo trademark were forced to hire local counsel to navigate the arbitration system and to file the complaint with an Italian dispute resolution provider. Speedo Holdings N.V. v. Alessi Mauro, Centro Risoluzione Dispute Domini, Nov. 27, 2002.

As many countries have ineffective or nonexistent domain name dispute policies for their country code top-level domains, many trademark owners are forced to consider their options in the courts in the local jurisdictions and attempt to enforce their rights through trademark law. Local counsel must be engaged to navigate these waters. This is unquestionably much more expensive than an administrative procedure and is fraught with additional hurdles, the least of which being that the trademark owner needs to have superior trademark rights (often necessarily evidenced by a local trademark registration) to prevail. Another difficulty is that under most countries' trademark laws, there must be infringing use of a trademark in order to bring suit, and in most cases simply holding a domain name does not qualify as use. As a result, local courts often are not able to provide the requested relief.

The simplest and easiest approach for effective domain name policy is to stay with the original .com extension, as this is the one that most people conducting Internet searches gravitate toward first, regardless of the country in which they live. Despite the proliferation of domain name extensions, .com continues its unchallenged reign as king of the jungle. Having a universally acknowledged domain name for an online presence carries the same benefits that have motivated companies to invest in and protect their trademarks. They protect themselves from fraudulent competition and their customers from getting cheated by shoddy imitators. Their investment of time, money and effort to protect their trademarks demonstrates their commitment to quality, which is the reward their customers get for loyalty.

Important Considerations

Efforts to develop and protect one's domain names should be no less focused than efforts on behalf of one's trademarks. Be aware, however, of a fundamental distinction between trademarks and domain names.

Trademark law generally allows multiple uses of the same mark. A trademark can be used successfully by companies for goods and services that aren't related, such as United Airlines, United Genetics and the United Way. Unlike a trademark, a domain name doesn't have the flexibility of allowing multiple uses. There is only one “united.com”, so it then becomes a race for the first person to register the domain name. The winner will have additional protection, especially in international commerce with countries like Australia, Ireland and Italy, if they have also registered corresponding country code domain names such as “united.au”, “united.ie” and “united.it”.

Perhaps because domain names are relatively easy to come by and are relatively inexpensive, companies can have a laissez-faire attitude that results in some dangerous and expensive quandaries. One company spent months in preparation of its product launch and produced top-quality marketing material. The articles and press releases promoting its business and Web site had already gone out to magazines and newspapers when someone checked and found that the domain name they were advertising was already in use by someone else. It took some serious scurrying around to find the domain name registrant, followed by intense negotiations with the existing owner and significant additional dollars to purchase ownership of the name.

While it is somewhat of a jungle out there in domain name land, an enterprising researcher can still navigate the terrain in relative safety by using plain old common sense. Companies should start with the most traveled sector of the Internet, which is the .com territory. They should research the name they want thoroughly, including variations that they might want to adopt for future enterprises, obvious misspellings and typos. Once the name is registered, companies should stay ahead of the renewals and not miss any deadlines for paying registration fees. If country code top-level domains make sense for a business plan, however, a company should dig deeply into the domain-name policies of the country where it is headed. Common sense is simply a matter of looking ahead and planning appropriately. Remember the old adage, “Fail to plan. Plan to fail.”