ICTLECLIG – 2005 - UiO



JUR5640 – 2007

Lecture: Domain Name Dispute Resolution – UDRP, Trademarks and Beyond

(6th November 2007)

Lee Bygrave

1. Disposition

• Background to Uniform Domain Name Dispute Resolution Policy (UDRP).

• Overview of TM law and its application to DN disputes.

• Overview of UDRP and its strengths and weaknesses.

2. Background to UDRP

• UDRP adopted August 1999.

• Aim = to provide cheap, efficient ADR mechanism for countering threats to IPR (primarily rights of TM-holders) in wake of cybersquatting.

• Cybersquatting arose as major problem from mid-1990s. Emergence due to confluence of multiple factors: e.g.,

o DNs were acquiring (new) functionality as marketing tools for businesses.

o Extreme focus on getting DNs registered under the .com TLD.

o “First come first served” principle for DN allocation; but no sharing of DNs.

o Relatively primitive state of search engines.

• Litigation in courts under TM laws = first main way of countering cybersquatting; but problematic for several reasons.

3. Trademark law

TM law basics:

• What = TM?

o Distinctive sign/nomenclature identifying origin of certain goods/services.

• What = rationale for TM protection?

o Enable consumers to (accurately) recognise and distinguish between goods/services in marketplace and thereby make (informed) choice about whether or not to purchase these.

o TM also = means for advertising of business, and means for business to acquire goodwill etc.

• What = TM rules?

o Rules are primarily national: see Paris Convention for the Protection of Industrial Property of 1883, Article 6(1).

o However, some attempts at international harmonisation, particularly wrt. protection of “famous” or “well-known” TMs. Note TRIPS Agreement of 1994, Section 2, Articles 15 (defining what may be protected) and 16 (extending protection for well-known TMs). Note also EU legislation, particularly Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks; Community Trade Mark Regulation of 1994.

o Protection of TM typically requires that TM be registered (with government agency). Several conditions for successful registration: e.g., TM must be distinctive, not misleading/deceptive or in violation of public order or morality.

o Criterion of distinctiveness means that generic terms (e.g., “beer”, “ice-cream”) tend not to qualify for TM protection.

o Some jurisdictions allow TM protection merely on basis that TM has been used consistently and acquired a certain profile in the marketplace.

o TM-owner given exclusive right to use TM for a certain period. In Norway, this period = ten years.

o Usually, TM may be shared by two or more parties if:

▪ each party operates in different geographical areas; or

▪ each party uses the TM in relation to different classes of goods/services; and in either case

▪ there is no likelihood of consumers being confused.

o See further Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957), to which ca. fifty states are party.

• What = TM infringement?

o This typically pertains if a party uses a sign/nomenclature that is identical with or deceptively similar to a registered TM and the sign/nomenclature is used in relation to the same class of goods/services or same territory as the TM is used.

o Infringement also tends to pertain if the “offending” sign/nomenclature is used in relation to a closely related class of goods/services as the TM is used, and there is a likelihood of confusion.

• Special protection is often given to “famous” or “well-known” TMs regardless of the class of goods/services in relation to which the “offending” sign/nomenclature is used: see, e.g., Australia’s federal Trade Marks Act 1995, s. 120(3).

• Cf. doctrine of “dilution” in US law: see US Federal Trademark Dilution Act of 1995 (implemented in Lanham Act), § 3(c)(1) – owner of famous TM entitled to injunction to prevent commercial use of TM which causes “dilution of the distinctive quality of the mark”; i.e., “lessening of the capacity of a famous mark to identify and distinguish goods or services” (§ 4), regardless of either competition between TM owner and other parties or of confusion/mistake/deception. Arguable, though, that for dilution action to succeed, proof must be shown of likelihood for confusion.

• Other jurisdictions tend not to have express rules on dilution, but similar protection is often available: see, e.g., UK Trade Marks Act of 1994, s. 10(3).

• Overall, likelihood of confusion seems to be key requirement in most jurisdictions.

• Cf. “likelihood of association” standard for famous TMs set down in s. 8(1)(b) of the Community Trade Mark Regulation of 1994.

Application of TM law to DN disputes:

• How might DN registration infringe TM law? DN-holder incorporates TM of another in second- or third-level domain. Cp. what if DN-holder incorporates TM of another in “post-TLD” sequence? US court has said no TM infringement: Interactive Products Corp. v. a2zMobile Office Solutions Inc. 326 F.3d 687 (6th Cir 2003).

• One major problem = need to show that DN is being used as TM in relation to goods or services of TM-holder. Little guidance on what = use in DN context, at least in Europe. Some courts have been reluctant to find “use” criterion satisfied in cybersquatting cases: see, e.g., CSR Ltd v. Resource Capital Australia Pty Ltd [2003] FCA 279 (per Hill J.); British Telecommunications v. One in a Million (1998) 42 IPR 189 (per UK Ct. of Appeal).

• But courts have been able to apply instead tort of passing off (see, e.g., One in a Million case (1998) op. cit., and easyJet Airline Co Ltd v. Dainty t/as easyRealestate [2002] FSR 6) or law on misleading/deceptive trade practices (see, e.g., CSR Ltd v. Resource Capital Australia Pty Ltd – supra.

• Fairly extensive case law in European jurisdictions showing judicial willingness to curb cybersquatting under variety of heads of action: for general overview, see, e.g., Jeremy Phillips, Trade Mark Law: A Practical Anatomy (Oxford: Oxford University Press, 2003): chapter 17; for overview of Norwegian and Danish cases, see Tonje Gulliksen, Internet Domain Names and Trademarks, CompLex 2/01 (2001), pp. 65–71.

• USA: leading cases include Intermatic Inc v. Toeppen, 977 F Supp 1227 (ND Ill 1996) and Panavision International LP v. Toeppen, 141 F 3d 1316 (9th Cir. Ct. of Appeal 1998). These involve “cybersquatting”. Courts rejected defendant’s argument that DN = mere address or equivalent to telephone number, therefore DN usage could not amount to TM usage. Courts found dilution to have occurred because, inter alia, customers of TM-holder “will be discouraged if they cannot find its webpage by typing in but instead are forced to wade through hundreds of websites.”

• USA subsequently introduced (in 1999) new legislation dealing specifically with cybersquatting: Anti-cybersquatting Consumer Protection Act (ACPA). The ACPA adds new § 43(d) to Trade Mark Act of 1946 (codified at 15 USC, s. 1025(d)), providing for TM infringement if person has bad faith intention to profit from registered TM by registering or using a DN that is identical or confusingly similar to, or dilutive of, the TM. The Act employs very similar principles to UDRP but there are some differences: e.g., ACPA only applies to famous and/or distinctive marks; requires “bad faith intent to profit”; beefs up remedies.

• DN as property?

o See case of Kremen v. Cohen & Network Solutions, decided 25.7.2003 by US Ct. of App. (9th Cir.). Ct. held DN as type of “property” susceptible to conversion.

o But RFC 1591 describes allocation of DNs in terms of “delegation”, and in some jurisdictions, use of DN is by revocable license (e.g., Australia) while in some other jurisdictions (e.g., Belgium) trade in DNs is prohibited.

4. UDRP

• Must be applied by all accredited DN registrars for non-ccTLDs.

• Some DN managers of ccTLDs have adopted UDRP (e.g., .tv) or have developed procedures closely modelled on UDRP (e.g., auDRP at ).

• Policy applies between DN registrar and DN registrant.

• Disputes must go to ICANN-approved dispute resolution providers of which there are currently 4: WIPO’s Arbitration and Mediation Centre; National Arbitration Forum (NAF); CPR Institute for Dispute Resolution; Asian Domain Name Dispute Resolution Centre (ADNDRC). Former DPR = eResolutions.

• Complainant can be anyone in world with TM or other name to which they have legal rights.

• UDRP protects unregistered marks (e.g., personal names – if famous) as well as registered TMs – see, e.g., Julia Roberts case WIPO/D2000-0210. Cf. case of Sting, WIPO/D2000-0596 and Bruce Springsteen, WIPO/D2000-1532.

• DNs involving geographical indicators tend not to be accepted unless statutory rights being violated. Cf. early decision on (WIPO/D2000-0505) – now apparently recognised by most as mistaken.

• For Complainant to succeed, they must satisfy three-pronged requirement: 1. show confusing similarity to TM; 2. show lack of legitimate right; 3. show bad faith in registration and use.

• Limited remedies: transfer o/ship of DN to Complainant; cancel registration; or dismiss complaint.

• No appeals within UDRP system, though recourse to courts possible. Appeal to court in “mutual jurisdiction”. Resp. has 10 days to appeal after panel decision.

• Advantages of UDRP: quick, cheap, online possibility, simple and relatively clear rules, publicly available decisions, minimisation of jurisdictional and choice-of-law problems (“anational rule making”).

Problems (alleged and/or real):

• Complainant chooses arbitrator (forum shopping);

• No right of appeal (how to ensure consistency?);

• Trial and pleadings not public;

• Panellist selection process too open;

• No rules of evidence;

• Rules on bad faith rather vague;

• Process perhaps too brief;

• Bias of panels in favour of TM owners;

• Inconsistency;

See generally Froomkin, “ICANN’s ‘Uniform Dispute Resolution Policy’ – Causes and (Partial) Cures”, Brooklyn Law Review, 2002, vol. 67, pp. 605 et seq.

Solutions?

• Mueller (in “Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN’s UDRP” (2002), available at ) suggests:

o Require Complainants to pay $1,000 bond additional to costs of filing complaint.

o Clarify criteria for finding “confusing similarity” to TM.

o Expand list of factors that show “bad faith” to formally encompass “passive holding” and identity concealment, but make list finite.

• DN disputes during 2002-2004 dwindled in number, but now on the rise again – why?

• Courts do not appear to place much weight on UDRP panel decisions; arguably should be de novo hearing (despite traditional court deference to arbitration outcomes) due to procedural deficiencies with UDRP. Some court decisions clearly opposed to earlier UDRP outcomes – see, e.g., Lamparello v. Falwell, dec. of 24.8.2005 by US Ct. of Appeals 4th Cir. (permitting gripe site ); Bosley Medical Institute v. Kremer, dec. of 4.4.2005 by US Ct. of Appeals 9th Cir.

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