Litigation of Domain Name Disputes.
LawsOnline
February 01, 2024
Arthur "Art" Stanley of Cedar Rapids, Iowa is a graphic designer who creates colorful, block art storefront signs. His business is called Artz Dezigns. His intention is to expand his client base by acquiring the URL www.artzdezigns.com to showcase his bold and unique signs worldwide, however, the URL is already registered to Brooke Lane of Seattle, Washington. Ms. Lane owns a novelty bookstore, which handcrafts books featuring one-of-a-kind artwork-designed covers. Her business is called Artz & Dezigns Bookstore and, she has used the URL for the past three years. Both are legitimate businesses but, only one can legitimately use the URL www.artzdezigns.com. Therein lies the difficult dilemma of domain name disputes.
When reviewing the domain name disputes brought to court, the evidence suggests that the majority of conflicts are surrounding .com addresses. The .com gTLD (generic Top-Level Domain) was made popular by companies whose strong ad campaigns promoted this gTLD as the "go to" address online. Thus everyone wants the most popular gTLD.
One reason for increased tension over .com is that many users are assuming that they should be using this gTLD, however, not everyone should be using .com. For example, nonprofit organizations and personal websites have been following this popular trend but this gTLD was made for commercial sites.
This popular desire for .com addresses complicates the selection of SLDs (second level domain names) and further dwindles the possibilities into one "choice" address. Anyone with a name wants to have the SLD which identifies them online. This is especially the case for established businesses. Although different businesses in different geographical locations may use the same business name, only one may use the name on the Internet which does not recognize geographical boundaries.
When two people want the same .com address, it is usually given on a first come, first served basis. When there is a trademark involved this is usually not the case. Names that are distinct and strictly for a type of product (e.g. Tylenol) are often readily resolved for the trademark owner. Courts are more favorable to trademark owners since non-affiliated parties tried to make a profit by buying these SLDs early on. If the address that includes the trademark was not misused by the original owner then sometimes first come, first served remains the deciding principle (for an example see Fuji Photo Film Co. Limited and Fuji Photo Film USA Inc v Fuji Publishing Group LLC).
When a business establishes a trademark in the U.S. it is generally good for 10 years at a time. No one may infringe on an established trademark by selling goods or services which may cause confusion with the original holder. Nor may one reproduce the trademark without express permission of the original owner. It is also illegal for a business to use another's trademark to market to an established clientele. Online this is commonly done by adopting recognizable SLDs to set up scam operations. For example, customers of an ISP server with the address www.value.net were sent the address www.valuehelp.net by an unaffiliated scam artist who informed customers to pay their bills through the false site (full article). This proves costly to the company as well as their customers.
Another threat to trademarked businesses online is the registering of the SLD with the intent of offering it for sale; this is commonly known as cyber-squatting. In the past many sites were registered by various unaffiliated users that would contact the owners of the trademark and attempt to negotiate a resale. Since the enactment of the U.S. Anticybersquatting Consumer Protection Act this is beginning to cease. However, some users are still registering SLDs which are the same as a trademarked name, developing a fake and nonessential site, and then waiting for the trademark holders to contact them. In most cases the users then ask for a reimbursement fee for "efforts" they put into a bogus site.
Finally, some users are using misspellings of popular names to attract an established clientele. For example, the case of Microsoft Corporation v. Global Net 2000, Inc. was centered around Global Net 2000, Inc. reregistering many variations of popular Microsoft sites. These included addresses like: hotmaill.com, otmail.com and homail.com. This case was ruled in favor of Microsoft Corporation. Under the Trademark Act of 1946 (Lanham Act), one cannot cause trademark dilution by being deceptively similar in attempt to receive business or cause confusion which may hurt a trademarked name.
The race for .com addresses has created a clash between businesses which operate in different markets but are faced with the dilemma of a borderless online world. In addition, the misuse of trademarked names has caused increased litigation surrounding trademarks. In the first instance it is usually given by the principle of first come, first served. However, when trademarks are involved, because of the character of some users out for profit, the courts have the tendency to rule in favor of the trademarked business.
Currently when a domain name dispute arises there are four accredited dispute resolution providers approved by the Internet Corporation for Assigned Names and Numbers (ICANN). The ICANN is a non-profit corporation which controls various assignments on the Internet from IP address allocation to domain name management. The ICANN website has a wealth of information including a list of accredited registrars to register domain names and where to go to settle domain name disputes. Although the ICANN does not handle dispute resolution, it does accredit the organizations which do. The ICANN has enacted the Uniform Domain-Name Dispute-Resolution Policy (UDRP) which is used to file a complaint to an accredited dispute resolution provider. In this policy, the ICANN distances itself from disputes by reiterating that those purchasing a URL are responsible to see if a domain name infringes on another's claim or trademark. All accredited dispute resolution providers follow the ICANN's Rules for the Uniform Domain-Name Dispute-Resolution Policy. However, it is important to look at the different dispute resolution providers' policies as they also implement their own supplemental rules.
Three main points must be proven to the court:
Based off the evidence proving or disproving the above, the court decides who gets to have the domain name for good.
Domain Name Cases:
Domain Name Resolution:
- ICANN
- Arbitration Center for Internet Disputes
- Asian Domain Name Dispute Resolution Centre
- National Arbitration Forum
- World Intellectual Property Organization
Photo by RDNE Stock project from Pexels.com.
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