SSRN-Id2045222-Conflicts Between Trademarks and Domain Names A Critical Analysis

Conflicts between Trademarks and Domain Names: A Critical Analysis
Compiled by: Snehlata Singh (snehlatasingh@aol.co.uk)
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Electronic copy available at: http://ssrn.com/abstract=2045222
ACKNOWLDGEMENTS:
First of all, I would like to thank my Mother and my guru Shree Sainath for their blessings throughout. I thank my supervisors Mr Howard Johnson and Dr Mike Adcock for their valuable advice and support. I would also like to thank the module tutor Dr Jonathan Mukwiri for helping me understand the basic concepts underlying the issue and finally, I thank Durham University for giving me access to their library and databases.
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Electronic copy available at: http://ssrn.com/abstract=2045222
ABSTRACT:
The essay discusses the issue of conflicts between trademarks and domain names. It discusses in detail the causes and kinds of the disputes and what the legal system has to offer to this condition. As the essay proceeds, it is made apparent that the current legal system is incapable of handling these issues effectively. The essay concludes with the same remark and suggestions that might help in settling these disputes.
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LIST OF CONTENTS
Acknowledgements2 Abstract ..................... 3 List of Contents...... 4 List of Figures 5 List of Abbreviations. 6 Chapter 1: Introduction............................................................. 7 Chapter 2:Domain Names and Trademarks: An Overview.. 8 2.1. What is a Domain Name?....................................................................... 8 2.2. What is a Trademark?.............................................................................10 2.3. Domain Names vs. Trademarks..11 Chapter 3: The Kind of Disputes Between Trademarks and Domain Names...14 3.1. Cybersquatting14 3.2. Reverse Domain Name Hijacking...16 3.3. Typosquatting..17 Chapter 4: Protection of Domain Names: UK Trademark Law 19 4.1. Trademark Infringement. 19 4.1.a. Section 10(1) TMA 1994. 20 4.1.b. Section 10(2) TMA 1994. 21 4.1.c. Section 10(3) TMA 1994. 23 4.2. Domain Name and Passing Off.. 25 Chapter 5: The Protection of Domain Names: International Law 27 5.1. The Need, Purpose and Creation of ICANN. 27 5.2. The UDRP. 28 Chapter 6: Analysis of ICANNs UDRP: Is UDRP the Required Solution.. 34 6.1. Critical Examination of Grounds Laid Down by UDRP for Initiating a Claim.. 34 6.2. Allegation of Being Biased Towards the Trademark Holders 36 6.3. General Criticisms....................................................................................38 Chapter 7: Conclusion and Siggestions......................................................................39 7.1. Conclusion ..............................................................................................39 7.2. Suggestions..............................................................................................39 Bibliography...............................................................................................................42
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LIST OF FIGURES
Figure 1...... 9 Figure 2...... 10 Figure 3...... 10 Figure 4...... 10 Figure 5...... 10 Figure 6.......26
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LIST OF ABBREVIATIONS
IP SLD TLD gTLD ccTLD DNS ICANN IANA US UDRP RDNH DCI Inc. NSI UK TMA ECJ WIPO SCT EU BT NAF CPR eRes ADNDRC CAC USA INTA
Internet Protocol Second Level Domain Top Level Domain generic Top Level Domain country code Top Level Domain Domain Name System Internet Corporation for Assigned Names and Numbers Internet Assigned Numbers Authority United States Uniform Dispute Resolution Policy Reverse Domain Name Hijacking Digital Consulting Incorporation Incorporation Network Services Incorporation United Kingdom Trademarks Act 1994 European Court of Justice World Intellectual Property Organization Standing Committee on the Law of Trademarks European Union British Telecommunications National Arbitration Forum Conflict Prevention and Resolution eResolution Asian Domain Dispute Resolution Centre Czech Arbitration Court United States of America International Trademark Association
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CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES A CRITICAL ANALYSIS CHAPTER 1: INTRODUCTION
The conflict between trademarks and domain names is a topic of intensive discussion throughout the world. The essay analyses the conflicts and the contribution of the law (domestic and international) to resolve those conflicts. A trademark distinguishes the goods and services of one origin from the others. In this youth age of internet where e-commerce is so popular, the owners would like their domain names to be distinctive and possess all other characteristics as that of their trademark, which encourages them to use their trademarks as domain names. The essay is divided in further six chapters. The next chapter introduces the trademarks, domain names and the reasons that have led to the conflicts among the both. The third chapter lays down the kinds of conflicts that have arised (Cybersquatting, typosquatting and reverse domain name hijacking). The fourth chapter details on the provisions offered by the UK Trademark law for the purpose of protecting the domain names. Further detailed is a chapter introducing the ICANN and UDRP and their motive to resolve the issues arising out of domain names and trademarks. The sixth chapter criticises the grounds laid down by UDRP and how it acts bias towards the complainants not leaving much for the respondents. The ambiguity, non-uniformity and other drawbacks are discussed in detail in this chapter. Finally, the essay comes to an end with conclusions and suggestions in chapter seven. The entire analysis intends to show how the current legal system fails to deal effectively with this problem. However, it cannot be denied that a fair attempt has been made to do so. Apparently, much stringent laws are required to deal with the vast world of internet and the conflicts therein.
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CHAPTER 2: DOMAIN NAMES AND TRADEMARKS: AN OVERVIEW

2.1. What is a Domain Name? The Internet can be defined as a vast global network that links millions of computers for the purpose of communication and sharing information.1 A huge number of websites and web pages can be accessed via Internet.2The websites are identified by their Internet Protocol (IP) addresses which are in the form of four octets (numbers) separated by full stops.3 For example, 192.168.1.1 is the default IP address of Linksys Broadband Routers. Since these numbers are extremely difficult to memorize and are not associated with the name of the brand or the website, a corresponding and user-friendly alphanumeric address called domain names is preferred.4 A domain name identifies a website by using a unique name, which is usually the brands name or the trademark.5For example, www.debenhams.com is the website for the department stores called Debenhams and its IP address is 129.35.75.202. So when the user types a domain name, the computer locates the site with the help of the IP address and thus provides access to the information. For example, when a user enters <129.35.75.202> in the search field, he will be directed to the homepage of the website of Debenhams. Structure of the Domain Name System A domain name is a unique identifier for a location on the internet.6
Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights (2007) Stanford's Center for Internet and Society <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=957750> Accessed 5 September 2011 Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 3
2
Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent Public Deception and trademark Infringement (2003) 11 Wash UJL 267
3
Paul Todd, E-Commerce Law (Cavendish 2005) at Page 25 Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 3
6
Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169
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www.debenhams.com
Identifies the Server Top Level Domain Name (TLD) Second Level Domain (SLD)
Figure 1 A Domain name is compiled of three parts (Figure 1)7. Each of these parts is separated by a dot . The first part fulfils the purpose of identifying the server. In the above example, www identifies the World Wide Web Server. The second part is a very important part and is called Second Level Domains (SLDs). It is the most important part because it identifies the user/company. In the example above, it is easy to guess that the website belongs to the Debenhams stores. The exclusivity of the SLDs is the sole criteria of registering a domain name. For example, the SLD oxford was taken first by a consulting firm having website www.oxford.com. Therefore, the University of Oxford had to use only ox as the SLD in their website www.ox.ac.uk.Another similar example is the domain name of Kingfisher Airlines. Since the domain name www.kingfisher.com was taken by some retail business group, the popular group of airlines had to use flykingfisher as their SLD in their website www.flykingfisher.com. Apparently, no two websites can possess the same SLD as it must be distinctive. The third part of the domain name is called Top Level Domains (TLDs). It can serve many purposes. One of them is that it helps in identifying the category of the user. To name a few, the TLD .org is used by non-profit organizations (www.watchtower.org), .int is used by international treaty based organizations (www.wipo.int), .com is used bycommercial entities (www.wwe.com), .gov is used by governmental organizations (www.direct.gov.uk), .edu is used by educational institutions (www.wwu.edu).These are called the generic Top Level Domains (gTLDs). The TLDs can also identify the origin country of the company as they use the two letter ISO Country Code. For example, www.argos.co.uk implies that the company is based in the UK. Similarly www.bsnl.co.in
Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution (1998-1999) 33 USFLRev 641
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implies that the company is based in India. This is called country code Top Level Domain (ccTLD). 2.2. What is a Trademark? Section 1(1) of The Trade Mark Act 1994 defines a trademark in the following words: Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings8 A Trademark may be any sign that is distinctive. The distinctiveness of this mark is important as the main purpose of a trademark is to help the consumers in identifying the unique source of the product or services. In other words, a trademark portrays the authenticity of a business.9 A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.10 A trademark could be any kind of unique representation as long as it is capable of being distinctive. It may be a letter or combination of letters, a logo, a picture or a slogan, a sound or a shape. Examples of some well known trademarks are given below:
Figure 2
Figure 3
Figure 4
Figure 5
Figures 2, 3, 4 and 5 represents the trademarks of the famous brands Apple Computers, McDonalds restaurants, Coca Cola soft drink and Unilever Group respectively.
Section 1 (1) of Trade Marks Act 1994 <http://www.smallbusinessbible.org/printables/purpose_trademarklogo.html> Accessed 1 September 2011 Section 1(1) of the Trade Marks Act 1994
10
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2.3. Domain Names vs Trademarks The system of domain names is one of the more important ways in which the internet is humanised and made comprehensible to non specialists.11 Electronic Commerce is rapidly gaining in popularity and taking an increasing proportion of consumer transactions. Therefore, keeping the electronic trade and advertisements into consideration, the brands choose domain names that often correspond wholly or in part to their registered or unregistered trademarks. In the article Domain Name and Dispute Resolution12, Ian Tollett lays down three major differences in the registration of domain names and trademarks. Firstly, unlike trademarks, the concept of confusingly similar does not exist in the domain names.13 It is absolutely possible for two domain names to be extremely closely similar. Say there is a possibility of existence of www.abcd.com and www.ab-cd.com.In case of trademarks, even a little similarity may result in the refusal to register the mark. For instance, a beverage manufacturing company could not register the trademark Koka Kola as it resembles the well known trademark Coca Cola.14Secondly, unlike domain names, the registration of trademarks is subjected to the classification system meaning identical trademarks that are used to identify different products and services can exist.15 A domain name can be owned by one person only irrespective of the goods and services offered by the owner of the domain name. And thirdly, national boundaries are not recognized by the domain name system.16The gTLD could be registered and accessed from any region. The ccTLD are registered in the country where the company operates but can be accessed from any country. It is argued that the main reason for the disputes between trademarks and domain names is that the trademark law is territorial, whereas the internet law is global.17
11
Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2005) at Page 165 Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169 Ibid
12
13
14
David V Radack, Likelihood of Confusion-The Basis for Trademark Infringement <http://www.tms.org/pubs/journals/jom/matters/matters-0212.html> Accessed 4 September 2011
15
Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169 Ibid
16
17
Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) at Page 135
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The registration of domain names is based on the principle of First-Come-First-Served. The Domain Name System (DNS) is managed by Internet Corporation for Assigned Names and Numbers (ICANN). The gTLD must be registered with an ICANN Accredited Registrar.18 (The list of all the registrars with an authority to register a gTLD under ICANN is available on the website of ICANN)19 The ccTLD are registered by the country code administrator of each country.20 These administrators get their authority of registration by Internet Assigned Numbers Authority (IANA), which is operated by ICANN.21 It is also important to note that there are fewer formalities with the domain registration system than most trade mark systems and thus less inquiry into the validity of the registration. It should also be noted that even if a company has not formally registered a trade mark they may have common law rights based on actual use and which can be protected by the common law tort of passing off at common law and unfair competition law in civil law systems. Many actions involved both action for breach of a registered trade mark and passing-off. All these reasons have the potential to lead to conflicts between owners of domain names and registered trademarks. There are many cases dealing with this issue. In Pitman training Ltd v Nominet UK22, dispute arose over the domain name pitman.co.uk as the same domain name was allocated to two parties. As a result, the party who was allocated the domain name first was given the ownership. The most recent case involving the domain name and trademark controversy is British Telecommunication plc v One in a Million Ltd.23The defendant faced many legal suits against him accusing him of infringement of trademarks by blocking the domain names of many well-known trademarks. The defendant along with Mr Richard Conway (owner of Global Media Communications) and Mr. Julian Nicholson (owner of Junic) reserved various trademark-based domain names and called themselves dealers in internet domain names. The
18
domain
names
blocked
by them
included
cadburys.com,
burger-king.com,
19
<http://www.icann.org/en/registrars/accredited-list.html> Accessed 6 September 2011 Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169
20
21
<www.iana.org> Accessed 6 September 2011 [1997] EWHC Ch 367 [1999] 4 All ER 476, [1999] RPC 1
22
23
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sainsbury.com,
marksandspencer.com,
macdonalds.com,
buckinghampalace.org,
ladbrokes.com, spice-girls.net and cellnet.net (blocked by One in a Million) and virgin.org, spicegirls.com, orange.net, leedsunited.com, itn.org and marksandspencer.co.uk (Blocked by Global Media Communications) and the domain name spicegirls.org was blocked by Junic. An attempt was made to sell the domain names of burger king and British Telecom for 25000 and 4700 respectively. The English Court of Appeal held the defendant liable, using the common law civil wrong of passing off and confirmed that the intention of the defendant was only to suck money from the trademark owners.
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CHAPTER 3: THE KIND OF DISPUTES BETWEEN TRADEMARKS AND DOMAIN NAMES

The previous chapter discussed in detail the reasons of conflicts arising between trademarks and domain name owners. This chapter will discuss the types and purpose of conflicts that arises between the two and some of the popular cases discussing the same issue. It is a well proven fact that no crime is committed without a benefit. For the purpose of commercial benefit, the following ways are often adopted; Cybersquatting, Reverse Domain Name Hijacking and Typosquatting. 3.1.Cybersquatting A cybersquatter is a party who possesses no legitimate interest in a trademark and attempts to profit by registering the trademark as a domain name before the rightful trademark owner can do so.24 Apparently , cybersquatting (also called domain squatting) is a situation where a person acquires a domain name in which he has no legal interest, with a mala-fide intention to gain profit for selling or licensing it to the company to whom the domain name rightfully belongs. It is a common practice for companies to use their trademarks as their domain names. Cybersquatters beat a company to the punch by registering a domain name which they think the company wants own for the purpose of online advertising and will be prepared to spend a huge amount for acquiring the same. It is to note that a cybersquatter has no intention to use the domain name or maintain an active website. The most popular defendant involved in cybersquatting was Dennis Toeppen, who had blocked over hundred domain names that corresponded to well-known trademarks and was successful in selling them to the companies for prices as high as $15000. These trademarks-based-domain names included high profile organizations such as Delta Airlines and Lufthansa. One of his victims, Panavision International filed a law suit against him (Panavision v Toeppen25). The case along with some of the landmark cybersquatting cases are discussed below:
24
25
141 F. 3d 1316 (9th Cir. 1998)
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Panavision v Toeppen26 In this US case, the plaintiff Panavision International held the ownership of marks Panavision and Panaflex. The defendant Dennis Toeppen had registered the domain names panavision.com and panaflex.com and demanded $13,000 when Panavision asked him to relinquish the domain name. He had no interest in the domain name was proven by the fact that he did not use the websites. The website panavision.com simply contained images of Pana, Illinois and the website panaflex.com just contained one word HELLO.27 The District Court and the Appellate Court held that Toeppens act was clearly done with an intention of arbitraging and was not benign as he blocked hundreds of domain names with the mala-fide intent to profit from the goodwill of the trademark owners and "act[s] as a 'spoiler,' preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee."28 Avery Denninson Corporation v Sumpton29 The facts of this US case involved the defendant reserving 12,000 domain names that correspond to common last names and licensing those names to be used as e-mail addresses. The court held the defendant as a cybersquatter as he registered the domain name not for his own use, but for preventing others from using them without his consent.30This case raised a very interesting question. The defendant argued that licensing the domain name was his business. Unexpectedly the courts did not held the alleged business...[was] a sham as a matter of law31 and the plaintiffs must pay a sum of $300 for each domain name avery.net and dennison.net so that the defendants are not deprived of the appropriate profit of their business. Apart from the unfair sucking of money from the trademark owners, Cybersquatting is capable of doing severe damage. Since online shopping is so popular these days ,
26
Ibid
27
<http://itlaw.wikia.com/wiki/Panavision_v._Toeppen> Accessed 4 September 2011 Sam Tahmassebi, Panavision International v Toeppen (2001-2002) 12 J Contemp Legal Issues 513
28
29
999 F. Supp.1337 (C.D.Cal.1998) Ibid at Page 1337
30
31
Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution (1998-1999) 33 USFL Rev 641
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cybersquatting might lead to the users on a fake website and enter their bank account or credit card details, thus constituting another serious cyber crime called phishing.32Sometimes cybersquatting might have been committed not for the purpose of money but just for drawing people to the website. In other words to draw on the magnetism that attaches to the mark.33Recently, the famous toy manufacturer company Lego recently made a comment that Cybersquatters cant be beaten and trademark is helpless against infringement after filing 275 UDRP complaints of cybersquatting.34 Therefore, cybersquatting is an important issue which must be looked upon seriously. 3.2. Reverse Domain Name Hijacking Reverse Domain Name Hijacking (RDNH), also called reverse cybersquatting, involves the trademark owner making a false claim in order to acquire a domain name. It is defined in Rule 1 of the UDRP Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.35Also the burden of proof lies on the respondent to prove the presence of the element of bad faith and mala-fide intention of acquiring the domain name.36 Rule 15(e) further holds any complain made in bad faith, as an abuse of the administrative process.37 One recent instance of this type of conflicts is the case of Data Concepts Inc v Digital Consulting Inc38. Digital Consulting Inc. registered the trademark DCI (in 1987) whereas Data Concepts Inc had registered the domain name dci.com in 1993. Digital Consulting Inc initiated a claim for the possession of the domain name and won in the NSI and Federal District Court. However, in an appeal to the Sixth Circuit Court of Appeals, the earlier
32
Reid Goldsborough, Cybersquatting and its possible remedies Business Journal (New York 18 September 2009) <http://web.ebscohost.com/ehost/pdfviewer/pdfviewer?sid=9bf6f260-b468-4719-97c1 cdf0f4bd0423%40sessionmgr15&vid=5&hid=13> Accessed 3 September 2011
33
34
<http://www.managingip.com/Article/2894591/Managing-Internet-IP-Archive/Cybersquatters-cant-be-beaten-saysLego.html?LS=EMS566053> Accessed 6 September 2011

35
Rule 1 of UDRP Policy
36
Zinatul A Zainol, The Chronicles of Electronic Commerce: Reverse Domain Name Hijacking under the Uniform Dispute Resolution Policy (2010) 16 European Law Journal 233 at Page 235
37
Ibid, Rule 15 (e) of UDRP Policy 150 F3d 620, 47 USPQ2d 1672 (6th Cir. 1998)
38
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decisions were reversed saying that the petitioner was unaware of the trademark of the defendant during the time of registration of its domain name and held that not all the domain names function as trademarks.39In this case, the trademark owner was even warned by the court regarding weakening his trademark rights in future.40 3.3. Typosquatting Another way of gaining commercial benefit is by buying a domain name which is confusingly similar to a well known existing domain name. There is only slight difference in the domain name from the actual domain name so that in case the user ends up making a typing error, they are automatically redirected to the replica website and get caught in mousetrapping. In this scenario, the user gets barraged with advertisements.41A domain name which is strikingly similar to another domain name is considered to be registered in bad faith according to the Article 4b(iv) of the UDRP. For instance, Microsoft had filed more than 300 cases complaining the registration of misleading and confusingly similar domain names.42 The most popular case involving typosquatting is the US case of Shields v Zuccarini43, the accused John Zuccarini registered the misspelled domain names of many popular websites and when the user would be diverted to those websites, he was mousetrapped and will have to click on the succession of advertising window in order to exit, which profited the accused with ten to twenty-five cents a click.44 The first claim against him was brought by the artist owner of Joe Cartoon Joseph Shields and was made to pay a compensation of $10,000 along with a permanent injunction, but he continued with his activities. Afterwards came a series of claims by individuals and corporations. It was then found that Zuccarini activities extended to some popular brands and celebritys websites. Claims were also brought by the Wall Street Journal, Encyclopaedia, Calvin Klien, Yahoo! and Britannica. The court imposed
39
Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking (1998-1999) 21 Hastings Comm & Ent LJ 535 at page 543
40
Ibid at Page 544
41
Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent Public Deception and trademark Infringement (2003) 11 Wash UJL 267 at page 275
42
<http://www.theinquirer.net/inquirer/news/1029896/microsoft-sues-over-300-misleading-domain-names>Accessed 6September 2011

43
89 F.Supp. 2d 634 (E.D.Pa.200)
44
Regan Lane Williams, Trademark Law on the Internet-Mousetrapped-Shields v Zuccarini, 89 F Supp 2d ^34(E.D.Pa.2000) (2001-2002) 6 Computer L Rev & Tech J 329 at Page 329
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a total of $88,000 fine but he still did not stop. On further claims, he remained unavailable for the hearings. The courts addressed him as a person who had discovered a simple, yet highly lucrative moneymaking scheme. While never leaving his apartment, he could collect nearly a million dollars a year in advertising royalties.45 In another type of typosquatting, the typosquatter registers some trademarks and owns the related domain names and publishes information on those websites which are contradictory to the original trademark owners website.46
45
Ibid at Page 334
46
Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent Public Deception and trademark Infringement (2003) 11 Wash UJL 267 at page 275
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CHAPTER 4: PROTECTION OF DOMAIN NAMES: UK TRADEMARK LAW

The first two chapters discussed the trademarks, domain names, causes of disputes and kinds of disputes that exist between them. This chapter deals in particular with what Trademark Law in UK has to offer to the situation. UK law does not have any specific legislation dealing with the domain names. Also there are very few cases that have been resolved in courts, probably because litigation is not the first choice of the parties.47 To name a few of the popular cases dealt by UK courts ; Harrods Ltd v UK Network Services Ltd48 , Pitman Training Ltd v Nominet UK49 and Prince plc v Prince Sports Group Inc50. However, these cases did not succeed in providing a clear insight into the trademark issue surrounding these conflicts.51 A very important thing to keep in mind is that the trademark can be a domain name but it is not necessary that the domain name is the trademark of the company. A domain name does not function as a trademark.52 In order to resolve the trademark-domain name disputes, the court relies on two main legal grounds: Trademark Infringement Passing off
4.1. Trademark Infringement In order to constitute infringement, the three conditions should meet:
47
Confusing similarity Bad faith No rights and legitimate interests
48
(Ch.D, unreported, 1996) (1997) 19 EIPR 401 [1997] FSR 797 [1998] FSR 21
49
50
51
52
Ibid at Page 137
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Apparently the domain names have been treated like trademarks that are capable of being infringed.53Section 10 (1), 10(2) and 10(3) of Trademarks Act 1994 (Hereinafter TMA) deals with the issue of infringement of trademarks. The relationships of these sections with domain names are discussed in detail below: 4.1.a. Section 10(1) TMA 1994 Section 10(1) of TMA 1994 says: A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered54 In order to establish infringement under this section, the domain name must satisfy the following conditions: It must be deceptively similar or substantially identical to the registered trademark. It must be used in relation to identical goods and services with respect to which the trademark was registered. It is to note that the likelihood of confusion condition need not be fulfilled to prove infringement under this section.55For the purpose of better understanding of this section, it is important to know what the terms identical mark and identical goods or services mean. Identical Mark: For the purpose of this section, it must be taken into account that in order to prove infringement, the term identical does not mean absolutely identical.56For instance, in the case of Compass Publishing v Compass Logistics57, the Laddie J held that Compass Logistics could not be considered identical to Compass and held that Identity exists where the marks look and sound identical
53
Paul Todd, E-Commerce Law (Cavendish 2005) at Page 44 Section 10(1) of TMA 1994
54
55
Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education Technology Association (April 2006) at Page 17
56
Ibid [2004] EWHC 520 (Ch)
57
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save to the eye or ear of an expert. Differences which ordinary members of the public will not notice...can be ignored.58 Identical Goods or Services: Not only the mark, but also the goods and services of the alleged infringer must be identical, to be held liable under this section. Avnet Inc v Isoact Limited59 The case of Avnet Inc v Isoact Limited60 can be seen as one of domain name envy.61The petitioners carried the business of advertising various manufacturers through catalogues and were the owner of trademark Avnet. The defendants on the other hand registered avnet.co.uk, a website which privileged the customers to display their own advertisements. Avnet Inc. claimed that Isoact infringed their trademark under Section 10(1) TMA as the mark was used in relation to identical goods and services. Jacob J however held that no such infringement took place as Avnet was registered under Class 35 (advertising and promotional services), whereas Isoact acted as an Internet Service Provider (Class 42). Hence, Isoact was allowed to keep the domain name. This case clearly held that in order to constitute infringement under Section 10(1) TMA, not only the name, but also the goods and services rendered must be identical. 4.1.b. Section 10(2) TMA 1994 The section says that a registered trademark is infringed when : ...there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.62 The section lays down the condition of likelihood of confusion along with extending the identical to similar marks, goods and services.63 Typosquatting would fall under this
58
Ibid [1998] FSR 16 Ibid
59
60
61
62
Section 10(2 TMA 1994
63
Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education Technology Association (April 2006)
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section as the main objective of the typosquatter is to create confusion in the mind of the public. For the purpose of analysing whether a domain name has constituted trademark infringement, the below mentioned four steps are to be followed:64 Whether the domain name is similar or identical to the mark?65 Whether the domain name is used in course of trade?66 Whether the goods and services provided by the domain name and registered trademark are similar or identical?67 And lastly, whether the public is likely to be confused with the trademarks and domain names?68 In Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc69, the ECJ held that the distinctive character of the mark and in particular its reputation plays the most important role in determining whether the act had amounted to infringement under this section and said : The more distinctive the mark and the greater its reputation, the wider the ambit of goods and services which should be considered similar to those represented by the mark, which are therefore more likely to give rise to a likelihood of confusion. Thus, a mark which is distinctive and has a reputation will have protection over wide range of goods; a weak mark will have protection over a narrow range of goods. 70
64
Ibid Ibid Ibid Ibid
65
66
67
68
Ibid
69
[1998] All ER (EC (934) Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) at Page 141
70
Ibid
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Yahoo Inc v Akash Arora71 In this case, the trademark and domain name owner of yahoo (yahoo.com) and was in the process of registering itself in 69 countries. In the meantime, the defendant started offering the same services as that of yahoo.com on the name of Yahoo India. Such a scenario would be perfect to make the defendant liable under Section 10(2) TMA. (The case was decided in India and the defendant was liable under the ground that the two domain names were capable of creating confusion in the mind of an Internet user because of the similarity in names and services.) Also, in the case of Avnet Inc v Isoact Limited72 (discussed above), the services of both parties did not qualify to be identical but they were similar and thus, the infringement had occurred under Section 10 (2) and not 10(1) of TMA as claimed. The confusion arises the moment the search engine turn in hits and does not require accessing the website.73 Therefore, when compared both the sections, it can be observed that s-10(1) is a lot narrower and difficult to claim protection than s-10(2).74 4.1.c. Section 10(3) TMA 1994 According to this section, a trademark is infringed when: ...where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.75 For the purpose of this section, the basic requirement is that the infringed trademark must be a reputed mark in the UK and the domain name was used only to take advantage of the reputation of the trademark.76 In this case, the questions that arise are:
71
Anupama Y, Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi High Court) <http://www.brainleague.com/case_studies/yahoo.pdf> Accessed 5 September 2011
72
[1998] FSR 16
73
74
Ibid Section 10(3) TMA 1994 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 57
75
76
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What is a reputed mark for the purpose of this section? What is meant by taking advantage of the reputation of a mark or dilution?
It appears that famous marks are those well known marks that are so famous that protection is accorded in respect of dissimilar goods and services77whereas well known marks are those which require protection against use in connection which with the same or similar goods or services for which the well known mark is registered.78 The Paris Convention, Article 6b talks about well-known marks and so does the Section 56 of TMA 1994. The term reputation is used in Trade Marks Directive as well as in the TMA. So after several attempts to define these terms, the WIPO SCT (Standing Committee on the Law of Trademarks, Industrial Design and Geographical Indications) laid down a list of criteria which would determine if the mark qualifies to be well-known.79 The reputation of the mark would result in high sales, thus benefitting person using the infringed mark, but is also capable of harming the reputation of the mark via dilution. It is not necessary to prove the occurrence of any confusion.80 One of the recent cases illustrating Section 10 (3) is the case of LOreal S.A. v Bellure N.V and others81 where the defendant was involved in manufacturing and selling the perfumes that smelled alike LOreal and were sold in packing that resembled LOreals packaging. The Court held that the defendant was liable under Section 10(3) TMA as it has infringed LOreals trademark and took unfair advantage of LOreals reputation.
77
78
Ibid 1. 2. 3. 4. 5. 6. The degree of knowledge or recognition of the mark in relevant sector of the public; The duration, extent and geographical area of any use of the mark; The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies. The duration and geographical area of any registrations, and/or applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by courts or other competent authorities; and The value associated with the mark.
79
80
Paul Todd, E-Commerce Law (Cavendish 2005) at Page 63.
81
[2010] EWCA Civ 535
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4.2. Domain Name And Passing Off What is Passing-off? Passing off is a tort developed at common law, with no statutory provisions or EU harmonisation initiatives82 and it is based on the conduct of the defendant, rather than any idea of a property right in the claimant.83 When a party seeks to prevent the use of a domain name, but does not possess a registered trademark, they may invoke the tort of passing off which has the capacity to protect unregistered marks. In order to establish the tort of passing off, the five requirements laid down by Lord Diplock in Erven Warnink BV v. J.Townsend & Sons (Hull) Ltd84 must be fulfilled: A misrepresentation must have been made. The misrepresentation was been made in the course of business. The misrepresentation should was made to potential customers or to the ultimate consumers of his goods and services. The misrepresentation was calculated in order to injure the business or goodwill of another trader. The misrepresentation had caused actual damage to the business or goodwill of the trader who brought the action or is likely to do so. Passing off requires the domain name to be confusingly similar to the mark. Cybersquatting and typosquatting often amounts to passing off. For instance, in the case of Yahoo India (Yahoo Inc v Akash Arora ) discussed above, although the domain names were not identical, but they were sufficiently similar to give rise to confusion. Passing off against cybersquatting initiated from BT v One in a Million & Others85. In the process of assessing whether the tort of passing off is committed, factors like similarity in names, goodwill of the business,
82
David I Bainbridge, Intellectual Property (5th edn, Longman 2002) at Chapter 23, Paul Todd, E-Commerce Law (Cavendish 2005) at Page 64
83
Paul Todd, E-Commerce Law (Cavendish 2005) at Page 40 [1979] A.C. 731 at 742 [1999] 4 All ER 476, [1999] RPC 1
84
85
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intention of the defendant, type of trade and surrounding circumstances are taken into consideration.86 Rickett & Colman Products Ltd v Broden Inc and other87(The Jif Lemon Case) The plaintiffs were involved in the business of selling lemon juice in yellow coloured lemon shaped squeeze packets, with Jif embossed and printed on it (Figure 6). For this reason, the product was popularly known as Jif lemon. The defendants also launched a similar product which was sold in similar bottle with little differences in colours and quantity. The significance Figure 6
of this case is that Lord Oliver laid down the classic trinity rule which means the claimant must show that the below mentioned elements in order to establish a right of action:88 The goods or services have a distinct get up that has become associated with the product in the minds of substantial numbers of the purchasers. Whether intentionally or unintentionally, there has been a misrepresentation of the goods and services of the complainant, which have led the public to believe that the origin of the product is the claimant. The claimant might suffer from damages if the misrepresentation continues.
Agreeing that all the three conditions were fulfilled, the House of Lords issued a permanent injunction on the defendants barring them from selling lemon juice in lemon shaped containers.
86
Paul Todd, E-Commerce Law (Cavendish 2005) at Page 65
87
(1990) 1 WLR 491 Ibid
88
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CHAPTER 5: THE PROTECTION OF DOMAIN NAMES: INTERNATIONAL LAW

(Global Solution to a Global Problem) 5.1. The need, purpose and creation of ICANN The NSI (Network Solutions Inc) managed the allocation of domain names until 1998, but received various criticisms. Some of the most common opinions were that due to lesser competition and any no other means to register a domain name, the NSI had a very high registration fees and a very bad customer service.89 The worst criticism was received by the policies adopted by NSI for settling the domain name disputes. Prior to 1995, the NSI did not have any formal dispute resolution policy but allowed the first-come-first-served registration and kept the burden on the shoulder of domain name holder to ensure that the domain name does not infringe any trademarks. In 1995, the NSI took a step further and adopted a formal dispute resolution policy which privileged the trademark owners to challenge a domain name any registration on valid grounds and evidence.90 The new policy adopted by NSI in 1998 further permitted the trademark owners to place the domain name on hold till the settlement of the dispute. In all the policies, the basic principle of registration was first-come-first-served. The NSI was not appreciated by either domain name holders or trademark owners. It failed to consider the requirement of likelihood of confusion for infringing a trademark and thus for trademark owners, the policy was under-inclusive because it deprived them of invoking an action if the domain name is a non-identical mark that is capable of creating likelihood of confusion. On the other hand, the domain name holders found the policy overbroad since it gave the right to keep a domain name on hold even if they have a weak claim and the domain name bore no resemblance to the goods and services of the trademark user. Responding to the criticisms, the Commerce Department expressed its views on domain name system through issuing a White Paper91. This White Paper demanded privatization of
89
Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 at Page 294
90
Ibid, Page 295 Names and Addresses
91
United States Department of Commerce, Management of Internet <http://www.icann.org/en/general/white-paper-05jun98.htm> Accessed 3 September 2011
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technical coordination of the Domain Name System.92A coalition of internets communities formed ICANN in 1998, following the release of White Paper.93 ICANN realised the increase in competition and immediately started registering registrars who would offer domain name registering services and also made an agreement with NSI where NSI recognised ICANNs authority and operate according to ICANNs Registrar Accreditation Agreement.94 In 1999, ICANN came up with the first dispute resolution policy adapted from the WIPO proposal and therefore, after a long wait and series of disappointments, finally came the UDRP. 5.2.The UDRP95 As mentioned earlier, ICANN has been in charge of administration and regulation of domain name since 1998.96 The top level domain name within the countries is allocated by authorized agencies. In the UK, it is allocated by Nominet (UK) since 1996.97 In order to resolve the disputes concerning domain names and trademarks and avoid any issues relating to the jurisdiction of the domestic courts, ICANN adopted a dispute resolution process called Uniform Domain Name Dispute Resolution Policy (UDRP). This regulation was implemented by four of ICANN accredited organizations; WIPO (World Intellectual Property Organization), NAF (National Arbitration Forum), CPR (CPR Institute for Dispute Resolution) and eRes or DeC (eResolution).98 The eRes was shut down in December 2001.99 In February 2002 and January 2008, two new providers of UDRP Policy were approved which are ADNDRC (Asian Domain Name Dispute Resolution Centre) and CAC (Czech Arbitration Court) respectively.100
92
Jason M Osborn, Effective and Complementry Solutions to Domain Name Disputes: ICANNs Uniform Domain Name Dispute Resolution Policy and the Federal Anticybersquatting Consumer Protection Act of 1999 (2000-2001) 76 Notre Dame L Rev 209
93
Ibid
94
Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 at Page 298 <http://www.icann.org/en/udrp/udrp-policy-24oct99.htm> Accessed 5 September 2011 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 29 Ibid
95
96
97
98
John G White, ICANNs Uniform Domain Name Dispute Resolution Policy in Action (2001) 16 Berk Tech LJ 229 at Page 232
99
Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual Property Review 351
100
Abida Chaudri, Internet Domain Names and the Interaction with Intellectual Property (2010) 26 Computer Law & Security Review 38 at Page 39
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Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.101 ICANN currently holds monopoly over the domain name system, which makes the UDRP unavoidable.102(Though in recent times attempts to make system more global and more democratic and less dominated by USA). The UDRP stands applicable to registered as well as unregistered marks.103 According to UDRP rules 3(a), any person can initiate a claim by simply submitting the hard copy and email with the complaint, to any forums or service providers approved by ICANN.104 The complaint must contain the choice of the complainant of conducting the dispute by a three member panel or a single-member panel. UDRP rules 3(b) facilitates the complainant to choose the panellists of his choice. The complainant must show that all the grounds mentioned in the Rule 4 (a) are fulfilled. The registrant must respond to the complaint within twenty days. Relying on its findings, the panel further provides the remedy to the complainant. The remedies available to the complainant are limited to cancellation and transfer of domain names. The three-prong test set out in the Rule 4(a) of the UDRP for the purpose of continuing the claim are:
101
<http://www.icann.org/en/udrp/udrp.htm> Accessed 3 September 2011
102
Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights (2007) Stanford's Center for Internet and Society <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=957750> Accessed 5 September 2011
103
Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 497
104
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If the domain name is identical or confusingly similar to the mark in which the complainant has rights105
WIPO lays down that the test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion106and also the similarity in the content of the website stands irrelevant while determining the confusingly similar factor.107 The rules hold valid for registered as well as unregistered marks. First of all, if the domain name is identical to the mark in question, the complainant need not prove the clause of confusingly similar, but it is important to find out whether the domain name is merely similar or actually identical. For this purpose, the gTLD suffix is not considered.108Advocate General Jacob held that A domain name may be regarded as identical to the complainants mark if the only differences are minor variants such as hyphen between the words.109Therefore, in cases involving the issue of identical or similar domain name, the UDRP follows the traditional principles of trademark law.110
If the registrant does not have any legitimate interests in the domain name in issue111;
It is also mandatory to prove the registrant does not own any legal rights or interest in the domain name (UDRP Policy 4(a)) and when the complainant succeeds in doing so, the burden falls on the registrant to prove any of the circumstances mentioned in UDRP Policy 4(c) in order to prove their legitimate interest in the name. They are : (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
105
Rule 4(a)(i) of UDRP Policy
106
H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 J Tech l & Poly 301 at Page 329
107
Ibid Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 143 LTJ Diffusion v SADAS[2003] All ER (D) 297 (Mar)
108
109
110
111
Rule 4(a)(ii) of UDRP Policy
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(ii)
you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii)
you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.112
These grounds are not exhaustive and any other evidence proving the legitimate rights and interests in the domain name is acceptable.113
If the domain name is registered and used in bad faith.114
The most important requirement to initiate any proceeding against a cyber crime is to show that the registrant had acted in bad faith. Article 4 b of the UDRP lays down circumstances which lead to the conclusion whether the act was done in bad faith or not. 115 If the motive of obtaining the name is to prevent the rightful owner from using it and the party have had a previous record of doing the same. The domain name was obtained with a motive of selling, licensing or transferring it either to the owner of the trademark or to his competitor, in return for money. The domain name is registered with a motive to disrupt the business of the trademark owner. The domain name is used for the purpose of attracting users online by creating a striking similar domain name as that of the true trademark owner. It is to note that a mere registration of a domain name that resembles some registered trademark does not constitute bad faith. A registered trademark does not provide with any automatic rights in the domain name.116 Neither does any attempt to sell the registered
112
Rule 4 (c) of UDRP Policy
113
Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law & Security Report 349 at Page 352
114
Rule 4(a)(iii) of UDRP Policy Rule 4 (b) of UDRP Policy
115
116
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domain to the owner of the trademark amounts to abusive registration.117 The burden to prove the presence of bad faith always lies on the shoulders of the plaintiff. The efforts by a respondent to sell a domain name tend to weigh in favour of finding bad faith, but are not necessarily fatal.118 The case of Car Toys Inc. v Informa Unlimited Inc.119laid down a very important principle. It was held that merely carrying the business of buying and selling domain names does not constitute abusive registration. It is mandatory that the act is done in bad faith. In this case, the defendants Informa had registered the domain name cartoys.net and the plaintiff was the owner of the trademark Car Toys. The Arbitrator found that the requirement of no legitimate interest in the name, which is mandatory to prove bad faith, was not fulfilled by the defendant and so they have the right to keep the domain name. The UDRP process became very popular because of the advantages attached to it. The process is faster, cheaper and provides much effective remedy than any other dispute resolution process.120It is private, international and predominantly online (Clause 13 of the UDRP Rules) procedure.121 According to UDRP Section 4 (k), the registrar must transfer the domain name within 10 business days from the day of the panels decision.122 The time duration of UDRP cases never exceeds 47 to 57 days (or rather shorter if the registrar files his response earlier than twenty days), which makes the process a perfect model for dispute resolution.123 Also, the rules are simple enough to be understood by a non-legal practitioner.124
117
Car Toys Inc. v Informa Unlimited Inc. National Arbitration Forum File No FA 0002000093682
118
119
Ibid at Page 164 National Arbitration Forum File No FA 0002000093682

120
Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006) at Page 180
121
Jacqueline D Lipton, Beyond Cybersquatting: Taking Domain Name Disputes Past Trademark Policy (2005) 40 Wake Forest L Rev 1361 at Page 10
122
123
Ibid Ibid
124
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Also UDRP had three major advantages over the NSI dispute resolution policy. Firstly, the trademark owners no longer enjoyed the right of keeping the domain name on hold till the settlement of the dispute. Secondly, the trademark owner does not have the right to invoke the UDRP proceedings unless the domain name is held in bad faith and thirdly, ICANN will not alter the status of the domain name without any settlement or conclusion reached by the parties in the matter of traditional trademark infringement or dilution claims.125 However, there have been some criticisms also. One of the main criticisms of the policy are that any claim can be instituted very easily as it is very cheap. Also there is no penalty on a false claim.126 Also, although it succeeds in protecting the interests of the trademark owners, but completely ignores other kinds of disputes which might have arisen in the same matter, for instance, more than one legitimate trademark owners having interests in the disputed domain name.127Moreover, the only remedy it offers is either transfer of the domain name to the complainant or cancellation of the registrants domain name but no financial relief is provided.128 Some more criticisms and drawbacks will be discussed later in the next chapter.
125
Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289
126
Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006) at Page 180
127
Jacqueline D Lipton, A Winning Solution for Youtube and Utube? Corresponding Trademarks and Domain Name Sharing (2008) 21 Harvard Journal of Law & Technology 509
128
Paul Todd, E-Commerce Law (Cavendish 2005) at Page 33
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CHAPTER 6: ANALYSIS OF ICANNs UDRP: IS UDRP THE REQUIRED SOLUTION? The UDRP, although came after many failed attempts to set a perfect dispute resolution process, but still received criticisms. Instituting a claim under UDRP sounds easy, inexpensive and does not involve any loss. However, this chapter discusses the shortcoming of the procedure adapted by the UDRP. 6.1.Critical Examination of Grounds Laid Down by UDRP for Initiating a Claim To begin with, a UDRP proceeding is triggered under the following three grounds: Domain Name is identical or confusingly similar to the complainants mark.
The UDRP does not define the term confusingly similar, which raises ambiguity ad debate. The question of relevancy of the website comes into picture only when the domain name in question is confusingly similar to the trademark. It is to note that UDRP does not consider geographical indications as trademarks. Trademarks are protected irrespective of their location, but the trademarks that were registered automatically might enjoy lesser protection.129A domain name that is partly translated in some other language is considered to be confusingly similar. On the other hand, a domain name with a negative term along with the trademark constitutes confusing similarity is a debate. The Panel often find the situation to be abusive registration as it believes that this situation might result in confusion in the mind of people who do not speak very fluent English whereas some panellists believe that domain name consisting of a trademark and a negative term is not confusingly similar because internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term.130 It is to note that the content of the website does not come into consideration while determining the similarity of the domain name to the trademark.131 So even if the content is
129
130
H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 J Tech l & Poly 301 at Page 329 at Page 330
131
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absolutely different from the business of the trademark, it would be held for being confusingly similar. In order to assert unregistered trademark rights, the complainant needs to show that the name had developed a secondary meaning and is a distinctive identifier for its goods or services.132 First of all, the ownership of a domain name can be challenged by comparing it with any trademark in any country because the internet is accessible from anywhere in the world. All this factors conclude that the condition is debatable and UDRP has been inconsistent in its decisions. Domain Name holder has no legitimate rights and interests in the mark.
Although the burden of proving this condition, like the other two, falls on the complainant but in this case, the complainant is merely required to make a prima facie case accusing the respondent of lacking any legal rights or interests in the domain name and then the burden shifts to the respondent to prove otherwise. It is debatable whether using domain name for criticising trademark is legal use or not.133 Panel has shown confusion in this regard as on one side, it decided that since the domain name is just an internet address, which is different from trademark, using any name sans commercial benefit should not be a problem whereas on the other side, it has also decided that the right to criticise a trademark does not impliedly give the right to register a confusingly similar domain name. The Domain Name has been registered in Bad Faith
The UDRP fails to provide any definition of Bad Faith but lays down some non-exhaustive circumstances which helps in concluding whether the registration was made in bad faith or not. They are mentioned in UDRP Policy Rule 4(b): (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for
132
Ibid
133
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valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.134 These conditions are both questionable and inconsistent to the Panel. Some Panels requires any one of the four conditions to be fulfilled by the complainant whereas some requires any one of the first three related to the registration and the fourth one related to the use of the domain name.135Some of the instances in which the UDRP has held that the domain name has been registered in bad faith has raised question about the clarity of the concept to UDRP. For example, even if the domain name was registered before the trademark or the complainant has got nothing to do with the domain name, UDRP has held the registration to be done in bad faith.136 6.2. Allegation of Being Biased Towards the Trademark Holders The UDRP has been many a times accused of being biased towards the trademark owners/complainants. In the report named A New Profile of Domain Name Trademark Disputes under ICANNs UDRP, Dr Milton Mueller gave a statistical study reporting the bias nature of UDRP proceedings and raising concern about its independence.137 The study criticised WIPO and NAF for being biased towards the claimants and since they had obtained
134
Rule 4(b) of UDRP Policy
135
H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 J Tech l & Poly 301 at Page 329 at Page 332
136
137
Dr. Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICANNs UDRP <http://dcc.syr.edu/PDF/markle-report-final.pdf> Accessed 4 September 2011
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the majority of the market shares by mostly making decision in favour of trademark interests.138 The WIPO obtained 61% and NAF obtained 31% of the market shares. When calculated in percentage, 82% of the cases in WIPO and 81% of the cases in NAF were won by the complainants.139 It is apparent that the shares have been obtained by adapting more complainant friendly ways.140 However, Muellers study was criticised by INTA (International Trademark Association) under the ground that it undermined the cost efficient ways of UDRP and that Mullers assumption of achieving 50/50 result via a non-biased procedure is not possible as the UDRP is designed for abusive cases.141 Another criticism of UDRP is the provision which allows the complainant to choose the dispute resolution service provider. Obviously, the complainant will choose the service provider in which he has more chances of winning. As per the statistics discussed above, apparently WIPO and NAF are the first choices of the complainants. Further the complainants get to choose the panellists also. Studies show that 778 out of 1379 cases in NAF have been decided by six panellists and the winning rate of the complainants is 95.1%.142 The complainants are also offered to choose whether the proceedings be decided by a single member panel or three-member panel. Critics may argue that complainants often choose one member panel because it is easier for one person to misinterpret the policy and make incorrect decision rather than three persons doing it at the same time.143 This does not seem a right scenario especially when UDRP is often blamed to be favouring the complainants. Another factor that adds towards UDRPs decisions being mostly in favour of the complainants is the fact that it goes on to make a decision even if the respondent fails to respond to the complain before the prescribed time. It is also noted that 50-60% of the times,
138
139
Ibid Ibid Ibid
140
141
142
John Magee, Domain Name Disputes: An Assessment of the UDRP as against Traditional Litigation (2003) U Ill JL Tech & Poly 203
143
Patrick D Kelley, Emerging Patterns in Arbitration under the Uniform Domain Name Dispute Resolution Policy (2002) 17 Berkeley Tech LJ 181
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the respondent default occurs which contributes to the complainant being victorious nearly 80% times.144 Three other flaws of UDRP that ends up acting in favour of the complainants are: UDRP does not ensure that the domain name owner has received the notice disclosing that a complaint has been filed against him.145 Too much freedom is given to the service providers to add supplemental rules146 and The maximum time limit provided to the respondent to respond to the claim i.e. twenty days is not sufficient.147 6.3. Some General Criticisms Some other criticisms received by UDRP are: The lack of uniformity in the decisions of the panel is inevitable. Although the panel uses prior decisions in order to resolve a dispute, but they do not serve as binding precedent irrespective of the similarity in the issue.148 The only alternative available to the party that lost is to bring a suit to quash the decision of the panel. Again the party just only has ten working days to file the suit. It is often argued that this limited amount of time and jurisdictional obstacles often result in no appeal against the UDRP decisions.149 Low cost of complaints often encourages reverse domain name hijacking.150
All of these criticisms fail to build a standard cluster of rules to be followed in order to resolve the disputes between the trademark owners and the domain name holders and demands a clearer picture of the grounds as well as rules set up by UDRP.
144
Ibid Ibid Ibid Ibid Ibid Ibid
145
146
147
148
149
150
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CHAPTER 7: CONCLUSION AND SUGGESTIONS 7.1. Conclusion The essay discussed the conflicts between trademarks and domain names, their causes, kinds and the attempts made to resolve the conflicts. The registration process of domain names started with the first-come-first-served principle, which is still followed and can be considered as the root cause of the conflicts. There is no specific law dealing with the domain name. All that is required is exclusivity of SLDs. All these factors give rise to cybersquatting, typosquatting and reverse domain name hijacking. UDRP was formed to handle to disputes, but was criticised on various grounds. This has left the problem unanswered. If the present scenario is considered, neither the trademark law nor the ICANN is capable of protecting the domain names. Cases such as Shields v Zuccarini151 makes one think of the extent to which cyber criminals have gone to earn money via violating the laws governing domain names. The question arises is why wouldnt an individual like to earn millions by just sitting at home. Also, say he is caught and held liable, the maximum that he will have to do is transfer the domain name or pay some small portion of his huge earnings as compensation. Another drawback to the scenario is the fact that internet is accessed worldwide and any domain name would resemble some trademark used in some corner of the world, and therefore is capable of being challenged. The lack of stringent laws always makes the situation worst. The grounds mentioned by the UDRP to initiate a claim are so ambiguous that it would be difficult for the claim to sustain. Even if the claim sustains, the further criticisms laid down by critics (mentioned in chapter 6) do not guarantee justice. Considering this scenario, it is hard to imagine any improvement in the situation. It cannot be seen how UDRP can help cybersquatting and other conflicts. Therefore, based on the present laws, the situation seems impossible to deal with and the world is yet to see a stronger, effective and non biased law with enough protection towards the trademark owners and domain name holders. 7.2. Suggestions Clearly, the present laws are incapable of dealing with the issues of trademarks and domain names. The very basic principle of first-come-first-served needs reform. It is practically impossible to protect every trademark in the world and then approve of a domain name
151
89 F.Supp. 2d 634 (E.D.Pa.200)
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registration. I propose that like trademarks, even if not that strictly, but an attempt must be made to prevent registration of domain names that resemble well known or famous trademarks. This would, to a large extent prevent cybersquatting and infringement of well known trademarks. Supposing that such a law existed, Microsoft would not have had to file 324 suits against cybersquatters. Another problem as discussed is the worldwide nature of internet would give rise to the domain name being challenged by some trademark in some corner of the world. This situation is practically possible 100% times. To this, I recommend that every X, Y and Z trademark owner must NOT be allowed to initiate a claim against a domain name. Suppose a domain name www.abc.com has been registered in Russia and there exists a local business in California holding the trademark abc11, the question of infringement of the trademark should not be entertained. Only a well known trademark must be permitted to challenge a similar domain name in any part of the world. It should then not matter whether the infringement occurred in a different country or not. Another weakness of the system is that the complainant has nothing to lose even if he/she initiates a false claim. Since there is a higher percentage of the complainant winning, he might as well try his luck. In order to deal with this situation, criminal liability must be imposed on the complainant if he is found to have initiated the claim in bad faith. Along with the ownership of the domain name, some financial relief also must be granted to the true holder of the domain name in case a false claim was proved. This might scare a cybersquatter or a reverse domain name hijacker before committing the crime or initiating a false claim. ICANNs UDRP has not succeeded in its purpose. Although UDRP became very popular when it was introduced, it could not satisfy the requirement of an effective legal policy. Therefore, some changes are inevitable. I propose the following changes be made to the UDRP Rules: The three grounds set under UDRP for initiating a claim should be made clearer. A clear definition of terms like confusingly similar and bad faith must be given. UDRP must maintain the uniformity in its policy and must follow its previous decisions in similar matters. The provision containing choosing the service provider and panellists must be stroked off. An effective legal system must be laid down to decide the matters and non-biased panellists must be appointed for the same.
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Like all the courts, the panel must make a decision only after listening to the respondents and not without that.
The time limit prescribed for the respondent to respond to the notice of complaint must be extended.
And finally, in order to deal with a cross border conflict, I would suggest formation of a global convention like UN in order to ensure that the basic domain name protection is at least enjoyed by the member states. The implementation of the protection can be ensured by the domestic law. In my opinion, if these suggestions are implemented, the conflict would at least look closer to being resolved rather than the present condition which is not even close to be reaching a solution. Hopefully, we get to see the trademarks and domain names in the cyberspace with no conflicts soon.
Page 41 of 49
BIBLIOGRAPHY
Books: Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) Paul Todd, E-Commerce Law (Cavendish 2005) Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006) Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) David I Bainbridge, Intellectual Property (5th edn, Longman 2002) Legislation: UK-Trade Marks Act 1994 Cases: Pitman training Ltd v Nominet UK[1997] EWHC Ch 367 British Telecommunication plc v One in a Million Ltd [1999] 4 All ER 476, [1999] RPC 1 Panavision v Toeppen 141 F. 3d 1316 (9th Cir. 1998) Avery Denninson Corporation v Sumpton 999 F. Supp.1337 (C.D.Cal.1998) Data Concepts Inc v Digital Consulting Inc 150 F3d 620, 47 USPQ2d 1672 (6th Cir. 1998) Shields v Zuccarini 89 F.Supp. 2d 634 (E.D.Pa.200) Harrods Ltd v UK Network Services Ltd (Ch.D, unreported, 1996) (1997) 19 EIPR 401 Pitman Training Ltd v Nominet UK [1997] FSR 797 Prince plc v Prince Sports Group Inc [1998] FSR 21 Compass Publishing v Compass Logistics[2004] EWHC 520 (Ch) Avnet Inc v Isoact Limited[1998] FSR 16 Page 42 of 49
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] All ER (EC (934) LOreal S.A. v Bellure N.V and others [2010] EWCA Civ 535 Erven Warnink BV v. J.Townsend & Sons (Hull) Ltd [1979] A.C. 731 at 742 BT v One in a Million & Others[1999] 4 All ER 476, [1999] RPC 1 Rickett & Colman Products Ltd v Broden Inc and other (1990) 1 WLR 491 Websites: www.wipo.int www.iana.org www.managingip.com www.domainnews.com Conference Paper : Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education Technology Association (April 2006) <http://www.bileta.ac.uk/Document%20Library/1/Internet%20domain%20names%20and%2 0trademark%20law%20%20does%20the%20current%20legal%20scheme%20provide%20an%20adequate%20protec tion%20to%20domain%20names.pdf> Accessed 5 September 2011 Policy Document : United States Department of Commerce, Management of Internet Names and Addresses <http://www.icann.org/en/general/white-paper-05jun98.htm> Accessed 3 September 2011 Articles: Abida Chaudri, Internet Domain Names and the Interaction with Intellectual Property (2010) 26 Computer Law & Security Review 38 <http://www.sciencedirect.com/science/article/pii/S0267364909001952> Accessed 6 September 2011 Page 43 of 49
A Michael Froomkin, Wrong Turn in Cyberspace: Using ICANN to Route around the APA and the Constitution (2000) 50 Duke Law Journal 17 <http://www.jstor.org/stable/1373113> Accessed 4 September 2011
Anupama Y, Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi High Court) <http://www.brainleague.com/case_studies/yahoo.pdf> Accessed 5 September 2011
Assafa Endeshaw, The Threat of Domain Names to the Trademark System (2005) 3 The Journal of World Intellectual Property 323 <http://onlinelibrary.wiley.com/doi/10.1111/j.1747-1796.2000.tb00130.x/abstract> Accessed 6 September 2011
Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking (19981999) 21 Hastings Comm & Ent LJ 535 <http://heinonline.org/HOL/Page?handle=hein.journals/hascom21&div=23&g_sent=1&colle ction=journals> Accessed 9 September 2011
Catherine Sevelle, Trade Mark Law: The Communitys Thinking Widens and Deepens (2004) 53 The International and Comparative Law Quarterly 1013 <http://www.jstor.org/stable/3663438> Accessed 6 September 2011
Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 <http://www.sciencedirect.com/science/article/pii/S0267364905001482> Accessed 4 September 2011
Danielle Weinberg Swartz. The Limitations of Trademark Law in Addressing Domain Name Disputes (1997-1998) 45 UCLA L Rev 1487 <http://heinonline.org/HOL/Page?handle=hein.journals/uclalr45&div=39&g_sent=1&collecti on=journals> Accessed 4 September 2011 David V Radack, Likelihood of Confusion-The Basis for Trademark Infringement <http://www.tms.org/pubs/journals/jom/matters/matters-0212.html> Accessed 4 September 2011
Page 44 of 49
Dr. Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICANNs UDRP <http://dcc.syr.edu/PDF/markle-report-final.pdf> Accessed 4 September 2011
Dr Assafa Endeshaw, WIPOs Proposals for the Resolution of Domain Name Disputes (2000) 16 Computer Law & Security Report 173 <http://www.sciencedirect.com/science/article/pii/S026736490088913X> Accessed 5 September 2011
Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent Public Deception and trademark Infringement (2003) 11 Wash UJL 267 <http://heinonline.org/HOL/Page?handle=hein.journals/wajlp11&div=13&g_sent=1&collecti on=journals> Accessed 5 September 2011
David E Sorkin, Judicial Review of ICANN Domain Name Dispute Decisions (2001-2002) 18 Santa Clara Computer & High Tech LJ 35 <http://heinonline.org/HOL/Page?handle=hein.journals/sccj18&div=8&g_sent=1&collection =journals> Accessed 5 September 2011
Douglas Locke, Domain Name Regulation Bad News for Domain Name Pirates? (2000) 16 Computer Law & Security Review 37 <http://www.sciencedirect.com/science/article/pii/S0267364900870703> Accessed 4 September 2011
Faye Fangfei Wang, Domain Names Management and Legal Protection (2006) 26 International Journal of Information Mangement 116 <http://www.sciencedirect.com/science/article/pii/S0268401205001167> Accessed 4 September 2011 H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 J Tech l & Poly 301 <http://heinonline.org/HOL/Page?handle=hein.journals/jtlp10&div=16&g_sent=1&collection =journals> Accessed 5 September 2011
Ian Tollett, Domain Names and Dispute Resolution (2001) 23 World Patent Information 169 <http://www.sciencedirect.com/science/article/pii/S0172219001000059> Accessed 6 September 2011
Ida Madieha Azmi, Domain Names and Cyberspace: the Application of Old Norms to New Problems (2000) 8 International Journal of Law and Information Technology 193 <http://heinonline.org/HOL/Page?handle=hein.journals/ijlit8&div=16&g_sent=1&collection =journals> Accessed 6 September 2011 Page 45 of 49
Jason M Osborn, Effective and Complementry Solutions to Domain Name Disputes: ICANNs Uniform Domain Name Dispute Resolution Policy and the Federal Anticybersquatting Consumer Protection Act of 1999 (2000-2001) 76 Notre Dame L Rev 209 <http://heinonline.org/HOL/Page?handle=hein.journals/tndl76&div=15&g_sent=1&collectio n=journals> Accessed 5 September 2011
Jacqueline D Lipton, Beyond Cybersquatting: Taking Domain Name Disputes Past Trademark Policy (2005) 40 Wake Forest L Rev 1361 <http://heinonline.org/HOL/Page?handle=hein.journals/wflr40&div=36&g_sent=1&collectio n=journals> Accessed 5 September 2011
Jacqueline D Lipton, A Winning Solution for Youtube and Utube? Corresponding Trademarks and Domain Name Sharing (2008) 21 Harvard Journal of Law & Technology 509 <http://heinonline.org/HOL/Page?handle=hein.journals/hjlt21&div=17&g_sent=1&collection =journals> Accessed 6 September 2011
Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law & Security Report 349 <http://www.sciencedirect.com/science/article/pii/S0267364908000666> Accessed 4 September 2011
John Magee, Domain Name Disputes: An Assessment of the UDRP as against Traditional Litigation (2003) U Ill JL Tech & Poly 203 <http://heinonline.org/HOL/Page?handle=hein.journals/jltp2003&div=10&g_sent=1&collecti on=journals> Accessed 8 September 2011
Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution? (1998-1999) 33 USF L Rev 641 <http://heinonline.org/HOL/Page?handle=hein.journals/usflr33&div=29&g_sent=1&collectio n=journals> Accessed 6 September 2011
Jessica Litman, The DNS Wars: Trademarks and the Internet Domain Name System (2000) 4 J Small & Emerging Bus L 149 <http://heinonline.org/HOL/Page?handle=hein.journals/jsebl4&div=12&g_sent=1&collectio n=journals> Accessed 5 September 2011
James Toupin, Trademarks and Domain Names: The Two Faces of Registration (2002) 5 Journal of Internet Law 1 <http://web.ebscohost.com/ehost/resultsadvanced?sid=d676371e-999d-40b2-8ac9e7ce792a1aaf%40sessionmgr115&vid=3&hid=110&bquery=(Trademarks+AND+Domain+N Page 46 of 49
ames%3a+The+Two+Faces+of+Registration)&bdata=JmRiPW5sZWJrJmRiPXJlaCZkYj1id GgmZGI9Y2luMjAmZGI9ZWNuJmRiPWhldiZkYj1nZWgmZGI9Z3VoJmRiPWhpYSZkYj 1seGgmZGI9Y21lZG0mZGI9a2FoJmRiPW16aCZkYj1ydmgmZGI9b2FoJmRiPXBkaCZkY j1wc3loJmRiPWJ3aCZkYj1yaWgmZGI9cnBoJmRiPXNwaCZ0eXBlPTEmc2l0ZT1laG9zdC 1saXZl> Accessed 5 September 2011 Jessie Marshall, Trademarks and e-businessvital partners in the 21st century (2000) 22 World Patent Information 143 <http://www.sciencedirect.com/science/article/pii/S0172219000000569> Accessed 4 September 2011
John D Mercer, Cybersquatting: Blackmail on the Information Superhighway (2000) 6 BUJ Sci & Tech L 290 <http://heinonline.org/HOL/Page?handle=hein.journals/jstl6&div=17&g_sent=1&collection= journals>Accessed 5 September 2011
John G White, ICANNs Uniform Domain Name Dispute Resolution Policy in Action (2001) 16 Berk Tech LJ 229 <http://heinonline.org/HOL/Page?handle=hein.journals/berktech16&div=20&g_sent=1&coll ection=journals> Accessed 4 September 2011
JH Gatsik, Cybersquatting: Identity Theft in Disguise (2001) 35 Suffolk U L Rev 277 <http://heinonline.org/HOL/Page?handle=hein.journals/sufflr35&div=22&g_sent=1&collecti on=journals> Accessed 5 September 2011
Kate Brimsted, UK Domain Name Disputes Still a Cybersquatters Charter (2002) 18 Computer Law & Security Report 201 <http://web.ebscohost.com/ehost/resultsadvanced?sid=d676371e-999d-40b2-8ac9e7ce792a1aaf%40sessionmgr115&vid=4&hid=110&bquery=(Internet+Law%3a+The+Intern et%2c+Trademarks+AND+Domain+Names)&bdata=JmRiPW5sZWJrJmRiPXJlaCZkYj1idG gmZGI9Y2luMjAmZGI9ZWNuJmRiPWhldiZkYj1nZWgmZGI9Z3VoJmRiPWhpYSZkYj1s eGgmZGI9Y21lZG0mZGI9a2FoJmRiPW16aCZkYj1ydmgmZGI9b2FoJmRiPXBkaCZkYj1 wc3loJmRiPWJ3aCZkYj1yaWgmZGI9cnBoJmRiPXNwaCZ0eXBlPTEmc2l0ZT1laG9zdC1 saXZl> Accessed 4 September 2011
Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 <http://heinonline.org/HOL/Page?handle=hein.journals/berktech15&div=21&g_sent=1&coll ection=journals> Accessed 6 September 2011
Mark Radcliffe, David H Dolkas and Dan Cook, Trademarks and Domain Names: New Weapons in the Battle Against Cybersquatting (2000) 3 Journal of Internet Law 1
Page 47 of 49
<http://web.ebscohost.com/ehost/resultsadvanced?sid=d676371e-999d-40b2-8ac9e7ce792a1aaf%40sessionmgr115&vid=3&hid=110&bquery=(Trademarks+AND+Domain+N ames%3a+New+Weapons+%26amp%3bquot%3bin%26amp%3bquot%3b+the+Battle+Agai nst+Cybersquatting)&bdata=JmRiPW5sZWJrJmRiPXJlaCZkYj1idGgmZGI9Y2luMjAmZGI 9ZWNuJmRiPWhldiZkYj1nZWgmZGI9Z3VoJmRiPWhpYSZkYj1seGgmZGI9Y21lZG0m ZGI9a2FoJmRiPW16aCZkYj1ydmgmZGI9b2FoJmRiPXBkaCZkYj1wc3loJmRiPWJ3aCZk Yj1yaWgmZGI9cnBoJmRiPXNwaCZ0eXBlPTEmc2l0ZT1laG9zdC1saXZl> Accessed 4 September 2011
Mitchell Zimmerman and Sally M Abel, Internet IP Law Securing and Protecting a Domain Name for Your Website: Trademarks, Trade Names and Domain Names in Cyberspace (1999) 15 Computer Law & Security Report 363 <http://www.sciencedirect.com/science/article/pii/S0267364999800818> Accessed 5 September 2011
Macrelo Halpern and Ajay K Mehrotra, From International Treaties to Internet Norms: The Evolution of International Trademark Disputes in the Internet Age (2000) 21 U Pa Intl Econ L 523 <http://heinonline.org/HOL/Page?handle=hein.journals/upjiel21&div=22&g_sent=1&collecti on=journals> Accessed 5 September 2011
Patrick D Kelley, Emerging Patterns in Arbitration under the Uniform Domain Name Dispute Resolution Policy (2002) 17 Berkeley Tech LJ 181 <http://heinonline.org/HOL/Page?handle=hein.journals/berktech17&div=18&g_sent=1&coll ection=journals> Accessed 10 September 2011
Raghvendra Singh Raghuvanshi, Domain Name Piracy A Threat to Trade Marks (2006) IDEA: The Intellectual Property Law Review, Forthcoming <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=935097> Accessed 6 September 2011
Robyn Durie, Internet Law: The Internet, Trademarks and Domain Names (1997) 13 Computer Law & Security Report 29 <http://www.ingentaconnect.com/content/els/02673649/1997/00000013/00000001/art81190> Accessed 6 September 2011
Reid Goldsborough, Cybersquatting and its possible remedies Business Journal (New York 18 September 2009) <http://web.ebscohost.com/ehost/pdfviewer/pdfviewer?sid=9bf6f260-b468-4719-97c1cdf0f4bd0423%40sessionmgr15&vid=5&hid=13> Accessed 3 September 2011
Regan Lane Williams, Trademark Law on the Internet-Mousetrapped-Shields v Zuccarini, 89 F Supp 2d ^34(E.D.Pa.2000) (2001-2002) 6 Computer L Rev & Tech J 329
Page 48 of 49
<http://heinonline.org/HOL/Page?handle=hein.journals/comlrtj6&div=21&g_sent=1&collect ion=journals> Accessed 9 September 2011
Sam Tahmassebi, Panavision International v Toeppen (2001-2002) 12 J Contemp Legal Issues 513 <http://heinonline.org/HOL/Page?handle=hein.journals/contli12&div=115&g_sent=1&collec tion=journals> Accessed 5 September 2011
Susan Thomas Johnson, Internet Domain Name and Trademark Disputes: Shifiting Pardigms in Intellectual Property 43 Ariz L Rev 465 <http://heinonline.org/HOL/Page?handle=hein.journals/arz43&div=25&g_sent=1&collection =journals> Accessed 6 September 2011
William T Fryer, Handling Internet Domain Name Arbitration (2008) 41 The Maryland Bar Journal 28 <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1639140> Accedded 6 September 2011
Zinatul A Zainol, The Chronicles of Electronic Commerce: Reverse Domain Name Hijacking under the Uniform Dispute Resolution Policy (2010) 16 European Law Journal 233 <http://onlinelibrary.wiley.com/doi/10.1111/j.1468-0386.2009.00505.x/full> Accessed 9 September 2011
Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights (2007) Stanford's Center for Internet and Society <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=957750> Accessed 5 September 2011
Zohar Efroni, A Barcelona.com Analysis: Toward a Better Model for Adjudication of International Domain Name Disputes (2003-2004) 14 Fordham Intell Prop Media & Ent LJ 29 <http://heinonline.org/HOL/Page?handle=hein.journals/frdipm14&div=9&g_sent=1&collecti on=journals> Accessed 6 September 2011
Zohar Efroni, A Guidebook to Cybersquatting Litigation: The Practical Approach in a PostBarcelona.com World (2003) Jornal of Law, Technology & Policy 457 <http://heinonline.org/HOL/Page?handle=hein.journals/jltp2003&div=20&g_sent=1&collecti on=journals> Accessed 4 September 2011
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SSRN-Id2045222-Conflicts Between Trademarks and Domain Names A Critical Analysis

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Conflicts between Trademarks and Domain Names: A Critical Analysis

Compiled by: Snehlata Singh (snehlatasingh@aol.co.uk)

Electronic copy available at: http://ssrn.com/abstract=2045222

Electronic copy available at: http://ssrn.com/abstract=2045222

CHAPTER 2: DOMAIN NAMES AND TRADEMARKS: AN OVERVIEW

CHAPTER 3: THE KIND OF DISPUTES BETWEEN TRADEMARKS AND DOMAIN NAMES

141 F. 3d 1316 (9th Cir. 1998)

999 F. Supp.1337 (C.D.Cal.1998) Ibid at Page 1337

<http://www.managingip.com/Article/2894591/Managing-Internet-IP-Archive/Cybersquatters-cant-be-beaten-saysLego.html?LS=EMS566053> Accessed 6 September 2011

Rule 1 of UDRP Policy

Ibid at Page 544

<http://www.theinquirer.net/inquirer/news/1029896/microsoft-sues-over-300-misleading-domain-names>Accessed 6September 2011

89 F.Supp. 2d 634 (E.D.Pa.200)

Ibid at Page 334

CHAPTER 4: PROTECTION OF DOMAIN NAMES: UK TRADEMARK LAW

Confusing similarity Bad faith No rights and legitimate interests

Ibid at Page 137

Ibid [2004] EWHC 520 (Ch)

Ibid [1998] FSR 16 Ibid

Section 10(2 TMA 1994

Ibid Ibid Ibid Ibid

Paul Todd, E-Commerce Law (Cavendish 2005) at Page 63.

[2010] EWCA Civ 535

Paul Todd, E-Commerce Law (Cavendish 2005) at Page 65

(1990) 1 WLR 491 Ibid

CHAPTER 5: THE PROTECTION OF DOMAIN NAMES: INTERNATIONAL LAW

Ibid, Page 295 Names and Addresses

<http://www.icann.org/en/udrp/udrp.htm> Accessed 3 September 2011

Rule 4(a)(i) of UDRP Policy

Rule 4(a)(ii) of UDRP Policy

If the domain name is registered and used in bad faith.114

Rule 4 (c) of UDRP Policy

Rule 4(a)(iii) of UDRP Policy Rule 4 (b) of UDRP Policy

Ibid at Page 164 National Arbitration Forum File No FA 0002000093682

Paul Todd, E-Commerce Law (Cavendish 2005) at Page 33

Rule 4(b) of UDRP Policy

Ibid Ibid Ibid

Ibid Ibid Ibid Ibid Ibid Ibid

89 F.Supp. 2d 634 (E.D.Pa.200)

<http://heinonline.org/HOL/Page?handle=hein.journals/comlrtj6&div=21&g_sent=1&collect ion=journals> Accessed 9 September 2011

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