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WHY DO WE NEED CRIMINAL SANCTIONS TO COMBAT TYPOSQUATTING?

EXAMINATION OF THE TRUTH OF DOMAIN NAME ACT OF 2003


BY RAMI OLWAN

The purpose of the paper is to examine why we need criminal sanctions to deal with
domain name disputes particularly in the case of typosquatting? Are the civil liabilities
in the Anti Cyber Protection Act (ACPA) not enough to combat typosquatting? Do we
need the Truth of Domain Name Act (TDNA)?
My paper is divided into five parts, in part; I will give a general introduction on
domain names disputes. In part II, I will define typosquatting and examine its
importance. In part III, I will consider the TDNA and then in part IV the case of
Zuccarini.
In part V, I will consider the argument with and against having criminal sanctions to
deal with typosquatting. My preliminary examination will be the TDNA and the
sanctions it provides for typosquatting and to what extent they are effective enough in
deterring children pornography over the internet. At the end of the paper, I will
provide my own overall assessment and conclusion of the matter.

I. Introduction
The emerging cyberspace world and the internet pose a major challenge to traditional

rules of law particularity those related to intellectual property. One of challenges

posed to the traditional doctrines of trademarks law is what is known as

cybersquatting. Cybersquatting is the practice of registering trademarks as domain

names and trying to sell them for large companies for hefty sums of money. This kind

of behaviour has been met by different solutions either on the international or national

level. One of the international solutions to combat cybersquatting is the use of the

Uniform Domain Name disputes Resolution Policy (UDRP) as approved by the

Internet Corporation for Assigned Names and Numbers (ICANN). Many countries
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have national solutions as well to deal with this particular problem including: the

issuance of new laws that deals especially with cybersquatting and domain name

disputes1, applying traditional laws of trademark and/ or unfair competition on domain

name disputes2 and relaying on the decisions of the courts that treat cybersqatting and

other forms of cyber-piracy as illegal practices and applying general rules of

trademark law3.

Domain name law is fairly developed in the US, and this is because early

litigation in the context of ecommerce and the internet has resulted in the issuance of

new laws to deal with different problems encountered in cyberspace. In 1999, the US

Congress passed the ACPA that prohibit registrants from registering distinctive

trademarks as domain name in bad faith. The ACPA provides only remedial,

injunctive relief and the possible transfer of the infringing domain to the legitimate

owner4. Not satisfied with the passage of this legislation alone and the civil remedies it

offers for big corporations, Congress passed another legislation that deals with

typosquatting, which criminalize the act of knowingly registering a misleading domain

1
The most important example of such laws is the Anti Cyber Protection Act (ACPA) in the US. The
ACPA is available at the following address http://www.patents.com/acpa.htm (visited on February 19,
2007)
2
See for example the amendment that has been made to the Japanese Unfair Competition Prevention
Law No 47 for the year 1993. Subparagraph 12, paragraph 1, article 2 of the Unfair Competition
Prevention Law defines “unfair competition” as an act of a i) acquiring or holding the right to use a
domain name or of using domain name (ii) that is identical with or similar to another party’s specific
trademark, service mark or the like, (iii for the purpose of obtaining an illegal profit (profit making
purpose) or causing damage to the party (damage-cause purpose).
3
See for example in India, the case of Yahoo! Inc v Akash Arora, Communication Ltd. v. Cyberbooth
and Acqua Minerals Ltd v Pramod Borse. Swati Deva, What is a Name? Disputes Relation to Domain
Names in India, International Review of Law Computers, Vol 19, No 2, 165- 181 (2005).
4
Christopher G. Clark, “The Truth in Domain Name Act of 2003 and A Preventive Measure to Combat
Typosquatting” 89 Cornnell L Rev. 1476, at 1480.
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name with the internet to deceive a person into viewing material constituting

obscenity.

II. What is Typosqautting and who cares anyway?

The act of typossquatting is not well known as the act of cybersquatting and

this is brings to our attention important questions: what is typosquatting? Who is

considered as a typosquatter? Why this act is proliferated over the internet? Why the

law cares about this kind of behaviour?

Typosquatting is a new form of cyber- piracy, where the registrant registers misspelled

or variations of legitimate domain names in order to trick individuals into viewing

unrelated advertisements or web sites. Typosquatters are people who register a domain

name with just a slight variation (usually misspelling) of a famous domain name

hoping to attract users who inadvertently misspell the name of a large or popular

domain name5. Typosquatters register hundreds or thousands of domain names with

variations of popular domains hoping to attract a larger number of users and obtain a

larger profit of misspelled domain names over the internet.A typosquatter registers

deceptive similar domain names for several reasons6. First, he may try to sell the

derivative name to the trademark holder of company that holds the main legitimate

domain name or trademark for a hefty sum of money. Second, he may use the domain

name and establish websites to divert web traffic and generate advertising revenues or

to trick unwary consumers into providing sensitive information, such as their credit

5
Taken from the http://www.cybercrimelaw.org/category/6/Cybersquatting.html
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card number or home address, to a web site that they believe belongs to a reputable

and trustworthy corporation. Finally, to divert internet users to unrelated sites which

are pornographic in nature. The law aims to protect the interests of the trademark

owners who hold legitimate rights in their trademarks and to prohibit any kind of use

of their mark over the internet. The law is concerned that consumers may be confused

as of the source or origin of the mark and the relationship between the trademark

owner and his virtual place over the internet. Also, the law as I will explain is trying to

protect minors from viewing obscene materials on the internet. I will examine below

how TDNA tries to achieve this purpose and to what extent is it effective enough?

III. The Truth of Domain Name Act 2003

Before the enactment of the Truth of Domain Name ACT (TDNA) trademark owners
had only civil remedies that they can only resort to in the event of typosquatting.
According to Sec 302 of the ACPA, which is part now of the Lanham Act, the
trademark owner must establish two elements to win a case against a typosquatter.
First, he must establish that the registrant has a domain name that is identical to or
confusingly similar to his distinctive or famous trademark, or that dilutes the famous
trademark. Second, he must establish bad faith intent to profit from the mark”7. The
court can order the cancellation of the domain name, as well as require the payment of
damages to the plaintiff trademark owner from $ 1000 to $ 100.000 per domain
name8.

6
Supra note 4.
7
See Frequently asked questions (and answers) about the ACPA, available at the following address
http://www.chillingeffects.org/acpa/faq.cgi (last visited on Feb 19, 2007).
8
Id. See Sec 3003, damages and remedies, available at http://www.patents.com/acpa.htm (last visited
on Feb 23, 2007).
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The trademark owner can also resort to the UDRP adopted by ICANN, which became

effective on December 1, 1999. The UDRP applies to .biz, .com, .info, .name, .net,

and .org generic Top Level Domains (gTLDs)9. The UDRP provides relief for

trademark holders, if they can provide mainly according to article 4 (a) of the Uniform

Domain Name Policy, the following10:

(i) Domain name is identical or confusingly similar to a trademark or service mark in

which the complainant has rights; and

(ii) The domain name registrant have no rights or legitimate interests in respect of the
domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The only relief that the UDRP offers to the trademark owner is to transfer or

cancellation of disputed domain name and there are no monetary damages11.

The TDNA was passed in 2003 and provides that “anyone who knowingly uses a
misleading domain name in the internet, intending to lure a person into viewing
obscene material can be fined/ and/or imprisoned.
The purpose of the Act is to “prevent the use of a misleading domain name with the
internet to deceive a person into viewing obscenity on the internet”.
Sec. 2252 B provides as follows:

9
It is important to note that .biz, .aero, .coop, .museum, .info,.name, .pro and other gTLDs all have their
own dispute resolution policies in addition to having the UDRP. To view the different adopted policies,
please visit WIPO’s website at the following address
http://www.wipo.int/amc/en/domains/gtld/registry/ (visited on Feb 19, 2007).
10
See http://www.icann.org/udrp/udrp-policy-24oct99.htm
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para 4 (i) . In almost all cases, the trademark owner would want the transfer of the domain name to
him, since cancellation of the domain name would not help and will allow another cybesquatter to
register it and demand high amount of money.
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a) Whoever knowingly uses a misleading domain name with the intent to deceive
a person into viewing obscenity on the internet shall be fined under this title or
imprisoned more than 2 years, or both”
b) Whoever knowingly uses a misleading domain name with the intent to deceive
a minor into viewing material that is harmful to minors on the internet shall be
fined under this title or imprisoned not more than 4 years, or both.

Under the TDNA, it is a criminal offense to use a misleading Internet domain name to
deceive a person into viewing pornography. 12Those who violate the Act are subject to
a fine and/or up to two years in prison, while those who do so with the intent to
deceive a minor are subject to a fine and/or up to four years in prison.

IV. The Case of John Zuccarini


It is important to study and analyse the case of Zuccarini and this is because it was the
first application of the TDNA, and it will tell us why and to what extent we need
criminal sanctions for typosquatting and other forms of illegal behaviour over the
internet.

Zuccarini is a notorious typosquatters who lost dozens of his registered domain names
in the Arbitration system approved by ICANN13. In the US, a district Court fined him
with $ 1.8 million for diverting web surfers “from their intended destination to one of
his sites, and holding them captive while he pelted their screen14.

12
Michael Honig: “The Truth About The Truth In Domain Names Act: Why This Recently Enacted
Law is unconstitutional” 23 J. Marshall J. Computer & Info. L. 141, 141-142.
13
See for example, the complaint filed by Rags, Incs vs. John Zuccarini before the National Arbitration
Forum. The sole panelist ordered the domain name www.davemathewband.com to be transferred. The
full decision is available at http://www.arb-forum.com/domains/decisions/94381.htm
14
A.B. Berens, Speculative Fiction, available at http://www.reason.com/contrib/show/472.xml, last
visited on Feb22, 2007.
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In May 2002, the FTC won a permanent injunction against Zuccarini, barring him
from obstructing a visitor's exit from a website15. However, not only he continued to
use mousetrapping techniques on his current domain names, but continued to register
new domain names as well16.
Zuccarini benefited from the mistakes made by internet users and believed to earn up
to $ 1 million each year. Zuccrini was not lucky because he was arrested on
September 3, 2003 in Florida and was sentenced on February 20, 2004 to 30 months in
Federal prison. But the question that need to be asked whether criminal sanctions
against him were harsh and justified? Did we need criminal sanctions in the first
place?

V. Argument for and against criminal sanctions for typosquatting


Before answering the question above, I will discuss below the arguments for and
against introducing criminal sanctions for typosquatting in the TDNA.

A) Argument for introducing criminal sanctions to combat typosquatting


Christopher G. Clark argues that it was important to introduce criminal sanctions in
the context of domain name disputes and especially in the case of typosquatting and
this is because “existing civil damages may be insufficient in light of the substantial
advertising revenues typosquatting generates and that civil litigation does not
adequately deter typosqautters. Further, loss in court does not bankrupt the,
typosqauatter either by removing all offending domain names or by inflicting
sufficient monetary damages and the threat of several years of imprisonment per
deceptive domain name will be a more effective deterrent than civil damages17.

15
See generally, Complaint, United States v. Zuccarini, (S.D.N.Y. 2003), available at
http://news.findlaw.com/cnn/docs/cyberlaw/uszuccarini82903cmp.pdf.
16
David A. Gusewelle, INTERNET & TECHNOLOGY: Typosquatters, The Tactical Fight Being
Waged by Corporations, and Congress' Attempt to Fight Back in the Criminal Arena: U.S. v. Zuccarini,
J. Ent. L. & Prac. 146, 153.
17
Id.
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Lisa D Davis also argues that “the Act is a significant piece of legislation that will
help protect innocent children from unwilling exposure to pornography and it will
ultimately serve not only to prevent the harmful effects of such exposure, but will also
effectively deter the continuation of heinous acts by individuals such as John
Zuccarini”18 But is this true, will the act protect children from being exposed to
absence materials over the internet? I will discuss that in the analysis below after
examining the argument against introducing criminal sanctions.

B) Argument against introducing criminal sanctions to combat typosquatting


Most of the argument against introducing criminal sanctions to combat typosquatting
and particularly that relate to the TDNA tend to concentrate on whether the Act is
constitutional or not and tries to compare this legislation with the Child Online
Protection Act (COPA) that the Supreme Court found in Ashcroft v. American Civil
Liberties Union was unconstitutional.
Those who oppose the TDNA feel that the law created a violation of their rights of
free speech under the First Amendment. They mentioned that “it is a dangerous
precedent, from a First Amendment to criminalize one’s choice of domain names and
moreover the concept of “jailing someone for domain –name choice should worry
everyone” and that fundamentally, it criminalizes internet speech, and the courts have
not been kind to Congress’s attempts to do that in the past19. I will asses below the two
arguments and provide my own assessment.

C) Analysis
The determination of why to impose criminal sanctions for any activity even one
previously subject to civil liability is not clearly outlines in the note of the
commentators who argue in favor of introducing criminal sanctions. What is clear that
they believe the reason is of criminalizing typosquatting is grounded on traditional

18
Lisa D Davis, Trapping “mousetrappers” with the Truth in Domain Name Act of 2003: The
Constitutionality of prohibiting “ typosquatting” on the internet. 57 Ala. L.Rev. 521.
19
Id.
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justification for imposing criminal liability on general that it deters typosqautters like
Zuccrini from registering misspelled domain names that can take children to obscene
materials over the internet.
It is not in my opinion correct to compare the TDNA with the COPA and this is
because there are differences between the two legislations. Firstly, the TDNA covers
only misleading domain names whereas the COPA applies to all pornographic
websites. Secondly, the TDNA does not prohibit registering domain names that
contain pornography and is mainly concerned with cybersquatters who want to trick
children to view obsence materials over the internet and get money out of that.

It is true that the TDNA is not clear on certain issues and that may create problems.
For example the TDNA does not define what is considered to be a “misleading
domain name” Who can decide what is considered obscene and harmful to minors?
The TDNA does not provide us with clear answers to all of these issues, but I still
think that the act will survive the strict scrutiny review and the court will find it
constitutional and will not face the fate of the COPA since it based on different
grounds and it prime purpose is to make the internet safe for children.

The question that was repeated through out the paper was why do we need to
criminalize typosquatting in the first place and not merely rely on the civil liabilities in
the ACPA or the UDRP?
If typosqauatting was against trademark owners there was no use of criminalizing
typosquatters, but in this situation the act is directed toward children and we need to
protect them from pornography over the internet.
The case of Zuccarini showed us to what extent it is important to have criminal
sanctions and why civil liabilities were not enough since it did not stop Zuccarini from
continuing typosquatting and luring children to pornographic websites. The profits
that Zuccarini made allowed him to pay any damages and continue illegal activities.

Generally speaking, I believe that it is not appropriate to have criminal sanctions in the
context of domain name disputes and civil liability is enough in most situations. Only
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in limited situation we should have criminal sanctions and that is the case of
protection of children from viewing pornographic materials over the internet.

In my opinion I do not think that the passage of the TDNA will make the internet safe
for children nor it can help in reducing the number of typosquatted websites which
lead to obscenity. This is because while the law can be applied to typosqauuters
located in the US, many jurisdictions does not have any similar law that criminalizes
this kind of behavior. I believe that there is more efficient way of protecting children
over the internet from viewing pornographic materials and this can be done by the use
of special types of software, which automatically blocks web browsers from reaching
obscene websites and the role of parents and guardians in very important in that
regard.

VI. Conclusion
The question, posted in the title of this note, cannot be answered by a simple 'yes' or
'no'. It is difficult to say generally that we need criminal sanctions in the context of
typosquatting and generally intellectual property crimes. This depends on the
particular crime committed, the criminal and the target of his crime and the danger it
inflict upon the society at large. Typosquatting alone does not need to have criminal
sanctions and civil liability is enough. The solutions provided in the UDRP and the
ACPA are enough in that regard to combat typosquatters and protect the intrests of
large corporations. But when typosqauting is not only directed against big
corporation, but against children this is a different issue and the law must step in and
protect the children who might be tricked into viewing pornographic websites for no
reason just for being young and innocent. When Criminals have this kind of intentions
they must be stopped and we need to have tough laws against them. Civil liability is
not enough and new law must be introduced. We have to live in safe society that will
let children develop and use the internet for education and entertainment purposes and
not to be tricked by the actions of criminals like Zuccarini.
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