Trademarks IV

Domain Names & Trademarks

Class 23 Notes
Law 507 | Intellectual Property | Spring 2004
Professor Wagner

Todays Agenda
1. Domain Names & Trademarks
a) The ACPA
b) The UDRP
c) Marks & Net Governance

2/11

Domain Names & Trademarks

Quick overview of Domain Names
1. Domain Names are an overlay to the internet
network
a) They correspond to an IP Address
www.law.upenn.edu = 130.91.144.50

b) They are not necessary to use the net; typing the ip

address works just fine
c) When you type a domain name, your computer seeks
to resolve the name by querying DNS servers

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4/11

QuickTime and a
TIFF (Uncompressed) decompressor
are needed to see this picture.

5/11

Domain Names Disputes

1. Why are there disputes over domain names?

Lack of namespace? (more than 96-characters

allowed)
Inability to find desired web sites?
Inability to determine desired from undesired web
sites?
Desire for short, easily-remembered name (for
marketing purposes)?
Control over references to your goods/services?

2. What is cybersquatting? Should there be

anything wrong with it?
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Domain Names Disputes

Three Basic Approaches
1. Federal trademark lawsuit (typically dilution claim)

Con: Required a series of awkward stretches

2. The ACPA (15 USC 1125)

1. Allows claims for bad faith registration
2. Cons:

Jurisdictional problems
Federal litigation is expensive, time consuming
Federal courts are sensitive to 1st Amendment issues

3. The UDRP

Allows transfer when bad faith exists

Cheaper and quicker than ACPA
No jurisdictional problems

7/11

The ACPA
Shields v Zuccarini (3rd Cir. 2001)

What is it that Zuccarini did? (Is that really so bad?)

What happened when someone visited Zs sites?
What are the requirements for an ACPA claim?
Do you agree with the court that joecartoon.com is
famous?
Are misspellings identical or confusingly similar?
Why is Z found to be acting in bad faith? Do you
agree? (Should a commercially-motivated use of the
domain name really be an element of bad faith?)

8/11

The ACPA
PETA v Doughney (4th Cir. 2001)
Note the peta.org tagline: A resource for those
who enjoy eating meat, wearing fur and leather,
hunting, and the fruits of scientific research (and
more!).
How did Doughney act in bad faith?
Any practice tips (both for trademark holders and
domain name holders) here?

9/11

The UDRP
1. How does the UDRP become effective against
all domain names?
2. Overview of the UDRP process:

Trademark owner files a complaint with an

approved dispute resolution provider, alleging bad
faith in registering the mark
The respondent has a short period of time to
respond (a majority do not)
One (or sometimes three) panelists; decide the case
on the basis of the submissions

10/11

The UDRP
Elements of a UDRP claim:

1. Identical/confusingly similarity between mark and domain name

2. No legitimate rights in the domain name
3. Registration and use in bad faith

Bad faith:

1. Primary purpose of reselling domain name to the complainant or

a competitor of complainant
2. Registration to prevent mark-holder from using the name
3. Registration to disrupt the business of a competitor
4. Attempts to attract net users, for commercial gain, by creating
a likelihood of confusion

Legitimate rights

1. Use of domain name in bona fide business

2. You have been known by the domain name
3. Legitimate noncommercial fair use

11/11

Marks and Net Governance

1. How does the dispute over trademarks and
domain names implicate net governance?
2. Are there other ways to deal with the issue,
aside from establishing a complex disputeresolution process?

Domain name inalienability

Repetitive domain name auctions
Massive reallocation of domain names
Domain name reservation processes
Do nothing
12/11

Next Class
Intellectual Property & the Constitution I
Structural Limitations

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