Doesn't matter, here's some reading. MANY references with the actual law posted shows clearly any domain name CONTAINING a trademarked word in the name is a violation; especially clear in this case where the person registering the name was at the shareholders meeting the day before registering the name, where qode was announced. http://www.murdoch.edu.au/elaw/issues/v7n3/kilian73.html If this isn't enough reading, here's the google link for thousands more http://www.google.com/search?hl=en&sa=X&oi=spell&resnum=0&ct=result&cd=1&q=c... II. THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT
On November 29, 1999, President Clinton signed the Anticybersquatting Consumer Protection Act, 15 U.S.C. '1125(d). The Act amends Section 43 of the Lanham Act to add subsection (d). The Act is directed to domain name registrants who acquire or use a domain name containing a trademark "with a bad-faith intent to profit" from the use of such mark. In particular, the amendment authorizes a private cause of action by the owner of a mark against anyone who, with a bad-faith intent to profit, registers, traffics in, or uses a domain name that:
is identical or confusingly similar to a mark that is distinctive at the time of registration of the domain name,
is identical or confusingly similar to or dilutive of a famous mark that is famous at the time of registration of the domain name, or
is a trademark, word, or name protected by reason of section 18 U.S.C. ' 706, (7) or 36 U.S.C. ' 220506.(8)
A. Scope
Since the Act is limited to domain name registrants who acquire or use a domain name containing a trademark "with a bad-faith intent to profit" from the use of such mark, if the registration or use does not evidence the requisite "bad faith", the trademark holder is relegated to the traditional claims and remedies available under the Lanham Act (presuming the infringing mark is being used in commerce), and any applicable state statutes or common law theories, such as violation of state unfair competition statutes; common law unfair competition, misappropriation, and unjust enrichment.
1. Bad Faith Factors
The Act, at 15 U.S.C. '1125(d)(I)(B), provides a non-exhaustive list of nine factors the court may consider in determining "bad faith". These factors are suggestive of the factual circumstances the courts should consider in determining whether the alleged infringing domain name, and the acts of the registrant of the allegedly infringing domain, encroach upon the range of rights granted to a trademark holder. Thus, the court is to consider:
the trademark or other intellectual property rights of the person, if any, in the domain name;
the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;
the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;
the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43.
2. Damages
The Act provides for injunctive relief and damages in accordance with the existing provisions of the Lanham Act.(9) The court may also order the forfeiture or cancellation of the domain name, or its transfer to the owner of the mark. In addition, the Act permits a plaintiff to elect, at any time before final judgment, to recover statutory damages of not less than $1,000 and not more than $100,000 per domain name, subject to court approval.
3. The in rem Remedy
The Act also authorizes an in rem action against the domain name. The remedies in such an in rem action are limited to the forfeiture or cancellation of the domain name, or transfer of the domain name to the mark's owner. The in rem action is available if the holder of the domain name is not subject to personal jurisdiction in a federal civil action, or cannot be found. The venue for the in rem action is the district in which the domain name registrar, domain name registry, or other authority that registered or assigned the domain name is located. The action can be brought against multiple defendants, if those defendants all use the same registrar.
The first case to take advantage of this "in rem" provision is one in which Bell Atlantic Corp. will assume control of more than 20 domain names registered by cybersquatters, including bellatlantic.com bellphones.com, and ballatlantic.com (which linked to an adult Web site). Previously, Bell Atlantic sued these (and over 70 other) defendants in a trademark infringement claim. After the Anticybersquatting legislation passed, Bell Atlantic sued these approximately 20 defendants which refused to relinquish the names under the previous lawsuit or remained unreachable by Bell Atlantic's attorneys.(10)
4. Protections for Individuals
The Act also permits a civil action to be brought by a living person against any person who, without consent, registers a domain name that consists of that person's name, or a substantially and confusingly similar name, "with the specific intent to profit" by selling the domain name.
5. Recent Cases
Bargain Bid v. Ubid, 99-CV-7598 (E.D.N.Y. 2000) (injunction granted prohibiting defendants (1) from using the Bargain Bid and Barginbid marks and (2) from indicating that the defendants= services were sponsored, affiliated, or approved by Bargain Bid, where the defendants registered the domain name "barginbid.com" to allegedly divert consumers from the Bargain Bid=s Web site by using the common misspelling of "bargain.") (11)
John Tesh v. Celebsites, Inc., 00-00603ABC (RZX) (C.D. Calif., filed Jan. 19, 2000), (John Tesh claims, inter alia, that defendants, owners of "JohnTesh.com," falsely advertised that site as the official site for Tesh, creating consumer confusion because Tesh owns and operates his own official Web site, "Tesh.com.");(12)
President and Fellows of Harvard College v. Rhys, No. 99CV12489RCL (D. Mass., filed 12/6/99), (Harvard sued domain name owners, and seeks to prevent Web Productions, a company which has registered sixty-five domain names relating to Harvard and Radcliffe, from using Harvard's trademarks).
Brad Pitt has also filed suit against the owners of "bradpitt.com," who initially tried to sell the domain name to Pitt for as much as $50,000.00, and the owners of "bradpitt.net," a commercial cite and fan club outlet which sells merchandise featuring Brad Pitt.(13)
New York Yankees v. McKiernan, 99 CV 8449 (S.D.N.Y., filed 12/23/99)(action by The New York Yankees alleging that defendant's registration of the domain name "newyorkyankees.com" was a bad faith attempt to profit from the Yankee=s famous and distinctive marks).(14)
Sporty=s Farm, L.L.C. v. Sportsman=s Market, Inc., F.3d, 2000 U.S. App. LEXIS 1246, (2d Cir.2000)(the court found that (a) "sporty=s" is a distinctive mark, (b) the domain name "sporty=s.com" is confusingly similar to the sporty=s mark, and (c) there was ample evidence in the record of "bad faith intent to profit," and the court affirmed the lower court=s order that defendant transfer the domain name to the plaintiff).
III. ARBITRATION UNDER THE POLICY AND RULES OF "ICANN"
The Internet Corporation for Assigned Names and Numbers ("ICANN") is a non-profit corporation formed by a coalition of the internet's business, technical, and academic community. ICANN has been designated by the United States Government to serve as the entity to which the U.S. Government is transferring the responsibility for management of the top level domain names ".com", ".org.", and "net". On January 3, 2000, the Uniform Domain Name Dispute Resolution Policy ("UDRP"), and the accompanying Rules for Uniform Domain Name Dispute Resolution Policy adopted by ICANN became effective.(16)
ICANN has instituted a mandatory arbitration procedure for domain name disputes. Arbitration takes place before an accredited provider of arbitration services.(17) The UDRP applies to all domain names currently in existence or subsequently registered, and replaces the domain name dispute policy previously used by Network Solutions, Inc., formerly the only avenue to register a domain name.
A. Scope
The ICANN Policy is directed to cybersquatters who have registered and are using the domain name in bad faith. The ICANN procedure should not be invoked unless the Complainant can demonstrate the requisite bad faith. Moreover, the ICANN Policy is more restrictive than the federal legislation, which provides a cause of action if the registration or use of the domain name is in bad faith.
B. Factors and Evidence Considered
1. The Complainant/Trademark Holder
To initiate an arbitration, and to prevail, the Complainant/Trademark holder must assert (and presumably prove) the following three factors:
The domain name at issue is identical or confusingly similar to a trademark or service mark of the Complainant;
The domain name registrant has no rights or legitimate interests in the domain name; and
The domain name at issue has been registered and is being used in bad faith. (Policy, Paragraph 4(a)).
2. The Respondent
The Policy also provides direction to Respondent as to the evidence necessary to meet the assertions made by the Complainant. For the Respondent, certain circumstances are suggested which may demonstrate rights or legitimate interests in the domain name. These non-exclusive factors are:
Whether the domain name registrant prior to learning of the dispute, had used or taken steps to use the domain name in connection with the bona fide offering of goods or services;
Whether the domain name registrant has been commonly known by the domain name; and
Whether the domain name registrant is making a legitimate non-commercial or fair use of the domain name without intent to obtain commercial gain by misleadingly diverting consumers or tarnishing the mark at issue. (Policy Paragraph 4(c)).
3. Bad Faith
The Policy further provides direction to the Claimant for demonstrating bad faith. Much like the Anti-Cybersquatting Act, ICANN policy sets forth a number of illustrative factors which, if found by the arbitration panel, would be evidence of the registration and use of a domain name in bad faith. These include:
Evidence indicating the domain name was registered or acquired for the purpose of extracting payment from the trademark owner in excess of the costs associated with registering or acquiring the domain name;
The domain name was registered to prevent the trademark owner from being able to use it as a domain name, provided that the registrant has engaged in a pattern of such contact in connection with other domain names;
The domain name was registered for purpose of disrupting the competitor; or
The domain name registrant has used the domain name to divert commercial traffic to its website by creating a likelihood of confusion among internet users. (Policy, Paragraph 4(b)).
4. Process and Remedies
The Arbitration process is conducted solely on paper. There is no provision for hearings or the taking of live testimony. The sole remedy available in an ICANN proceeding is the cancellation of the domain name or the transfer of the domain name to the Complainant. (Policy, Paragraph 4(i)). Submitting a domain name dispute pursuant to the ICANN policy does not prevent either party from submitting the dispute to a court of competent jurisdiction for independent resolution before the proceeding is commenced, or after the proceeding is commenced. (Id., Paragraph 4(k)).
(1) The number of domain names has increased rapidly. In May, 1998, Network Solutions, Inc., then the sole registrar of the ".com", ".net" and ".org" top level domain names, reported its two millionth name reservation. McCarthy on Trademarks, ' 25:73 at page 25-152. As of February 17, 2000 total domains registered worldwide had increased to 15,719,462. Current statistics are found at www.netnames.com.
(2) A domain name can be registered for a nominal fee without any content being provided or other usage made of the Web site. In such instances, the Web site advises the viewer that it is under construction. Web sites can also be registered at Network Solutions, Inc., at www.nsi.com; NetNames International Ltd., at www.netnames.com; and Register.com, Inc. at www.register.com.
(3) Jurisdiction over infringers has been premised upon the concept that the infringement is a tortious act within the state sufficient to confer long-arm jurisdiction. See, e.g., H.K. Corp. v. Louder, 336 F. Supp. 79 (N.D. Ga. 1971)(trademark infringement in Georgia held to be a tortuous injury in the State by a act or omission outside the State by one who derives substantial revenue from goods sold in the State).
(4) Many of these cases do not involve cybersquatters, but are illustrative of the jurisdictional issues to be considered in Internet cases.
(5) This case is reported in the Internet Newsletter, August 1999.
(6) The name and address of the registrant of a domain name can be determined by reviewing the information located at www.networksolutions.com/cgi-bin/whois/whois.
(7) 18 U.S.C. Section 706 provides for criminal for fraudulent or unauthorized use or display of the Red Cross of the American National Red Cross.
(8) 36 U.S.C. Section 220506 provides for civil penalties for unauthorized use of the names, marks or symbols of United States Olympic Committee, the International Olympic Committee, the International Paralympic Committee, the Pan-American Sports Organization.
(9) Remedies permitted under the Lanham Act include injunctive relief. 15 U.S.C. Section 1116. In addition, a plaintiff may recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. 15 U.S.C. Section' 1117(a). The court also has the discretion, under appropriate circumstances, to assess damages above the amount found as actual damages, not exceeding three times such amount. Id. In exceptional cases, attorneys fees may also be awarded. Id.
(10) McGuire, David, Bell Atlantic wins landmark cybersquatting ruling, Newsbytes, February 3, 2000.
(11) See also Jones, Leigh, Federal Cybersquatter Law Survives Test, N.Y.L.J., Jan 18, 2000.
(12) John Tesh Sues for Trademark Infringement and Cybersquatting, E-Commerce Law Weekly, Jan. 31, 2000.This case has settled and the celebrity fan site has agreed to turn over the domain name to Tesh.com. See Mack, Jennifer, John Tesh settles cybersquatting suit, ZDNet News, Feb. 3, 2000.
(13) Shepherd, Ritchenya A., Cyberpirates Now May Have to Walk the Plank, The National Law Journal, Dec. 16, 1999.
(14) Yankees Sue Fan Over Right for Name as Domain Name, The Internet Newsletter, p. 12, Jan. 2000.
(17) A list of accredited providers, and links to their supplemental rules, is found at http://www.icann.org/udrp/approved-providers.htm. At this time, the World Intellectual Property Organization (AWIPO) located in Geneva, Switzerland, the National Arbitration Forum (NAF), located in Minneapolis, Minnesota, and Disputes.org/eResolution Consortium, located in Montreal, Canada are accredited providers under the ICANN policy.
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