International Intellectual Property

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International Intellectual Property

• Profs. Atik and Manheim
• Fall, 2006

Cybersquatting slides by David Steele
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Cybersquatting

• Federal cause of action
• State cause of action
• Cal Bus Prof. Code 17525(a)
• It is unlawful for a person, with a bad faith
  intent to register, traffic in, or use a domain
  name, that is identical or confusingly similar to
  the personal name of another living person or
  deceased personality, without regard to the goods
  or services of the parties.

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Federal cause of action

• Anticybersquatting Consumer Protection Act
• Also known as the ACPA
• 15 U.S.C. 1125(d)
• 43(d) of the Lanham Act

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15 U.S.C. 1125(d) - Cyberpiracy

• 15 U.S.C. 1125(d)(1)(A)
• provides a civil action by the owner of a mark
• any mark protected under Lanham act
• without regard to the goods or services of the
  parties, that person

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15 U.S.C. 1125(d)(1)(A)

• bad faith intent to profit from that mark and
• registers, traffics in, or uses a domain name
  that--
• identical or confusingly similar to a distinctive
  mark
• identical or confusingly similar to a famous
  mark
• dilutive of a famous mark

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15 U.S.C. 1125(d)(1)(B)

• determining a bad faith intent to profit
• consider factors (but not limited to)
• Defensive factors
• registrants rights in the domain name
• legal name or commonly known by name
• bona fide offering of any goods or services
• noncommercial or fair use of the mark

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15 U.S.C. 1125(d)(1)(B)

• determining a bad faith intent to profit
• consider factors (but not limited to)
• Offensive factors
• registrants intent to divert consumers to its
  site for commercial gain or to tarnish or
  disparage the mark
• registrants offer to sell domain name
• registrants uses fake contact information when
  registering
• registrants registration of multiple domain
  names that are TMs
• fame of mark within the meaning of subsection
  (c)(1) of section 43.

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Remedies II

• 15 USC 1117(d)
• statutory damages 1,000 - 100,000 per domain
  name for violation of 1125(d)(1)
• the plaintiff may elect, at any time before final
  judgment is rendered by the trial court, to
  recover, instead of actual damages and profits,
• as the court considers just

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Retroactive

• injunctive relief also ok
• damages ok if
• registered after act or
• renewed after act or
• used after act.

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15 U.S.C. 1125(d)(2)(D)

• Remedy for in rem action - injunction only
• (D)(i) The remedies in an in rem action under
  this paragraph shall be limited to a court order
  for the forfeiture or cancellation of the domain
  name or the transfer of the domain name to the
  owner of the mark

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15 U.S.C. 1125(d)(2)(D)

• Immunity for registrars and registries
• (D)(ii) The domain name registrar or registry or
  other domain name authority shall not be liable
  for injunctive or monetary relief under this
  paragraph except in the case of bad faith or
  reckless disregard, which includes a willful
  failure to comply with any such court order.

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In Rem actions in non-ACPA cases?

• What if the domain name (the defendant) violates
  via dilution or infringement? Can a plaintiff sue
  the domain name in rem?
• Split in circuits
• 4th Cir. Says sure

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Safe Harbor

• 15 U.S.C. 1125(d)(1)(B)
• (ii) Bad faith intent shall not be found if court
  determines def. believed and had reasonable
  grounds to believe that the use of the domain
  name was a fair use or otherwise lawful.
• Def. Must BOTH
• believe and
• have reasonable grounds to believe

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Understanding ICANN

• The Internet Corporation for Assigned Names and
  Numbers (ICANN) is a technical coordination body
  for the Internet. Created in October 1998 by a
  broad coalition of the Internet's business,
  technical, academic, and user communities, ICANN
  is assuming responsibility for a set of technical
  functions previously performed under U.S.
  government contract by IANA and other groups.

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Understanding ICANN

• Specifically, ICANN coordinates the assignment of
  the following identifiers that must be globally
  unique for the Internet to function
• Internet domain names
• IP address numbers
• protocol parameter and port numbers

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ICANN and Domain Name Disputes

• one of the key functions of ICANN is to create
  and administrate disputes over domain names
• one of the factions at the negotiating table was
  the TM lobby
• the TM lobby pressured US Gov., who pressured
  ICANN
• ICANN enacts the UDRP

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Uniform Dispute Resolution Policy

• application of policy by contract
• ICANN - Registrar - Registrant
• policy issue - why do this at all?

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UDRP

• Procedural issues
• Dispute Providers
• WIPO
• National Arbitration Forum
• CPR Institute for Dispute Resolution
• of panel member - one or three members
• payment of fees
• WIPO - 1,500 NAF - 1,150
• Language of proceeding - same as language of
  registration agreement
• Time deadline

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URDP - Prima Facie Elements

• Complainant has burden to prove all of the
  following three elements
• The D.N. is identical or confusingly similar to
  Complainants mark
• Respondent has no rights or legitimate interest
  in the D.N. and
• Respondent registered and is using D.N. in bad
  faith.

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UDRP - Prong 1

• The D.N. is identical or confusingly similar to
  Complainants mark
• Same language as ACPA
• NOT likelihood of confusion test
• ignore TLD string

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UDRP - Prong 2

• Respondent Has No Rights or Legitimate Interest
  in the Domain Name
• three expressly enumerated defenses, more
  available
• before notice of dispute, use or preparation to
  use in connection with a bona fide offering of
  goods or services
• N.B. unlawful is not bona
• commonly known by the domain name
• legitimate noncommercial or fair use of domain
  name without intent to misleading divert
  consumers or tarnish mark

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UDRP - Prong 3

• Registration and Use In Bad Faith
• not really both
• four expressly enumerated circumstances of bad
  faith, more available
• 1) acquired primarily to sell to Complainant /
  mark owner for
• 2) to prevent mark owner from using it - must
  also show pattern

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UDRP - Prong 3

• four expressly enumerated circumstances of bad
  faith, more available
• 3) primarily for the purpose of disrupting the
  business of a competitor
• 4) intentionally attempted to attract, for
  commercial gain, Internet users to your web site
  by creating a likelihood of confusion with the
  complainant's mark

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Implementing UDRP decisions

• time line
• 10 business days for registrant to file suit
• n.b. suit should be filed in selected mutual jdx
• but what if its not?? See ACPA 15 U.S.C. 1114
  (d)(2)(D)(i)(II) cited above
• after 10 days, complainant sends registrar new
  whois details
• registrar implements decision
• what if registrar doesnt?
• what if registrar is told by local court not to?

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Appeals of UDRP

• about the Federal Arbitration Act
• promotes arbitration
• promotes contracts
• standard of review