Domain names office of General Counsel The California State University revised: february 2004
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- IV. Conclusion………………………………………………………………….……7
- RECOVERING DOMAIN NAMES
- B. The Anti-Cybersquatting Consumer Protection Act (ACPA)
- 2. Jurisdiction
- IV. CONCLUSION
| PROTECTING INTERNET
DOMAIN NAMES 
Office of General Counsel The California State University REVISED: FEBRUARY 2004 PROTECTING INTERNET DOMAIN NAMES I. Introduction……………………………………………………………….…….1 II. Recovering Domain Names ……………………………………………..….….1
Uniform Domain Name Dispute Resolution Policy (UDRP)………………………………………………………..…1 1. Submitting a Complaint……………………………………...….2 2. The Administrative Process…………………………………..…3 3. Remedies……………………………………………………..….4 The Anti-Cybersquatting Consumer Protection Act (ACPA)………………………………………………….……..……4 1. Filing Suit …………………………………………………….…5 2. Jurisdiction………………………………………………………6 Remedies…………………………………………………..…….6 III. Truth in Domain Names ………………………………………………………...6 IV. Conclusion………………………………………………………………….……7I.INTRODUCTIONWith the widespread use of the internet, some individuals have sought to profit by registering well-known names in the hope that they would be purchased back by their true owners at exorbitant costs. This phenomenon of unauthorized registration, or use, of internet domain names is known as “cybersquatting.” Trademark law provides the normal remedy for this abuse. However, obtaining traditional trademark remedies can be slow and expensive. Internet providers and the federal government have each taken steps to protect against cybersquatting with the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA). The UDRP and the ACPA each contain different procedures that can be used to recover domain names. This manual provides an overview of the procedures available to recover domain names under each Act. II. RECOVERING DOMAIN NAMESA. Uniform Domain Name Dispute Resolution Policy (UDRP) All domain name registrars that sell domain names ending in .com, .net and .org must register with the Internet Company for Assigned Names and Numbers (ICANN). In 1999, the ICANN authored both the UDRP and its implementing rules. There are 135 domain name registrars listed with ICANN, and all now incorporate the UDRP into their customer agreements. The UDRP is a quick and relatively inexpensive procedure to recover domain names. The cost is approximately $1,000 to challenge the improper acquisition of a domain name. 1. Submitting a Complaint The registered holder of any domain name can be found at www.domainregister.com. This website also enables one to determine which domain name registrar sold the domain name to the holder. ICANN-accredited registrars are listed at http://www.icann.org/registrars/accredited-list.html. If the domain name registrar is registered with ICANN, a search can be made to obtain the name, address and in many cases, the telephone number of the domain name holder. Domain name registrars sometimes allow customers to conceal their personal information, so this process may not always produce the true identifying information of the domain name holder. A list of authorized ICANN dispute resolution providers is found at http://www.icann.org/udrp/approved-providers.htm. Each such provider offers complaint forms to recover domain names. The World Intellectual Property Organization (WIPO), an ICANN approved provider, also has information about arbitration and mediation of disputes at www.arbiter.wipo.int/domains/filing/index.html . A complaint under UDRP must allege the following three elements: (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark, service mark or common name in which the complainant has rights; (2) why the domain-name holder should be considered as having no rights or legitimate interests to the domain name; and (3) why the domain name should be considered as having been registered and being used in bad faith. 2. The Administrative Process A complaint submitted to a UDRP dispute resolution provider is then forwarded to the holder of the domain name, who has twenty (20) days to submit a response. Extensions may be granted by the dispute resolution provider or by agreement of the parties. An administrative “panel,” which normally consists of just one person, although either of the parties may elect to have a three-person panel, hears the dispute. The dispute resolution provider advises the parties who the panel members are and the date by which the panel will forward its decision to the provider. The dispute is determined on the papers submitted (i.e., there is no hearing or live testimony). Absent exceptional circumstances, the panel makes its decision within fourteen (14) days of appointment. The complainant has the burden of proving each of the three elements of the complaint. The written decision is submitted to the dispute provider who informs the parties within three (3) days. The decision is also provided to ICANN and to the affected domain name registrar. The registrar then informs the parties, the dispute resolution provider, and ICANN of the date for implementation of the decision (i.e., change in any domain name holder). 3. Remedies The UDRP allows for cancellation or transfer of a domain name to its appropriate holder. B. The Anti-Cybersquatting Consumer Protection Act (ACPA)In 1999, Congress enacted the ACPA. It is intended to extend trademark protection to domain names. The ACPA creates a new legal remedy for trademark owners against anyone who with a bad faith intent to profit, registers, traffics in, or uses a domain name that (1) is identical or confusingly similar to a trademark that was distinctive when the domain name was registered; (2) is identical or confusingly similar or dilutive of a trademark that was famous when the domain name was registered; or (3) infringes trademarks and names protected by certain statutes. The ACPA sets out the following nine, non-exclusive factors to be considered in determining when a domain name holder has taken a name with a bad faith intent to profit: the intellectual property rights the defendant has in the domain name; the extent to which the domain name consists of the defendant’s legal name or a name that is commonly used to identify him or her; the defendant’s prior lawful use of the domain name in making a legitimate offer of goods or services; the defendant’s noncommercial or fair use of the mark in the website accessible under the domain name; the defendant’s intent to divert consumers to a website that could harm the goodwill represented by the trademark; whether the defendant has offered to sell the domain name; whether the defendant provided false contact information when applying for the domain name; whether the defendant registered multiple domain names that are confusingly similar; the extent to which the mark that is incorporated in the domain name is or is not distinctive and famous. 1. Filing Suit To proceed under the ACPA, a trademark lawsuit must be filed. The costs of filing suit vary, but inevitably an ACPA proceeding is more expensive than the UDRP procedure. Under the ACPA, however, a court can award up to $100,000 in damages for each domain name improperly taken, relief that is not available under UDRP. 2. JurisdictionAn ACPA action can be pursued even where the cybersquatter cannot be located or served with process. While damages are not available in those circumstances, the court can order relief for the improper taking of the domain name. 3. RemediesUnder the ACPA, the court can order forfeiture or cancellation of a domain name or the transfer of the domain name to its proper owner. Monetary damages, including any actual damages or costs, and a statutory penalty (which can range anywhere from $1,000 to $100,000 per infringing domain name), as well as attorneys’ fees, are also available. III. TRUTH IN DOMAIN NAMES The Truth in Domain Names Act was passed in 2003 (located in18 USC 2252B), and provides that anyone who knowingly uses a misleading domain name on the internet, intending to lure a person into viewing obscene material can be fined and/or imprisoned.. If any CSU-related domain name contains obscene material, this section should be invoked in the demand letter to abandon the inappropriate domain name. IV.CONCLUSIONBoth the UDRP and the ACPA provide an effective means to regain an improperly acquired domain name. The UDRP procedure is less complicated, less time consuming and less expensive than the ACPA. The ACPA affords damages that are not available under the UDRP. The Truth in Domain Names Act is another reference for inappropriate use of domain nameswhere obscene material is involved. University Counsel assigned to CSU campuses are available to advise and assist with proceedings under any of these processes. 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