SSRN-Id2226375-What is in a Name' a Comparative Look at the ICANN Uniform Domain Name Dispute...

7/30/2019 SSRN-Id2226375-What is in a Name' a Comparative Look at the ICANN Uniform Domain Name Dispute Resolution Policy and the United States Anti-Cybers…

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Munich Intellectual Property Law Center (MIPLC)

Master Thesis (2011/12)

“What is in a name?” A Comparative Look at the ICANN Uniform Domain

Name Dispute Resolution Policy and the United States Anti-Cybersquatting

Consumer Protection Act

Terrence Fernbach

MIPLC Class of 2012

Suggested Citation:Fernbach, Terrence;

“What is in a name?” A Comparative Look at the ICANN Uniform Domain Name Dispute ResolutionPolicy and the United States Anti-Cybersquatting Consumer Protection Act

MIPLC Master Thesis (2011/12)http://www.miplc.de/research/

Available at SSRN: http://ssrn.com/abstract=2226375


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II

Table of Contents

Table of Contents…………………………………………………………………………II

Abstract…………………………………………………………………………………..III

Acronyms and Abbreviations……………………………………………………………IV

I. Introduction 1 A. Scenarios 2

1. “Same name, different game” 22. Classic cybersquatter case 33. Protest site (a “____sucks.com” site) 3

B. The Domain Name System 4II. ICANN’s Uniform Domain Name Dispute Resolution Policy 6

A. History 6B. UDRP Basics 7

C. UDRP Domain Name Infringement Test 8D. UDRP Arbitration Procedures 9

E. Advantages of the UDRP 12F. Disadvantages of the UDRP 14

III. The U.S. Anti-Cybersquatting Consumer Protection Act 17 A. History- the Federal Trademark Dilution Act 17

B. Cause of Action 191. Basics 192. The “Bad Faith” Requirement 19

C. Remedies under the ACPA for Cybersquatting 21D. In Rem Jurisdictional Provisions of the ACPA 21E. Safe Harbors under the ACPA 22F. Advantages of the ACPA 23G. Disadvantages of the ACPA 24

IV. Litigating the Scenarios 26 A. Scenario 1: www.tomcruise.com 261. UDRP Proceeding 262. ACPA Proceeding 29

B. Scenario 2: www.nfldraft.com 321. UDRP Proceeding 32

2. ACPA Proceeding 34C. Scenario 3: www.proctorandgamblesucks.com 37

1. UDRP Proceeding 372. ACPA Proceeding 40

V. Conclusion 44

List of Works Cited 46


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III

Abstract

Since the establishment and rise of the Internet, there have been

situations where others have tried to capitalize on the unique nature of

domain names by registering domain names of popular trademarks and/or

individuals’ names, and then turning around and selling these domain names

to the owners of the trademark or to the individual. This action, known as

“cybersquatting”, has been the reason for the enactment of multiple dispute

resolution systems by both governments and private institutions. Further, the

amount of cybersquatting cases has increased over the years, with the World

Intellectual Property Organization reporting increases in cybersquatting

cases over the past few years.

This thesis is designed to be more of a practical guide for an

American attorney who is faced with domain name dispute case. As a result,

this thesis will focus on the International Corporation for Assigned Names

and Numbers’ (ICANN) Dispute Resolution Policy, and the Anti-

Cybersquatting Consumer Protection Act (ACPA). This thesis will provide

three different hypothetical scenarios that may arise in domain name

disputes: where two parties have the same name, or where an individual in

engaging in a form of cybersquatting, or where a group has created a

website for the purposes of criticizing a corporation. This thesis will alsohighlight the advantages and disadvantages of the ICANN procedures as

laid out in the Uniform Domain Name Dispute Resolution Policy (UDRP)

and the procedures available under United States federal law as laid out in

the ACPA, and discuss legal strategies and probable outcomes for the three

different hypothetical scenarios. Finally, this thesis will conclude that while

ICANN’s Dispute Resolution Policy has some disadvantages when

compared to the ACPA, it is the better dispute resolution option to use for

most cybersquatting activities due to its relative speed, efficiency and lower

cost, but the Lanham Act provisions as outlined by the ACPA are better

suited for those cases where the client wishes for more remedies than just

the transfer or the cancellation of the disputed domain name.



IV

Acronyms and Abbreviations

ACPA = Anti-Cybersquatting Consumer Protection Act

ADNDRC = Asian Domain Name Dispute Resolution Centre

Art. = Article

CAC = Czech Arbitration Court

ccTLD = Country code top-level domain name

EURid = European Registry for Internet Domains

FTDA = Federal Trademark Dilution Act

gTLD = Generic top-level domain name

ICANN = International Corporation for Assigned Names and Numbers

Inc. = Incorporated

LLC = Limited Liability Company

MB = megabytes

NAF = National Arbitration Forum

NFL = National Football League

NSI = Network Solutions, Inc.

P&G = Proctor & Gamble, Inc.

TC Graphics = Tom Cruise Graphics

UDRP = Uniform Domain Name Dispute Resolution Policy

U.S. = United States

WIPO = World Intellectual Property Organization



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I. Introduction

Imagine you are sitting in your office one day and you get a

telephone call from a potential new client. This individual is the owner of a

trademark, who, while doing an internet search, has discovered that his

trademark has already been made into a domain name by another party.

Frustrated, this potential client wants to know if there are any options

available in acquiring the claimed domain name. But how to go about

advising this potential client in proceeding with a case, and advising on

which dispute resolution system to use, depends on the particular facts of

the case. This thesis will present the options available in the United States in

pursuing a domain name dispute.

Since the establishment and rise of the Internet, there have been

situations where others have tried to capitalize on the unique nature of

domain names by registering domain names of popular trademarks and/or

individuals’ names, and then turning around and selling these domain names

to the owners of the trademark or to the individual. This action, known as

“cybersquatting”, has been the reason for the enactment of multiple dispute

resolution systems by both governments and private institutions. Further, the

amount of cybersquatting cases has increased over the years, with the World

Intellectual Property Organization reporting increases in cybersquatting

cases over the past few years.1

This thesis is designed to be more of a practical guide for an

American attorney who is faced with domain name dispute case. As a result,

this thesis will focus on the International Corporation for Assigned Names

and Numbers’ (ICANN) Dispute Resolution Policy, and the United States

Anti-Cybersquatting Consumer Protection Act (ACPA), and will not discuss

other domain name dispute resolution systems that are also currently in use.2

This thesis will provide three different hypothetical scenarios that may arise

1See, New, William, WIPO says Cybersquatting Filings Sharply Up, Watches ICANN’s

Domain Name Expansion, Intellectual Property Watch (31.March.2011). See also,Estavillo, Maricel, Cybersquatting Cases Reached New Record in 2011, WIPO Reports,Intellectual Property Watch (3.April.2012)2

There are various other domain name dispute resolution systems currently in use. For example, the European Registry for Internet Domains (EURid) maintains a domain namedispute resolution system for the .eu domain name. Nominet, which handles the .uk domainname, does not use the UDRP, opting to use its own policy and procedures instead. Also,the Chinese Domain Name Consortium, according to its constitution, handles domain namedisputes within the People’s Republic of China.



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in domain name disputes, with one of them being an actual domain name

dispute case, examine the International Corporation for Assigned Names

and Numbers’ (ICANN) Dispute Resolution Policy as well as those of

ICANN’s approved Arbitration Panels,3 and look at the Anti-Cybersquatting

Consumer Protection Act (ACPA).4

This thesis will also highlight the

advantages and disadvantages of the ICANN procedures as laid out in the

Uniform Domain Name Dispute Resolution Policy (UDRP) and the

procedures available under United States federal law as laid out in the

ACPA, and discuss legal strategies and probable outcomes for the three

different hypothetical scenarios. Finally, this thesis will conclude that while

ICANN’s Dispute Resolution Policy has some disadvantages when

compared to the ACPA, it is the better dispute resolution option to use for

most cybersquatting activities due to its relative speed, efficiency and lower

cost, but the Lanham Act provisions as outlined by the ACPA are better

suited for those cases where the client wishes for more remedies than just

the transfer or the cancellation of the disputed domain name.

A. Scenarios

1. “Same name, different game”

In 1995, a computer programmer and graphic designer named Tom

Cruise registered the domain name www.tomcruise.com. At his website,

Mr. Cruise displays information about himself, his professional resume,

samples of his computer artwork and contact information about himself for

those who wish to employ him as a freelance graphic designer. Also

displayed on the home page of his website is a notice stating this is not a

website devoted to the actor Tom Cruise, and a link is provided to the web

page of the actor Tom Cruise’s agency, which has a separate section

devoted to Tom Cruise.5

In 2000, the actor Tom Cruise discovered the

graphic designer’s website and decided he wanted to own the website

3ICANN has approved four arbitration panels to hear cases under the Uniform Domain

Name Dispute Resolution Policy. They are the World Intellectual Property Organization,the National Arbitration Forum, the Czech Arbitration Court, and the Asian Domain NameDispute Resolution Centre.4

15 USC §1125 (2006), Lanham Act §43(d)5

This is just for hypothetical purposes only. In actuality, www.TomCruise.com is theofficial website of Tom Cruise (last visited 13.Aug.2012).



3

www.tomcruise.com. Actor Tom Cruise contacted graphic designer Tom

Cruise about acquiring the domain name. Graphic designer Tom Cruise

responded to actor Tom Cruise, expressing his desire to keep the domain

name. Also, the website www.tomcruise.net and 23 “country code” Tom

Cruise domain names are currently in use, all of which are owned by fans of

the actor.6

2. Classic cybersquatter case7

This scenario involves Lee Schulman, a New York physician who

also registers various domain names as an extra source of income.8

One of

the various domain names Mr. Schulman has registered is

www.nfldraft.com, 9 on which Mr. Schulman has a photograph of a

Yorkshire terrier on the main page, with the phrases “World of Yorkies” and

“Yorkshire terriers of the World” on the top of the main page. The national

Football League, after discovering the existence of Mr. Schulman’s website,

contacted Mr. Schulman, sending a cease and desist letter in March, 2001.10

Mr. Schulman has not contacted the National Football League (NFL)

regarding selling the domain name, figuring “…someone, somewhere would

give me something for it”11, and also claims the National Football League

does not have a trademark right in the phrase “nfldraft”.

3. Protest site (a “____sucks.com” site)

In this scenario, a group of environmentalists and animal rights

activists has chosen to inform the public about the environmental and

6 The author does not know if this is factual. This is being used as part of this fictionalscenario.7

Unlike the other two scenarios in this thesis, this scenario was a real story. Everythinglisted in this scenario actually happened and with the same parties involved. Theinformation found for this scenario is from an article found in the Chicago Sun-Times.Greg Couch, “Draft Day is Going to the Cyberdogs”, Chicago Sun-Times, Vol. 54, No. 56,

p.148, 11.April.2001.8

Mr. Schulman stated he also owned the domain names www.buyinsurance.com,www.viagraonline.com, www.homeownersinsurance.com, and www.hugsandkisses.com, inreference to the Hershey’s Kiss chocolate candy. Ibid.9

First visited on 11.April.2001 and the website was still operating as discussed in theChicago Sun-Times article. Visited again on 30.April.2001, and the website had been takendown. Last visited on 15.August.2012, and the website is still down. The NFL useswww.nfl.com/draft as the official website of the NFL Draft, which will automaticallyforward the visitor to the most recent draft year, which now is www.nfl.com/draft/2013 .(Last visited on 15.August.2012)10

See Couch, at note 7, supra.11 Ibid.



4

animal abuses done by the Cincinnati, Ohio Corporation Proctor & Gamble.

To this end, the protestors have registered the domain names

www.proctorandgamblesucks.com, www.proctor-and-gamblesucks.com,

www.proctor_and_gamblesucks.com, and www.pandgsucks.com in an

effort to get their information about this corporation out to the public. Of

these, the main site is www.proctorandgamblesucks.com, and the other

domain names lead the internet surfer to the main website. At this website,

visitors are greeted with photographs of animals who have been tested upon

by Proctor & Gamble (P&G) scientists, statistics regarding the

environmental disasters caused by P&G, and contact information of P&G

executives (e-mail addresses and work telephone extensions) so people can

voice their disapproval of P&G practices. Finally, the website also contains

banners advocating the boycott of all P&G products. Proctor & Gamble

discovered this website and has demanded that all of the domain names be

turned over to P&G, threatening legal action if the domain names are not

turned over.

B. The Domain Name System

Domain names are unique signifiers, similar to a street address, and

have been called the “human-friendly address of a computer”. 12 Domain

names are only available on a “first come-first served” basis. Domain names

basically consist of two parts: the second-level domain and the top-level

domain.13

The second-level domain name is a term or a series of terms, such

as “facebook” or “youtube”, and the top-level domain, also known as a

generic top-level domain (gTLD), is the enterprise identifier, such as “.com”

for commercial or “.edu” for education.14

All of the gTLDs have a registry that is responsible for maintaining

that gTLD’s database,15

and each registry has various registrars that register

12Froomkin, A. Michael, Wrong Turn in Cyberspace: Using ICANN to Route Around the

APA and the Constitution, 50 DUKE LAW JOURNAL 17, 38 (2000), citing The Management

of Internet Names and Addresses: Intellectual Property Issues – Final Report of the WIPO

Internet Domain Name Process, World Intellectual Property Organization13

Interactive Prods. Corp. v. A2Z Mobile Office Solutions, Inc., 326 F.3d 687, 691 (6thCir. 2003)14 Ibid.15

Ballon, Ian C., E-Commerce and Internet Law, §7.02[1] (2d ed. 2011). A completelisting of the registries associated with the individual gTLDs can be found atwww.icann.org/en/resources/registries/listing (last visited 15.August.2012)



5

domain names.16

All that an individual who wishes to register a domain

name needs to do is visit a particular registrar’s website, complete the

domain name registration information and pay the registrar’s fee. The

registrant now has a domain name and the registrar collects the registrant’s

information and downloads it into a database. This database is known as the

“WhoIs” record, and it is accessible to the public. The registrars are required

by ICANN to maintain various items of information on the WhoIs database,

including the registrant’s name, postal address, e-mail address, telephone

number, and the same contact information for the administrative contact for

the registrant, along with the creation and expiration dates of the

registration.17

The WhoIs database has been criticized as a violation of

privacy rights and as a way to help spammers and stalkers.18 However, the

WhoIs database is useful as a way for individuals to find who owns a

particular domain name in order for an individual to communicate with a

registrant regarding business matters, legal matters or other issues involving

the particular website.

Due to the “first come-first served” nature of the domain name

registration process, there are times when a trademark owner is unable to

register their trademark as a domain name because an individual has already

registered it earlier. When this is done for the purposes of profiting off of

the domain name, either by selling the domain name to the trademark owner

or by gaining from the goodwill established by the trademark owner, this is

known as cybersquatting.19

Since this original definition of cybersquatting,

three separate categories have been developed, which are known as the

“typosquatter”, the “pseudo-cybersquatter” and the “cyberpirate”. 20 The

typosquatter registers common misspellings of trademarks in order to lure

web users, who misspell the intended domain name, to their website.21

The

pseudo-cybersquatter registers the domain name without a website, does

16Id., at §7.02[1]

17ICANN Registrar Accreditation Agreement, at §3.3.1 (21.May.2009; updated

2.August.2012) www.icann.org/en/resources/registrars/raa/ra-agreement-21may09-en.htm (last visited on 16.August.2012)18

Thompson, Nicholas, Masters of the Domain, Foreign Policy, No. 142 (May – Jun.,2004), 79-8119

Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1233 (N.D. Ill. 1996)20 Efroni, Zohar, The Anticybersquatting Consumer Protection Act and the Uniform Dispute

Resolution Policy: New Opportunities for International Forum Shopping?, 26 COLUM. J.L.& ART S 335, 337 (2003)21 Ibid.



6

nothing with the domain name and does not offer it for sale.22

Finally, the

cyberpirate does not offer to sell the domain name, but instead uses the

goodwill attached to the trademark to bring web users to their website.23 It is

the activities of these various types of cybersquatters that have led to the

enactment of the Uniform Domain Name Dispute Resolution Policy and the

Anti-Cybersquatting Consumer Protection Act, which shall be discussed in

the next section.

II. ICANN’s Uniform Domain Name Dispute

Resolution Policy

A. History

The International Corporation for Assigned Names and Numbers

(ICANN) enacted their Uniform Domain Name Dispute Resolution (UDRP)

on 24.October.1999 as a response to the problems present in the earlier

system used by Network Solutions, Inc. (NSI). The NSI policy only

permitted the owner of a trademark registration to challenge the domain

name. 24 If the domain name involved a registered trademark and if the

domain name holder could not show a domain name registration prior to the

trademark registration, NSI would place the domain name on hold until a

settlement or a court order resolved the matter.25

The NSI policy had problems for various reasons. First, it did not

recognize common law trademark rights, and it did not recognize claims

based upon similar but not identical rights, such as intentional misspellings.

Second, the NSI policy did not have any enforcement provisions: the matter

would have to be resolved outside of the NSI system, thereby needing a

court order or a settlement to resolve the dispute. Third, the NSI policy only

honored claims based upon trademark registration without regard to the

nature of the goods or services involved, thus permitting overreaching by

22Ibid.

23Ibid.

24 Squyres, Mary, Enforcement of Domain Name Rights through ICANN , The JohnMarshall Law School Center for Intellectual Property Law 45

thAnnual Conference on

Developments on Intellectual Property Law, 23.Feb.2001, at 4.25 Ibid.



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trademark owners.26

This potential over-reaching could be done in part

because the NSI policy did not take into account the intentions of the

domain name registrant, who may have had legitimate interests in the

domain name but did not have a trademark registration.27 Finally, the best

that can be done by the NSI policy would be a slap on the wrists of the

cybersquatter, which is not much of a deterrent considering the cost of the

litigation that would be needed in order to resolve the matter.

Because of these problems, in 1997 President Clinton directed the

Secretary of Commerce to privatize the management of the domain name

system.28

Subsequently, ICANN was established in 1998 as a California

not-for-profit corporation for the purposes of “lessening the burdens of

government and promoting the global public interest in the stability of the

Internet”.29 With the establishment of ICANN, an alternative to traditional

infringement or cybersquatting litigation has been made available for

trademark holders in acquiring infringing domain names from

cybersquatters. While it can be argued whether the UDRP has become a

substitute for traditional litigation,30 the UDRP alternative dispute resolution

process has become a leading forum for resolving domain name disputes,

with tens of thousands having been initiated, and decided, since 1999.31

B. UDRP Basics

The ICANN UDRP procedure can be used against any .aero, .asia,

.biz, .cat, .com, .coop, .edu, .gov, .info, .int, .jobs, .mil, .mobi, .museum,

.name, .net, .org, .pro, .tel and .travel generic top level domain name

(gTLD) registered with an ICANN-accredited registrar and certain country

26Ibid.

27Greene, Philip J., Questioning Faith – An Examination of the Fair Use Defense within

Internet Domain Name Disputes, and the Role of Good or Bad Faith, 4 LOY. U. NEW

ORLEANS SCH. L. – L. & TECH. A NN. 45, 53-54 (2004)28

Delaney, John F. and Ford, M. Lorrane, The Law of the Internet: A Summary of U.S. Internet Caselaw and Legal Developments, 631 PLI/PAT 31 (2001)29

Ibid.30

See generally, Sharrock, Lisa M., The Future of Domain Name Dispute Resolution:

Crafting Practical International Legal Solutions from within the UDRP Framework , 51DUKE LAW JOURNAL 817 (2001)31 For example, at the time of this writing, since 1999, WIPO has handled 24,081 domainname disputes (http://www.wipo.int/amc/en/domains/statistics/cases.jsp ), with 43,141domain names being at issue (http://www.wipo.int/amc/en/domains/statistics/cases.jsp )(last visited on 16.August.2012).



8

code domain name registrars that have voluntarily adopted the policy.32

Of

these, only the .com, .info, .net and .org gTLDs can be registered without

restrictions.33 Under the UDRP, anyone who registers, renews or maintains

a domain name in one of the approved generic top-level domains (. aero,

.asia, .biz, .cat, .com, .coop, .edu, .gov, .info, .int, .jobs, .mil, .mobi,

.museum, .name, .net, .org, .pro, .tel and .travel) or an applicable country

code top-level domain name with an ICANN-accredited registrar consents

to application of the UDRP in domain name disputes.34 Also, during the

registration process, the UDRP states the registrant warrants his statements

in the application are complete, the domain name applied for will not

infringe on anyone else’s rights, the domain name is not being registered for

an unlawful purpose and the registrant will not knowingly use the domain

name for an unlawful purpose.35 As a result, the UDRP is based entirely on

private contract instead of regulations, which allows the complainant to get

around a decent number of jurisdictional issues that may arise in the course

of litigation.36

C. UDRP Domain Name Infringement Test

In order to obtain a decision from an UDRP arbitration panel

ordering the transfer of a domain name, the complainant must satisfy the

following three elements: (1) the domain name is identical or confusingly

similar to a trademark or service mark in which the complainant has rights;

(2) the respondent has no rights or legitimate interests in respect of the

domain name; and (3) the domain name has been registered and is being

32 www.icann.org/en/tlds (last visited on 15.August.2012). Note that ICANN does not listthe country code domain name registrars that have adopted the UDRP. The UDRP alsoapplies to fifty-eight country code top level domains (ccTLDs), which can be accessed here: www.wipo.int/amc/en/domains/cctld/ (last visited on 15.August.2012). Interestinglyenough, for purposes of this thesis, the country code for the United States, .us, is not one of

the ccTLDs listed. Also, .post and .xxx are also listed as other gTLDs atwww.icann.org/en/resources/registries/listing (last visited on 15.August.2012).33

www.icann.org/en/tlds (last visited on 15.August.2012). The .info gTLD is also listed asan unrestricted gTLD at www.icann.org/en/resources/registries/listing (last visited on15.August.2012)34

UDRP, at §235

Ibid.36

Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 747 (E.D. Va. 2001) (“…the UDRP isenforced through contract rather than regulation.”). The author would like to point out thereare a few jurisdictional issues that may arise within a UDRP arbitration proceeding, such asin cases with multiple parties or in appealed cases. However, these jurisdictional issues area little outside the scope of this thesis, and could possibly form a thesis on its own.



9

used in bad faith.37

The UDRP provides a non-exclusive list for both the

legitimate interest and bad faith elements. For example, if one (which

includes businesses and organizations as well as individuals) is commonly

known by the domain name,38 or one is making a legitimate noncommercial

use or fair use of the domain name,39

a legitimate interest in the domain

name is established. Fair use of a domain name under the UDRP consists of

any use without intent for commercial gain to misleadingly divert customers

or to tarnish the trademark or service mark at issue. 40 Also, if one has

registered a domain name with the intent to prevent the trademark owner

from registering the domain name41

or the individual registered the domain

name for the purpose of selling or renting the domain name to the trademark

owner,42 bad faith is established under the UDRP. Also, it should be pointed

out that while under the UDRP’s domain name infringement test the burden

of proof lies with the complainant, some arbitration panels have stated that

once the complainant has established a prima facie case that the respondent

does not have a legitimate interest in the domain name, the burden of proof

shifts to the respondent to prove that he does have a legitimate interest in the

domain name.43

D. UDRP Arbitration Procedures44

In regards to disputes resolved under the UDRP, it is important to

note that ICANN is in no way involved in the dispute resolution process;

ICANN does not participate in the administration of the dispute in any

capacity.45

Instead, ICANN has appointed four organizations to provide

arbitrators for domain name disputes under the UDRP. These organizations

37UDRP, at §4(a)(i)-(iii)

38Id., at §4(c)(ii)

39Id., at §4(c)(iii)

40 Ibid.41

Id., at §4(b)(ii)42

Id., at §4(b)(i)43 Do the Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 (2000)44

The ICANN Domain Name Dispute Resolution Procedure is not really an arbitration inthe classic New York Convention sense of the term. For example, parties do not give oralarguments in front of an arbitrator in UDRP proceedings. As a result, the UDRP proceedingis really an administrative procedure. However, the procedure is commonly known as anarbitration, despite the differences between the UDRP and an arbitration proceeding under the New York Convention. For the sake of simplicity, this thesis will refer to the UDRP

proceedings as an arbitration throughout.45 UDRP, at §4(h)



10

are the World Intellectual Property Organization (WIPO), the National

Arbitration Forum (NAF), the Czech Arbitration Court (CAC), and the

Asian Domain Name Dispute Resolution Centre (ADNDRC). Each of these

organizations has their own set of supplemental rules regarding procedural

matters in domain name disputes, such as fees, length of submissions, etc.,

which generally follow the provisions set forth by the UDRP Policy and

Rules.

In order to initiate a dispute using the UDRP, the complainant

submits the complaint with an ICANN-approved provider (one of the four

listed above).46

The complaint is to be submitted in e-mail format.47

The

complaint shall include a wide array of information, such as the contact

information of the complainant; the specified communication method for the

complainant; the desire for a single or a three-person arbitration panel; the

respondent’s name and all contact information of the respondent known to

the complainant; the domain name(s) in question; the trademark(s) and/or

service mark(s) on which the complaint is based; the grounds on which the

complaint is based; and the remedy sought (in accordance with the remedies

available under the UDRP).48 Here, it should be pointed out that each of the

four arbitration organizations has different rules regarding the makeup of

the complaint. For example, WIPO requires the complaint to be filed

electronically,49 but can not be more than 5,000 words long 50 and the

electronic file can not be larger than 10 MB (ten megabytes) in size without

a prior arrangement with the Center.51

Likewise, the NAF has a 10 MB

limitation on files, with a preferred file size limitation of 5 MB.52

Further,

the NAF does not allow a particular case file to exceed 50 MB in size in the

aggregate, without prior approval by the NAF.53 However, the NAF rules do

46ICANN Rules for Uniform Dispute Resolution Policy (“ICANN Rules”), at §3(a)

47 Id., at §3(b)48

Id., at §3(b)(i)-(xv)49

World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“WIPO Rules”), §4(a)50

Id., at §11(a)51 Id., at §12(a), and Annex E52

National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain nameDispute Resolution Policy (“NAF Rules”), Annex A, §2(a), §3(a)53 Id., at Annex A, §2(b)



11

contain a fifteen-page limit on complaints.54

Meanwhile, the CAC’s rules

require the complaint shall be filed electronically using an online form

provided at the CAC’s website, but does not have a page limit for

complaints or any other items submitted. 55 Similar to the CAC, the

ADNDRC provides an online complaint form for the complainant to fill

out.56

Also, under the ADNDRC’s rules, the summary of the factual and

legal basis of the complainant’s complaint can not exceed three-thousand

words.57 Finally, the ADNDRC allows the complainant to select whether the

matter will be heard by the Beijing Office, the Hong Kong Office, the Seoul

Office or the Kuala Lumpur Office of the ADNDRC.58

The dispute resolution procedure under the UDRP Policy and Rules

work as follows. After the complainant submits their complaint, stating that

a registrant’s domain name has been registered and is being used in bad

faith and in violation of the complainant’s trademark or service mark, and

all other procedure requirements have been met (such as payment of fees),

the approved arbitration provider will forward the complaint to the

registrant. 59 The registrant then must submit a written response within

twenty days after the complaint was forwarded to the registrant. 60 The

response shall address the statements and allegations contained in the

complaint, and may include any bases as to why the registrant should retain

the registration and use of the disputed domain name.61 If the registrant does

not file a response, the arbitration panel shall decide the case based solely

upon the contents of the complaint.62

Further, in the case of a default (i.e.

the registrant does not file a response), the arbitration panel shall draw any

54Id., at §4(a). These rules say nothing about whether the exhibits are included in the page

limit, so the author assumes this limit includes any annexes and exhibits that may beattached to a complaint.55 CAC’s UDRP Supplemental Rules of the Czech Arbitration Court, at Art. 3, Annex B,Annex C. See also, www.adr.eu (last visited 15.August.2012)56

See, www.adndrc.org/hk_download.html (last visited 15.August.2012)57 See, www.adndrc.org/doc/complaint_hk.doc , at Art. 8 (last visited 15.August.2012)58

ADNDRC Supplemental Rules to the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy and the Rules for the Uniform Domain Name Dispute Resolution Policy (“ADNDRC Rules”), at Art. 5(1) (ineffect as of 26.July.2012).59 ICANN Rules, at §4(a)60

Id., at §5(a)61

Id., at §5(b)(i)62 Id., at §§5(e), 14(a)



12

inferences from the lack of a response as it considers appropriate.63

A one-

person or a three-person arbitration panel will be appointed within five days

after receiving the registrant’s response,64 with the default panel consisting

of a one-person arbitration panel unless one of the parties requests a three-

person panel.65

The appointed arbitration panel will review the statements

and documents submitted by the parties66

and shall forward a written

decision to the appropriate provider within fourteen days of the panel’s

appointment.67 This dispute procedure is designed to provide an efficient,

fast and relatively inexpensive means of dealing with disputes concerning

rights to domain names.

E. Advantages of the UDRP

There are quite a few advantages to filing a domain name dispute

with one the ICANN approved providers. First, the process is relatively

quick. As previously stated, the entire process will take about forty days to

resolve from the date of filing the complaint, not including the possibility of

any extensions being granted. While this process is longer than acquiring a

temporary restraining order from a court, this is still a very fast method for

resolving a domain name dispute.

Second, the proceedings under the ICANN Policy are inexpensive.

Even though the filing fees vary between the different organizations68 and

63Id., at §14(b). A complainant must still make/prove their case to the satisfaction of the

arbitration panel in the event of a default from the respondent/registrant.64

Id., at §6(b)65

Ibid.66 Id., at §15(a).67 Id., at §15(b)68

WIPO charges a fee of $1,500 for a dispute consisting of one to five domain names presided over by a single panelist, and the fee is increased to $4,000 for a dispute consistingof one to five domain names presided over by three panelists. WIPO Rules, at Annex D.Meanwhile, the NAF has a sliding fee scale which ranges from $1,300 to $4,500 depending

upon the number of domain names in dispute and the size of the arbitration panel requested by the parties. NAF Rules, at §17. The CAC also has a sliding fee scale which ranges from$500 to $7,100 depending upon the number of domain names at issue in the dispute and thesize of the arbitration panel requested. CAC’s UDRP Supplemental Rules of the CzechArbitration Court, at Annex A. However, there are additional UDRP fees that range from$1,600 to $2,600, which must be paid by the complainant within five days of notification

by either the CAC or the arbitration panel when either a response has been filed, or whether the panel determines it is appropriate for the complainant to pay the additional fees. Ibid.Finally, the ADNDRC also has a sliding scale that ranges from $1,300 to $3,800, alsodepending upon the number of domain names at issue and the number of panelists on thearbitration panel. ADNDRC Rules, at Art. 15. The ADNDRC’s website has a fee webpage(www.adndrc.org/p_schedule_fees.html) that has a differing fee scale which ranges from



13

the fees are higher than filing fees in a United States Federal Court, the total

fees for resolving a dispute in this method, including a party’s attorney’s

fees, should not go above the mid-to-high four figures, which is

significantly less expensive than a contested case in federal litigation.

Further, according to WIPO’s fee schedule, in the event of the case’s

termination after the arbitration panel has been appointed, WIPO shall

determine whether any part of the fees shall be refunded to the party or

parties, which is typically 25% of the fees paid.69 This particular advantage

is arguably one of the most attractive advantages to parties involved in a

domain name dispute.

Third, one is able to avoid various jurisdictional issues under the

ICANN Policy. The ICANN dispute resolution policy and procedures can

also apply to registrants who have used a foreign registrar that have adopted

the ICANN Policy. As a result, a foreign registrant can be brought into the

dispute under the UDRP. Meanwhile, jurisdictional issues may arise with a

foreign registrant in a dispute using the U.S. Anti-Cybersquatting Consumer

Protection Act, except in cases involving the ACPA’s in rem provision,

which will be discussed further below. The agreements that some foreign

registrars have made with ICANN have lead to the client having access a

larger jurisdictional realm than what would be available under the ACPA.

Fourth, arbitrators chosen to sit on arbitration panels for matters

using the UDRP procedures tend to be private attorneys and are typically

experts in trademark law. This assures that a UDRP proceeding will be

adjudicated by someone who has specialized knowledge in the area of

trademark law. This can be a significant advantage over a federal case,

where the judge assigned the case may not have much knowledge in

trademark issues.

Finally, for most cybersquatting cases, the UDRP is more than

sufficient in handling the dispute. If all the complainant wants is to get the

domain name away from the registrant, the UDRP is a fast and inexpensive

$1,000 to $7,000. (last visited 15.August.2012). However, the author thinks the webpagemay be out of date, especially since the latest policy has been effective for less than onemonth at the time of this writing. 69

See generally, WIPO Schedule of Fees, found at the following website:(http://www.wipo.int/amc/en/domains/gtld/name/erdrp/fees.html ) Last visited 29.Aug.2012



14

way for a trademark holder to get a domain name away from the average

Cybersquatter.

F. Disadvantages of the UDRP

While there are a few advantages to using the ICANN Procedures,

there are some disadvantages in using this dispute resolution system. First,

the only remedy available to the complainant is either the cancellation of the

domain name or the transfer of the disputed domain name to the

complainant.70 If the complainant also wants to seek monetary damages, the

complainant must pursue an ACPA claim in U.S. federal court. However,

the limitation in remedies available may not be that much of a disadvantage

since the registrant may not have any money to satisfy a monetary

judgment, or may be anonymous, in which case the only feasible remedy

may be the transfer of the domain name to the complainant or the

cancellation of the domain name. Whether or not this limitation really is a

disadvantage really depends on what the client wants as a remedy in the

matter, so the client’s decision will ultimately decide just how much of a

disadvantage this limitation really is, or even if it is one at all.

Second, the arbitration panel’s decisions are non-binding in the sense

that it does not preclude a subsequent or contemporaneous court

proceeding. 71 Also, it is not clear what weight courts will give to an

arbitration panel decision. In one case in particular, Weber-Stephen

Products v. Armitage Hardware,72

the federal court for the Northern District

of Illinois held that it was not bound by the outcome of UDRP proceedings

and also declined to state that standard it would use to review UDRP

arbitration panel decisions.

Another potential drawback with the UDRP procedures is that a

trademark owner must consent to jurisdiction in any subsequent litigation

where either the registrant or the registrar of the domain name is located.73

This could create a problem if the registrant files a suit, as jurisdiction can

play a significant role in the choice of law used for the proceeding. This can

70 ICANN Policy, at §4(i)71

Id., at §4(k)72

54 U.S.P.Q. 2d 1766 (N.D. Ill. 2000)73 Ballon, Ian C., supra note 14, at §7.04[2]



15

also become a huge issue in the case of a foreign registrant, and could cause

the trademark owner to litigate the matter in a foreign court.

Fourth, the ICANN Procedures do not allow for discovery.

Generally, if the arbitration panelist(s) do not request any additional

information the parties cannot submit anything further. However, there are

instances where a party can request to submit an additional filing, such as in

a situation where a party wishes to present new evidence that was not

previously available until after that party’s initial submission. Such a request

will not always be granted though, so one should be careful and make sure

all information is in their submission.74

This disadvantage can lead to a few

problems. For example, if the registrant has any affirmative defenses in their

response, such as fair use or acquiescence, the complainant cannot write a

rebuttal unless directed to do so by the arbitration panel. Another related

problem with the lack of discovery is that the arbitration panelists cannot

easily evaluate the credibility of the written submissions, since both the

complainant and the respondent state the information in their respective

submissions are accurate to the best of their knowledge. This may result in

the arbitration panel denying the requested relief and suggesting the claims

be taken to another forum where the credibility of testimony can be

evaluated.

Coupled with the lack of discovery, is that under the ICANN

Procedures, the burden of proof is on the complainant to prove each of the

three elements (similarity, lack of rights or legitimate interests and bad

faith).75

Since the burden of proof is on the complainant and there is no

discovery provision in the ICANN Policy, it may be difficult for the

complainant to succeed in their case. In most of the published arbitration

panel decisions under the ICANN Policy, an e-mail exchange is probably

the only prior contact between the parties and sometimes there is no contact

74Generally, unsolicited supplemental filings will not be considered in UDRP proceedings,

except in exceptional circumstances, such as the existence of new relevant facts or arguments that were not known until after submission of the original Complaint or factsthat the complainant could have reasonably anticipated. Broan-Nutone, LLC v. Ready SetSales, WIPO Case No. D2010-0920 (2010), citing Dreamgirls, Inc. v. DreamgirlsEntertainment, WIPO Case No. D2006-0609 (2006) and Deutsche Post AG v. NJDomains,WIPO Case No. D2006-0001 (2006)75 ICANN Policy, at §4(a)(i)-(iii)



16

at all.76

Because of this lack of communication between the parties coupled

with ICANN’s lack of discovery provisions, the complainant can potentially

be placed in a bad position in not being able to state anything specific about

the registrant’s lack of rights or legitimate interests or about the registrant’s

bad faith.

While the UDRP does have a larger jurisdictional base than the

ACPA, there is a potential drawback to the UDRP in that country code top

level domains (ccTLDs) are not required to bind their registrant to the

UDRP. 77 As stated earlier, only fifty-eight ccTLDs are bound by the

UDRP,78

and one of the ccTLDs that is not bound to the UDRP is the

country code for the United States, .us.79

If the domain name at issue

happens to be a ccTLD that is not bound by the UDRP, the client will not be

able to proceed using the ICANN UDRP to resolve the dispute. However, it

should also be pointed out that unless that particular website was registered

with a registrar located within the United States, the ACPA might not be a

viable option either.

Finally, under the ICANN Policy, a domain name dispute involving

a trade name may not necessarily be successful. This is because the UDRP

Rules require the dispute to involve a trademark or a service mark.80

Due to the varied advantages and disadvantages that are inherently in

the UDRP, one has to think before deciding to use ICANN’s dispute

resolution policy instead of using the cause of action in the Lanham Act

provided by the ACPA. However, the UDRP is simpler, far less expensive

and faster than the federal litigation needed for the Lanham Act and because

of these characteristics most complainants should probably utilize the

UDRP procedures as these procedures will afford most complainants with a

speedy resolution and grant the relief they are seeking in most domain name

disputes.

76Matorin, Mitchell J., and Boudett, Michael, Domain Name Disputes: Cases Illustrate

Limitations of ICANN Policy, 45-APR B. B.J. 4, 4 (2001)77

Sharrock, 51 DUKE LAW JOURNAL, 841. 78

See note 31, supra79 Ibid. However, the .us Policy through the NAF is very similar to the UDRP Policy (See,http://domains.adrforum.com/main.aspx?itemID=534&hideBar=False&navID=253&news=26) (last visited 20.August.2012)80 UDRP, at §§4(a)(i), 4(b)



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III. The U.S. Anti-Cybersquatting ConsumerProtection Act

81

A. History – the Federal Trademark Dilution Act

On 29.November.1999, President Clinton signed into law the Anti-Cybersquatting Consumer Protection Act.

82The ACPA amended the

Lanham Act by adding Section 43(d), providing for a trademark remedy for

cybersquatting. Prior to the ACPA, the only litigation based solution to a

domain name dispute was to file a trademark infringement or a trademark

dilution action.83

When it was enacted in 1995, the Federal Trademark Dilution Act84

(FTDA) was originally thought of as a powerful tool for trademark holders

to use against cybersquatters.85 The FTDA provides the owner of “a famous

mark… an injunction against another person’s commercial use in commerce

of a mark or trade name, if such use begins after the mark has become

famous and causes dilution of the distinctive quality of the famous mark.”86

While seemingly a powerful tool, the previous text from the FTDA

contained a few problems that made it difficult to adequately prosecute

causes of action against cybersquatters. First, the text indicates the alleged

cybersquatter’s use of the trademark domain name must be commercial in

nature. This limitation in the FTDA prevented relief against some

cybersquatters who would just register the domain name and do nothing

with it, holding the domain name until someone made an offer to purchase

the domain name.87

8115 USC §1125 (2006), Lanham Act §43(d)

82Delaney and Ford, 631 PLI/PAT 31, 171

83See, Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998) (applying

Federal Trademark Dilution Act to a cybersquatting case and ordering the transfer of the

domain name from the cybersquatting defendant to the plaintiff trademark holder)84

15 U.S.C.A. §1125(c) (2006)85

Mohr, Stephen F., The New Federal Trademark Dilution Act: Expanding the Rights of Trademark Owners, in Annual Advanced Seminar on Trademark Law 1997, at 9 (PLIPatents, Copyrights, Trademarks & Literary Prop. Course, Handbook Series No. G-476,1997) (“The Dilution Act has already proven to be an effective weapon for owners of arguably well-known or ‘famous’ trademarks to prevent a wide range of third party uses of marks similar or identical to such marks.”)86 15 U.S.C.A. §1125(c)(1)87

Martin, Elizabeth Robison, “Too Famous to Live Long!”: The Anticybersquatting

Consumer Protection Act Sets its Sights to Eliminate Cybersquatter Opportunistic Claims

on Domain Names, 31 ST. MARY’S L.J. 797, 822 (2000). See also, HQM, Ltd. V. Hatfield,



18

Another problem that arose from the wording of the FTDA is the

implication that the FTDA provided protection for the owner of a famous

mark, and some courts even suggested the mark had to be famous and

distinctive. For example, the Second Circuit Court of Appeals has held that

heightened distinctiveness is required under the FTDA, ruling that anti-

dilution protection should only go to highly distinctive marks that are “…the

product of the imagination and evoke no associations with human

experience that relate intrinsically to the product.”88 Further, the court in

Nabisco stated, “It seems unlikely that the statute contemplates allowing the

holders of such common, albeit famous, marks to exclude all new entrants.

That is why the statute grants the privilege only to holders of distinctive

marks.”89 Rulings such as this one led to many trademark holders not being

able to gain relief against cybersquatters using the FTDA.90

As a result of the wording in the FTDA and in light of court

decisions, trademark owners were finding themselves faced with a difficult

task in gaining relief against cybersquatters, as some registrants would

engage in pseudo-cybersquatting or the court found the claimant’s

trademark was not famous, distinctive, or famous and distinctive. The

Second Circuit Court of Appeals, in Sporty’s Farm LLC v. Sportsman’s

Market, Inc., 91 discussed the limitations of the FTDA and Congress’

reasoning and response to those limitations when it stated “…cybersquatters

have become increasingly sophisticated as the case law has developed and

now take the necessary precautions to insulate themselves from liability

(under the FTDA).”92

As a result, the ACPA was passed specifically to

provide courts with an alternative to stretching federal dilution law to apply

in cybersquatting cases.93

71 F. Supp. 2d 500, 506 (D. Md. 1999); Acad. of Motion Picture Arts & Scis. v. Network Solutions, Inc., 989 F. Supp. 1276, 1278-79 (C.D. Cal. 1997)88 Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 (2d Cir. 1999)89

Ibid.90

See generally, Nguyen, Xuan-Thao N., Blame it on the Cybersquatters: How Congress

Partially Ends the Circus among the Circuits with the Anticybersquatting Consumer

Protection Act , 32 LOY. U. CHI. L.J. 777 (2001)91 202 F.3d 489 (2d Cir. 2000)92

Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d at 495, citing S. R EP. NO. 106-140, at 793 Id., at 497



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B. Cause of Action

1. Basics

The ACPA, drafted in response to the limitations created by the

FTDA, provides liability for cybersquatting when a person who, with a bad

faith intent to profit, registers, traffics in, or uses a famous or distinctive

trademark as a domain name.94

In particular, the ACPA creates a cause of

action against anyone who: (1) with bad faith intent intends to profit from

another’s mark, including a personal name which is protected as a mark;95

and (2) registers, traffics or uses a domain name that (a) is confusingly

similar to a distinctive trademark at the time of registration, or (b) is

confusingly similar or dilutive of a famous trademark at the time of

registration. 96 Also, under the ACPA, the trademark only needs to be

distinct at the time the domain name was registered and the trademark need

not be registered.97

2. The “Bad Faith” Requirement

The ACPA, through Lanham Act Section 43(d)(1)(B)(i), provides a

non-exclusive list of nine factors that courts may consider when determining

whether a person has the requisite bad faith intent under Section

43(d)(1)(A). Out of these factors, the first four are indicative of good faith

while the remaining five are indicative of bad faith. The five bad faith

factors are as follows:

(1) the person’s intent to divert customers from the mark owner’s online location to a site accessible under thedomain name that could harm the goodwill represented bythe mark, either for commercial gain or with the intent totarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site;

(2) the persons’ 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 touse the domain name in the bona fide offering of any goods

94Scaturro, Tanesa S., The Anticybersquatting Consumer Protection Act and the Uniform

Domain Name Dispute Resolution Policy the First Decade: Looking Back and Adapting

Forward , 11 NEV. L.J. 877, 885 (2011), citing 15 U.S.C. §1125(d)(1)(A) (2006)95

Lanham Act, at §43(d)(1)(A)(ii), 15 USC §1125(d)(1)(A)(ii)96

Id., at 43(d)(1)(A)(ii), 15 USC §1125(d)(1)(A)(ii)97 Id., at §43(d)(1), 15 USC §1125(d)(1)



20

or services, or the person’s prior conduct indicating a pattern of such conduct;

(3) the person’s provision of material and misleading falsecontact information when applying for the registration of the domain name, the person’s intentional failure tomaintain accurate contact information, or the person’s prior

conduct indicating a pattern of such conduct;(4) the person’s registration or acquisition of multiple domain

names which the person knows are identical or confusinglysimilar to marks of others that are distinctive a the time of registration of such domain names, or dilutive of famousmarks of others that are famous at the time of registrationof such domain names, without regard to the goods or services of the parties; and

(5) the extent to which the mark is incorporated in the person’sdomain name registration is or is not distinctive and famous within the meaning of subsection (c) of thissection.

98

The four factors that are indicative of good faith under the ACPA are asfollows:

(1) the trademark or other intellectual property rights of the person, if any, in the domain name;

(2) the extent to which the domain name consists of thelegal name of the person or a name that is otherwisecommonly used to identify hat person;

(3) the person’s prior use, if any, of the domain name inconnection with a bona fide offering of any goods or services; and

(4) the person’s bona fide noncommercial or fair use of the

mark in a site accessible under the domain name.99

In addition to these four good faith factors, Section 43(d)(1)(B)(ii) states

that bad faith shall not be found in any case where the court determines the

registrant/defendant believed he had reasonable grounds to believe that the

use of the domain name was a fair use or was otherwise lawful.100

Courts

have stated the ACPA’s bad faith criteria should be applied in a holistic

manner and not viewed as a mechanical exercise,101 so these factors should

be balanced “…qualitatively in light of the circumstances…”

102

present in a particular case, and not just lined up to see which party has more factors

98Id., at §43(d)(1)(B)(i), 15 USC §1125(d)(1)(B)(i)

99Ibid.

100Id., at §43(d)(1)(B)(ii), 15 USC §1125(d)(1)(B)(ii)

101 Carnivale v. Staub Design LLC, 456 Fed.Appx. 104, 108 (3rd Cir. 2012), citingCarnivale v. Staub Design LLC, 754 F.Supp.2d 652, 658 (D.Del. 2010), quoting Green v.Fornario, 486 F.3d 100, 106 (3rd Cir. 2007).102 Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658



22

information to their registrars, allowing the registrants to avoid service of

process and effectively causing the registrants to disappear.107 As a result,

the ACPA created an in rem cause of action by adding Section 43(d)(2) to

the Lanham Act. This provision allows the owner of a trademark to file an in

rem civil action against a domain name in the judicial district in which the

domain name registrar, domain name registry or other domain name

authority is located if the complainant/plaintiff meets certain factors. These

factors are as follows: (1) the domain name violates any right owner of a

mark; and (2) the court finds the mark owner is not able to obtain in

personam jurisdiction over a person who would have been a defendant in a

civil action; or (3) through due diligence the mark owner was not able to

find a person who would have been a defendant in a civil action by either

sending notice to the domain name registrar, who sends it to the contact

information provided by the registrant, and publishing notice of the action

promptly after filing the action.108

This now allows a trademark holder to go

after the website, and means that a foreign website operator could have their

domain name seized and transferred provided the website operator

registered the domain name with an American domain name registry, even

though the website operator has no other connections to the United States.

The in rem jurisdiction is in addition to any other jurisdiction that

may already exist in a particular case. The remedies available in an in rem

action are limited to a court order for forfeiture or cancellation of the

domain name, or its transfer to the mark owner.109

Further, courts have held

the in rem provision is not limited to claims of bad faith registration with the

intent to profit, but can also be allowed for trademark infringement and

dilution claims.110

E. Safe Harbors under the ACPA

While the ACPA provides causes of action and remedies for

trademark and service mark owners vis-à-vis cybersquatters, the ACPA also

107Hwang, Jinku, Is the ACPA a Safe Haven for Trademark Infringers?—Rethinking the

Unilateral Application of the Lanham Act , 22 J. MARSHALL J. COMPUTER & I NFO. L. 655,661 (2004)108Lanham Act, at §43(d)(2), 15 USC §1125(d)(2)109

Ibid.110

Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 228 (4th Cir. 2002). Seealso, Hartog & Co. AS v. Swix.com, 136 F.Supp.2d 531, 538 (E.D. Va. 2001)



23

provides an exemption from liability to domain name registrars and

registries that take action to prevent cybersquatting and have acted in good

faith. Specifically, the ACPA adds a new section limiting the liability of

domain name registrars and registries for registering a trademark infringing

domain name absent bad faith.111

Here, a showing of bad faith is the intent

to profit from the registration and maintenance of the domain name.112

Similarly, there are also safe harbor provisions for domain name

registrants. In particular, courts have held that bad faith will not be found if

the registrant reasonably believed the use of the domain name was a fair use

of the trademark or was otherwise lawful.113

However, courts have held that

if a registrant acts partially in bad faith in registering a domain, then the

defendant can not fall within the safe harbor provision.114 Finally, under the

ACPA, a domain name registrant is protected against a trademark owner

who knowingly and materially misrepresents to a domain name registrar or

registry that the registrant’s domain name is infringing.115

F. Advantages of the ACPA

There are a few advantages in using the ACPA. First, the ACPA is a

good method to use in trying to acquire an infringing domain name from a

foreign cybersquatter. This is because of the ACPA’s in rem provisions, and

the ACPA does not have the same burdens of proof that are found in the

UDRP. However, it is important to note that the in rem provisions only

apply if the disputed domain name was registered with a registrar or other

domain name authority that is located within the United States.

Second, the ACPA also allows for monetary damages, statutory

damages and injunctive relief, in addition to the same remedies available

under the UDRP. This gives a wide array of remedies available to a plaintiff,

most of which are unavailable by the UDRP. Also, the ACPA has the same

111Lanham Act, at §32(2)(D)(iii)

112 Ibid.113

Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 947 (9th Cir. 2002)114

Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1203-04 (9th Cir. 2009). In particular, thecourt stated the courts should use the reasonable belief defense very sparingly and only inthe most unusual cases, for more frequent use of this defense would “…‘undermine the restof the statute’ because ‘[a]ll but the most blatant cybersquatters will be able to put forth atleast some lawful motives for their behavior’.” Id., at 1203, citing Virtual Works, Inc. v.Volkswagen of American, Inc., 238 F.3d 264, 270 (4th Cir. 2001)115 Lanham Act, at §32(2)(D)(iv)



24

remedies at its disposal as the UDRP, so the plaintiff can still seek the same

relief that would be afforded by the UDRP while also seeking other

remedies.

Third, unlike the UDRP, the parties can freely engage in discovery.

This allows the plaintiff to access information regarding prior registrations

done by the defendant, if any, and to access other information that could

help establish the bad faith aspects of the plaintiff’s claim. Also, since this is

a federal court action and not an arbitration panel, the parties can attack the

credibility of each other’s testimony. This can not happen in the UDRP

proceedings, which has the potential of becoming a sort of “I said – he said”

situation, with both parties stating their respective submissions are accurate

to the best of their knowledge.

Fourth, under the ACPA, the plaintiff can also seek damages from

the domain name registrar, provided the plaintiff can prove the registrar

acted with bad faith to profit from the registration and maintenance of the

infringing domain name. While the UDRP does not have any liability

provisions for domain name registrars, the ACPA, through its safe harbor

provisions, only waives a registrar’s liability if they act in due diligence and

in good faith. This provision allows a plaintiff a cause of action against

domain name registrars who basically aid in cybersquatting. Combined with

the in rem provisions of the ACPA, the plaintiff can get a cause of action

against the domain name itself and, if applicable, get monetary damages

from the domain name registrar.

Finally, unlike the ICANN arbitration panels, the federal courts are

better suited to handle more complex litigation issues, such as affirmative

defenses of acquiescence and fair use. Also, false advertising and unfair

competition claims are outside the realm of the UDRP arbitrators.

Meanwhile, these issues can be dealt with fairly in the federal courts. As a

result, if a plaintiff would have a more complex domain name dispute issue,

they would probably be better off using the ACPA instead of the UDRP.

G. Disadvantages of the ACPA

While there are benefits in using the ACPA for a domain name

dispute, there are some disadvantages as well. First, federal litigation is not



26

IV. Litigating the Scenarios

This section will look at the potential strategies of the three different

scenarios for both the UDRP and the ACPA provisions. This section will

also look at the probable outcomes of the three different scenarios under

both procedures.

A. Scenario 1: www.tomcruise.com

1. UDRP Proceeding

If this case went before an ICANN arbitration panel, the complainant

would want to accumulate as much information as possible before filing the

suit, such as keeping e-mails and any information from the registrar

regarding when the domain name was registered. The complainant/plaintiff

would also want to get screen shots of the website before suit is filed, since

the issue of the registrant/defendant using the website for his own

commercial gain could possibly swing the case to the complainant’s favor.

Similarly, in UDRP proceedings, the registrant/defendant would want to

keep his e-mails to the complainant, showing that he did not offer to sell the

domain name. The registrant/defendant would also want to attach a screen

shot of a search engine search for “Tom Cruise” showing the various

domain names that use the phrase “Tom Cruise”, including the .net websiteand the various country code websites.

The first thing the complainant will have to do in this case is show

that he has a trademark right in the name Tom Cruise, and that the domain

name is confusingly similar to his trademark rights. Previous WIPO cases

have held that in order for an individual to rely on an unregistered trademark

rights,116

he or she must demonstrate use of the mark in commerce, and that

merely having a famous name will not necessarily be sufficient to

demonstrate unregistered trademark rights.117

A complainant in such asituation must demonstrate their name has been used in commerce and has

acquired a sufficient secondary association in order to establish that a

116 The actor Tom Cruise does not have a registered trademark in the name “Tom Cruise”.Tom Cruise v. Networks Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560 (2006)117 Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563 (2009)



27

common law trademark exists.118

Finally, WIPO panels have stated that a

trademark consisting of a personal name has acquired a secondary

association, or secondary meaning, when “…a substantial segment of the

public understand the designation, when used in connection with services or

business, not as a personal name, but referring to a particular source or

organization.”119

In this case, complainant should succeed in showing a trademark

right in the name “Tom Cruise”. Complainant has starred in major motion

pictures since 1981, and his film “Top Gun” was the highest grossing film

of 1986.120

Complainant has also starred in, or has his name associated with,

about forty major motion pictures since 1981, continuing to the present day,

and also has producer, director and writer credits to his name. 121 An

arbitration panel should find that complainant’s name has acquired a

secondary association with a substantial segment of the public.122 Likewise,

an arbitration panel should find the domain name to be identical or

confusingly similar since the domain name is the complainant’s name.

It is in the second part of the UDRP test, that respondent has no

rights or legitimate interests in respect to the domain name, where the

complainant may lose this particular case. Here, the respondent is using his

own name, which happens to be identical to the complainant’s name, as his

domain name. Even though their two names are identical, the respondent

clearly has an interest in the domain name, since it is his actual name.

However, there is a chance that the respondent is really not using his own

name for his business, and could actually be using another name, such as

“Tom Cruise Designs” or “TC Graphics”, as the name of his freelance

business. Should this be the case, the arbitration panel may find this factor in

favor of the complainant, as the respondent is not using his own name for

118Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (2000)

119Jim Carrey v. BWI Domains, citing Ahmanson Land Company v. Save Open Space and

Electronic Imaging Systems, WIPO Case No. D2000-0858 (2000)120

“Top Gun” has grossed a worldwide box office total of over $350 million.(http://www.boxofficemojo.com/movies/?id=topgun.htm ) (last visited 20.August.2012)121

http://www.imdb.com/name/nm0000129/ (last visited 20.August. 2012)122

In the actual arbitration proceeding involving Tom Cruise, the respondent waived achallenge to Tom Cruise’s rights in a trademark and service mark. The Panel still held thatTom Cruise had a trademark and service mark rights in his name for purposes of that

proceeding. Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No.D2006-0560



28

his business and could have registered the business name as his domain

name instead of registering his own name.

The respondent may attempt to bolster his claim of having a right or

legitimate interest in the domain name by stating that since he has placed a

notice on the home page to his website stating that his site is in no way

related to the complainant, and that he has also placed a link to the

complainant’s agency’s “Tom Cruise” website that there is no confusion

with his use of the domain name. However, WIPO arbitration panels have

held that disclaimers do not cure any initial interest confusion or illegitimate

diversion that could accompany having the disputed domain name.123

Some

WIPO arbitration panels have held the inclusion of a disclaimer is irrelevant

when weighing the identical or confusing similarity factor.124 As a result, the

inclusion of a disclaimer on respondent’s website should not play a role in

respondent’s favor. Should the arbitration panel think the respondent does

not have any rights or legitimate interests in using the domain name, due to

the possibility of the respondent using a different company name, the use of

the disclaimer will not alter the decision towards the respondent’s favor for

having a legitimate interest in using the domain name.

Regardless of whether the second factor is ruled in favor of the

complainant or the respondent, the third factor in the UDRP test, the domain

name has been registered and used in bad faith, should also favor the

respondent. While ICANN arbitration panels do not follow stare decisis, a

previous WIPO arbitration panel decision held against Bruce Springsteen in

his bid to get www.brucespringsteen.com from a fan who registered the

domain name in 1996.125 The arbitration panel’s ruling was based upon their

holding that the complainant failed to show the registrant/respondent’s bad

faith because he never tried to sell the domain name to Mr. Springsteen. The

majority of the panel also held that the complainant’s business was not

interrupted by not having this domain name, nor did the complainant not

having this domain name result in any customer confusion.

123Estée Lauder, Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No.

D2000-0869 (2000), citing Gallo v. Hanna Law Firm, WIPO Case No. D2000-0615, and DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181124

A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPOCase No. D2001-0900 (2001)125 Springsteen v. Burgar, WIPO Case No. D2000-1532 (2000)



29

Here, the respondent with the identical name as the famous

complainant has registered their mutual name as his domain name. The

complainant will also probably not be able to find bad faith under the UDRP

since the respondent never offered to sell the domain name to the

complainant, nor did the respondent register the domain name to hinder the

complainant’s business. Further, the respondent is using the domain name in

relation to himself and his own business, and is, in theory, not benefitting

from the goodwill attached to the complainant. However, it is arguable that

the respondent is actually trying to gain commercially from the use of the

famous domain name, using his famous name to lure web users to his

website. Here, the respondent uses the website containing their mutual

famous name to display his own artwork on the website along with contact

information regarding freelance employment. Also, the respondent could

have used another name, such as a business name that the respondent may

be using, to achieve the same purpose. However, even with this argument,

looking at the factors previously discussed, the complainant will still

probably not be able to show bad faith on the part of the respondent.

As a result, the respondent will probably be able to keep the domain

name in a UDRP proceeding.

2. ACPA Proceeding

In an ACPA proceeding for this scenario, the plaintiff would want to

use discovery to see how much freelance employment the defendant

acquired as a result of the website, as well as how much money the

defendant earned from these assignments. Likewise, the defendant would

want to get information regarding actor Tom Cruise’s agency’s website,

including how many daily “hits” the website receives and if any

merchandise has been sold through that website.

Under the ACPA, the plaintiff will have to show bad faith in order to

win its case, since the defendant is using a domain name that is identical to a

famous mark.126 In this case, the most significant bad faith factors should be

the following: “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

126The level of fame attached to the name “Tom Cruise” has already been discussed in the

UDRP Proceeding section above. See also, notes 120-122, supra.



30

that person”127

; and “the person’s prior use, if any, of the domain name in

connection with a bona fide offering or any goods or services”.128 This is

because the defendant registered his own legal name as a domain name,

which also happens to be identical to the plaintiff’s famous name and

common law trademark. Another potential important bad faith factor in this

case could be the following: “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”.129

Here, the defendant is essentially using the

website for commercial purposes: the defendant has posted samples of his

graphic designs, his professional resume and his contact information on the

website as a way to possibly garner some freelance work as a graphic

designer. As a result, the extent of the commercial nature of the website

should be examined in determining the outcome of this case.

Courts have traditionally held that. “…it was considered one’s

‘sacred right’ to use one’s personal name in connection with his or her

business operating under that same name.”130 While courts in traditional

trademark disputes involving personal names will look at a series of

different factors in balancing out the interests between the parties,131 here

the main concern is whether the registrant/defendant has a good faith

interest in being able to register a domain name that consists of the

registrant’s legal name. An issue may arise if the defendant does not actually

use his legal name in the course of conducting his business, as was

discussed in the UDRP Proceeding section above. If the defendant really

127Lanham Act, at §43(d)(1)(B)(i)(II), 15 USC §1125(d)(1)(B)(i)(II)

128 Id., at §43(d)(1)(B)(i)(III), 15 USC §1125(d)(1)(B)(i)(III)129

Id., at §43(d)(1)(B)(i)(V), 15 USC §1125(d)(1)(B)(i)(V)130

Robin Woods, Inc. v. Woods, 815 F.Supp. 856, 870 (W.D. Penn. 1992), citing Mandell,Personal Name Trademarks – Your Name May Not Be Your Own, 70 TMR 326, 327(1980); Basile, S.P.A. v. Basile, 899 F.2d 35, 38 (D.C. Cir. 1990)131

Robin Woods, Inc. v. Woods, 815 F.Supp. at 870. (“…courts will endeavor toaccommodate and reach a judicial compromise between the competing interests of: (1) the

plaintiff (usually the “senior user”) in protecting the good will in her or his trademark; (2)the public in being free of confusion; and (3) the defendant (usually the “junior user”) in theuse of her or his own family name in connection with a business.”), citing Mandell, 70TMR at 332; Taylor Wine Co. v. Bully Hill Vineyards, 569 F. 2d 731, 733-34 (2d Cir.1978)



31

operates his freelance graphic design business under a name other than his

legal name, this could sway the court into finding this factor towards the

plaintiff, even though both parties have the exact same legal name, because

it could then be argued the defendant registered the domain name as a way

to either confuse the public or to lure users to his website, and the defendant

could have simply registered his business name as his domain name

instead.132

A potential defense that may arise in this case is basically a laches or

an acquiescence defense. The defendant operated his website for five years

without hearing any protest from his famous namesake. However, this

defense will probably not succeed. In Nissan Motor Co., Ltd. v. Nissan

Computer Corp.,133 the court in the Northern District of California held that

even though Nissan Computer had been operating the www.nissan.com

website for five years and that Nissan Motors knew of the defendant’s

website for about four years, that Nissan Motors had acted in a timely

fashion when protesting the existence of advertisements on Nissan

Computer’s website that were designed to maximize consumer confusion.134

Here, there is no evidence that the plaintiff knew of the defendant’s website

during the previous five years after the defendant registered the domain

name. As a result, a court in this case will probably reject a laches or an

acquiescence defense.

Looking at the factors in this case “qualitatively in light of the

circumstances”,135

it seems that the plaintiff will probably lose in a federal

ACPA proceeding as well as in an UDRP arbitration, provided the

defendant can afford to engage in federal litigation. The defendant will

probably win because the defendant has a significant good faith factor

supporting his case; his legal name is identical to the plaintiff’s. Also, the

defendant has not attempted to sell the domain name to the plaintiff and has

taken steps to ensure that a web user will not be confused as to the content

of the defendant’s website once the web user visits the defendant’s website.

132See, Robin Woods, Inc. v. Woods, 815 F. Supp. at 871 (“The law is ‘reluctant’ to

preclude an individual’s business use of her or his own name where no attempt to confusethe public or to arrogate the goodwill of the ‘senior user’ has been made.”), citing Friend v.H.A. Friend and Co., 416 F.2d 526, 531 (9th Cir. 1969)133

89 F. Supp. 2d 1154 (N.D. Cal. 2000)134

Id., at 1164-65135 Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658, at note 102, supra



32

However, this outcome is largely based on whether the defendant uses his

legal name in the course of business or whether the defendant uses a

different name, such as “Tom Cruise Designs” or “TC Graphics”, with a

greater chance a court will side with the plaintiff should the defendant use a

different name for his business, as that would look more towards the

defendant using the goodwill associated with the plaintiff’s name/trademark

for the defendant’s commercial gain.

In reality, it is probably safe to assume that if the plaintiff filed this

case in federal court, the chances are pretty good the defendant would

quickly settle the case and transfer the content of his website to a different

domain name. Federal litigation would be expensive, and there is no

guarantee the defendant would find any pro bono legal assistance, causing a

large expense for the defendant and creating more problems than the case is

worth. Couple the expense factor with the possibility that a court may not

find in the defendant’s favor due to a possibility he may actually use a name

other than his legal name as a business name, a quick settlement seems to be

the most prudent course of action for the defendant in this scenario.

B. Scenario 2: www.nfldraft.com

In this scenario, the plaintiff will probably not get much information

from the defendant before filing this case, since the defendant publicly

stated he did not even read any of the letters sent to him by the plaintiff’s

attorneys.136

From this, it is clear that the defendant has not had any

communication with the plaintiff.

1. UDRP Proceeding

The general lack of communication means that under the UDRP

proceeding, the complainant will only be able to present the infringing

website in their complaint. Based upon the facts, the chances are the

respondent will not even respond to the complainant’s complaint,137 leaving

136See Couch, at note 7, supra

137 In the Sun-Times article, Mr. Schulman stated that the NFL sent him “all this paperwork”, and he has not read any of it. Later in the article, Mr. Schulman stated he alsothrew out a threatening letter from Hershey’s regarding his registration of the domain namewww.hugsandkisses.com. Ibid.



35

who has shown a pattern of cybersquatting and any noncommercial use the

defendant may have made with the website should not be much of a factor

here, especially when looking at a case “qualitatively in light of the

circumstances”.146

Looking at the applicable factors in this case, this seems to be a

fairly open and shut matter. As described above in the UDRP Proceeding

section above, the NFL Draft is a fairly significant event in the NFL that has

been inexistence since 1936 and is broadcast on multiple television

networks in the United States which reaches a global audience. The NFL has

acquired a common law trademark right in the term “NFL Draft”, and the

defendant does not have a trademark right in the term nor does the defendant

have a legitimate interest in using the term. The defendant has done nothing

more with the common law trademark at issue other than register the

allegedly infringing domain name. Courts have held that simply registering

a domain name is not sufficient to establish any trademark or other

intellectual property rights in the domain name.147 Courts have also stated

that a defendant’s use of a disputed domain name can not fall within a safe

harbor provision in the ACPA when the defendant had no reasonable

grounds to believe the defendant’s sue of the domain name was fair or

otherwise lawful.148 Here, the defendant bought a series of domain names

for the primary purpose of selling them to other parties. While the defendant

may argue that he was using the website to promote Yorkshire terriers, it is

not reasonable to assume that a web user is going to expect to find

information about Yorkshire terriers at www.nfldraft.com. As a result, the

court will probably not find the defendant has an intellectual property right

or a legitimate interest in using the disputed domain name.

Further, the defendant has shown a history of registering a “couple

hundred” domain names that are also trademarks of other parties.149

While

the defendant has not explicitly offered to sell the domain name to the

plaintiff,150

the defendant has shown that his intent in registering the domain

name was for the purpose of selling it another party when he stated he

146Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658, at note 102, supra

147 Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp.2d 507, 511 (E.D. Va. 2009)148

Id., at 512149

See Couch, at note 7, supra150 Ibid.



36

assumed “…someone, somewhere would give me something for it.”151

Courts have pointed out that Congress claimed the crucial elements of bad

faith to mean the “intent to trade on the goodwill of another’s mark”. 152

Further, courts have held that “registering a famous trademark as a domain

name and then offering it for sale to the trademark owner is exactly the

wrong Congress intended to remedy when it passed the ACPA.”153

While

the defendant in this case has not offered to sell the domain name to the

plaintiff or to anyone else, it is clear from his statements that his primary, if

not sole, intention when he registered the domain name was to sell it. The

plaintiff, after using a “reverse WhoIs search”154

, will be able to show bad

faith on the defendant’s part by showing all of the “couple hundred” of

domain names the defendant has registered, indicating his desire to sell

these names to others at a later time. This case is basically the garden-

variety cybersquatting case, and it is activity like this that the ACPA was

designed to prevent. As a result, the plaintiff should win in this scenario.

This scenario does pose a more interesting strategic consideration as

opposed to the other two scenarios. While this case seems to be fairly open

and shut, this scenario also deals with a defendant who has shown a pattern

of cybersquatting activities. Because of this, the plaintiff might not even

consider using the UDRP proceedings, and sue the defendant in federal

court instead. Here, the plaintiff might use the discovery process to

supplement or confirm any previous investigation done by the plaintiff using

an online search service to find out what domain names the plaintiff has

registered and how many of them are infringing on others’ trademarks or

service marks. This extra discovery could allow the plaintiff to build a case

against the defendant for the awarding of statutory damages and possibly

attorneys’ fees. However, the plaintiff would need to show the defendant has

repeatedly engaged in a sufficient amount of cybersquatting activities that

would rise to the level of “malicious, fraudulent, willful or deliberate in

151 Ibid.152

Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004),citing S.Rep. No. 106-140, at 9.153

Id., at 810, quoting Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003)154

Various websites, such as www.domaintools.com, offer an online search where, for asmall fee, customers are able to perform a search to discover the owner of a domain name.While the author is not sure if such a search is reliable enough to be admitted as evidence infederal litigation, these searches should be good enough for a plaintiff to look beforehand tosee if a cybersquatter has had a pattern of registering trademarks as domain names.



38

identical or confusingly similar”, and that including a derogatory term such

as “sucks” does not dispel such confusing similarity.157 Also, other UDRP

arbitration panels have held that an added derogatory word to a trademark

can be considered confusingly similar because the added word is not the

most prominent or obvious feature of the name.158

Other UDRP arbitration

panels have held a “sucks” domain name to be confusingly similar because

the “sucks” website will appear in a search engine result list, thereby

confusing internet search engines.159 Finally, UDRP arbitration panels have

held that a domain name consisting of a trademark and a negative term are

confusingly similar to the trademark because non-native English speakers

“…may not recognize the negative connotations of a pejorative slang term

included in a domain name.”160

On the other side of the decisions, various UDRP arbitration panels

have held that those current web users who do not know the negative

meaning of the word “sucks” is too small number to be anything more than

de minimis and should not be factored in assessing any potential confusing

similarity between the trademark and the domain name. 161 Other UDRP

panels have held that no reasonable internet user would believe that a

“sucks” domain name is affiliated with or sponsored by the trademark

owner, and the domain name could not be considered confusingly similar,162

and that no speaker of modern English would find it likely that a trademark

owner would identify itself with a “sucks” domain name.163

As a result, the complainant will probably want to stress that it is a

multinational corporation with many consumers who are not native English

speakers. These consumers/web users may not understand the negative

157Vanguard Trademark Holdings USA, LLC v. European Travel Network, WIPO Case

No. D2008-1325 (2008), citing Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. See also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.

D2000-0662 (2000)158

Société Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327 (2009). See also,Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (2006)159 Société Air France v. MSA, Inc., WIPO Case No. D2007-0143 (2007)160

Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D2008-0430 (2008), citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

paragraph 1.3. See also, Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No.D2009-0020 (2009)161 Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253 (2008). See also, AsdaGroup Limited v. Mr. Paul Kilgour, WIPO Case No. D2002-0857 (2002).162

Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (2001)163 Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662



39

connotation attached to the word “sucks” which may lead these web users to

think the respondent’s website is actually affiliated with the complainant.

The complainant will also want to argue that an internet search engine will

only take notice of the trademark part of the domain name and include the

respondent’s website in a search of the complainant’s trademark. On the

other side, the respondents will probably argue that no one could reasonably

believe that a web user would think the respondent’s website is associated or

affiliated with the complainant.

The outcome of this issue seems to be a toss-up. Many panels have

gone in both directions on this issue, which has left this issue to be one of

the less clear issues in this scenario. As a result, the complainant may wish

to choose a foreign arbitrator, as a foreign arbitrator could possibly be more

sensitive to an issue that a non-native English could face when looking at

domain names. If the arbitrators on the panel are American, they may be

more apt to side with the respondent on this issue.

It is in the second factor of the UDRP test, right or legitimate interest

of the respondent in the domain name, where it is clearer. UDRP panels

have consistently stated that individuals have a legitimate interest in

operating and maintaining a domain name used for a criticism website.164

However, these panels have also stated the website must be a genuine

criticism website and not a website that is really being used as a sham to sell

the domain name, to settle another dispute between the parties, to advertise

the goods or services of a competitor, or to provide links to a competitor’s

website.165

Simply put, a showing of the respondent’s intent for commercial

gain to misleadingly divert consumers or intent for commercial gain in

tarnishing the complainant’s trademark or service mark will defeat any

proposed legitimate interest in a criticism website.166

164Bakers Delight Holdings Ltd. V. Andrew Austin, WIPO Case No. D2008-0006 (2008).

See also, Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (2000), TMPWorldwide Inc. V. Jennifer L. Potter, WIPO Case No. D2000-0536 (2000), Howard JarvisTaxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (2004), DelloRusso v. Guillaumin, WIPO Case No. D2006-1627 (2006), Société Air France v. MSA,Inc., WIPO Case No. D2007-0143, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No.D2008-0647 (2008), Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693 (2009).165

Bakers Delight Holdings Ltd. V. Andrew Austin, WIPO Case No. D2008-0006166 Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014



40

Under this part of the test, chances are the respondents will prevail

and eventually keep their domain names. The respondents are using the

website for free speech criticism purposes. There has been no indication the

respondents have offered to sell the domain names to the complainant or to

anyone else. The respondents are not advertising the goods of a competitor

of the complainant, nor are there any links to any competitors’ websites.

Further, there is no indication of any previous dispute between the parties,

so it would seem the respondents are not using their website to pressure the

complainant into settling any other dispute. Finally, there is no indication

the respondents are making any profit off of the use of the website. The

respondents are using their website in a way that gives them a legitimate

interest in the website, and as a result, the complainant will probably lose in

an UDRP proceeding.

2. ACPA Proceeding

In an ACPA proceeding for this scenario, the most important bad

faith factor should probably be the following: “the person’s bona fide

noncommercial or fair use of the mark in a site accessible under the domain

name”.167 There are other factors which would probably be significant in

this case too, such as “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”168

, along with “the person’s intent to

divert consumers for 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”.169 However, the biggest issue in this

scenario should be whether the defendants have a fair use in using the

plaintiff’s trademark as a domain name and the website as a means to

criticize the practices allegedly done by the plaintiff.

167Lanham Act, at §43(d)(1)(B)(i)(IV), 15 USC §1125(d)(1)(B)(i)(IV)

168Id., at §43(d)(1)(B)(i)(VI), 15 USC §1125(d)(1)(B)(i)(VI)

169 Id., at §43(d)(1)(B)(i)(V), 15 USC §1125(d)(1)(B)(i)(V)



41

Before even getting to the issue of whether the defendants’ actions in

this scenario qualify as a permitted fair use of the plaintiff’s trademark, the

defendants may argue their actions are not of a commercial nature and as a

result, are not subject to the ACPA. The courts have been split over this

issue. For example, the Fifth Circuit Court of Appeals, in TMI, Inc. v.

Maxwell,170

held the defendant’s actions in maintaining a “gripe website”

criticizing the plaintiff was not considered as “use in commerce”, and that

use in commerce is required by the Lanham Act.171 However, the Ninth

Circuit Court of Appeals, in Bosley Medical Institute, Inc. v. Kremer,172

held a year later that the ACPA does not contain a commercial use

requirement, using the bad faith requirement instead.173

In particular, the

court stated the bad faith factor of bona fide noncommercial or fair use of

the mark in a site accessible under the domain name “…would be

meaningless is the statute exempted all noncommercial uses of a trademark

within a domain name.”174

The Sixth Circuit Court of Appeals, in

DaimlerChrysler v. The Net, Inc,175 has also held the ACPA does not require

commercial use. 176 The decisions claiming that commercial use is not

required under the ACPA seem more reasonable, especially since, as the

Ninth Circuit Court of Appeals pointed out, there is a noncommercial use in

the bad faith factors.

Another issue that could be addressed before looking at the

defendants’ actions as a permissible fair use is the issue of whether the use

of the domain name www.proctorandgamblesucks.com creates a likelihood

of confusion as to the source, sponsorship, affiliation or endorsement of the

website as found in the bad faith factors of the ACPA.177 While there have

been split UDRP arbitration panel decisions on this issue, 178 there has

170368 F.3d 433 (5th Cir. 2004)

171See generally, TMI, Inc. v, Maxwell, 368 F.3d 433 (5th Cir. 2004)

172 403 F.3d 672 (9th Cir. 2005)173

Id., at 680174

Id., at 681175 388 F.3d 201 (6th Cir. 2004)176

In particular, the Sixth Circuit held a “…trademark owner asserting a claim under theACPA action must establish the following: (1) it has a valid trademark entitled to

protection; (2) its mark is distinctive or famous; (3) the defendant’s domain name isidentical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’smark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a

bad faith intent to profit.” Id., at 204177

Lanham Act, at §43(d)(1)(B)(i)(V), 15 USC §1125(d)(1)(B)(i)(V)178 See UDRP Proceeding section for this scenario above.



42

generally not been such a divide in U.S. federal courts over this issue.

Courts have generally held that a web user is not likely to think a domain

name featuring a trademark with the word “sucks” afterwards is associated

or sponsored by the trademark holder.179 Here, the defendants have created a

domain name by taking the plaintiff’s trademark and adding the word

“sucks” after it in connection with a website criticizing various

environmental and animal testing practices by the plaintiff. Following the

decisions from previous cases regarding similar situations, it seems

reasonable to think that a court in this scenario would also find that no

reasonable web user would think the defendants’ website is connected in

any way with the plaintiff.

The most significant of the ACPA’s bad faith factors in this case

would probably be whether the defendants have a bona fide noncommercial

or fair use of the plaintiff’s trademark in a website accessible under the

disputed domain name.180

In this scenario, this factor brings with it two

separate issues. First, there is a First Amendment issue in operating and

maintaining a “gripe site”. Courts have held the First Amendment protects

the rights of those who speak on the internet, including those who speak

anonymously.181 Also, courts have consistently held that trademark rights

may be limited by First Amendment concerns.182 Here, the defendants are

exercising their First Amendment rights in maintaining a web site that

criticizes the plaintiff’s policies towards animal testing and the environment.

As the defendants’ criticisms of the plaintiff are generally regarded as

protected free speech, it seems unlikely that a court will find in favor of the

plaintiff exercising its trademark rights over the defendants’ First

Amendment rights.183

179Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp.2d 1161, 1164, 1165 n.2

(C.D. Cal. 1998); Salehoo Group Ltd. v. ABC Company, 722 F.Supp.2d 1210, 1217 (W.D.Wash. 2010)180

Lanham Act, at §43(d)(1)(B)(i)(IV), 15 USC §1125(d)(1)(B)(i)(IV)181 Salehoo Group, Ltd. v. ABC Company, 722 F.Supp.2d at 1213, citing Doe v.2TheMart.com Inc., 140 F. Supp.2d 1088, 1092 (W.D. Wash. 2001), Reno v. Am. CivilLiberties Union, 521 U.S. 844, 853 (1997)182

Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp.2d at 1166, citing L.L.Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.), cert denied, 483 U.S. 1013(1987)183

“The Constitution does not… permit the range of the anti-dilution statute to encompassthe unauthorized use of a trademark in a noncommercial setting such as an editorial or artistic context.” Bally Total Fitness Holding Corporation v. Faber, 29 F. Supp.2d at 1167



43

The second issue this factor brings is in the defendants’ actual use of

the website. Courts have consistently held that comment and criticism

constitute a bona fide noncommercial or fair use within the ACPA’s bad

faith factors.184 Here, the defendants’ website contains critical commentary

on the plaintiff’s practices regarding animal testing and the environment.

Because of the critical commentary on the defendants’ website, the court in

this scenario will probably hold this constitutes a fair use of the trademark

provided by §43(d)(1)(B)(iv) of the Lanham Act.

Finally, another bad faith factor that could be addressed in this

scenario comes from the fact the defendants have not made any attempt to

sell the domain names at issue. In Lamparello v. Falwell, the Fourth Circuit

Court of Appeals held that since Lamparello only registered the domain

name www.fallwell.com and made no attempt to sell the domain name,

there was no evidence of any bad faith intent to profit under the ACPA.185

While it is possible that an argument showing the defendants’ bad faith

could be made by the fact the defendants have registered four domain names

in this scenario, a court looking at the ACPA factors in this case

“qualitatively in light of the circumstances”186 will probably rule in favor of

the defendants. The defendants use the domain names and the website for

free speech purposes of criticism, no effort has been made to sell or transfer

the domain names and there is no evidence of the defendants making any

profit from the operation and maintenance of the website. Following the

applicable case law relevant to this scenario, an ACPA proceeding here

should probably favor the defendants.

At first glance, despite the probability of the court probably ruling in

favor of the defendants in this case, the plaintiff might still want to file an

ACPA action, because of a possibility of the defendants defaulting rather

than trying to engage in any expensive federal litigation. Since the

defendants are a small group of activists, there is a chance the defendants

would not able to afford the costs of federal litigation, which would leave

them defaulting on this case and causing the domain names to be turned

184 Lamparello v. Falwell, 420 F.3d at 320, citing H.R. Rep. No 106-412, 1999 WL 970519at *11185

Id., at 321-22, citing S. Rep. No. 106-140, 1999 WL 594571, at *14186 Carnivale v. Staub Design LLC, 754 F. Supp.2d at 658, at note 102, supra



44

over to the plaintiff. However, there is also a distinct possibility of the

defendants either defending the case pro se, or seeking pro bono assistance,

as this is a matter where the defendant activist group would want to get their

message heard. Also, with the possibility of a more favorable decision for

the plaintiff in an UDRP Proceedings, especially if the plaintiff selects a

foreign arbitrator, a proceeding under the UDRP might actually end up

being a better option for the plaintiff in this scenario. As a result, this is a

matter that should be considered carefully before advising a client about a

cause of action in this scenario.

V. Conclusion

The UDRP is a quick and inexpensive way to resolve domain name

disputes. A matter can be resolved within forty days, and it is less taxing on

the client’s time after filing the complaint. The UDRP does have a few

shortcomings though, such as the lack of alternative remedies and no

discovery provisions. However, it should be pointed out that the UDRP

process is an alternative to litigation, and should not be seen as a substitute

for domain name dispute litigation.

The ACPA, on the other hand, since it is a litigation process, has a

wider range of remedies, including injunctive relief, statutory damages and

in rare cases, the awarding of attorney’s fees and costs. Domain name

registrars acting in bad faith can also be held accountable under the ACPA.

However, the ACPA is a slower and far more expensive process than the

UDRP arbitration proceedings. Also, the most typical remedy a plaintiff can

get under the ACPA can also be achieved with an arbitration proceeding

under the UDRP.

Each of these policies has benefits and drawbacks that must be

considered when entering into a domain name dispute. These differencesallow a plaintiff different ways in which to pursue a resolution in a domain

name dispute, depending upon the complexity of the case at hand as well as

the remedy sought by the plaintiff.

For most domain name dispute matters, the UDRP is usually the

better process to use. The UDRP arbitration proceeding is very fast,

relatively inexpensive, will avoid various jurisdictional issues and will use



45

arbitration panels consisting of experts in the field of trademark law. The

ACPA will give a client more options in terms of relief, and will be a better

option for certain cases, such as when a client wishes to pursue a cause of

action against a domain name registrar, or when a client is seeking monetary

relief. Naturally, what the client wants to achieve through a domain name

dispute will determine the method used. But if all a client wants is to secure

the infringing domain name from a cybersquatter and to get that domain

name as quickly as possible, then the UDRP process will probably be the

method used in such a matter.



46

List of Works Cited

Law Review Journal Articles

Delaney, John F. and Ford, M. Lorrane, The Law of the Internet: A Summary of U.S.

Internet Caselaw and Legal Developments, 631 PLI/PAT 31 (2001)

Efroni, Zohar, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum

Shopping?, 26 COLUM. J.L. & ART S 335 (2003)

Froomkin, A. Michael, Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 DUKE LAW JOURNAL 17 (2000)

Greene, Philip J., Questioning Faith – An Examination of the fair Use Defense within

Internet Domain name Disputes, and the Role of Good or Bad Faith, 4 LOY. U. NEW ORLEANS SCH. L. – L. & TECH. A NN. 45 (2004)

Hwang, Jinku, Is the ACPA a Safe Haven for Trademark Infringers?—Rethinking the

Unilateral Application of the Lanham Act , 22 J. MARSHALL J. COMPUTER & I NFO.L. 655 (2004)

Martin, Elizabeth Robison, “Too Famous to Live Long!”: The Anticybersquatting

Consumer Protection Act Sets its Sights to Eliminate Cybersquatter Opportunistic

Claims on Domain Names, 31 ST. MARY’S L.J. 797 (2000)

Matorin, Mitchell J., and Boudett, Michael, Domain Name Disputes: Cases Illustrate

Limitations of ICANN Policy, 45-APR B. B.J. 4 (2001)

Nguyen, Xuan-Thao N., Blame it on the Cybersquatters: How Congress partially Endsthe Circus among the Circuits with the Anticybersquatting Consumer Protection

Act , 32 LOY. U. CHI. L.J. 777 (2001)

Scaturro, Tanesa S., The Anticybersquatting Consumer Protection Act and the Uniform

Domain Name Dispute Resolution Policy the First Decade: Looking back and

Adapting Forward , 11 NEV. L.J. 877 (2011)

Sharrock, Lisa M., The Future of Domain Name Dispute Resolution: Crafting Practical

International Legal Solutions from within the UDRP Framework , 51 DUKE LAW

JOURNAL 817 (2001)

Statute

15 USC §1125 (2006)



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Administrative Rules

Asian Domain Name Dispute Resolution Centre’s Supplemental Rules to ICANN’sUniform Domain Name Dispute Resolution Policy

Czech Arbitration Court’s Supplemental Rules to ICANN’s Uniform Domain Name

Dispute Resolution Policy

ICANN Registrar Accreditation Agreement

ICANN Rules for Uniform Domain Name Dispute Resolution Policy

ICANN Uniform Domain Name Dispute Resolution Policy

National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain NameDispute Resolution Policy

World Intellectual Property Organization Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy

Treatises

Ballon, Ian C., E-Commerce and Internet Law (2d ed. 2011)

Mohr, Stephen F., The New Federal Trademark Dilution Act: Expanding the Rights of

Trademark Owners, in Annual Advanced Seminar on Trademark Law 1997 (PLIPatents, Copyrights, Trademarks & Literary Prop. Course, Handbook Series No.G-476, 1997)

Cases

United States Appellate Cases

Taylor Wine Co. v. Bully Hill Vineyards, 569 F. 2d 731 (2d Cir. 1978)

Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)

Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999)

Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000)

People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)

Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214(4th Cir. 2002)

Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002)

Interactive Prods. Corp. v. A2Z Mobile Office Solutions, Inc., 326 F.3d 687 (6th Cir.2003)



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Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004)

TMI, Inc. v, Maxwell, 368 F.3d 433 (5th Cir. 2004)

DaimlerChrysler v. The Net, Inc., 388 F.3d 201 (6th Cir. 2004)

Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005)

Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)

Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009)

Carnivale v. Staub Design LLC, 456 Fed.Appx. 104 (3rd Cir. 2012)

United States Federal District Cases

Basile, S.P.A. v. Basile, 899 F.2d 35 (D.C. Cir. 1990)

Robin Woods, Inc. v. Woods, 815 F.Supp. 856 (W.D. Penn. 1992)

Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996)

Acad. of Motion Picture Arts & Scis. v. Network Solutions, Inc., 989 F. Supp. 1276(C.D. Cal. 1997)

Bally Total Fitness Holding Corporation v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998)

HQM, Ltd. V. Hatfield, 71 F. Supp.2d 500 (D. Md. 1999)

Nissan Motor Co., Ltd. v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (N.D. Cal.2000)

Weber-Stephen Products v. Armitage Hardware, 54 U.S.P.Q. 2d 1766 (N.D. Ill. 2000)

Hartog & Co. AS v. Swix.com, 136 F.Supp.2d 531 (E.D. Va. 2001)

Parisi v. Netlearning, Inc., 139 F. Supp.2d 745 (E.D. Va. 2001)

Pinehurst, Inc. v. Wick, 256 F. Supp.2d 424 (M.D.N.C. 2003)

Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp.2d 507 (E.D. Va. 2009)

Volvo Trademark Holding AB, v. Volvospares.com, 703 F.Supp.2d 563 (E.D. Va.2010)

Salehoo Group Ltd. v. ABC Company, 722 F.Supp.2d 1210 (W.D. Wash. 2010)

Carnivale v. Staub Design LLC, 754 F.Supp.2d 652 (D.Del. 2010)



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WIPO Administrative Panel Decisions

Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and BridgestoneCorporation v. Jack Myers, WIPO Case No. D2000-0190 (2000)

Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (2000)

Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (2000)

TMP Worldwide Inc. V. Jennifer L. Potter, WIPO Case No. D2000-0536 (2000)

Do the Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 (2000)

Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (2000)

Estée Lauder, Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No.D2000-0869 (2000)

Springsteen v. Burgar, WIPO Case No. D2000-1532 (2000)

A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPOCase No. D2001-0900 (2001)

Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (2001)

Asda Group Limited v. Mr. Paul Kilgour, WIPO Case No. D2002-0857 (2002)

Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014(2004)

Tom Cruise v. Networks Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560 (2006)

Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (2006)

Société Air France v. MSA, Inc., WIPO Case No. D2007-0143 (2007)

Bakers Delight Holdings Ltd. V. Andrew Austin, WIPO Case No. D2008-0006 (2008)

Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253 (2008)

Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D2008-0430 (2008)

Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (2008)

Vanguard Trademark Holdings USA, LLC v. European Travel Network, WIPO Case No. D2008-1325 (2008)

Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020 (2009)



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Société Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327 (2009)

Jim Carrey v. BWI Domains, WIPO Case No. D2009-0563 (2009)

Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693 (2009)

Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920 (2010)

News Articles/ Journal Articles

Couch, Greg, Draft Day is Going to the Cyberdogs, Chicago Sun-Times, Vol. 54, No.56, (11.April.2001), p. 148

Estavillo, Maricel, Cybersquatting Cases Reached New Record in 2011, WIPO Reports,Intellectual Property Watch (3.April.2012)

New, William, WIPO says Cybersquatting Filings Sharply Up, Watches ICANN’s Domain Name Expansion, Intellectual Property Watch (31.March.2011).

Squyres, Mary, Enforcement of Domain Name Rights through ICANN , The JohnMarshall Law School Center for Intellectual Property Law 45 th AnnualConference on Developments on Intellectual Property Law, 23.Feb.2001

Thompson, Nicholas, Masters of the Domain, Foreign Policy, No. 142 (May – Jun.,2004)

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