What’s in a name? When it ends in “.com”, potentially hundreds of thousands of dollars.
By Adi Efrat
Reviewed by Anthony Arther, Esq.
Domain names are the internet addresses you type in to your web browser in order to direct it to a website. Internet domain names have been prime real estate for the past two decades. Why are domain names such prime real estate? Mainly because having your corporate trademark as a registered domain name is the best way to ensure customers will be able to easily locate your website, and utilize your services.
Type in Walmart.com into your web browser for instance. You will be directed to Walmart’s official website, where you can locate your nearest Walmart store, purchase items online, or apply for a job. But what if instead of being directed to Walmart’s website, the Walmart.com address directed you to a competitor’s site? What if it directed you to Target’s website, or K-Mart’s? Would you take the time to locate Walmart’s actual internet address, or would you do your shopping elsewhere? If your answer is the latter, Walmart just lost your business because they did not have their company name as a registered domain.
These days, every major corporation has their company name as a registered domain. But in the early and mid 1990’s, this was not the case. Corporations were slow to recognize the importance of the internet as a trade and communications channel. And a first come first serve policy in domain name registration meant that any individual, even one with no legitimate business interest in a name, was nonetheless able to register it as a domain.
When corporations finally did awake to the importance of the internet, the existing legal remedies for obtaining control over infringing domain names were cumbersome and inadequate. This left many companies with only one solution – purchase the domain from its existing (and infringing) owner. MTV for instance, reportedly paid $100,000 to obtain control over MTV.com in the 1990’s.
Eventually, a growing number of trademark infringement lawsuits concerning domain names led the US Government to set up ICANN. ICANN (which stands for the Internet Corporation for Assigned Names and Numbers) is a non for profit organization which is the main authority over the domain name system. ICANN in turn set up the UDRP (the Uniform Domain Name Dispute Resolution Policy), which provides a contractual remedy for domain name trademark infringement. Almost every domain name registration agreementincludes a clause subjecting the registrant to UDRP policies and proceedings.
Any company or personwhose name has been registered as a domain by another party, can file a complaint with the UDRP. While UDRP proceedings are not binding in a court of law, the UDRP does have the authority to order a domain name transfer or cancellation.
If the registrant of the domain name is found to have registered for a name in which they have no legitimate business interest, the registered name is identical or confusingly similar to a trademarked name, and the registration was done in bad faith, then the UDRP will order the name to be transferred to the company or person who filed for the proceeding, or to be cancelled. However, the registrant of the domain name can combat the UDRP complaint filed against him by showing that he has a legitimate business interest in that name, and that he did not register the name in bad faith.
UDRP proceedings are relatively quick and simple, and generally end in a fair result. When Dan Parisi registered the domain Madonna.com and ran it as a pornographic website, Madonna (the pop star) successfully took control over the domain with the help of the UDRP. Despite Parisi’s disclaimer on the website that it was not affiliated with Madonna in any way, the UDRP found his registration to be in bad faith. The UDRP panel concluded that Parisi’s intentions were to confuse people looking for Madonna’s official website, and to generate traffic to his website by utilizing the pop star’s popularity.
However, the UDRP doesn’t always get it right. When Brucespringsteen.com was registered by Springsteen’s fan club, the UDRP did not order a domain transfer. The panel concluded that the registration was not done in bad faith, since the fan club was not trying to profit off of the name, and they had a legitimate interest in it. In addition, the fact that Bruce Springsteen’s name was not a registered trademark worked against him. Bruce Springsteen’s official website was therefore registered, and can still be found, at brucespringsteen.net.
As we enter the second decade of the new millennia, trademark infringement has found a new platform – social networking. Facebook and twitter have become two of the most relevant ways to communicate with the public, and registering for twitter and facebook accounts with infringing names will be a growing issue. Just this past year, the state of Israel had to pay $3,000 for the rights to the twitter account @Israel, because a pornographic website owner had beat them to it. ICANN and the UDRP do not have authority over facebook and twitter accounts, so it will be interesting to see how the US government deals with this new form of trademark infringement.