Hi! Thanks for the question.
I will try to lump your questions in this manner, the first paragraph
as basics of domain name disputes while the second paragraph analysis
of disputes and different interpretations while the third one will be
a list of lawyers involved in high-profile cases.
A. DOMAIN NAME DISPUTES: BASICS
1. History of Domain Name Disputes
“In 1996, NSI first adopted its Domain Name Dispute Resolution Policy.
Under this policy, if a domain name was identical to a federally
registered trademark, then the complainant (trademark owner) could
prove written notice of the conflict to the domain name holder,
provide satisfactory evidence of trademark ownership to NSI and thus
effect a domain name change transfer.”
“From a trademark owner's perspective, this dispute resolution policy
was quite limited. If the disputed domain name was not identical to
the registered mark, the trademark owner would have no recourse
through NSI and would have to resort to court action.”
“The ‘first-come, first-served’ system of registration of domain names
has spawned a host of disputes, ranging from traditional trademark
infringement and dilution disputes to battles with a new breed of
infringer -- the ‘cybersquatter.’”
“On October 24, 1999, ICANN approved its Uniform Domain Name Dispute
Resolution Policy ("UDRP") and accompanying Rules of Procedure.”
“Under the UDRP, when a complaint is filed, the domain name holder is
required to submit to a mandatory administrative proceeding, conducted
before one of the administrative dispute resolution service providers
approved by ICANN. Currently, there are three such providers, the
World Intellectual Property Organization ("WIPO"), Disputes.org, and
The National Arbitration Forum.”
“In the first proceeding under the UDRP, filed on December 9, 1999,
the World Wrestling Federation successfully effected the transfer of
the domain name "worldwrestlingfederation.org." Since that time, more
than 40 domain names have been challenged under the UDRP.”
“Battling Cybersquatters: New Tools for Trademark Holders”
http://www.gigalaw.com/articles/2000-all/kubiszyn-2000-02-all.html
2. Process
“On the battlefield between trademark owners and alleged
cybersquatters, one of the accepted rules of engagement in recent
years has been that most domain name disputes would be resolved
according to the Uniform Domain Name Dispute Resolution Policy (UDRP),
an administrative policy created by the Internet Corporation for
Assigned Names and Numbers (ICANN).”
“…if unsuccessful trademark owners wanted to go further and start a
court case, either in conjunction with or after, a UDRP proceeding,
they could, either under the Anticybersquatting Consumer Protection
Act (ACPA) or under other trademark or unfair competition statutes and
court precedents. Some have chosen this dual-track course, but most
haven't.”
“The Relationship Between the Domain Dispute Policy and the
Anticybersquatting Act”
http://www.gigalaw.com/articles/2002-all/hollander-2002-05-all.html
“Companies that do bring a court action must present legal arguments
on why a domain name registered to someone else should be cancelled or
transferred to an organization who wasn't fast enough to register the
name first. Historically, these arguments were based on trademark law
or dilution law (which are discussed in more detail on the BitLaw
section on trademarks on the Internet). It was sometimes difficult to
present a strong case under the traditional principals of trademark
law, especially when the party seeking to obtain a domain name either
could not prove a likelihood of confusion (which is required under
trademark law) or was a famous individual who never technically
established trademark rights in their name.”
“In response to intense lobbying from trademark owners and famous
individuals, Congress passed the Anticybersquatting Consumer
Protection Act in November of 1999. This act made it easier for
individuals and companies to take over domain names that are
confusingly similar to their names or valid trademarks. To do so,
however, they must establish that the domain name holder acted in bad
faith.”
“The best alternative to pursuing a domain name dispute through the
courts is to take advantage of the domain name dispute policies that
have been developed by the organizations that assign domain names.
Disputes prior to December of 1999 were handled under the domain name
dispute policy created by NSI.
Under this much maligned policy, NSI created a procedure under which a
third-party can challenge the right of a domain name owner to use a
particular domain name. If the challenge were successful, the domain
name would be suspended. This policy only protected parties that had a
nationally registered trademark identical to another party's second
level domain name (i.e., Microsoft in "www.microsoft.com").”
“Domain Name Disputes”
http://www.bitlaw.com/internet/domain.html#disputes
3. Applicable Laws & Regulations:
Uniform Domain-Name Dispute-Resolution Policy Rules of Engagement
http://www.icann.org/udrp/
Anticybersquatting Consumer Protection Act
http://www.gigalaw.com/library/anticybersquattingact-1999-11-29-p1.html
Other federal laws, statutes and court precedents that maybe cited
http://www.kentlaw.edu/classes/gdinwood/trademark_fall2003/sup_mat/index.html?/classes/gdinwood/trademark_fall2003/sup_mat/main.html
---------------------------------------------
B. Analysis of Disputes and Legal Interpretations
1. Discussions / Comments
“Is the Domain Name Used as a Trademark?
“The first and most important inquiry is whether the domain name is
actually used as a trademark. That is, does the domain name function
as a source identifier?”
“A domain name that simply serves to identify the user's location on
the Internet does not function as a source identifier, only as an
address. For instance AMAZON.COM serves as a source identifier, and
not merely an address, as the name of the company and the name on the
web site is AMAZON.COM.”
“Conversely, my law firm's web site is accessible by the domain name
"www.barw.com". If you go to that address, you will see the home page
for Bradley Arant Rose & White LLP. The domain name only serves as an
address where you can find my law firm on the web, and therefore it
does not serve as a source identifier.”
“When is a Domain Name Considered a Trademark?”
http://www.gigalaw.com/articles/2001-all/kubiszyn-2001-01-all.html
“The new domain name dispute policy generally has been working well
and has been applauded as a useful and long-needed weapon against
cyberspace pirates intent on holding someone else's intellectual
property hostage. The UDRP has resulted in opinions favoring trademark
owners over domain name owners at a pace of more than 3-to-1,
including easy decisions involving adobeacrobat.com,
hewlettpackard.com and microsoft.org”
“Unfortunately, however, what the UDRP offers in convenience it lacks
in authority. Not only have the arbitration panels' decisions been
inconsistent, but at least one U.S. federal court already has
undermined the power of the policy by clearly stating that it ‘is not
bound by the outcome of the ICANN administrative proceedings.’"
“Domain Name Disputes Offer Confusing Legal Lessons”
http://www.gigalaw.com/articles/2000-all/isenberg-2000-07-all.html
2. Penalty:
“The penalty for choosing a problematic domain name is that you may
find yourself accused of being a ‘cybersquatter.’"
“The ACPA takes a stab at these terms by saying that several things
are improper. For example, it's improper for you to use another's
trademark or personal name with a "bad faith intent" to make a profit.
It's also improper for you to register, traffic or use a domain name
that's the same or confusingly similar to a mark that was distinctive
or famous at the time you registered the name.”
“A court will use many factors to determine your "bad faith intent."
One part of the analysis is for the court to see if you have any
trademark or other intellectual property rights in the domain name.
Other factors include the extent to which your legal name is
represented by the domain name, your previous use of the domain name
in "bona fide" commerce, your "bona fide noncommercial use or fair
use" of the mark, your intent to divert consumers from the proper
online site and using false or misleading information when registering
or holding the mark.”
“A Legal Primer on Domain Names and Trademarks”
http://www.gigalaw.com/articles/2001-all/grossman-2001-01-all.html
3. International Disputes:
In this area we can see that legal analysts are still at odds on how
to go about settling disputes of international conflict of domain name
cases. The next articles provide examples of the complications of
domain name trademark legalities. I will cite here the interpretations
of the author but I highly recommend reading the example they are
educational and presents themselves to further discussions.
” Notwithstanding the bad-faith problems possible given the current
registration process, there is no clear solution to even good-faith
disputes over country-code top-level domains.”
“The dispute resolution policy of the Internet Corporation for
Assigned Names and Numbers (ICANN) applies only to generic top-level
domains, and would not apply to acme.ca or any domain name
incorporating a country-code top-level domain. Furthermore, even if
ICANN amended its policy to apply to a dispute involving a country
code, ICANN requires the aggrieved party to allege that the present
domain name holder has no rights to or legitimate interest in the
domain name at issue. A foreign trademark owner would arguably always
have an interest in a domain name formed by combining such trademark,
used as a second-level domain, with the given trademark owner's
country code. Thus, the issue remains unresolved.”
“Country-Specific Domain Names Raise Difficult Trademark Issues”
http://www.gigalaw.com/articles/2000-all/daggett-2000-06-all.html
“There are two problems with the ACPA. Luckily, the courts have
correctly resolved the first ambiguity by holding that an "in rem"
action (that is, suing the domain name itself) requires that the
plaintiff show bad faith by the defendant. The federal courts are
currently struggling with the second ambiguity by trying to decide who
has rights to a domain name in the situation where one company has a
U.S. trademark and the other company has an identical trademark in a
different part of the world.”
“…trademarks are geographical, but domain names are global. Only one
person can have the domain name while many may possess the same
trademark in different parts of the world.”
“If the U.S. courts hold that U.S. trademarks have superior rights to
foreign trademarks, then it will be irrelevant if a foreign trademark
holder registers the domain name first at a U.S. registry. The only
circumstance that will matter is if the owner has a U.S. trademark.
Such a result would force all foreign trademark owners to register
their domain names anywhere but the United States. As a result, U.S.
domain registries would lose a significant amount of business since
companies tend to register their trademark including multiple
deviations (such as, Harods.com (with one "r") or Harrodssucks.com).
It might also force all countries to have their own domain registries
as a means of protecting their own trademark holders.”
“How the U.S. Anticybersquatting Act May Adversely Affect Foreign
Trademark Owners”
http://www.gigalaw.com/articles/2000-all/mcginley-2000-11-all.html
4 Case Studies: These cases will provide additional information for
your research.
http://cyber.law.harvard.edu/property/domain/main.html
---------------------------------------
C. LAWYERS INVOLVED IN HIGH-PROFILE DOMAIN NAME CASES: LINKS REPRESENT
ACTUAL LEGAL DECISIONS.
Julia Fiona Roberts (AKA: Julia Roberts)
Lawyer for Julia Roberts: Armstrong Hirsch Jackoway Tyerman &
Wertheimer, 1888 Century Park East 18th Floor, Los Angeles, California
90067 USA
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0210.html
Microsoft Corporation
Lawyers: Suzanne V. Wilson, Esq. and James S. Blackburn, Esq. of Blanc
Williams Johnson & Kronstadt, LLP located at 1900 Avenue of the Stars,
17th Floor, Los Angeles, CA 90067-4403
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0053.html
Nokia Corporation
Lawyers: John P. Reiner, Esq. and Shannon M. Hudnall, Esq., White &
Case LLP, 1155 Avenue of the Americas, New York, NY 10036, United
States of America
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0102.html
Qwest Communications International, Inc.
Lawyers: Townsend and Townsend and Crew, LLP
http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0002.html
Philip Morris Incorporated
Lawyers: Arnold & Porter
http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0004.html
Amazon.com, Inc.
Lawyers: Jones, Day, Reavis & Pogue
http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0071.html
Search terms used:
“domain name” trademark disputes anticybersquatting cases
I hope these links would help you in your research. Before rating this
answer, please ask for a clarification if you have a question or if
you would need further information.
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Regards,
Easterangel-ga
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