With the growing use and popularity of the internet, more and more people and businesses have made the leap into cyberspace to sell, advertise, or promote their company, name, products, or services. With this growing evolution, the inevitable clash over domain names has also grown.
What exactly is a domain name? Simply put, a domain name is essentially the user-friendly form of the internet equivalent to a telephone number or street address. It is the address of a person or organization on the internet where other people can find them online, and it can also become the online identity of that person or organization. For example, many businesses will register their company name as their domain name. A domain name can function as a trademark if it is used to identify goods or services and is not used simply as a website address. Although providing a staggering global market forum, the internet also provides fertile ground for trademark infringers. One of the most common avenues for infringement on the web is that traveled by “cybersquatters.”
A cybersquatter, sometimes referred to as a cyberpirate, is a person or entity that engages in the abusive registration and use of trademarks as domain names, commonly for the purpose of selling the domain name back to the trademark owner or to attract web traffic to unrelated commercial offers. To provide trademark owners with a remedy and a means by which to evict cybersquatters, two alternatives developed: the Anti-Cybersquatting Consumer Protection Act (ACPA), a federal statute providing the basis for a court action against cybersquatters, and the Uniform Domain Name Dispute Resolution Policy (UDRP or Policy), which provides for an administrative proceeding for the resolution of domain name disputes, much like an arbitration.
The ACPA was enacted in 1999 to redress cybersquatting by allowing trademark owners to bring a civil action against a cybersquatter if that person has a bad-faith intent to profit from the mark and registers, traffics in, or uses a domain name that in the case of a distinctive mark, is identical or confusingly similar to that mark, or in the case of a famous mark, is identical or confusingly similar to, or dilutive of, that mark. Remedies include statutory damages between $1,000 and $100,000 per domain for which the cybersquatter is found liable, actual damages, the transfer or cancellation of the domain name, and/or attorneys' fees.
The UDRP is a less costly and more efficient alternative to the court system.
Consistent with the ACPA, under the UDRP, the trademark owner must prove that: the allegedly infringing domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the alleged infringer has no rights or legitimate interests in the domain name; and the allegedly infringing domain name has been registered and is being used in bad faith.
Marks in which the complainant has rights includes marks that are federally registered, as well as unregistered marks that have acquired common-law rights. Common-law rights are acquired when the mark becomes a source indicator in commerce through its usage, promotion, marketing, and advertising. For example, it has been accepted in a succession of UDRP decisions that authors and performers may have trademark rights in the names by which they have become well-known. Performers can establish trademark rights either by showing that they have registered their names as marks for certain goods or services, or because, through deployment of the names as source indicators in commerce, they have unregistered or ‘common law’ rights to protection against misleading use.
By way of illustration, the recording artist professionally known as Sade was successful in obtaining transfer of the domain “sade.com,” despite the fact that she had not registered her mark SADE. However, she sufficiently demonstrated her usage of the stage name “Sade” as a mark to distinguish her goods and services as a singer, songwriter, performer, and recording artist, and the establishment of substantial goodwill therein, based upon evidence of her sales of records, CDs, clothing, and other merchandise using the mark SADE, as well as live tours, performances, advertising, and promotion.
Once the complainant has established its rights in the mark, it must establish that the disputed domain name is “identical or confusingly similar” to its mark. Not too surprisingly, where the domain name is identical to the complainant’s mark, the requirement of identity or confusing similarity as required by the UDRP has been found satisfied. The addition of “.com” or some other gTLD suffix is not a distinguishing difference where the domain name is otherwise identical to the complainant’s mark.
Determining “confusing similarity” is decided on a case-by-case basis. One particular scenario that continues to confound the UDRP Panels is the appendage of the term “-sucks” to another’s trademark. In one decision that discusses at length the various approaches taken to analyze this issue, the UDRP Panel transferred to the complainant, a company best-known for its sale of alcoholic beverages under the trademark “Guinness,” the disputed domain names: “guinness-really-sucks.com,” “guinness-really-really-sucks.com,” “guinness-beer-really-sucks.com,” and “guinness-beer-really-really-sucks.com” in addition to a host of other similar variations.