Cybersquatting

1
Cybersquatting

• Prof. Loren
• Fall 2005

2
www.jcruel.com

• What claims might J.Crew try?
• Infringement
• Dilution
• ACPA
• Likely outcome?
• Infringement No confusion
• Dilution need actual dilution, not identical
  marks, noncommercial use
• ACPA no bad faith

3
Elements of a cybersquatting claim
1

• Plaintiff must be owner of a mark
• Defendant must
• have a bad faith intent to profit from that
  mark
• register, traffic in, or use a domain name
• that is identical or confusingly similar (if mark
  is distinctive)
• that is identical, confusingly similar, or
  dilutive (if mark is famous), OR
• that is protected by a special statute (red cross
  and Olympics)

2
3
4
Bad faith intent to profit from the mark

• Tending to negate bad faith
• Defendants own rights in the mark
• Defendants legal name or nickname
• Defendants prior use of DN with bona fide
  offering of goods/services
• Defendants bona fide noncommercial or fair use
  of the mark in the site at that DN

• Favoring bad faith
• Intent to divert consumers, that could harm
  goodwill for either commercial gain or w/ intent
  to tarnish, by creating a likelihood of confusion
• Offer to transfer, sell, or assign DN for
  financial gain w/o use
• False contact info in application for DN,
  intentional failure to maintain contact info. (or
  a past pattern of such actions)
• Acquisition of multiple DNs which defendant knows
  are identical or confusingly similar (or dilutive
  if famous) to marks owned by others

5
NO BAD FAITH IF

• Court determines that the person believed and
  had reasonable grounds to believe that the use of
  the DN was a fair use or otherwise lawful
  43(d)(1)(B)(ii)
• Subjective defendant must have believed
• Objective belief must have reasonable grounds

6
PETA People Eating Tasty Animals

• Why did defendant lose this case?
• make me an offer as evidence of bad faith
• Makes it hard to settle genuine disputes
• Dangerous even to discuss settlement
• Acted partially in bad faith b/c of false contact
  info.
• What about a right to speak anonymously?
• Proxy domain name registrars
• Heavily criticized decision

7
UDRP

• International, no jurisdictional problems
• Not court, not arbitration
• Cheaper, faster (and out of control?)
• Contractually mandated, private dispute
  resolution
• Non-binding
• If challenged in court
• If not, registrars are bound by contract to
  accept decision of arbitrators
• Similar requirements to ACPA
• Registered and is being used in bad faith
• but adds element Registrant must have no
  legitimate rights or interests in respect of the
  DN

8
UDRP

• Applies to .aero, .biz, .com, .coop, .info,
  .museum, .name, .net, and .org
• To learn morehttp//www.icann.org/udrp/