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Holland, H Brian 3/1/2019 For Educational Use Only § 22:39.On-line practices—Domain names—ICANN's Uniform..., 6 Callmann on Unfair... 6 Callmann on Unfair Comp., Tr. & Mono. § 22:39 (4th Ed.) Callmann on Unfair Competition, Trademarks and Monopolies (4th Edition) | December 2018 Update Louis Altman a0 Malla Pollack a0 Part VI. Trade Identity Law Chapter 22. Varieties of Trade Identity Infringement III. Analyses of Specific Practices A. On-Line Practices § 22:39. On-line practices—Domain names—ICANN's Uniform Dispute Resolution Policy (UDRP) The policy followed by the original domain name registrar, Network Solutions, Inc., offered little in the way of extra-judicial assistance in domain name disputes; it merely placed the problematic domain name “on hold” if the complainant had a trademark registration for a mark identical to the bottom level of the offending domain name. A domain name registrar is not itself liable for permitting registration of an offending domain name, because the mere acceptance of the domain for registration is not a trade identity use thereof by the registrar. 1 Similarly, a domain name registrar is not contributorily liable for trademark infringement committed by one who misappropriates a domain name which a plaintiff had registered with that registrar. 2 Currently, multiple domain name registrars exist. The responsibility for governing the.com, .net, and.org top level domains belongs to the Internet Corporation for Assigned Names and Numbers (ICANN). 3 Effective Jan. 1, 2000, ICANN adopted the Uniform Dispute Resolution Policy (UDRP) 4 for resolving domain name disputes within these domains, to which all registrants are contractually bound to submit. 5 Other top level Internet domains may be governed by other dispute resolution policies. For example, domain name disputes in the.biz top level domain are governed by that domain's Start-up Trademark Opposition Policy (STOP). 6 The UDRP requires domain name disputes to be arbitrated, 7 and the arbitrators have authority to cancel or transfer a domain name. 8 But they do not have the power to grant any form of monetary relief. 9 Under the rules governing such arbitrations, the complainant has the burden of proving three elements. First, the domain name objected to is identical or confusingly similar to a trademark or service mark in which the complainant has rights. 10 Second, the current holder 11 of the domain name has no rights or legitimate interests in respect of the domain name. 12 Third, the current holder of the domain name both registered it and is using it in bad faith. 13 Bad faith may be evidenced by such factors as obtaining the domain registration primarily for the purpose of resale, 14 license or lease; or to prevent another from registering it; 15 to disrupt the business of a competitor; 16 or to create a likelihood of trade identity confusion. 17 Bad © 2019 Thomson Reuters. No claim to original U.S. Government Works. 1 Holland, H Brian 3/1/2019 For Educational Use Only § 22:39.On-line practices—Domain names—ICANN's Uniform..., 6 Callmann on Unfair... faith may also be indicated by registration of multiple domain names of the same type, 18 and choice of domain names consisting of near-misspellings of another's mark. 19 Ties to pornography may, 20 or may not, 21 evidence bad faith. Claims of good faith belief in the legality of one's actions may be rejected because of evidence of a profit motive. 22 If the complainant has a federally registered mark, it is presumed to be valid in a UDRP proceeding. 23 Arbitral panels, furthermore, have refused to consider attempts to rebut such presumptions. 24 State trademark registrations have also been assumed valid. 25 Common law marks are also protected under the UDRP. 26 Because a UDRP arbitration is a contractually mandated proceeding rather than an equitable adjudication, the equitable defense of laches is not available in such a proceeding. 27 In the first two years of the UDRP, 81% of all arbitrations were decided in favor of the trademark owner and against the domain name registrant. 28 While use of a Web site for criticism is generally (though not always) proper under United States law, 29 criticism does not by itself insure a finding of good faith under the UDRP. 30 However, arbitral panels often agree that including a criticism-indicating word (such as “sucks”) within a domain name along with the mark of the entity being criticized is a clear indication that the Web site exists for the purpose of criticizing the mark-holder, i.e., cyber-griping; thus, possibly negating the element of bad faith. For example, the panelist in the Fidelity case 31 said, with respect to the accused domain names http:// fidelitybrokerageinvestmentsfraud.com and http://fidelityinvestmenttheft.com: A line of decisions under the Policy, buttressed by judicial decisions under related national laws, holds that adding a pejorative term to a trademark or service mark dispels the likelihood of confusion. Though there are some decisions to the contrary, the weight of authority, and the clear trend in recent cases, firmly support that position. Accordingly, the panelist in the Fidelity case held that: “In respect of these two disputed domain names, the Complaint must fail *** If the Complainant believes the Respondent's use of these two domain names is defamatory or otherwise unlawful, its remedies lie elsewhere.” However, the Fidelity case panelist continued: 32 Cybersquatters, as a United States Senate committee pointed out, should not be able to shield their activity by posting pro forma griping on sites whose domain names they have actually obtained to sell on. 33 *** Accordingly, [Uniform Domain Name Dispute Resolution] Policy panels and United States courts have found registrants in violation of the Policy or the ACPA, respectively, when their non-commercial criticism was accompanied by other means of using a domain name for commercial purposes. 34 © 2019 Thomson Reuters. No claim to original U.S. Government Works. 2 Holland, H Brian 3/1/2019 For Educational Use Only § 22:39.On-line practices—Domain names—ICANN's Uniform..., 6 Callmann on Unfair... The Fidelity panelist also noted that the domain name registrant may have had not merely a cybersquatter's desire to ransom a domain name for the maximum amount, but an effort to get the Complainant to remedy the wrongs the Respondent believed had been done to him. Nevertheless, the panelist stated that a registrant cannot use a domain name to “leverage” a settlement of a dispute he has with the owner of marks to which the domain name is confusingly similar. 35 Therefore, the arbitration panel ordered transfer or cancellation of some of the disputed domain names it considered likely to cause confusion (“fidelityretirements.com,” “fidelitybrokerageservices.com,” and “fidelityinvestmentsloss.com”), but not those which more clearly indicated their critical nature (“fidelitybrokerageinvestmentsfraud.com” and “fidelityinvestmenttheft.com.”). Another leading decision under the Policy, which surveys the subject of cybergriping at some length, is Wal-Mart Stores, Inc. v. wallmartcanadasucks.com. 36 The registrant was a serial cybersquatter, having lost several proceedings under the Policy and related national laws. He registered <wallmartcanadasucks.com> in an apparent fit of pique after losing another case to Wal-Mart Stores, Inc. The panel noted that his communications with the trademark-holder could be construed as extortion; he may essentially have been threatening to continue embarrassing the trademark-holder until he was paid off. The panel began its analysis by noting dryly, “The Respondent hardly appears with clean hands.” But unclean hands is not what the Policy prohibits: The UDRP [the Policy] has a narrow scope. It is meant to protect against trademark infringement, not to provide a general remedy for all misconduct involving domain names. Posting defamatory material on a Web site would not justify revocation of a domain name under the UDRP. Posting indecent material on a Web site would not justify domain name revocation under the UDRP …. The Respondent may be acting unfairly. He may be engaged in unwarranted disparagement. He may be acting childishly. He may be retaliating for having lost earlier Cybersquatting cases. But this does not necessarily mean that he may be forced to transfer the accused domain name to the complainant under the UDRP …. Bad faith, no matter how egregious, cannot supply a likelihood of confusion where it does not otherwise exist. Other UDRP arbitrations involving gripesites show mixed results. 37 The defendant in an arbitration proceeding may raise the defense that the complainant is attempting reverse domain hijacking, i.e., trying to “steal” a domain name properly belonging to the current registrant. This defense has succeeded in a number of cases. 38 However, mere aggressive enforcement of mark rights is not reverse domain hijacking. 39 Domain name arbitration under the UDRP does not preclude a court proceeding, 40 and is not binding on a court which is asked to review the results of the arbitration. 41 A domain name arbitral panel does not have jurisdiction to resolve questions of property law, even if the property in question is a domain name. 42 A claim for abuse of process may lie for using the UDRP arbitration procedure primarily to accomplish © 2019 Thomson Reuters. No claim to original U.S. Government Works. 3 Holland, H Brian 3/1/2019 For Educational Use Only § 22:39.On-line practices—Domain names—ICANN's Uniform..., 6 Callmann on Unfair... a purpose for which it was not designed, if this use results in harm to the UDRP-respondent. 43 A UDRP arbitration proceeding is “litigation” barred by a covenant not to sue included in a settlement agreement. 44 Westlaw. © 2018 Thomson Reuters.