2019 Thomson Reuters. No Claim to Original US Government Works. 1 6

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

§ 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

§ 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 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

§ 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

Footnotes a0 Louis Altman is retired from the Chicago, Illinois firm of Michael, Best & Friedrich LLP. He has been engaged in the practice of intellectual property law since 1957, with a special concentration in patent matters relating to digital systems, computers and other electronic devices. Mr. Altman formerly served as chief patent counsel for General Time Corp. and for Baxter Laboratories, Inc., both N.Y. Stock Exchange companies. He has been a member of the New York, Connecticut, and Illinois bars, and is licensed to practice in the U.S. Patent & Trademark Office, the U.S. Supreme Court, and the U.S. Courts of Appeals for the Second, Seventh, and Federal Circuits. Mr. Altman holds a B.A. from Cornell University, and an LL.B from Harvard Law School. He has been both a full-time member of the faculty and an Adjunct Professor at John Marshall Law School in Chicago, where he taught intellectual property law from 1976 to 1996. He has also taught intellectual property on a part-time basis at DePaul and Loyola Law Schools, both in Chicago. Mr. Altman has served as a director of the Intellectual Property Law Association of Chicago, and as Chairman of the Patent, Trademark, and Copyright Committee of the Chicago Bar Association. He is a member or former member of the New York Intellectual Property Law Association, the Connecticut Patent Law Association, and the American Intellectual Property Law Association. Mr. Altman is a former President of the Society for Humanistic Judaism, a former member, director, and General Counsel of the North Shore Choral Society, and is Vice President Emeritus of the Ensemble Español, a Spanish dance group in Chicago. In addition to the 4th Edition of this treatise, Mr. Altman is the author of a chapter on intellectual property in a treatise entitled “Construction Law,” chapters on unfair competition and trademark law in a treatise entitled “Legal Compliance Checkups,” and several law review articles and published speeches concerning licensing and other aspects of intellectual property law. He is listed in Who's Who in American Law, Who's Who in America, and Who's Who in the World. Mr. Altman can be reached at [email protected] Malla Pollack earned a Masters Degree in Library Science and then graduated from Benjamin N. Cardozo School of Law, Yeshiva University in 1991 (summa cum laude; Order of the Coif). She clerked for Judge Charles Proctor Sifton, E.D.N.Y., and Judge (now Associate Justice of the U.S. Supreme Court) Ruth Bader Ginsburg, D.C. Circuit, and practiced intellectual property at Kirkland & Ellis, Chicago. She has taught intellectual property and other subjects at several law schools. Her other publications include over twenty major law review articles, primarily involving intellectual property and constitutional law. Her public service is centered on amicus participation in intellectual property cases, including numerous amicus briefs to the United States Supreme Court. She is a member of the bars of New York, Illinois, and the District of Columbia.

§ 22:39.On-line practices—Domain names—ICANN's Uniform..., 6 Callmann on Unfair...

She may be reached at [email protected]. a0 Louis Altman is retired from the Chicago, Illinois firm of Michael, Best & Friedrich LLP. He has been engaged in the practice of intellectual property law since 1957, with a special concentration in patent matters relating to digital systems, computers and other electronic devices. Mr. Altman formerly served as chief patent counsel for General Time Corp. and for Baxter Laboratories, Inc., both N.Y. Stock Exchange companies. He has been a member of the New York, Connecticut, and Illinois bars, and is licensed to practice in the U.S. Patent & Trademark Office, the U.S. Supreme Court, and the U.S. Courts of Appeals for the Second, Seventh, and Federal Circuits. Mr. Altman holds a B.A. from Cornell University, and an LL.B from Harvard Law School. He has been both a full-time member of the faculty and an Adjunct Professor at John Marshall Law School in Chicago, where he taught intellectual property law from 1976 to 1996. He has also taught intellectual property on a part-time basis at DePaul and Loyola Law Schools, both in Chicago. Mr. Altman has served as a director of the Intellectual Property Law Association of Chicago, and as Chairman of the Patent, Trademark, and Copyright Committee of the Chicago Bar Association. He is a member or former member of the New York Intellectual Property Law Association, the Connecticut Patent Law Association, and the American Intellectual Property Law Association. Mr. Altman is a former President of the Society for Humanistic Judaism, a former member, director, and General Counsel of the North Shore Choral Society, and is Vice President Emeritus of the Ensemble Español, a Spanish dance group in Chicago. In addition to the 4th Edition of this treatise, Mr. Altman is the author of a chapter on intellectual property in a treatise entitled “Construction Law,” chapters on unfair competition and trademark law in a treatise entitled “Legal Compliance Checkups,” and several law review articles and published speeches concerning licensing and other aspects of intellectual property law. He is listed in Who's Who in American Law, Who's Who in America, and Who's Who in the World. Mr. Altman can be reached at [email protected] Malla Pollack earned a Masters Degree in Library Science and then graduated from Benjamin N. Cardozo School of Law, Yeshiva University in 1991 (summa cum laude; Order of the Coif). She clerked for Judge Charles Proctor Sifton, E.D.N.Y., and Judge (now Associate Justice of the U.S. Supreme Court) Ruth Bader Ginsburg, D.C. Circuit, and practiced intellectual property at Kirkland & Ellis, Chicago. She has taught intellectual property and other subjects at several law schools. Her other publications include over twenty major law review articles, primarily involving intellectual property and constitutional law. Her public service is centered on amicus participation in intellectual property cases, including numerous amicus briefs to the United States Supreme Court. She is a member of the bars of New York, Illinois, and the District of Columbia. She may be reached at [email protected]. 1 Fifth Circuit: Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648, 59 U.S.P.Q.2d 1231 (N.D. Tex. 2001). Ninth Circuit: Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 44 U.S.P.Q.2d 1865, 152 A.L.R. Fed. 793 (C.D. Cal. 1997), judgment aff'd, 194 F.3d 980, 52 U.S.P.Q.2d 1481, 44 Fed. R. Serv. 3d 1207 (9th Cir. 1999). 2 Fourth Circuit:

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Size, Inc. v. Network Solutions, Inc., 255 F. Supp. 2d 568, 66 U.S.P.Q.2d 1636, 1638– 39 (E.D. Va. 2003). 3 Second Circuit: ICANN was created in 1998 to assume the U.S. Government's responsibilities for the management of the Internet Domain Name System. It is a private, not-for-profit corporation initiated by the U.S. Department of Commerce to privatize the Domain Name System (DNS). Register.com, Inc. v. Verio, Inc., 126 F. Supp. 2d 238, 63 U.S.P.Q.2d 1957 (S.D. N.Y. 2000), aff'd as modified, 356 F.3d 393, 69 U.S.P.Q.2d 1545 (2d Cir. 2004). Fifth Circuit: ICANN is a nonprofit corporation that governs the Internet. It was established in 1998 and is officially recognized by the U.S. Department of Commerce as the global, nonprofit consensus organization designed to carry on administration of the Internet name and address system. Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648, 59 U.S.P.Q.2d 1231 (N.D. Tex. 2001). Froomkin and Lemley, ICANN and Antitrust, 2003 U. Ill. L. Rev. 1 (2003); Arnette- Mitchella, State Action Debate Reborn Again: Why the Constitution Should Act as a Checking Mechanism for ICANN's Uniform Dispute Resolution Policy, 27 Hamline J. Pub. L. & Pol'y 307 (2006). 4 See http://www.icann.org/udrp/udrp.htm. See also http://www.udrplaw.net; http://www.domainmagistrate.com. Fifth Circuit: Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648, 59 U.S.P.Q.2d 1231 (N.D. Tex. 2001): Pursuant to its agreements with ICANN, [a domain name registrar] is required to comply with consensus policies adopted by ICANN, which specifically include the Uniform Dispute Resolution Policy (UDRP). The UDRP provides for resolution of domain name disputes through mandatory administrative proceedings. All those who register a domain name in the “.com,” “.net,” and “.org” T[op] L[evel] D[omain]s must agree to abide by the UDRP, which permits the owner of a trademark to initiate an administrative complaint against an alleged cybersquatter. The complaint is decided by a panel of one or three decision-makers who render a written, published decision as to the registration of the disputed domain name. The average time from filing to decision is 52 days. [The registrar] maintains a domain name's status quo during the course of a dispute resolution proceeding [which] is in progress. If a UDRP panel decides that a domain name should be cancelled or transferred, [the registrar] is required to wait 10 business days before implementing the decision. The decision will then be implemented unless [the registrar] has received official documentation that the domain name registrant has commenced a lawsuit against the complainant in a qualified jurisdiction. Seventh Circuit: Weber-Stephen Products Co. v. Armitage Hardware and Bldg. Supply, Inc., 54 U.S.P.Q.2d 1766, 2000 WL 562470 (N.D. Ill. 2000): “The ICANN is a new, quasi- governmental Internet-regulating body, and its Policy (approved on October 24, 1999) provides for a ‘mandatory administrative proceeding’ in disputes between domain name owners and trademark owners and purportedly applies to every domain name registrant who registers its domain names through an ICANN-accredited registrar.” Chandrani, Beating The Cybersquatters—Dispute Resolution v. U.S. Statutory Protection. 11 Ent. L.R. 76 (2000); Gilson and LaLonde, The Anticybersquatting Consumer Protection Act and the ICANN Uniform Domain Name Dispute Resolution Policy (2000); Gitchel, Domain Name Dispute Policy Provides Hope To Parties Confronting Cybersquatters, 82 JPTOS 611 (2000); Quinto, Law of Internet Disputes

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(Aspen Publishers 2002); Solomon, Two New Tools to Combat Cyberpiracy—A Comparison, 90 T.M.R. 679 (2000); Maersch, ICANN't Use My Domain Name? The Real World Application of ICANN's Uniform Domain-Name Dispute Resolution Policy, 34 J. Marshall L. Rev. 1027 (2001); Froomkin, ICANN's “Uniform Dispute Resolution Policy”—Causes and (Partial) Cures, 67 Brook. L. Rev. 605 (2002); Goldstein, ICANNSucks.biz (And Why You Can't Say That): How Fair Use of Trademarks in Domain Names Is Being Restrained, 12 Fordham Intell. Prop. Media & Ent. L.J. 1151 (2002); Noon, Legal Considerations When Consumer Opinion Web Sites Parody Companies or Brands, 24 Comm. & L. 43 (2002); Band and Schruers, Toward a Bright-Line Approach to [Trademark]sucks.com, 20 Computer & Internet Law. 1 (2003); Samuels and Samuels, Internet Domain Names: The Uniform Dispute Resolution Policy, 40 Am. Bus. L.J. 885 (2003); Armon, As Good as It Gets? An Appraisal of the Uniform Domain Name Dispute Resolution Policy, 20 Computer & Internet Law. 1 (2003); Tarnow, www.yourname.com, How Useful Is the Uniform Domain Name Dispute Resolution Policy (UDRP) in Protecting Personal Names from Cybersquatters? 22 J. Marshall J. Computer & Info. L. 535 (2004); Holstein-Childress, Lex Cyberus: The UDRP as a Gatekeeper to Judicial Resolution of Competing Rights to Domain Names, 109 Penn St. L. Rev. 565 (2004); Note, EU Adopts ADR Rules for Domain-Name Disputes, 59 Disp. Resol. J. 8 (2004); Smith & Wilbers, The UDRP: Design Elements of an Effective ADR Mechanism, 15 Am. Rev. Int'l Arb. 215 (2004). Lipton, Beyond Cybersquatting: Taking Domain Name Disputes Past Trademark Policy, 40 Wake Forest L. Rev. 1361 (2005): the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) in particular, complemented by the Anticybersquatting Consumer Protection Act (“ACPA”), has been very successful in combating this practice. Unfortunately, since the late 1990s, there has been little movement towards developing a comprehensive system for domain name dispute resolution outside the cybersquatting area. Little thought has been given to other forms of domain name disputes that are not so well served by the UDRP and the ACPA. Examples of these kinds of disputes include certain complaints involving personal names and cultural or geographic place names, as well as disputes involving contests between two legitimate trademark-holders. This Article suggests the development of a new classification scheme for different types of Internet domain name disputes outside the “bad-faith” cybersquatting context. This new classification scheme highlights both the fact that the current legal and regulatory framework is focused on only a narrow class of domain name disputes and that the policies underlying this framework are not suited to other categories of domain name disputes. The Article further identifies ways in which new solutions could be developed that are better suited to domain name complaints outside the cybersquatting context and that more appropriately reflect emerging social norms about Internet usage and domain name registration. Arnette-Mitchellla, State Action Debate Reborn Again: Why the Constitution Should Act as a Checking Mechanism for ICANN's Uniform Dispute Resolution Policy, 27 Hamline J. Pub. L. & Pol'y 307 (2006); Lindsay, Internet Domain Name Dispute Resolution, 68 Intell. Prop. Forum 37 (2007); Lipton, Celebrity in Cyberspace: A Personality Rights Paradigm for Personal Domain Name Disputes, 65 Wash. & Lee L. Rev. 1445 (2008) (suggesting modified elements for disputes over personal names); Lipton, A Winning Solution for YouTube and Utube? Corresponding Trademarks and Domain Name Sharing, 21 Harv. J.L. & Tech. 509 (2008) (suggesting that UDRP be modified to provide for multiple parties to share the same domain-name in suitable cases); Chik, Lord of Your Domain, But Master of None: The Need to Harmonize and

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Recalibrate the Domain Name Regime of Ownership and Control, 16 Int'l J.L. & Info. Tech. (2008) (international critique of UDRP). 5 First Circuit: Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 60 U.S.P.Q.2d 1941 (1st Cir. 2001) (domain name registrants must accept the UDRP's terms in order to register a domain name). Fourth Circuit: Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 746, 59 U.S.P.Q.2d 1051 (E.D. Va. 2001) (the UDRP binds registrants by virtue of their contracts with their registrars); Eurotech, Inc. v. Cosmos European Travels Aktiengesellschaft, 189 F. Supp. 2d 385, 62 U.S.P.Q.2d 1132 (E.D. Va. 2002) (a party initiating a UDRP arbitration is not thereby made liable for tortious interference with the respondent's contractual relations, because the respondent had previously agreed to be subject to such arbitration). Arbitration Panels: General Media Communications Inc. v. JMR Creations, 55 U.S.P.Q.2d 1318, 2000 WL 1505925 (Arb. 2000) (respondent is contractually bound to resolve any dispute regarding the domain name under the ICANN policy). See also Silbert, Trademark Law, ICANN, and Domain Name Expiration, 36 AIPLA Q.J. 311 (2008) (arguing that ICANN has not yet provided suitable mark-holder- protective policies regarding domain name expirations; arguing that expirations should be treated in harmony with trademark abandonment doctrine, allowing holders a period of nonuse before losing the ability to retain them). 6 The STOP policy is available at http://www.neulevel.biz/ardp/docs/stop.html. Arbitration Panels: Princeton Linear Associates Inc. v. Copland, 61 U.S.P.Q.2d 1895, 2002 WL 522872 (National Arb. Forum 2002) (applying the parties' concurrent use agreement to a domain name dispute in such a way as to avoid confusing Internet users); Kalaydjian v. Steinle, 64 U.S.P.Q.2d 1576, 2002 WL 31628019 (National Arb. Forum 2002) (STOP is practically the same as UDRP). 7 First Circuit: Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 60 U.S.P.Q.2d 1941 (1st Cir. 2001): Under the UDRP, a registrant is “required to submit to a mandatory administrative proceeding in the event that a third party … asserts,” to an ICANN-approved administrative dispute resolution service provider, that: (1) the registrant's domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”; (2) the registrant has “no rights or legitimate interests” in the domain name; and (3) the registrant's domain name “has been registered and is being used in bad faith.” Ware, Domain-Name Arbitration in the Arbitration-Law Context: Consent to, and Fairness in, the UDRP, 6 J. Small & Emerging Bus. L. 129 (2002); Kelley, Emerging Patterns in Arbitration Under the Uniform Domain-Name Dispute-Resolution Policy, 17 Berkeley Tech. L.J. 180 (2002). 8 Arbitration Panels: Cable News Network LP v. Khouri, 68 U.S.P.Q.2d 1570, 2002 WL 32303603 (National Arb. Forum 2002) (Nat'l Arb. Forum). 9 Arbitration Panels: Ringling Bros. - Barnum & Bailey Combined Shows Inc. v. Lima, 74 U.S.P.Q.2d 1887, 2005 WL 3502155 (Am. Arb. Ass'n 2005) (successful complainant cannot recover its filing fee). 10 Arbitration Panels:

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A domain name is confusing similar if it is formed by addition of common descriptive words and a top level domain designation to a registered mark. Shaw Industries Group Inc. v. Arcadia Publishing Inc., 84 U.S.P.Q.2d 1574, 2007 WL 3378535 (W.I.P.O.A.M.C. 2007) (WIPO) (shawcarpetoutlet.com is confusingly similar to shaw); Marvel Manufacturing Co. v. Koba Internet Sales LP, 87 U.S.P.Q.2d 1276, 2008 WL 5573071 (W.I.P.O.A.M.C. 2008) (marvelsawparts.com is confusingly similar to marvel); 322 West 57th Owner LLC v. Administrator, Domain, C/O Mecca Hosting, 88 U.S.P.Q.2d 1491, 2008 WL 5574750 (W.I.P.O.A.M.C. 2008) (sheffield57resident.com is confusingly similar to Sheffield57). 11 Arbitration Panels: The defendant in a UDRP proceeding may be a registrar if the registrar is controlling the material posted at the domain name. Paxar Americas Inc. v. eNom Inc., 84 U.S.P.Q.2d 1730, 2007 WL 4214381 (National Arb. Forum 2007) (registrar operated the Web site after the original registrant defaulted on registration payments). 12 Arbitration Panels—Legitimate interest found: Oki Data Americas, Inc. v. ASD, Inc., (No. D2001-0903) (WIPO Nov. 6, 2001) stated that respondent has a legitimate interest if all four of the following factors are met: (i) respondent is offering the goods or services at issue: (ii) respondent is using the site to sell only the trademarked goods (as opposed to bait and switch tactics); (iii) the respondent's site accurately states respondent's relationship with the trademark owner; and (iv) the respondent does not try to corner the market in domain names related to the trademark at issue. Shaw Industries Group Inc. v. Arcadia Publishing Inc., 84 U.S.P.Q.2d 1574, 2007 WL 3378535 (W.I.P.O.A.M.C. 2007) (retailer authorized to sell Shaw brand carpet has legitimate interest in shawcarpetoutlet.com). Marvel Manufacturing Co. v. Koba Internet Sales LP, 87 U.S.P.Q.2d 1276, 2008 WL 5573071 (W.I.P.O.A.M.C. 2008) (legitimate interest found; respondent was selling replacement parts for use in marvel saws at marvelsawparts.com; parts were not manufactured by Marvel Mfg.; site had a disclaimer). 322 West 57th Owner LLC v. Administrator, Domain, C/O Mecca Hosting, 88 U.S.P.Q.2d 1491, 2008 WL 5574750 (W.I.P.O.A.M.C. 2008), complainant was owner of a residential building being converted to condominium apartments; defendant was a holdover tenant using the site to complain about operation of the building. Gripe-site domain name is fair use regardless of whether domain name highlights critical nature of its content. Arbitration Panels—No legitimate interest found: Ringling Bros. - Barnum & Bailey Combined Shows Inc. v. Lima, 74 U.S.P.Q.2d 1887, 2005 WL 3502155 (Am. Arb. Ass'n 2005) (defendant had no right to register name of city of Ringling, Oklahoma as a domain name). Morris v. Unofficial Fan Club, 78 U.S.P.Q.2d 1360, 2005 WL 3973875 (National Arb. Forum 2005) (an unofficial fan club does not have a legitimate interest in the domain name StevieWonder.com when, until the complaint was filed, the site contained only an e-mail address for joining the club). Disney Enterprises Inc. v. Kudrna, 80 U.S.P.Q.2d 1747, 2006 WL 3486924 (National Arb. Forum 2006) (owner of vacation home who used site to broker rentals of his and neighbors' houses near Disney World lacked legitimate interest in domain name finestdisneyhomes.com). Because the legitimate interest must be in the domain name, not the mark resembled by the domain name, respondent's allegation that it is successor in interest to firms distributing complainant's branded merchandise for decades is irrelevant to issue of

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“legitimate interest.” SPX Corp. v. Hevun Diversified Corp., 81 U.S.P.Q.2d 1621, 2006 WL 4070416 (National Arb. Forum 2006). 13 ICAAN, Uniform Domain Name Dispute Resolution Policy (Adopted: August 26, 1999; Implementation Documents Approved: October 24, 1999), available at http:// www.perusion.com/domain/icann.html. Arbitration Panels: Cable News Network LP v. Khouri, 68 U.S.P.Q.2d 1570, 2002 WL 32303603 (National Arb. Forum 2002). “Opportunistic exploitation constitutes bad faith in and of itself under the *** [UDRP].” True Blue Productions Inc. v. Hoffman, 73 U.S.P.Q.2d 1512, 1520, 2004 WL 3677014 (W.I.P.O.A.M.C. 2004). One day after the press reported that the complainant was preparing a TV program to be called “Fat Actress” the respondent registered the Internet domain name fatactress.com, and linked it to a pornographic Web site. Sound Unseen Ltd. v. Vanderhorst, 77 U.S.P.Q.2d 1585, 2005 WL 3772268 (W.I.P.O.A.M.C. 2005) (opportunistic exploitation of inevitable Internet user confusion for the respondent's own benefit is bad faith). Respondent, upon learning of the complainant's clothing line, and appreciating the widespread recognition which the complainant's mark would quickly attain, intentionally misappropriated some of that recognition as a means of substantially increasing the number of visitors to his Web sites. Sound Unseen Ltd. v. Vanderhorst, 77 U.S.P.Q.2d 1585, 2005 WL 3772268 (W.I.P.O.A.M.C. 2005) (the display of pornographic imagery on a Web page, without more, does not constitute bad faith under the Policy; but bad faith may arise where a domain name which is confusingly similar to a complainant's mark is used by a respondent to direct users, who seek information on a good or service associated with that mark, to a pornographic site instead). But cf.: Lockheed Martin Corp. v. Skunkworx Custom Cycle, 74 U.S.P.Q.2d 1486, 2005 WL 1131161 (W.I.P.O.A.M.C. 2005) (defendant allowed to retain its domain name, where it had gained a legitimate business reputation under its trade name and then chose a domain name based on the trade name); Lockheed Martin Corp. v. Dixon, 74 U.S.P.Q.2d 1522, 2005 WL 1131162 (W.I.P.O.A.M.C. 2005) (defendant allowed to retain its domain name where its trade name was justifiable on a fair-use basis, and the domain name was based on the trade name). 14 Arbitration Panels: American Lubefast Franchising, Inc. v. Chung Rigby, WIPO Case No. D2004-0329, http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0329.html (July 26, 2004) (ordering the domain name transferred because the registrant had offered to sell it); FMR Corp. v. Native American Warrior Society, 74 U.S.P.Q.2d 1116, 2005 WL 774973 (W.I.P.O.A.M.C. 2005) (offer of sale plus other factors; that sales discussion was not initiated by the registrant was not determinative). Cf. Deutsche Welle Anstalt des offentlichen Rechts v. Diamond Ware Ltd., 57 U.S.P.Q.2d 1787, 1792, 2001 WL 34077872 (W.I.P.O.A.M.C. 2001) (offer to sell a domain name is not inadmissible merely because it was made as part of a proposed settlement of a cyber-squatting controversy). But cf. Deutsche Welle Anstalt des offentlichen Rechts v. Diamond Ware Ltd., 57 U.S.P.Q.2d 1787, 1792, 2001 WL 34077872 (W.I.P.O.A.M.C. 2001) (the mere fact that a defendant offered to sell the domain name for a large sum after being accused of cybersquatting is not in itself sufficient proof of bad faith under the ICANN Uniform Dispute Resolution Policy.) That policy is posted at http://www.icann.org/udrp/udrp/htm. 15 Arbitration Panels:

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Cable News Network LP v. Khouri, 68 U.S.P.Q.2d 1570, 1596, 2002 WL 32303603 (National Arb. Forum 2002); Office of Personnel Management v. MS Technology Inc., 70 U.S.P.Q.2d 1333, 2003 WL 23472306 (National Arb. Forum 2003). The consequences of a bad faith acquisition of the domain name cannot be escaped by the original domain name registrant's assignment of the domain name to a successor who is not a disinterested party. National Collegiate Athletic Association v. Brown, 72 U.S.P.Q.2d 1319, 2004 WL 2402160 (W.I.P.O.A.M.C. 2004). Offer to sell domain name to other shows bad faith since consideration requested was not merely the nominal $1 asserted by respondent, but included a long term contractual relationship which seemingly would generate considerable profit. SPX Corp. v. Hevun Diversified Corp., 81 U.S.P.Q.2d 1621, 2006 WL 4070416 (National Arb. Forum 2006). 16 Arbitration Panels: Disney Enterprises Inc. v. Kudrna, 80 U.S.P.Q.2d 1747, 2006 WL 3486924 (National Arb. Forum 2006) (owner of vacation home who used site to broker rentals of his and neighbors' houses near Disney World registered domain name finestdisneyhomes.com for purposes of gaining commercial advantage from use of other's mark, which constitutes registering for purpose of disrupting the business of a competitor). A Chinese firm demonstrated bad faith by attempting to disrupt business of a competitor when it registered and used the domain name cn-velco.com for conducting its business of manufacturing and selling fasteners. Since “cn” is the recognized on-line abbreviation for China, customers would expect the domain name to provide interaction with the firm holding trademark rights in the world famous mark VELCRO. Selling fasteners, including those manufactured by complainant, through this domain name did not create legitimate rights in the domain name. Complainant, not respondant, held registrations in China for marks including the term VELCRO. Velcro Industries B.V. v. Qingdao Kunwei Velcro Co., 82 U.S.P.Q.2d 1208, 2006 WL 4468038 (W.I.P.O.A.M.C. 2006). In Paxar Americas Inc. v. eNom Inc., 84 U.S.P.Q.2d 1730, 2007 WL 4214381 (National Arb. Forum 2007), a registrar obtained a domain name when the original registrant defaulted on registration fees. The registrar did not change the posted material, which pointed surfers to direct competitors of complainant. This was held “bad faith” despite the registrar's repeated offers to transfer the domain name to complainant at no charge. The panel stated that the registrar could have closed down the site, changed its content, or transferred it before the complaint was filed. 17 Arbitration Panels: Cable News Network LP v. Khouri, 68 U.S.P.Q.2d 1570, 2002 WL 32303603 (National Arb. Forum 2002); Register.com Inc. v. Reile, 70 U.S.P.Q.2d 1351, 2004 WL 906390 (National Arb. Forum 2004). Sound Unseen Ltd. v. Vanderhorst, 77 U.S.P.Q.2d 1585, 2005 WL 3772268 (W.I.P.O.A.M.C. 2005) (a finding of bad faith is reinforced by the fact that the respondent registered not just one but a plurality of domain names all of which are slight variations devised to exploit likely typographical errors made by users who seek to type a domain name, given current naming conventions, that closely follows the complainant's mark). 18 Arbitration Panels: Morris v. Unofficial Fan Club, 78 U.S.P.Q.2d 1360, 2005 WL 3973875 (National Arb. Forum 2005) (registration of 100 domain names using names of celebrities, allegedly for unofficial fan clubs). 19 National Association of Professional Baseball Leagues Inc. v. Zuccarini, 67 U.S.P.Q.2d 1315, 1319, 2003 WL 21715339 (W.I.P.O.A.M.C. 2003) (use by the defendant of a domain name containing an intentional misspelling of the plaintiff's mark with the intent

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to divert Internet traffic from its intended destination by taking advantage of spelling or typing errors is inherently parasitic, and is itself evidence of bad faith). 20 June Bug Enterprises Inc. v. Kyamko, 73 U.S.P.Q.2d 1310, 2004 WL 3111932 (National Arb. Forum 2004) (linking the pirated domain name to a pornographic site is evidence of bad faith). 21 Kalaydjian v. Steinle, 64 U.S.P.Q.2d 1576, 1586–87, 2002 WL 31628019 (National Arb. Forum 2002) (offering pornographic goods on a Web site is not evidence of bad faith). 22 National Collegiate Athletic Association v. Brown, 72 U.S.P.Q.2d 1319, 2004 WL 2402160 (W.I.P.O.A.M.C. 2004). 23 Arbitration Panels: Office of Personnel Management v. MS Technology Inc., 70 U.S.P.Q.2d 1333, 2003 WL 23472306 (National Arb. Forum 2003): ICANN panels cannot and hence do not assess the validity of any federally registered trademark. Instead, such panels must, of necessity, accord significant deference to decisions of that government body, namely the USPTO, which, in the first instance, not only possesses the requisite expertise but also the federal statutory mandate to do so. It is simply not within the purview of any ICANN panel to evaluate and review the judgment of the USPTO on such questions. Moreover, even apart from those jurisdictional concerns but clearly in view of the rather summary and abbreviated nature of ICANN proceedings, ICANN panels are grossly ill-equipped to deal with an extensive factual inquiry that typically underlies such a determination. *** Register.com Inc. v. Reile, 70 U.S.P.Q.2d 1351, 2004 WL 906390 (National Arb. Forum 2004) (same). Sound Unseen Ltd. v. Vanderhorst, 77 U.S.P.Q.2d 1585, 2005 WL 3772268 (W.I.P.O.A.M.C. 2005) (once the USPTO has made a determination that a mark is registrable, then a UDRP panel is not empowered to, nor should it, disturb that determination). Accord, Lockheed Martin Corp. v. Skunkworx Custom Cycle, 74 U.S.P.Q.2d 1486, 2005 WL 1131161 (W.I.P.O.A.M.C. 2005): Questions of trademark invalidity, including genericness, are simply not within the purview of a UDRP proceeding and are best left for either court adjudication or inter- partes adjudication before appropriate governmental bodies having requisite jurisdiction and competence to handle such issues. Not only are such questions outside the very limited and focused jurisdiction afforded to UDRP panels under the Policy but moreover the summary and rather abbreviated nature of UDRP proceedings totally precludes the establishment of a fully developed factual record that must underlie the determination of such questions. 24 Arbitration Panels: SPX Corp. v. Hevun Diversified Corp., 81 U.S.P.Q.2d 1621, 2006 WL 4070416 (National Arb. Forum 2006) (listing and following multiple other UDRP opinions). 25 Arbitration Panels: Hawaii Community Federal Credit Union v. Texas International Property Associates - NA NA, 88 U.S.P.Q.2d 1761, 2008 WL 5088177 (National Arb. Forum 2008) (stating that it will assume validity of state registration because respondent did not obtain a state court judgment to the contrary). 26 Arbitration Panels: True Blue Productions Inc. v. Hoffman, 73 U.S.P.Q.2d 1512, 1516, 2004 WL 3677014 (W.I.P.O.A.M.C. 2004); Sound Unseen Ltd. v. Vanderhorst, 77 U.S.P.Q.2d 1585, 2005 WL 3772268 (W.I.P.O.A.M.C. 2005); Animals for Advertising Inc. v. Long, 84 U.S.P.Q.2d 1712, 2007 WL 4214818 (W.I.P.O.A.M.C. 2007). 27 Arbitration Panels:

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Office of Personnel Management v. MS Technology Inc., 70 U.S.P.Q.2d 1333, 2003 WL 23472306 (National Arb. Forum 2003). 28 Angwin, E-World Column: Are Domain Panels the Hanging Judges of Cyberspace Court?, Wall St. J., Aug. 20, 2001, p. B1, describing a study by Michael Geist, a professor at the University of Ottawa Law School, of 3,094 arbitrations decided from the start of the UDRP in 1999 through July 2001. See Geist, Fair.com? An Examination of the Allegations of Systemic Unfairness in the UDRP, posted at www.Lawbytes.com. See also Geist, Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP, http://aixl.uottawa.ca to geist/fairupdate.pdf. But cf. INTA, The UDRP By All Accounts Works Effectively: Rebuttal to Analysis and Conclusions of Professor Michael Geist in “Fair.com?” and “Fundamentally Fair.com?”, http://www.inta.org/policy/reports.shtml. Stewart, The Best Laid Plans: How Unrestrained Arbitration Decisions Have Corrupted The Uniform Domain Name Dispute Resolution Policy, 53 Fed. Comm. L.J. 509 (2001). 29 See §§ 22:30, 22:40, 22:61 to 22:63 and 22:71. Simon, An Empirical Analysis of Fair Use Decisions under the Uniform Domain-Name Dispute-Resolution Policy, 53 B.C. L. Rev. 65 (2012) (reporting that WIPO panels are more likely to accept a fair use defense if either the panel arbitrator(s) are from the U.S. or the defendant is from the U.S.). 30 Arbitration Panels: Fujitsu Ltd. v. d,y,an, 64 U.S.P.Q.2d 1853, 2002 WL 31770423 (National Arb. Forum 2002) (Web site with confusingly similar domain name was not used in good faith where its criticisms of plaintiff's Pocket Loox product were obviously false and pretended to be authored by plaintiff): “Notice—We realize the error of our Company's item Which is ‘Pocketloox.’ We are very sorry. We will do our best that this kind or case never happen again.” Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038, http://arbiter.wipo.int/ domains/decisions/html/2003/d2003-0038.html (March 9, 2003), rejecting good faith defense even though the domain name registrant apparently intended to use the site for legitimate criticism of the trademark owner, but, upon learning that the Web site designer would not be able to prepare the site for that purpose for several months, the registrant used the site for commercial purposes in the interim. National Collegiate Athletic Association v. Brown, 72 U.S.P.Q.2d 1319, 2004 WL 2402160 (W.I.P.O.A.M.C. 2004) (rejecting good faith defense when protest material was only loaded on disputed site after defendant received notice of objection from plaintiff). 31 Arbitration Panels: FMR Corp. v. Native American Warrior Society, 74 U.S.P.Q.2d 1116, 1123–1124, 2005 WL 774973 (W.I.P.O.A.M.C. 2005). 32 Arbitration Panels: FMR Corp. v. Native American Warrior Society, 74 U.S.P.Q.2d 1116, 1126, 2005 WL 774973 (W.I.P.O.A.M.C. 2005). 33 See S. Rep. No. 106-140, at 9 (1999). 34 Arbitration Panels: In the Fidelity case, FMR Corp. v. Native Am. Warrior Soc'y, 74 U.S.P.Q.2d 1116, 1126 (WIPO 2005), supra, in addition to the domain name registrant's efforts to sell the domain name, including an offer to sell it to the trademark owner at an exorbitant price, commercial purpose was also indicated by the Web site's inclusion of a pop-up advertisement (though one for goods unrelated to the mark-holder's business). But some UDRP panels have permitted registrants to engage in income-generating activity without triggering a finding of bad faith, so long as that activity was de minimis or ancillary to the registrant's main purpose. In Covance, Inc. v. The Covance Campaign,

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WIPO Case No. D2004-0206 (April 20, 2004), the domain name registrant Covance Campaign was an organization dedicated to opposing animal testing of pharmaceuticals and chemicals, and it used its site to criticize the animal testing activities of the trademark owner Covance, Inc., but also sold t-shirts and other merchandise on that site to finance its activities on behalf of animals. The panel held that these sales were merely ancillary to the non-commercial purpose of the site, and therefore did not make the site commercial in nature. 35 Arbitration Panels: FMR Corp. v. Native American Warrior Society, 74 U.S.P.Q.2d 1116, 1128, 2005 WL 774973 (W.I.P.O.A.M.C. 2005). 36 Arbitration Panels: Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104 (November 23, 2000). 37 No centralized list of all UDRP cases seems to be available. The National Arbitration Forum posts its cases at http://domains.adrforum.com/domains/decisions but is set up to locate only specific cases. However, WIPO operates a sophisticated search engine for its UDRP cases at http://www.wipo.int/amc/en/domains/search/legalindex.jsp. A search on April 4, 2010 located 12 cyber gripe cases (i.e., cases indexed as involving critical words inside domain names, such as “sucks,” and cases raising the defense of freedom to criticize). The following cases resulted in transfer of one or more gripe-sites to the complainant: Wal-Mart Stores, Inc. v. Walsucks (Case No. D2000-0477); Direct Line Group Ltd v. Purge I.T., Purge I.T. Ltd. (Case No. D 2000-0583); The Salvation Army v. Info-Bahn, Inc. (Case No. D2001-0463); Vivendi Universal v. (Case No. D2001-1121); Wachovia Corp. v. Flanders (Case No. D2003-0596). According to WIPO's summary, 11 cyber gripe sites were ordered transferred; transfer requests were rejected as to 10 cyber gripe sites. See also Manara, Internet-Related International Trademark Disputes. The State of Law in Western Countries, and the Case of Japan 79-86 (Institute of Intellectual Property, Tokyo, Japan, March 2006), which lists 44 cyber gripe arbitrations (WIPO and Nat'l Arb. F. cases) of which 31 were decided for the complainant. 38 Arbitration Panels: Kalaydjian v. Steinle, 64 U.S.P.Q.2d 1576, 1587–88, 2002 WL 31628019 (National Arb. Forum 2002) (plaintiff engaged in reverse domain name hijacking by filing questionable intent-to-use trademark applications in the U.S. Patent and Trademark Office on anticipated domain names before they are registrable in the domain name system). Mess Enterprises v. Scott Enterprises Ltd., 74 U.S.P.Q.2d 1289, 2005 WL 914448 (W.I.P.O.A.M.C. 2005). The domain name registration preceded the complainant's use of the alleged trademark by the UDRP complainant by 2-1/2 years. The complainant, with knowledge of the domain name registrant's priority, and without any prior use of its mark, filed, on the same day, an intent-to-use application for federal trademark registration and a UDRP complaint against the domain registrant. Relief was denied. See also Shultz and Hofflander, Reverse Domain Name Hijacking and the Uniform Domain Name Dispute Resolution Policy, 4 Cybaris 218 (2013). 39 Arbitration Panels: Lockheed Martin Corp. v. Skunkworx Custom Cycle, 74 U.S.P.Q.2d 1486, 2005 WL 1131161 (W.I.P.O.A.M.C. 2005). 40 Second Circuit: BroadBridge Media, L.L.C. v. Hypercd.com, 106 F. Supp. 2d 505, 55 U.S.P.Q.2d 1426, 1428–29 (S.D. N.Y. 2000). In that case the arbitral panel elected to suspend its proceedings pending the outcome of the litigation. See 55 U.S.P.Q.2d at 1429 n.4. Fourth Circuit:

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Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 751, 59 U.S.P.Q.2d 1051 (E.D. Va. 2001); Barcelona.com, Incorporated v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 67 U.S.P.Q.2d 1025 (4th Cir. 2003); NBC Universal, Inc. v. NBCUNIVERSAL.COM, 378 F. Supp. 2d 715, 76 U.S.P.Q.2d 1370 (E.D. Va. 2005). Fifth Circuit: Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648, 59 U.S.P.Q.2d 1231 (N.D. Tex. 2001): If a UDRP panel decides that a domain name should be cancelled or transferred, [the registrar] is required to wait 10 business days before implementing the decision. The decision will then be implemented unless [the registrar] has received official documentation that the domain name registrant has commenced a lawsuit against the complainant in a qualified jurisdiction. If such a lawsuit has been filed, [the registrar] will take no further action unless and until it receives notice of a settlement or that the lawsuit has been dismissed or that the court has rendered a decision requiring it to discontinue registration of the contested domain name. Sganga, Trademark Owner's Strategy: Litigation versus the UDRP, 13 Pepperdine Dispute Resolution L.J. 301 (2013). 41 First Circuit: Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 60 U.S.P.Q.2d 1941 (1st Cir. 2001). Third Circuit: Dluhos v. Strasberg, 321 F.3d 365, 65 U.S.P.Q.2d 1842 (3d Cir. 2003) (FAA not applicable to UDRP proceedings; therefore review is not deferential). Fourth Circuit: Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 59 U.S.P.Q.2d 1051 (E.D. Va. 2001) (a UDRP proceeding is not subject to the Federal Arbitration Act, 9 U.S.C.A. §§ 1 et seq., and therefore the FAA's restrictions on judicial review are not applicable). The court reasoned that (1) the UDRP itself contemplates parallel litigation; (2) UDRP complainants are strangers to the domain name registration agreement, and so are under no obligation to participate in the arbitration; and (3) the remedies available through the UDRP are limited to cancellation or transfer of a domain name.). Virtuality L.L.C. v. Bata Ltd., 138 F. Supp. 2d 677, 63 U.S.P.Q.2d 1522, 1523–24 (D. Md. 2001). With respect to any court challenge to a decision in a UDRP administrative proceeding canceling or transferring the domain name, the ICANN Policy and Rules require the domain name registrant to submit to the jurisdiction of the courts in at least one specified jurisdiction. The registrant has the choice of electing either the jurisdiction of the court where the registrant carries on its business, or the jurisdiction of the court where the domain name registrar carries on its business. But this consent to personal jurisdiction is limited to the UDRP domain name challenge, and does not extend to any other claim joined therewith. Virtuality L.L.C. v. Bata Ltd. 63 U.S.P.Q.2d at 1527. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 189 F. Supp. 2d 367, 63 U.S.P.Q.2d 1189, 1192 (E.D. Va. 2002), rev'd and vacated on other grounds, 330 F.3d 617, 67 U.S.P.Q.2d 1025 (4th Cir. 2003) (a court need give no weight to a UDRP ruling). Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp. 2d 507 (E.D. Va. 2009) (UDRP panel's decision is not entitled to deference; summary judgment for plaintiff). The court opinion implies that the UDRP panel found the domain names not to be confusingly similar. However, the panel ruled for Shui on this domain name (but none of the others involved in the arbitration) on another ground, the perceived generic nature of the words “city” and “bank.” Citigroup, Inc. v. Shui, Nat'l Arb. F.0802001142607 (March 20, 2008), available at Web site of the National Arbitration Forum, http://domains.adrforum.com/ domains/decisions/1142607.htm.

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Cf. Heathmount A.E. Corp v. Technodome.com, 106 F. Supp. 2d 860, 55 U.S.P.Q.2d 1735 (E.D. Va. 2000) (Not selected for publication in the Federal Reporter) (refusing to transfer the dispute to an ICANN arbitration proceeding). Seventh Circuit: Weber-Stephen Products Co. v. Armitage Hardware and Bldg. Supply, Inc., 54 U.S.P.Q.2d 1766, 2000 WL 562470 (N.D. Ill. 2000); Nike, Inc. v. Circle Group Internet, Inc., 318 F. Supp. 2d 688, 70 U.S.P.Q.2d 1853 (N.D. Ill. 2004). Osborn, Effective and Complementary Solutions to Domain Name Disputes: ICANN's Uniform Domain Name Dispute Resolution Policy and the Federal Anticybersquatting Consumer Protection Act of 1999, 76 Notre Dame L. Rev. 209, 241 (2000) (trademark- holders may simultaneously retrieve an infringing or diluting domain name through the UDRP panel process and seek damages and final adjudication of trademark rights through litigation); Sorkin, Judicial Review of ICANN Domain Name Dispute Decisions, 18 Santa Clara Computer & Hightech L J 35 (2001); Bernstein, The Alphabet Soup of Domain Name Dispute Resolution: The UDRP and ACPA, 716 PLI/Pat 251 (2002); Efroni, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum Shopping, 26 Colum. J.L. & Arts 335 (2003); Rohrer, UDRP Arbitration Decisions Overridden: How Sallen Undermines the System, 18 Ohio St. J. on Disp. Resol. 563 (2003). 42 Arbitration Panels: Estate of Marlon Brando v. WhoisGuard, 77 U.S.P.Q.2d 1229, 2005 WL 3629355 (National Arb. Forum 2005), where the issue was whether the late actor Marlin Brando had made an inter vivos transfer of the domain name marlonbrando.com to the defendant. The court said: “A domain name is personal property no different, for purposes of its proper administration as a possible asset of a decedent, from any other personal property then owned by the decedent. *** [A] tribunal faced with deciding whether Mr. Brando made a valid inter vivos gift of the disputed domain name to Ms. Corrales must examine whether Mr. Brando not only intended to make a gift of that name to Ms. Corrales but in fact actually completed that gift, prior to his death, by completely transferring that name to her without retaining any power to revoke the gift. Such inquiries, which have no bearing on cybersquatting, lie completely outside the narrow and sharply focused reach of the [Uniform Dispute Resolution] Policy.” 43 Third Circuit: Famology.com Inc. v. Perot Systems Corp., 158 F. Supp. 2d 589 (E.D. Pa. 2001). 44 Fourth Circuit: Convey Compliance Systems, Inc. v. 1099 Pro, Inc., 443 F.3d 327, 78 U.S.P.Q.2d 1400 (4th Cir. 2006).