What's in a Domain Name? Famous Names and the UDRP, 1218 COBJ, Vol. 47, No. 11 Pg. 48

• Author: By LEIGH AUGUSTINE AND ZACH WARKENTIN
• Position: Vol. 47, 11 [Page 48]

47 Colo.Law. 48

What's in a Domain Name? Famous Names and the UDRP

Vol. 47, No. 11 [Page 48]

The Colorado Lawyer

December, 2018

INTELLECTUAL PROPERTY LAW

By LEIGH AUGUSTINE AND ZACH WARKENTIN

The Uniform Domain-Name Dispute Resolution Policy governs alternative dispute resolution of complaints about domain name registrations. This article describes the Policy and uses case summaries to illustrate key practice tips.

Imagine six weeks before the Olympic Games, a couple walks into your office with an urgent dilemma: their son, who was in the U.S. Ski Team's development program, unexpectedly earned a spot on the "A" Team and was headed to the Olympics. Along with the elation one would expect with such an honor, this newfound fame might also create some legal challenges. For example, the couple might ask why, when they typed in theirson-sname.com, they were automatically forwarded to a pornographic website. You would have to explain that after their son's name had hit the headlines—but before they were able to register theirsonsname.com—an opportunistic third party purchased the domain name in question. Then, to create a bit more urgency than merely "parking" the domain, the third party had set it to forward to the pornographic website. You would have to tell the couple that this third party was likely just waiting for a phone call from the athlete or his representative in an attempt to make some quick cash, and advise them about their legal options to resolve the situation.

This article discusses domain name disputes under the Uniform Domain-Name Dispute Resolution Policy (UDRP). It provides an overview and brief history of the UDRP and summarizes several UDRP disputes regarding celebrities, politicians, and names used as trademarks. The article also highlights key takeaways from those cases.

A Brief History of UDRPs

In the 1990s, a new property issue arose from the advent of widespread Internet access and domain name registration: cybersquatting. One infamous cybersquatter, Dennis Toeppen, registered hundreds of domain names, including panavision.com, deltaairlines.com, eddiebauer.com, and yankeestadium.com.¹ He then used those registrations to try to coerce money from the rightful trademark owners.

In 1999, largely in response to cybersquatting, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA),² which defined cybersquatting as the registration, trafficking, or use of a domain name in a bad faith attempt to profit from another's trade or service mark.³ The ACPA created a cause of action against those who use confusingly similar or dilutive domain names.

Around the same time, the Internet Corporation for Assigned Names and Numbers (ICANN),⁴ the nonprofit organization tasked with managing the Internet's global domain name system, approved the first version of a worldwide UDRP.^[5] The UDRP offers an aggrieved party (a complainant) a quick, simple, and international means of challenging a domain name registration through alternative dispute resolution when it believes a third party (a registrant) is infringing or diluting its brand, or as in Toeppen's case, if the cybersquatter merely purchased a domain name quickly and did not have a legitimate commercial purpose for doing so.⁶

ICANN uses "registrars," which are companies it accredits to offer domain registration services, such as GoDaddy and Network Solutions.⁷ Whenever a registrant registers a domain name, the registrar requires the registrant to consent to the UDRP as part of the domain name registration agreement.

The UDRP allows complainants to adjudicate domain name disputes via five third-party mediators,⁸ such as the World Intellectual Property Organization's Arbitration and Mediation Center (WIPO)⁹ and the National Arbitration Foundation (NAF), which use one- or three-person panels (Panels) to decide the disputes.¹⁰ Panel decisions are enforceable internationally.¹¹

Registration agreement provisions vary, but generally, when a party believes a domain name violates its intellectual property rights, it may file a complaint with any of the five tribunals.¹² The tribunal immediately contacts the registrar, which (1) notifies the domain registrant of the complaint filing, and (2) places a "registrar lock" on the subject domain name¹³ to prevent "cyber flight."¹⁴ The registrar lock precludes modification, deletion, or alienation of the domain name, as well as modification of the domain name contact's details. This is typically the end of a domain name registration dispute, because a majority of domain name owners do not respond to complaints.¹⁵

WIPO in Geneva, Switzerland handles most UDRP proceedings.¹⁶ WIPO decided the first UDRP case on January 14, 2000," in a dispute over the domain name "worldwrestlingfederation.com.¹⁷ In that case, WIPO ruled the registrant registered the domain name in bad faith and solely for the purpose of attempting to sell it to the World Wrestling Federation (WWF), a then-existing, commercially successful sports and entertainment corporation. The WIPO panel ordered the registrar to transfer the domain name to the WWF.

Pursuant to the UDRP, a tribunal can order the transfer or cancellation of, or changes to, a domain name pursuant to the terms of the registrar's registration agreement.¹⁸ Upon such an order, the registrar has the authority to directly transfer the domain name without the registrant's authorization. The scope of any UDRP decision is limited to deciding who has superseding rights in the domain name; monetary awards or equitable remedies are not available. However, the losing party may subsequently challenge a Panel's decision via a civil claim in an appropriate jurisdiction, which is generally where the respondent is located.¹⁹

WIPO handles approximately 2,000 to 3,000 cases per year, covering between 3,000 and 5,000 domain names.²⁰ WIPO fees typically cost between $1,500 and $5,000, depending on the number of domain names at issue and the number of arbitrators (one or three) a party requests to decide the issue. Most UDRP cases result in transferring the domain name to the complainant Of the 2,538 WIPO cases filed in 2017, only 171 (7%) had the complaint denied, leaving 2332 (92%) to be transferred to the complainant, with 35 cases (1%) canceled before an arbitrator's ruling.²¹ The overwhelming reason for these results is respondents' failure to file a response.

UDRP disputes are adjudicated quickly. After commencement of a WIPO proceeding, which is filed and paid for online, the registrar typically locks down the domain name in question within four hours. Within 24 hours, WIPO generally replies to the complainant with a case number and notifies the respondent of the 20-day deadline to file a response.²² After expiration of the 20 days, WIPO assigns the case to a Panel,²³ which has 14 days after appointment to adjudicate the case based on the pleadings.²⁴ To win, a complainant must show three things:

■ the subject domain name is identical or confusingly similar to a mark in which the complainant has rights;

■ the respondent does not have any rights or legitimate interests in the domain name; and

■ the respondent registered and used the domain name in bad faith.²⁵

The bad faith element is often the most difficult to prove. Bad faith may be established by showing:²⁶

1. circumstances indicate the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally the complainant), or to a competitor of that complainant, for valuable consideration in excess of the respondent's out-of-pocket costs directly related to the domain name;

2. the domain name was registered to prevent the trademark or service mark owner from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct;

3 the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

4. by using the domain name, the respondent intentionally attempted to attract Internet users to the respondent's website or other online location for commercial gain by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location, or of a product or service on the respondent's website or location.

Snapshots of Domain Name Cases

The following case summaries illustrate a variety of UDRP disputes involving (1) the actual name of a famous individual, (2) the stage name of a famous individual, (3) an individual's name that is also a registered trademark, or (4) politicians' names. The general rule is while the UDRP does not specifically protect personal names, where a complainant can demonstrate use of the name as a mark in trade or commerce, he or she may be able to establish intellectual property rights in the name.^[27]

Use of Actual Names

► juliaroberts.com.²⁸ After registering the domain name, the respondent placed it for auction on eBay. The respondent had also registered 50 other domain names and received offers as high as $2,550 for the subject domain name.

Holding. WIPO ordered the domain to be transferred to Roberts. It ultimately found the domain name was identical to Roberts's common law trademark in her name; the respondent had no rights or legitimate interests in the domain name; and the respondent registered and used the domain name in bad faith by attempting to auction the name to the highest bidder.

Takeaway. As one of the first celebrity cases (it was heard by WIPO four months after the world-wresdingfederation.com case), the juliaroberts. com dispute is a seminal case...