Since the advent of the Internet in the early 1990s, domain name
registration has provided a constant source of dispute. On the one
hand, you have people who are merrily registering domain names of
their choosing; on the other hand, you have trademark holders who are
frowning at the fact that their most obvious domain name choice has
already been registered, or worse, that the domain name has been used
for nefarious purposes.
In 1999, while the Internet was just hitting its stride, the Internet
Corporation for Assigned Names and Numbers (ICANN) created guidelines
to resolve the domain name disputes, through the Uniform Domain
Dispute Resolution Process (UDRP). One of the main concerns that this
process addresses is cybersquatting, which is the registration of
domain names that contain trademarked terms. One type of cybersquatter
is one who has registered a domain name in “bad faith” in order to
profit on the re-sell of the domain to the trademark owner. Many
other cybersquatters register the domain name in order to profit from
advertising that the traffic of mistaken web surfers view. Yet still
other users may have registered trademarked words in domain names for
other purposes, or even for the purposes of praising or trashing the
trademark holder.
In order to successfully use the UDRP, the “trademark owner must
establish that the disputed domain is identical or confusingly similar
to its trademark, that the domain holder has no legitimate interest in
the domain, and that the domain was registered and used in bad faith.”(1)
One of the problems with this test is the “identical or confusingly
similar” standard. Unfortunately, so many words are trademark that it
is rendered impossible to register almost any domain name if you were
to exclude them. It seems to me that almost any domain name would meet
this branch of the test. The “identical or confusingly similar”
branch is broadly encompassing, especially when trademarks across
different industries themselves are often “identical or confusingly
similar” in and of themselves. Which begs the question, why should
domain names whose core words are trademarked be reserved by this kind
of process?
Furthermore, what makes a domain name registration legitimate? Can’t
the mere desire to register a domain name render the registration
legitimate? And if I were to decide to register a domain name in
order to profit off of inadvertent traffic or even sell it at a profit
to the trademark owner, can I not do that in the name of capitalism?
Or, even if I registered a trademarked name for the specific purpose
of providing disparaging content regarding the trademark holder, can I
not do it in the name of free speech? Wouldn’t these be considered
legitimate domain registrations done in good faith?
The answer to these questions seems to be “no”. The system set up by
ICANN protects intellectual property rights, while relatively ignoring
fair-use rights. This seems odd given the connection (or
disconnection) between a domain name and actual content delivered on a
page. After all, a trademark is just a connected series of words (at
best), so why should anyone have a totally exclusive right over that
word? The use of the word in issue may not be linked to any product,
service, or organisation on the site that is in common with the
trademarked owner’s material.
The use of this test is how domain dispute claims are decided by
ICANN-approved arbitrators (or, at the request of the respondent, by
three UDRP panellists). But is this UDRP process actually preferable
to regular court processes? The system was set up to provide a
centralised procedure that was quick and inexpensive. However, given
the loose terminology of the procedures as well as other judicial
issues surrounding the decision making process (for example, the
inability to produce binding precedents, the lack of powers for
discovering opposing parties, the problems regarding jurisdiction of
the trademark and domain names), it may still be best left to the
courts to decide upon these matters. After all, the risk of domain
name hijacking of legitimate registrants of trademarked domain names
should be properly balanced against protecting the intellectual
property rights of trademark owners – and who are the arbitrators to
properly accomplish this?
And because of the relative youth of the Internet, I think that there
needs to be a greater core of judicially treated cases in this area
before we allow an international organisation to do our
decision-making for us. Despite our quick reliance on all things
Internet, the world-wide-web is still just a teenager, so who knows
what kind of decisions will be made regarding this domain name
disputes in the future.
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(1) Cisneros, Oscar. “ICANN’t Believe That Domain Name” in Wired, July
27, 2000. Online:
http://www.wired.com/print/politics/law/news/2000/07/37801