Brian Chau is a JD candidate at Osgoode Hall Law School.
Apple commenced legal action in the WIPO against several domain names with obvious similarities to Apple products that host pornography instead of Apple-approved content. The domains in question are iphonecamforce.com, iphonecam4s.com, iphonesex4s.com, iphonexxxforce.com, iphone4s.com and porn4iphones.com, as reported by Domain Name Wire. To succeed, Apple will likely have to demonstrate that it has the trade-mark (and that the trade-mark is identical or confusingly similar), that the registrant has no legitimate interest in the domain and that the domain name was registered in bad faith.
These types of cases raise interesting questions as the internet becomes ubiquitous in how companies market and sell their products. Given the universal importance of domain names as addresses in cyberspace, the legal identity of a domain name registration has not been clear. Are they property? Are they an extension of trade-mark? How should they be regulated? Should companies be able to register domain names corresponding to valuable trade-marks with the intention to either extort the companies to buy the domain names back from them or to free-ride off the goodwill developed by the trade-mark?
It appears that the worst of these offenders is iphone4s.com, which uses exactly the same brand name as Apple’s latest generation handset. An innocent customer may be misled when the customer accidentally types in the address, and gets a rather shocking surprise upon loading the webpage. There have been several recent cases at WIPO with similar facts where the administrative panel decided to transfer the domain name registration to the trade-mark owner after deliberating on the matter (allstateautoinsurance.com and allsalate.com were transferred to the Allstate Auto Insurance Company).
However, for the other domain registrations, it may not be as simple for Apple to require the owners to transfer the registrations. Simply because a domain name registration is found by a company to be offensive to the particular brand strategy associated with their product might not be sufficient grounds to demonstrate bad faith by the registrant. For example, porn4iphones.com unsurprisingly redirects to a pornography site. Would Apple be justified in requesting a transfer, saying that the domain registration would dilute the goodwill associated with their iPhone product line? Would the situation be different if the domain owner used the website for a pornography website specifically targeted towards the iPhone market?
What is interesting about this particular situation is the relatively high profile of the dispute – the mere fact that it is Apple initiating the complaint has generated a large amount of discussion among the internet-using public. As such, it provides a good opportunity to take a look at comments and concerns raised from consumers who may not have a deep understanding of the underlying legal framework. In a cursory review of the Macrumors and Appleinsider forums, I found several comments that I thought covered some rather cogent points:
- “Apple knew what they want to name their phones a long time ahead and could have registered that domain a long time ago… Apple has the same rights and this is a first come first serve service. Porn business might not be the most liked business but people invest money and expect returns. Buying or registering popular domains is a key feature of their business. For this reason, I absolutely disagree with what Apple is doing.” (Mad-B-One, Macrumors.com)
- “I'm sorry, but this is pretty hilarious... I feel bad for innocent folk who've gone to some of the more safe domain names, only to get a big surprise” (Sackvillenb, Macrumors.com)
- “Obviously Apple wants to do this because they are planning to launch their own porn site for iOS. That's why they are so adamant about no porn on the app store .. because they are planning their own porn newsstand app or perhaps Fap Store?” (HelveticaNeue, Macrumors.com)
- “So if you register a domain before some company copyrights the words...who wins?” (ZipZap, Macrumors.com)
- “They absolutely mislead the user. A lot of users are not Internet savvy. If they type "iPhone4s.com" into their browser...what do you think they expect to see? People can register domains - but if they register using someone else's brand/trademark then they are infringing. They are using Apples global brand presence to attract traffic to their sites… When a domain name has no meaning/relevance to the content or products and services on the site...this is classed as being registered in bad faith under UDRP.” (fleggy, Macrumors.com)
- “Can't Apple just buy the domain name from the current owners? It was registered 3 years ago, an although they are obviously trolls nothing stopped Apple from registering the address in advance.” (saa rek, Appleinsider.com)
- “Why pay the market price when you can take the average joe to court, beat him down with legal costs, and force him to give it up for much less.” (airnerd, Appleinsider.com)
- “Because Apple does not want the iPhone name linked with porn venders who are clearly using the popularity of the brand to lure in people who may have no need or interest for porn. Apple has every right to keep it's name clean and not associated with porn which is a controversial subject that they need no part of…” (Rtapps, Appleinsider.com)
It appears that there is public support for both sides of the coin but also some confusion with regards to the purpose of domain name dispute resolution mechanisms. Are they designed to protect innocent brand owners from market confusion and dilution of their brands, or is it a tool for brand owners to oppress domain name registrations that they find morally repugnant? Maybe by reading about high-profile matters like these, the average internet user will learn what constitutes “bad faith” and also what principles these domain name decisions are based on.