domain name disputes

This page looks at domain name disputes (eg cybersquatting and typosquatting) and mechanisms such as the UDRP, ACPA, CDRP and auDRP.

It covers -

• cybersquatting - concepts and issues
• typosquatting - 'stealth' squatting
• protest domains - the sucks phenomenon
• responses - business practice, legislation and arbitration
• statistics - the extent and value of disputes
• studies - highlights from the academic literature
• the UDRP - the global mechanism under ICANN auspices
• national rules - an overview of ccTLD regimes
• dot-au and the auDRP - disputes in Australia
• the US and ACPA - US federal and state legislation
• Canada and the CDRP - arbitration for dot-ca

A domain name is a mnemonic for a string of digits that identifies an address in cyberspace. Disputes about domain naming have come to embrace a range of disputes about use/misuse of those addresses: who has the right to use a particular namem are there limits on free speech, what are appropriate restrictions on names that are similar to that of a particular address. Responses to those questions reflect personal values and commercial interests. They also reflect different registration and intellectual property regimes.

     cybersquatting

Cybersquatting involves registering a domain name in 'bad faith', in particular -

• to profit by selling that address to a business or individual (eg Nike, British Telecom, Madonna) with the same corporate name, product name or trademark
• to deny those entities the use of the domain name
• or to gain a benefit by confusing surfers, who may believe that the address is operated by a particular brand or corporate name owner.

A domain name is important because it can embody an offline corporate identity, a trademark, a geographical appellation or a personal name. That embodiment has economic and cultural value, for example reflecting the billions of dollars spent on marketing Pepsi or the years of goodwill accrued by philanthropic organisations.

A name is also important because, as we discussed in considering commercial valuation, it's an address in cyberspace: some addresses are easier to find than others, some names are online destinations (and thus generate traffic statistics that can be commodified) because they share the same words as online entities.

Disputes about 'ownership' of domain names reflect different perceptions of the DNS. Culture Wars on the Net: Trademarks, Consumer Politics & Corporate Accountability on the World Wide Web (PDF) by Rosemary Coombe & Andrew Herman for example comments

If you think the Web is simply a marketplace, a big mall where companies compete for brand identity and mindshare then Playboy's trademark protection makes sense. While many large corporations have sunk piles of money into making this vision of the Web a reality, vast numbers of individual people are busy pursuing a different vision one in which the Web is a giant communications network in which we find one another based on a shared interest, be it bottle-top collecting, Proust, or Playboy bunnies. In the latter vision, any company that tries to clamp down on use of its name is also going to stifle any chance of building an enthusiastic following across the Web. Playboy, with its history as the grand-daddy of pinup magazines, is obviously less interested in exploiting the Web's potential for building new kinds of relationships than in simply protecting the gold mine of its existing brand. Playboy can afford lots of lawyers and appeals, and there is no guarantee that its proprietary approach to words won't prevail. And if the law ends up treating the Web as one big business directory, then we shouldn't be surprised if the medium ends up becoming as scintillating as a volume of the Yellow Pages.

It reflects different registration rules. Domain registration in several of the gTLDs - notably dot-com - and some ccTLDs has a 'first come, first served' basis. That means individuals and organisations have been able to register names - often several thousand names - that feature words used in trademarks, corporate names, the names of prominent people, country names or other geographical names. In dot-au and some other ccTLDs there are 'close association' requirements that impede registration of names by unrelated entities and limit development of a secondary market (ie restrictions on transfer inhibit speculative registration).

Disputes also reflect the shape of naming offline. Some terms may be protected under trademark or other legislation, which varies in detail from country to country and which often protects different uses of a term by different entities. Ford Model Agency, Ford Motors, Ford Real Estate and Ford Plumbing are distinct trademarks and registered business names owned by different entities. Many individuals have a surname that's the same as a words in a business name or trademark. That has led to conflict where a trademark owner has sought to take a registration held by an individual whose surname is the same as the mark or that relates to a business name rather than a mark (eg the Nissan dispute in the US). All names are equal; some are more equal than others.

In some disputes there is no attempt to hold a trademark owner hostage. Instead the disagreement involves conflict between two entities with legitimate interests in using a domain name. Under trademark law Ford Motors and Ford Plumbing can each have a 'ford' mark but there is only one ford.com domain, so that one entity is going to have to use a different address. There have cases where a trademark owner has taken action against holders of a domain name that contains that trademark, even where there's little chance of confusion, to obtain the desirable dot-com domain name.

     typosquatting

Typosquatting involves registering names that are minor typographical variations on brand names or other desirable addresses on the web. The expectation is that surfers will encounter the 'typo' site when they mis-key the desired domain name (eg www.netcsape.com, telsra.com, microsotf.com, altavsita.com, altavisto.com or amazom.com).

Typosquatting has generally been regarded as a sign of bad faith and has taken two forms.

Some typosquatters, particularly in the adult content industry where the revenue of many site operators is primarily dependent on the number of visitors to a page or set of pages, have simply sought to free-ride on traffic. Ben Edelman's 2003 report offers an elegant analysis of bad practice by a US typosquatter whose 5,000 sites mousetrapped inadvertant visitors (eg disabled the 'back' command on browsers) into viewing erotica.

Other typosquatters - like those making what many rights owners consider to be improper use of metatags - have sought to cream off customers of commercial sites. Mis-type the address and you arrive at a site that offers products/services from a competitor or that advocates a political message quite different to what you were expecting.

One example is the 1998 Jews for Jesus case (PDF), a dispute between the registrant of jews-for-jesus.org and a critic who registered jewsforjesus.org and jews-for-jesus.com for sites that ridiculed the registrant's beliefs. The US court considered that the two registrations had been made in bad faith and referred to the 1994 dispute between Princeton Review and its competitor Kaplan Educational Center. Princeton registered kaplan.com for a site disparaging Kaplan and praising the Princeton Review.

     protest domains

Most disputes have a commercial basis and are amenable to notions of 'bad faith' registration. Domain names used in some 'sux' sites pose more difficult problems, notably in the US regarding free speech.

As the term suggests, sux sites are established by individuals or advocacy groups to criticise a business, a government agency, another organization or even a prominent individual. The domain names for such sites often incorporate a sux or sucks suffix (eg exxonsux.com, aolsucks, microsoftsucks, asdasucks.co.uk or telstrasux.com).

Some, such as starbucked and noamazon.com, are terse and even witty. Others are less succinct (eg guinness-really-really-sucks, guinnessbeerreallyreallysucks and verizonshouldspendmoretimefixingitsnetworkandlessmoneyonlawyers) or so hermetic as to have little meaning to anyone other than the registrant, eg pepsibloodbath, satanlovesthewashingtonpost or washingtonpost-iammadashellandnotgoingtotakeitanymore (the latter names from an enthusiast who's registered over 50 anti-WP names).

Some sites are staid venues for cogent criticism; others contain what one WIPO panel described as "scandously and disgustingly abusive" content. Those attacked have accordingly exhibited a range of responses, including claims of defamation, breaches of copyright and trademark infringements - whether direct or through dilution of the mark on the basis that it's tarnished through association with illicit activity. some have successfully claimed that registration was in bad faith: one Asda critic for example lost his domain on the basis that he'd offered to sell it to the UK retailer. Entrepreneur Dan Parisi, operator of the Whitehouse.com adult content site, gained attention for registration of 700 domain names containing 'sucks' and a major brand or corporate name.

Registrants, particularly in the US, have responded that the names and site content are protected as free speech and that visitors can readily differentiate between a target site and its sucks counterpart, meaning that there's no infringement. Critics such as the US Chilling Effects Project have argued that courts and arbitration panels tend to favour corporate interests in domain name disputes, thereby chilling public discourse. In 2000 the US Consumer Project on Technology proposed a new dot-sux gTLD, to be administered by a Dot Sucks Foundation, as a special zone outside trademark constraints "to enable citizens to improve civil society."

     responses

Responses to squatting have taken several forms.

Some businesses and other entities have acquired domain names from a registrant, treating payment of 'ransom' as their only option or merely as less costly than engaging in litigation. That acquisition has driven the secondary market. Others appear to have worked around restrictions by acquiring the registrant in order to gain the name.

Some have simply sat out the speculative bubble, gaining the name they seek from a registrar when the holder fails to renew the registration. We've noted elsewhere that several million dot-com names, for example haven't been renewed by the original registrant.

Some have engaged in large-scale defensive activity, registering major variants of their corporate/brand name in all significant TLDs. That has included preemptive registration of some sucks sites: the Cheney & Bush presidential campaign for example registered bushsucks.com, only to face bushsucks.us in the revitalised dot-us ccTLD. Defensive registration isn't excessively expensive for major corporations but appears to have been superseded by reliance on litigation.

Others have sought protection under national/state legislation or under TLD-specific dispute resolution mechanisms, such as the UDRP and auDRP, that are based on the contract between the registrar and registrant (and are thus underpinned by national and international commercial law). That action has fuelled the arbitration sector: lawyers, journalists, lobbyists and commentators. It hasn't been restricted to major corporate interests: one example is action taken by the People for the Ethical Treatment of Animals (PETA) advocacy group against the registrant of the People Easting Tasty Animals (PETA) parody site (PDF).

DNS disputes are contentious. Bodies such as the Domain Name Rights Coalition (DNRC), the Association for Domain Owners Rights (ADOR) and the loopier TLD Lobby (TLDL) consider that 'squatting' is a perjorative for what is really an exercise of intelligence/investment. Others perceive many of the remedies as being biased in favour of large businesses - one man's cybersquatting is another man's commercial savvy, all within the rules of domain naming within different countries (and using different registries).

     statistics

Figures on the prevalence of squatting, on its economic significance and on the dimensions of litigation are contentious.

As of October 2002 around 11,000 actions had been initiated under the UDRP.

Particular entrepreneurs have attracted attention: Dennis Toeppen for example used the trademarks of over 100 major corporations in registering several hundred domain names. He successfully sold some names for up to US$15,000 per domain before facing litigation over trademark dilution and other offences.

There are no authoritative global figures on the number of companies that have simply bought out speculators or blatant squatters. Figures for the global value of such transactions similarly aren't available.

A range of academic, industry and enthusiast sites track individual domain disputes and the evolution of dispute policy. UDRP sites and databases of particular importance are noted on the UDRP page; particular disputes are noted in journals and newsfeeds identified in our News Guide. Other sites specialising in DNS disputes include DomainBattles and DomainState (formerly Domainshame).

     studies 

We've highlighted particular studies - such as Dan Burk's 1995 paper Trademarks Along the Infobahn: A First Look at the Emerging Law of Cybermarks and Michael Blakeney's 1999 Murdoch E-Law Journal article on Interfacing Trade Marks & Domain Names - in a detailed examination in the Intellectual Property guide on this site.

Jessica Litman's 2000 The DNS Wars: Trademarks & the Internet Domain Name System (PDF), like her other writing on intellectual property, deserves consideration.

James Hutchinson's UK Journal of Information, Law & Technology paper on Can Trade Mark Protection Respond to the International Threat of Cybersquatting?" offers a succinct review of US and UK litigation about cybersquatting and 'passing off'. Deborah Ezer's 2000 paper Celebrity Names As Web Site Addresses: Extending the Domain of Publicity Rights to the Internet highlights particular issues regarding the 'right of publicity', discussed in more detail in our Intellectual Property Guide here.

Dara Gilwit's The Latest Cybersquatting Trend: Typosquatters, Their Changing Tactics, and How To Prevent Public Deception and Trademark Infringement (PDF) considers typosquatting.

A perspective from US commercial interests is provided in the 2001 paper by Julie Katz & Aron Carnahan on Battling the "CompanyNameSucks.com" cyberactivists, Matthew Searing's 2000 paper (PDF) What's in a Domain Name?" A Critical Analysis of the National & International Impact on Domain Name Cybersquatting and Patrick Jones' paper Protecting your "SportsEvents.com": Athletic Organizations and the Uniform Domain Name Dispute Resolution Policy.

For a broader perspective we recommend the cogent UK Journal of Information Law & Technology paper by Richard Wu on New Rules for Resolving Chinese Domain Name Disputes - A Comparative Analysis, Christopher Lee's 2000 paper The Development of Arbitration in the Resolution of Internet Domain Name Disputes and Kevin Eng's 2000 Breaking Through the Looking Glass: An Analysis of Trademark Rights in Domain Names Across Top Level Domains paper.

     national regimes

Most nations have rules, of varying complexity, to deal with domain disputes. Increasingly those rules are based on the UDRP, with modification to reflect local circumstances.

Nations that have simply adopted the UDRP for disputes regarding registrations in their ccTLDs include Antigua & Barbuda, the Bahamas, Ecuador, Fiji, Guatemala, Laos, Mexico, Namibia, Niue, Panama, Uganda, the Philippines, Romania and Venezuela. In July 2001 Singapore's Network Information Center released proposals for a new UDRP-based scheme.

British administrator Nominet is considering changes to the UK domain name dispute resolution process. The proposed rules would feature a two stage process in which the parties would enter mediation for the two weeks. If unsuccessful, the case would be referred to an arbitrator.

     Australia and auDRP

Disputes regarding 'open' 2LDs in the dot-au space - administered by auDA - are handled under the au Dispute Resolution Policy (auDRP). The derivation, shape and implementation of that policy are discussed in more detail in the auDA profile on this site.

The policy is based on the UDRP, modified to reflect particular features of the dot-au regime such as the 'close association' requirement that inhibits speculative registration and a secondary market in domain names. It is underpinned by the contract between registrants and registrars.

The auDRP came into effect on 1 August 2002. So far it has attracted little criticism (or indeed comment), with only one ruling as of 30 January 2003.

A range of Australian intellectual property law (highlighted here) and trade practices addresses broader concerns regarding trademark infringements and 'passing off'.

     US and ACPA

The UDRP involves arbitration rather than litigation under state/national trade practices or trademark legislation - for example about 'passing off' - or special cybersquatting legislation. The enactment that has attracted most attention is the US federal Anticybersquatting Consumer Protection Act (ACPA), which came into effect in 1999.

Remedies under the UDRP are limited to transfer or cancellation of the domain name and, compared to litigation in US courts, legal costs are quite low. UDRP critics have, however, argued that recourse to US courts may produce quicker results.

A domain name holder found to be a cybersquatter under ACPA is liable for damages (statutory damages up to US$100,000 per domain name, or actual damages and profits), plus court costs and lawyers fees.

There is liability if the registrant -

• has a bad faith intent to profit from a protected mark or personal name
• registers, traffics in, or uses a domain name that is
  a identical or confusingly similar to a distinctive mark;
  b identical, confusingly similar or dilutive of a famous mark; or
  c protected under provisions relating to the Olympics or related marks.

US courts have ruled that litigants may use ACPA to overturn a UDRP arbitration panel decision.

ACPA has attracted increasing attention from legal specialists. Examples are Catherine Struve & R Polk Wagner's 2002 Realspace Sovereigns in Cyberspace: Problems with the Anticybersquatting Consumer Protection Act (PDF) and Sherry's 2002 Haste Makes Waste: Congress & the Common Law in Cyberspace (PDF).

Kevin Heller's 2001 paper The Young Cybersquatter's Handbook: A Comparative Analysis of the ICANN Dispute considers the UDRP and ACPA. There's a broader review in Adam Waxer's 1999 The Domain Name Fiasco: The Legal Battle Between the Current Domain Registration System and Traditional Trademark Law (PDF). A useful overview is provided in the US Patent & Trademark Office report (PDF) to Congress regarding ACPA.

A 2001 Californian state anticybersquatting law, reflecting personality rights legislation, protects the names of "living persons and deceased personalities" by prohibiting bad faith registration of domain names that are "identical or confusingly similar" to the real names of notable people, living or dead. The intention is to provide a

higher level of protection against internet fraud and will make it easier for consumers to navigate the internet by reducing the number of fraudulently registered names.

     Canada and the CDRP

Dot-ca administrator CIRA, the Canadian counterpart of auDA, established the CIRA Domain Name Dispute Resolution Policy (CDRP) to cover disputes regarding transfer or cancellation of dot-ca names.

As with Australia, the Policy centres on domain names registered in bad faith and is underpinned by by the Registrant Agreement (RA) that all dot-ca domain name registrants enter into at the time of registration.

The CDRP describes the nature of the dispute resolution process, requirements for those wishing to initiate a proceeding and types of bad faith registrations. It is complemented by the CIRA Domain Name Dispute Resolution Rules (here) that cover procedures for initiating and responding to a CDRP proceeding.

Dispute resolution services under the CDRP are provided by two arbitrators: the British Columbia International Commercial Arbitration Centre (BCICAC) and Resolution Canada.




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