Portions of the following information are drawn from previous postings on the NPTalk discussion list. The following material is provided merely for background and reference information, and should not be considered or substituted for legal advice. Please consult with your organization's legal counsel for more information. To date, nonprofit legal battles over Internet domain names would seem to suggest a common theme: the holders of trademarked names tend to get the benefit of the doubt in disputes with domain name registrants. This is generally because of the consideration paid to the public's association of a trademark name with its holder. But it is also because entities holding trademarks are presumed to actually have used them to deliver goods and services (or demonstrated the intent to do so). Thanks to extensions of trademark protections-- like the 1995 Federal Trademark Dilution Act, and the 1999 Anticybersquatting Protection Act (ACPA)-- mark holders have been increasingly proactive about monitoring domain name registrations, and issuing warnings and challenges to registrants that sign up domain names that cut a little to close for comfort. Earlier this month, for example, the National Collegiate Athletic Association (NCAA) filed its fourth domain name lawsuit this year. In the most recent suit, an Arizona company registered some ten domain names to promote NCAA championship tickets, resold at a higher price. NCAA alleges that the domain names violate its trademarks-- not to mention that the ticket reselling allegedly resembles "ticket scalping". The three previous legal challenges, involving unauthorized use of a trademark in connection with online gambling sites, ended with either payments to the NCAA or removal of the offending sites. One of the interesting footnotes to the NCAA's current lawsuit is that an arbitration panel actually first weighed the original dispute. When the panel issued a decision that did not acknowledge it's cybersquatting and cyberpiracy claims, the NCAA filed suit. Arbitrating an Alternative to Lawsuits? Despite ignoring the result, NCAA's arbitration highlights the fact that lawsuits are not the only (or primary) means for resolving domain name disputes. The Internet Corporation for Assigned Names and Numbers (ICANN)-- the administrative body for the domain name system and directory of Internet server addresses that determine the identity and location of websites and e-mail addresses-- has what is known as a Uniform Domain-Name Dispute-Resolution Policy (UDRP). UDRP is significant because it is also being proposed as the global process for resolving Internet domain-name disputes. It is also raising issues around general Internet governance, the tension between harmonization of conflicting (and sometimes arbitrary) rules, the online legal sovereignty of other countries, and perceptions of preference towards commercial entities in what is viewed as an already-commercialized and less public Internet. There are a number of legal protections presumed to belong to commercial entities (and individuals) in the form of patents, copyrights, and marks of trade. Courts in the U.S., however, have been attempting to stretch those protections to the Internet, resulting in a number of gaps-- especially with respect to cases outside the U.S.-- as well as First Amendment issues involving freedom of speech online. Add to this set of constraints the simple amount of time and money involved for both sides in a legal dispute, and it's not hard to see why many were clamoring for an easier way to settle domain name disputes. In June 1998, when the U.S. began the process of creating ICANN, language was included in the U.S. Department of Commerce's initial ICANN organizing white paper, requesting the World Intellectual Property Organization (WIPO) to consult on developing a process to resolve combined domain and trademark name disputes. WIPO is the United Nations agency advocating for strong intellectual property protections around the world. In the days when Network Solutions (now owned by VeriSign) enjoyed a monopoly as the sole Internet domain name registrar, it employed a name dispute resolution process, during which contested names were put "on hold", while interested parties hashed out their issues in courtrooms. Pending a court ruling, the only thing the registrar would do is transfer, retain, or remove the domain name. Commercial domain name holders, in particular, found this to be a cumbersome, lengthy, and costly process, which offered no guarantees that their trademarks could withstand the "first come, first served" rush of domain name registrants-- some (but not all) of whom were cybersquatting. In October 1999, eventually ICANN adopted its UDRP , after allowing for public comments and suggestions from domain name registrars that were incorporated along with WIPO's recommendations. It became effective January 3, 2000 for Network Solutions and December 1, 1999 for the then-new domain name registrants. [NOTE: A good one-stop for UDRP updates and information is Udrplaw.net.] What is UDRP? UDRP is a formal agreement between each domain name registrar (for the .biz, .com, .info, .name, .net, and .org top-level domains) and domain name registrants, requiring the latter to participate in third-party arbitration (involving designated dispute resolution service providers) should they be accused of registering domain names in "bad faith." We should add here that conveniently enough, by the end of November 1999, WIPO-- the entity most responsible for laying out the UDRP system-- was approved as the first domain-name dispute-resolution service. The National Arbitration Forum, eResolution, and the CPR Institute for Dispute Resolution are the other arbitration service providers as of this writing. The dispute solution service has to transmit the complaint to the domain name registrant within three days. The registrant then, within 20 days, has to respond to all of the items within the complaint, and make a case as to why the name should not be relinquished. Five days after the response is received, an arbitration panel is named, which makes decisions within 14 days of their appointment. Both parties receive word within three days after a decision is made. All told, it can take, at most, about a month and an half for a dispute to be settled. A complainant can only receive a decision to receive or cancel the domain name at issue, and not monetary awards, under UDRP proceedings. Decisions can, however, be challenged in a court of law. A domain name registrant can trigger arbitration if it registers a name that treads too close to an existing trademark, the registrant has no legitimate interest or protections with respect the domain name, and the name is not actually being used on bona fide ("good faith") terms. Bad faith is categorized as:

1. registering a name mainly to sell or offer it to the trademark holder (or one of its competitors) for profit;
2. disturbing the operations of a competing entity;
3. gaining profit by creating confusion in among the online public; and
4. showing a track record of blocking trademark owners from exercising their mark online.

Legitimate interest on the part of the domain name registrant effectively makes a challenge moot. All a registrant has to do is prove that:

1. the registration was for a name that was actually going to be used to deliver goods or services;
2. the name was not intended to mislead the public but simply represented an honest example of fair or noncommercial use;
3. the domain name reflects a common association with the registrant's identity offline (even if it isn't trademarked).

Among all of the entities out there, which would you think would be the first to file a complaint under UDRP? Strange, but true, while in the middle of its ongoing domain name feud with the World Wildlife Fund (detailed in an earlier NPTalk), the Federation charged an individual with infringing upon its trademark in January 2000. Though the individual had to turn over the domain name worldwrestlingfederation.com, this first decision stressed that trademark holders had to demonstrate bad faith both in terms of registration and actual use against registrants. This isn't as hard as it sounds, especially if the process is weighted against the domain name registrants from the outset... Resources 1995 Federal Trademark Dilution Act http://www.cyberlawyer.com/domains/1125.html 1999 Anticybersquatting Protection Act (ACPA) http://www.gigalaw.com/library/anticybersquattingact-1999-11-29-p1.html[no spaces] National Collegiate Athletic Association (NCAA) domain name lawsuit http://www.ncaa.org/releases/makepage.cgi/miscellaneous/2001082201ms.htm [no spaces] Internet Corporation for Assigned Names and Numbers (ICANN) http://www.icann.org U.S. Department of Commerce's initial ICANN organizing white paper http://www.icann.org/general/white-paper-05jun98.htm World Intellectual Property Organization (WIPO) http://www.wipo.org ICANN UDRP http://www.icann.org/udrp/udrp.htm Udrplaw.net http://www.udrplaw.net National Arbitration Forum http://www.arbforum.com/domains Resolution http://www.eresolution.ca/services/dnd/arb.htm CPR Institute for Dispute Resolution http://www.cpradr.org/ICANN_Menu.htm Domain Name Dispute Resolution: Procedural Pros and Cons Remember that UDRP was set up to only handle disputes involving abuses of trademark names, and nothing else. That meant it was to leave alone those disputes involving domain names that encroached upon names tied to people, places, nonprofits, and government organizations. Almost immediately a number of parties cried foul. For those trademark interests choosing to initiate a complaint, UDRP has not proven to be a deterrent to the "first come, first served" mindset behind Internet domain name registrations. For those domain name registrants targeted by complaints, the setup would seem to suggest that trademark holders are always the aggrieved party. Since we laid out the basics of UDRP, we'll point out some of the complaints of the system. One of the more concise (but no less passionate) articulations of discontent with UDRP comes courtesy of Kieren McCarthy's 7/11/01 UK Register Online article. For the sake of convenience, we've condensed his ten grievances into three chunks:

1. The boundaries of law within which UDRP arbitrators can (and do) ground their decisions are not clear, especially since the terms of a trademark are not technically spelled out in the UDRP. As a result, arbitrators may be stepping outside the UDRP rules, and not limiting their review to disputes around alleged trademark abuses, and basic generally accepted principles of trademark law, to make their decisions. The UDRP panel in the precedent-setting World Wrestling Federation UDRP proceeding, for example, decided that a registrant's offer to sell domain names to the trademark holder could be considered use, such that the act itself constitutes bad faith. Curiously, as a number of voices have pointed out, none of the items of bad faith cited actually stress "active use" as a determinant-- except one regarding registration with intent to resell or transfer a domain name. In short, simply signing up a domain and offering to turn it over for profit proves registration *and* use in bad faith, making the other three bad faith tests almost moot.
2. UDRP does not dictate with which party the burden of proof rests, and permits aggrieved trademark holders to file a complaint before they've even communicated their intentions to, much less attempted a resolution with, the domain name registrant. Recall an earlier NPTalk, where we found that, while trademarks don't need to be registered in order for them to exist, registration gives courts a presumption that the registrant has more of an interest and good faith than other parties. UDRP, however, does not clearly state who has the burden for proving a trademark exists or that one was not violated, or even what constitutes evidence and how it is to be handled and weighed. Parody, for example, is treated as fair use exception to lawsuits and even arbitration around domain name disputes. Yet UDRP arbitrators (many of whom are presumed to be trademark lawyers, according to McCarthy) have been said to demonstrate a bias against sites, which target corporations and other trademarked names. UDRP has been accused of showing a bias against such sites because the parodies contain critiques or criticisms of trademark holders-- in other words, their clients. In a number of disputes, arbitrators have awarded control of parody site domains to the commercial entities they target, to save those targets the trouble of contending with negative public criticism raised by such sites.
3. Under UDRP, the complaining party can also choose the arbitration service, which conducts most of its business online, not in person. The timeline for the arbitration process is too tight, especially for the domain name registrant under scrutiny. Remember, the registrant's 20-day time window to respond to the allegations starts when the arbitrator-- and not the registrant-- first hears of the complaint, while the trademark holder can bring a complaint with the luxury of time to prepare beforehand. This means any additional information discovered outside of that time window is not likely to be included for consideration. Arbitrators have the authority to decide who judges which cases, making transparency and accountability difficult. Worse, as more services enter the fray, the bar for competition is raised, such that there is great incentive to rule in favor of complainants in order to continue to attract business. McCarthy also argues that UDRP arbitration rulings cannot be appealed. If a decision is reached against them, domain name registrants can make a point that they are willing to transfer the domain name, as long as they are compensated for their troubles-- including removing the name from printed materials, removing links to their site, and reestablishing a business identity. Where it gets tricky is that if the asking price is too high, they can be accused of bad faith. Early UDRP decisions, however, also stated that too low a price could also be interpreted as an intention to simply unload a name, rather than using it for legitimate purposes.

A Loophole? As a side note, the arbitration decisions actually can still be challenged in court by either side, allowing for an element of judicial review. At that point, at least in the U.S., domain name registrants can't be forced to go to court in the jurisdiction of the trademark holder's choosing. A domain name registrant who loses an arbitration ruling, however, only has 10 days to file an appeal in court. Remember that if a domain registrant loses an arbitration ruling, that ruling could be appealed in court. One registrant did just that, after losing two decisions to a trademark holder, and wound up discovering perhaps one of the oddest gaps in UDRP, reflected in a noted 12/19/00 U.S. District Court for Massachusetts decision. The domain name registrant at issue attempted to seek a declaratory judgment. This is a judgment stating that the registrant has a legitimate interest in maintaining the registered domain names, because they did not violate the federal Anti-Cybersquatting Consumer Protection Act (ACPA), and therefore should not be forced to turn them over to the trademark holder. The district court, however, found that such a judgment could not be issued. Why? It turns out that before it initiated its UDRP proceedings, the trademark holder had never got around to *stating* its intent to file a challenge in court vis-a-vis ACPA's trademark protection claims against the domain name registrant. This removed the grounds for the court not only to issue a judgment favorable to the domain registrant, but to even deliberate on the matter in the first place! Since the trademark holder won the arbitration decisions, there was, granted, no reason for it to pursue further action. But, by its intentional failure to state a claim to the domain name in court, the trademark holder effectively prevents a domain name registrant from pursuing the only means of legal redress available, and the judiciary from reviewing the outcomes of the UDRP process. Next Steps for UDRP The Non-Commercial Domain Name Holders Constituency (NCDNHC), is one of ICANN's Domain Name Supporting Organizations (DNSO), which represents non-commercial (including nonprofit and non-governmental) Internet interests in its reports to ICANN. It developed a set of UDRP policy recommendations at its June 2001 in Stockholm Sweden meeting. These included:

• exempting domain names which have been registered and held for three years from UDRP challenges;
• incorporating "declaratory judgments" for domain name registrants to initiate UDRP proceedings that prove their legitimate interests in domain names;
• enabling domain name registrars to sign contracts with arbitration service providers, such that all disputes involving that registrar are handled with one firm, rather than initiated on a case-by-case basis by complainant parties;
• closing the loophole allowing trademark holders to preempt domain name registrant appeals in court through the tactics mentioned in the preceding sections.

WIPO has also been busy at work, addressing some of the gaps others have identified with the current UDRP process. The first WIPO report, which formed the basis of ICANN's UDRP as it currently exists, did not address a number of items. At the request of 20 member government bodies, WIPO was asked in June 2000 to develop a "WIPO2" report, to address intellectual property and trademark protections for domain names involving:

• personal names of individuals
• nonproprietary names for pharmaceutical products
• international intergovernmental organizations (including the United Nations and, well, WIPO itself)
• geographic identifiers (not country codes)
• trade names (the popular names under which entities conduct business, versus the corporate names by which they are formally registered. They differ from trademarks in that they identify a firm or organization, rather than the specific product, good, or service covered by a mark)

WIPO issued its recommendations to these issues in its 9/3/01 report, released to the Internet community, including the ICANN governance body. Not surprisingly, WIPO, found that the current domain name registration process hampers the ability of those with "more legitimate" interests in registering the types of domains in the preceding paragraph-- which, by the way, do not currently enjoy protection under existing trademark law anyway. Thus, in an attempt to extend protections to what are, ostensibly, "fair game" domain names, WIPO suggests:

• preventing the registration of domain names determined by WIPO or the U.N.'s World Health Organization to be identical to its list of nonproprietary pharmaceutical names;
• establishing individual national-level dispute resolution systems for intergovernmental bodies to protect against the registration of domain names that mimic or incorporate the acronyms of those bodies;
• weighing how to apply existing mark protections, like the certification for products based upon geographic source, to domain names reflecting geographic indicators;
• no action be pursued with respect to trade names (which are not, with a few exceptions, protected as trademarks), since it is difficult to codify each nation's set of standards regarding what trade names are protected.

Though protections for organizations and government entities were addressed in the recent WIPO report, and those of trademarked commercial interests were discussed in the first WIPO report, protections for individuals whose names are co-opted in another party's domain name registrations, tellingly, were not addressed in either report. More interesting is the subtext on the suggestions regarding geographic terms, which suggests the possibility that additional laws might be needed to address gaps in protections for national, country, state, and other sovereign-specific names-- especially for those nations which currently have no such protections. The Upshot? The complaints may come off as cynical, but the evidence so far suggests one simple fact: the power of a mark has traditionally been applied to, and reflected in, commercial contexts both off- and online. Even when utilized by nonprofits, trademarks are protections on commercial activity towards an audience via the goods and services delivered by some entity. Whatever your thoughts are towards the relative merits of UDRP, it is an inescapable part of the growing global codification of the Internet. The sheer size and scope of the Internet demands a set of procedures that recognize certain basic principles and practices which all users-- and not simply commercial interests-- can both agree upon and buy into. Without greater non-commercial participation in the deliberations around such processes, however, the very means of deciding disputes around ever more valuable online identities will possibly have less tolerance-- and more grief-- in-store for the online public, wherever they may be. But that's not to say commercial trademarks always trump domain name registrants... Resources 7/11/01 UK Register Online Kieren McCarthy http://www.theregister.co.uk/content/6/20304.html World Wrestling Federation UDRP proceeding http://arbiter.wipo.int/domains/decisions/html/1999/d1999-0001.html[no spaces] 12/19/00 decision U.S. District Court for Massachusetts http://www.finnegan.com/summ/cases/sallen_v_corinthians.htm [no spaces] Anti-Cybersquatting Consumer Protection Act (ACPA) http://www.gigalaw.com/library/anticybersquattingact-1999-11-29-p1.html[no spaces] Non-Commercial Domain Name Holders Constituency (NCDNHC) http://ncdnhc.icann-ncc.org NCDNHC June 2001 UDRP policy recommendations http://ncdnhc.icann-ncc.org/docs/resolution/Stockholm/ST-UDRP.html[no spaces] WIPO's first UDRP report http://wipo2.wipo.int/process1/report WIPO 9/3/01 report http://wipo2.wipo.int/process2 Domain Name Dispute Resolution: Five Exceptions to UDRP Trends We have highlighted how domain name conflicts are rooted in allegations of infringement, dilution, or piracy of all or significant portions of trademarked names; or incorporation of names close to that of a trademarked name. The disputants are generally encouraged to settle their differences through the UDRP dispute resolution process, which accomodates disputes brought up only by a trademark holder. In order for claimants to win their complaints (as well as the generally inevitable lawsuits which ensue), they generally need to prove three things:

• they have legal protections with respect to a name, and are actively using it to deliver goods and services;
• another party has registered a domain name, closely resembling the trademarked name, to deliver goods and services;
• there is a strong chance for the trademarked name's audience to be confused as to which name is which.

Believe it or not, there have actually been a number of legal developments this year suggesting that sometimes, the domain name registrant does win. Here are five of the more interesting ones Exchange Domain Irks Trademark Name as Bane A number of domain name registrants intentionally sign up the mistaken spellings of popular and corporate names, in anticipation of the traffic which will inevitably come their way. Some sites under these domains do at least provide URLs to domains visitors might be seeking, but more often than not, the "detour" sites contain little related to sites for which they are mistaken. One company, 555-1212.com -- one of the premier online telephone directory services (especially for its reverse telephone number lookup feature)-- sued the registrant of such a domain, "5551212.com" for infringement of trademark. 555-1212 is the general number for directory assistance in the U.S., Canada, and other areas. In its 4/30/01 decision, the U.S. District Court (Northern California) identified four levels of trademark validity a holder can enjoy (generic, descriptive, suggestive, and arbitrary/fanciful). The defendant had pushed a notion that 555-1212 was, at best, a term that suggests an association of telephone directory assistance in the public's mind. The court considered the "555 1212" moniker, at best, represented a descriptive mark on the surface, but that without an additional association which makes the use distinctive in the context of a user's products or services, the mark cannot be protected. The decision added that there was no proof, contrary to the complaint, that the name had been used by the defendant for commercial activity, a key item in prior trademark infringement cases. The only proof offered was the registration of the name, which, alone, is not considered infringement. The last piece of decision is arguably the most important. The court suggested that in order for a sufficient level of confusion to be established, a domain name not only has to resemble a trademarked name, but also must be tied to activity in the same arena. Simply asserting confusion and customer complaints isn't enough, unless one entity could prove, as the BNA analysis adds, that the defendant was actively using the name for marketing, was expanding activites to compete with the mark holder, or was intentionally trying to cut into the mark holder's audience. In short, in ruling against the complaint, the court found two things: (1) that the simple act of registering a domain name that is thought to infringe on a trademarked name does not, by itself, constitute infringement unless there is also evidence of the name in question being used for commercial purposes; and (2) that in order to hold a domain name as a source of confusion towards another, it must be applied to a commercial activity related to that of the trademark holder. Does Trademark Clog or Drain Domain Name A 5/25/01 ruling from the U.S. District Court for the Southern District of New York, held that the act of registering domain names liable to cause confusion with a trademarked name, alone does not limit the rights of a trademark registrant. A Maryland plumber started her own business, registering 1-800-PLUMBING as the business phone number and obtaining a service mark for the number in 1992, marketing the number widely for her business in 1993. By late 1996, the owner of a New York plumbing business had registered eight domain names that had variations of "800 plumbing" and "888 plumbing" in their names (even "tripleeightplumbing.com"!). That same New York business owner then registered the same number as the Maryland plumber's, with a toll-free services company that promoted the number on a web page for a short period of time (though there were a number of questions as to whether the business owner authorized this). The Maryland plumber filed charges against the company owner, alleging service mark infringement, mark dilution, and cybersquatting. The court not only weighed the three basic trademark protection questions stated above, but had to consider whether the plaintiff had abandoned the mark at some point. According to the BNA synopsis, the court also weighed whether the domain names registered by the defendant were likely to be confused, by considering eight items (which we'll condense into three):

• the strength of the mark (whether it truly helps set the services of the plaintiff apart from others including the defendant);
• the nature of the defendant's activities (including the quality of the services offered);
• the quality and condition of the marketplace (was there potential for confusion and was the public smart enough to navigate through it)

The court found that the mark deserved protection as a descriptive (non-generic) mark, and that the plaintiff had not abandoned it. The Court did find, however, that while the defendant did register the number used by the plaintiff as a domain name, it only possessed domains with the references to the trademarked number, without actually using it as part of its business activities. That activity alone was not enough to prove trademark infringement. The court could not determine the defendant's role in the marketing of the number on the toll-free service's website. That Giant Sucking Sound Michael Bloomberg, owner of a financial media empire, and current New York City mayoral hopeful, has had his name since his birth in 1942. Dan Parisi, New Jersey Internet pornography/gambling/online forum entrepreneur has had the domain name MichaelBloombergsucks.com since 1999. If a dispute broke out between the two over the domain name, which side would you pick to win? In June 2001, the Internet community got its answer. Parisi, the registrant and owner of some 600-700 domain names which all include the word "sucks" at the end of some variation of a company or public figure name, was profiled by Lisa Bowman for a 6/19/01 CNET News.com article; and Amy Standen for the 6/25/01 edition of Salon.com. When anyone types any of the "*sucks.com" names-- like Governmentsucks.com -- into a browser window, they are taken to Parisi's Sucks500.com site, changed from Sucks.com in July 2001. This is an online message board system that allows the Internet public to express its displeasure with the target of the particular domain (or similar sites that Parisi hasn't registered). The forums are monitored to screen out abusive or hateful language. While it's safe to say that Parisi has not exactly endeared himself to all the companies and celebrities singled out, most of them have not threatened legal action. Some, according to Standen, like American Express and Intel have actually communicated their approval of Parisi's activities (might company representatives be monitoring those forums to mine information around consumer dissatisfaction?). The entities that have threatened action against him and other registrants with similar sites, have generally won their trademark disputes to transfer names or shut down sites at the arbitration level, because the complainants successfully argued claims of bad faith (registration with the intent to sell to the trademark holder for profit). In the matter of the Bloomberg dispute, however, the arbitrators held that Parisi did indeed set up a commercial venture to direct people to a site where individual views could be expressed, and not as a means to dilute Bloomberg's name, so no bad faith could be demonstrated. Parisi also won a similar dispute against aerospace and defense industry giant Lockheed-Martin and Wal-Mart earlier this year, on the grounds that a domain name containing both a trademark name and a critical disqualifying term should not be considered similar to the point of confusion. Standen notes that, while he hopes his efforts will generate money, Parisi spent roughly US$100,000 to register his set of domain names, compared to US$5,000 to defend just the MichaelBloombergsucks.com domain. The proceeds from the online porn site (as well as a planned online gambling venture) are used to support the Sucks500.com site, which Parisi wants to expand to allow individuals to write company heads, elected officials, and celebrities singled out for complaints. Those additional features, which were to be a part of the original Sucks.com site, were put on hold, due to, ironically, lack of online interest in paying for such services. AOL Claims Laid Bare America Online received a decision in its recent UDRP arbitration against Canadian porn site operator Media Dial Communications, according to Steven Bonisteel's 8/22/01 Newsbytes.com report. Media Dial had registered two domains, "AOLFind.com" and "Nudescape.com"-- the latter one really irking AOL for, among other things, spreading banner ads over the Internet touting itself as, the "site of choice for AOL users" (quoting Bonisteel). Medial Dial also allegedly offered to sell the domains AOLSearchEngine.com and AOL-Online.com along with AOLFind.com to AOL for some US$100,000, but instead turned over the first two domains and removed its pornography links from the third in response to earlier legal threats. Want to guess what entity was the arbitration service provider for this dispute? Yup, none other than the World Intellectual Property Organization (WIPO)-- architect of the UDRP and the first arbitration service registered with ICANN. Bonisteel writes that Media Dial apparently didn't even bother to respond to AOL's complaint, which makes the resulting decision a bit of a surprise. AOL obtained AOLFind.com, but it lost out on the Nudescape domain. The reason? While Media Dial's association of the domain makes a case for bad faith, AOL did not sufficiently demonstrate that it's trademark was infringed. Moreover, it's trademark wasn't found to be broad enough such that it can preempt the use of "nude" and "scape" by other registrants. AOLFind.com, however, was seen as conflicting with the trademark, and was granted to AOL. Strick Interpretation The 8/27/01 decision by the U.S. District Court, Eastern District of Pennsylvania's in the matter of Strick Corp. vs. Strickland held that trademark law does not automatically entitle trademark holders to domain names incorporating their trademarks. After learning that the strickland.com domain name was already taken, James B. Strickland registered strick.com in July 1995, asserting that "strick" had long been considered his nickname. Transportation equipment maker Strick Corporation, however, asked Strickland to cough up the name in March 1996. The domain name was put on hold in January 1997 by registrar Network Solutions, until the dispute could be resolved, which it was not. After three years of having the domain on hold, Strick Corp. brought a formal UDRP complaint against Strickland in May 2000. The panel ruled that the domain should be restored to active status, under Strickland's registration, recognizing that he was applying it to both a fair and legitimate purpose, as a site identified with his nickname. Strick Corp. brought a challenge to the decision in June 2001 in district court, with both sides pushing for a summary judgment to resolve allegations of trademark infringement and dilution. Remember that Strick Corp., under trademark law, had to demonstrate that Strickland was using Strick Corp.'s trademark for commercial purposes; started doing so after the mark was already famous; and doing so to a degree that it diluted (or weakened) the strength of Strick Corp.'s capacity to distinguish its products. Also recall that one of the main items argued by complainants under the extensions of trademark law-- within the Anti-cybersquatting Consumer Protection Act and UDRP-- is preventing consumers (and ostensibly the public) from being confused by domain names that too closely resemble trademarked names. Strick Corp. asserted that it was effectively blocked from using it's trademark online, because its customers would instinctively look for strick.com, realize that it wasn't the company's site, and therefore be prevented from accessing its services, resulting in a dilution of service. The court ruled in favor of Strickland, and there are two key points to keep in mind from the decision. First, regarding the matter of dilution, the decision states that, "[nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they could lay claim to all .com domain names which are arguably 'the same' as their mark." This is a judicial reinforcement of what the WIPO arbitration found in the AOL domain name dispute above. The scope of a trademarked name cannot be so broad such that it creates a monopoly and a barrier against any future domain name registrations by other parties. Second, the court stated that, "...Internet surfers are inured to the false starts and excursions awaiting them and are unlikely to be dissuaded, or unnerved, when, after taking a stab at what they think is the most likely domain name for particular web site guess wrong and bring up another's webpage.... any confusion that a consumer may have when reaching Defendant's web page rather than Plaintiff's site is not legally cognizable." Basically, the convenience sought by a commercial entity should not determine whether to curtail use of the domain name in question, because Web audiences have the means (including, as the decision explicitly states, search engines) to determine whether what they encounter is what they are actually seeking. So What's Resolved? Despite the aforementioned cases, the domain name dispute resolution process as we know it tends to disproportionately favor trademark registrants. If your organization is large enough to have a good set of financial and legal resources with which to defend itself-- not to mention a good case to support your registration-- you might not have much to worry about. Keep in mind, however, that trademark and other intellectual property protections favor those uses which are commercial in nature and in practice, and not conscience-raising, public awareness, and protest (though these do entail different types of legal protections). Resources North American General Directory Assistance Telephone Number http://atcseditor.freeyellow.com/code.htm U.S. District Court (Northern California) 4/30/01 decision Source: 6/29/01 BNA E-Commerce Law Daily http://pubs.bna.com/ip/BNA/ecd.nsf/85256269004a992085256113002144e4/f7ab71f4c720978185256a7a00004e3?OpenDocument [no spaces] [fee-registration required] 5/25/01 U.S. District Court [Southern NY] decision Source: 6/11/01 BNA Executive Report http://pubs.bna.com/ip/BNA/der.nsf/id/a0a4g9p6k0_ [fee-registration required] Bloomberg.com http://www.bloomberg.com Lisa Bowman 6/19/01 CNET News.com news.cnet.com/news/0-1005-200-6322263.html 6/25/01 Salon.com Amy Standen http://www.salon.com/tech/feature/2001/06/25/sucks Sucks500.com http://www.sucks500.com 8/22/01 Newsbytes.com Steven Bonisteel www.washtech.com/news/netarch/12015-1.html 8/27/01 U.S. District Court (Eastern PA] decision Source: National Arbitration Forum www.arb-forum.com/domains/decisions/94801.htm Source: 8/31/01 BNA Executive Report http://pubs.bna.com/ip/BNA/der.nsf/id/a0a4r1h9q1_ [fee-registration required] Anti-cybersquatting Consumer Protection Act http://www.gigalaw.com/library/anticybersquattingact-1999-11-29-p1.html[no spaces]