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Cybersquatters who try to steal Internet domain names from their legitimate owners have long plagued online commerce. But law and order is now taking hold in the digital Wild West. In particular, a 5-year-old arbitration program has resolved more than 13,000 domain name disputes, with 81 percent of them decided in favor of trademark holders. And if companies need stronger remedies, they can turn to the federal anti-cybersquatting statute, also 5 years old. The arbitration program, known as the Uniform Domain-Name Dispute Resolution Policy (UDRP), has its limits, according to in-house lawyers. Still, arbitration is generally quicker and easier than resorting to litigation under the anti-cybersquatting law. That makes UDRP the preferred option for most trademark owners, particularly when they have to clamp down on run-of-the-mill cybersquatters. “I think the UDRP has really served the [trademark] community well,” says Rita Rodin, who helped draft the arbitration policy. Rodin, a partner at Skadden, Arps, Slate, Meagher & Flom, says UDRP was designed to deal exclusively with bad faith domain name registrations — Web site addresses that are identical or confusingly similar to a trademark and are registered by someone with no legitimate claim to that mark. UDRP is administered by the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit entity based in Marina del Rey that oversees so-called top-level domain names, including those ending in .com, .org and .net. Disputes over domain names, however, are actually decided by a handful of approved arbitration providers such as the National Arbitration Forum and the World Intellectual Property Organization. In-house lawyers have been among the most regular users of UDRP. A spokesman for Yahoo Inc. says its attorneys have filed 65 arbitrations to date. John Tiedge, assistant general counsel for trademarks and copyrights at Hewlett-Packard Co., estimates that the giant computer maker has resolved more than 50 domain name disputes under the arbitration program. Dell Inc., another computer company, files four to six arbitrations each month, according to Daniel Noonan, Dell’s legal director of trademarks and copyright. Dell and Yahoo each say they are undefeated in UDRP cases. Hewlett-Packard has lost only one or two arbitrations, says Tiedge. Compared with regular litigation, UDRP arbitration is a bargain. The typical filing fee is about $1,500, depending on which arbitration service is used, and attorneys at many companies handle the matter in-house. With no discovery or witnesses involved, the process tends to be quick. After submitting a statement explaining its case, the complaining party typically gets a decision from an arbitrator within six to eight weeks. The main drawback of UDRP is that it provides limited relief. Because the policy does not stem from any international law or treaty, its remedies are restricted to transferring or canceling the domain name, says Rodin. Companies looking for a tougher approach have turned to the federal Anticybersquatting Consumer Protection Act. The law offers statutory damages that range from $1,000 to $100,000 per domain name, as well as preliminary injunctions and the possibility of court orders barring serial cybersquatters from striking again. Although the potential rewards are higher in an ACPA suit, so are the legal expenses. Noonan says Dell is currently spending “tens of thousands” of dollars on an action against a Web site called dellkillers.com. Dell claims the site, which is owned by CompAmerica.com of Cranford, New Jersey, includes “defamatory” content about the computer company. But a spokesman for CompAmerica.com says the dellkillers.com name does not amount to cybersquatting because it involves comparative use of the Dell name. The wide scope of the federal statute, meanwhile, makes it worth the cost for in-house lawyers like Thomas Onda, chief intellectual property counsel at Levi Strauss & Co. In August 2002 the San Francisco-based clothing manufacturer took action against 80-plus domain names that were allegedly infringing the Levi trademark. Rather than track down and initiate arbitrations against the individual owners of each domain name, Levi Strauss sued all of the domain names in one catch-all complaint under ACPA. Within about six months, the court issued an order transferring all the names back to the company. “In one fell swoop we were able to knock them all out rather than dealing with them individually,” says Onda. Alexei Oreskovic is a freelance journalist in San Francisco.

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