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The Internet is the information superhighway on which the e-commerce economy travels. Domain names are vehicles for e-commerce, much like trademarks are for traditional marketing. They pronounce a firm’s Internet presence and transition from a “bricks and mortar” concern. However, the value that domain names hold also makes them targets for cybersquatting, which is encouraged by the discrepancy between the low price of reserving a domain name and the higher value it may command from the person or concern that it references. This article addresses the initiatives to combat cybersquatting — the bad faith registration or usage of domain names in order to capitalize upon its resale. A review of some technology and its jargon — as well as the bureaucracy of domain names — may be helpful. GTLDS: “GENERIC TOP LEVEL DOMAINS” The Internet Corporation for Assigned Names and Numbers (ICANN) governs the use of gTLDs. In 1998, the U.S. Department of Commerce delegated its authority to ICANN. Currently, there are seven gTLDs in use; dot-com, dot-net, and dot-org are publicly available, while dot-mil, dot-gov, dot-edu, and dot-int are restricted. ICANN has approved seven new gTLDs — dot-biz, dot-info, dot-aero, dot-museum, dot-coop, dot-name, and dot-pro which will be in use later this year. While the new gTLDs are designed to reduce the incentives for cybersquatting, there has been significant backlash against ICANN’s approval process of them by cyber-rights groups and scholars. CCTLDS “COUNTRY CODE TOP LEVEL DOMAINS” The International Organization for Standardization (ISO) assigns ccTLDs by using a 3166 standard which provides two letter country codes (e.g., “us” for the U.S.’ and “ca” for Canada). Each government establishes its own rules for the distribution of ccTLD domain names. The Official U.S. Domain Registry for dot-us is administered by VeriSign, Inc. While the Registry (a non-profit institution) does not charge any fees, organizations approved to register dot-us may charge a nominal fee. In contrast to other ccTLDs, dot-us is under-utilised, largely due to the popular American perception that dot-com equates to dot-us. Canada’s ccTLD is administered by the Canadian Internet Registration Authority (CIRA) — a non-profit organization which sets policy for and operates the dot-ca ccTLD. CIRA recently began accepting new dot-ca registrations under the new broader rules. There was a transition period for dot-ca registrants under the old process to re-register and maintain existing domain names. The older rules for qualifying for a dot-ca were quite stringent. For instance, a federally incorporated business may have been eligible to register only one dot-ca. Once the Canadian presence requirements are fulfilled, an individual (business or person), almost instantaneously, can register one or more dot-ca domain names on a first-come first served basis. MULTILATERAL & NATIONAL INITIATIVES TO REGULATE DOMAIN NAMES MULTILATERAL INITIATIVES The World Intellectual Property Organization (WIPO) is conducting significant work on domain names. WIPO’s First Internet Domain Name Process, concluded in 1999, focused on the conflicts between trademarks and domain names. At the urging of various countries (e.g., Australia, Canada, and the United States), WIPO has undertaken the Second WIPO Internet Domain Name Process. Issues to be addressed include personal names, geographic indications, indications of source or geographic terms, and trade names. The WIPO ccTLD Program will specifically address the protection of intellectual property at the ccTLD level. A number of issues are particularly concerning to ccTLDs, for instance, the lack of uniformity of qualifications for registering ccTLDs among countries, and how famous trademarks can be adequately protected. Largely based on the recommendations of WIPO’s first process, ICANN’s mandatory on-line arbitration procedure took effect in January 2000. The procedure is governed by the Uniform Domain Name Dispute Resolution Policy (ICANN Policy) and the accompanying Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules). Registrants on gTLDs, or on ccTLDs that have adopted the ICANN process, must consent to the application of the ICANN Policy and Rules. Currently, there are four ICANN approved dispute resolution providers (CPR Institute for Dispute Resolution, eResolution, the National Arbitration Forum, and WIPO). To date, cybersquatting disputes have generally been over gTLDs (specifically, dot-coms), however, disputes over ccTLDs loom as well. The ICANN Policy and Rules are directed at cybersquatters who have registered and use domain names in bad faith (a number of illustrative factors are provided to facilitate this determination). The sole remedy is the cancellation or transfer of a domain name. The ICANN procedure is not a bar to either party submitting the dispute to a court of competent jurisdiction (even after the proceedings have concluded). U.S. INITIATIVES Two main hurdles challenge the application of traditional U.S. trademark law to cybersquatting disputes. First, the Lanham Act (the cornerstone of American federal trademark law) requires the “commercial use” of an infringing mark. Some U.S. courts have interpreted it broadly to include a cybersquatter ransoming the domain name back to the trademark holder. However, in a vast number of cases, U.S. courts have taken a more restrictive interpretation by holding, for example, that registering and activating a Web site does not, by itself, constitute commercial use. The second (and higher) hurdle is the incongruity between traditional jurisdictional-based trademark law and the global-based domain name system. In Zippo Mfg. Co. v. Zippo Dot-Com, Inc., 952 F.Supp. 1119 (W.D.Pa. 1997) the court reviewed the “minimum contacts” jurisprudence on personal jurisdiction and adopted a “sliding scale” analysis based on the passive/active nature of the interaction, and the commercial nature of the exchange of information that occurs on the Web site. The Zippo court’s “sliding scale” analysis attempted to strike a balance between the competing rights of trademark holders and the entrepreneurial spirit engendered by American culture and the Internet generation. However, the global and anonymous nature of the Internet meant that personal jurisdiction over registrants of many domain names was virtually impossible to secure since they are often fictitious and/or are from jurisdictions outside the United States. The U.S. Federal Trademark Dilution Act of 1995 was used with increasing frequency for domain name disputes. However, the Federal Dilution Act did not permit in rem actions. Porsche Cars North America, Inc. v. Porsche.com, 51 F.Supp.2d 707 (E.D.Va. 1999). The 1999 U.S. Anticybersquatting Consumer Protection Act (ACPA), Pub.L. No. 106-113, 15 U.S.C. �125(d) was drawn to meet the jurisdictional limitation. Sponsored by Michigan’s then-Senator Spencer Abraham, the ACPA is the core U.S. strategy to combat cybersquatting. The ACPA amends the Lanham Act and provides a trademark owner with a private cause of action against anyone who, with a bad-faith intent to profit, registers, traffics in, or uses another’s domain name. (The bad faith determination is facilitated by a non-exhaustive list of nine factors). Living persons may also bring a civil action against any person who, without consent, registers as a domain name, their name, or a substantially and confusingly similar name, with the specific intent to profit by selling the domain name. The ACPA provides for injunctive relief, damages, forfeiture or cancellation of a domain name, or its transfer to the owner of a mark. Plaintiffs may also elect, at any time prior to final judgment, to recover statutory damages capped at $100,000 per domain name. The AWA also applies retroactively, albeit that the remedies available are limited. From an international perspective, the most salient feature of the ACPA is the authorization of in rem actions against domain names. The remedies available are limited to the forfeiture or cancellation of the domain name, or transfer of the domain name to the mark’s owner; however, this does not diminish the scope of the remedy. A plaintiff may use the in rem action if the holder of the domain name is not subject to personal jurisdiction in a U.S. federal civil action, or cannot be located. The action may also be brought against multiple defendants, provided they used the same registrar. The judicial district in which the domain name registrar, domain name registry, or other authority that registered or assigned the domain name is located determines where the action must be filed. American and international companies have used ACPA in numerous suits since its enactment. From a Canadian perspective, Heathmount A.E. Corp. v. Technodome.com, No. CA-00-00714A, 2000 WL 1035755 (E.D. Va.) is particularly troubling. In Heathmount, neither the plaintiff (a Canadian Corporation) nor the registrant of the domain names (a resident of Ontario) have any contacts or affiliations with the State of Virginia (other than the fact that the domain names were registered with Virginia-based Network Solutions, Inc.). In denying the Defendants’ Motion to Dismiss, the court interpreted forum non conveniens and international comity. The Virginia court applied an overly demanding test of financial impossibility and entire unavailability of evidence for forum non conveniens. In addressing public factors, the court also pronounced on the adequacy of Canadian legislation and the competence of the Canadian judiciary. Heathmount is currently being appealed to the 4th U.S. Circuit Court of Appeals. Not surprisingly, criticism of the ACPA comes from a variety of sources, both American and non-American. Typical complaints include such grounds as legislative overkill, free speech concerns, promoting reverse domain hijacking, undermining international efforts, and the long-arm implications of the law. CANADIAN INITIATIVES In Canada, trademarks are protected at common law and under the Trademarks Act (a federal statute). Presently no specific legislation addresses domain name issues. Canadian courts are also faced with many of the same challenges in applying traditional trademark law to domain names. MULTILATERAL INITIATIVES NEEDED TO ADDRESS GLOBAL ISSUES National initiatives may ostensibly provide faster short-term solutions, however, the most appropriate long term strategy is to further multilateral initiatives. National initiatives open up Pandora boxes, and typically flop or create a scattered patchwork of potentially conflicting laws. A purely national initiative is inherently inefficient at providing a comprehensive solution to global conflicts marked by complicated conflict of laws and multi-jurisdictional issues. The Internet is a global phenomenon — only global rules can fully address cybersquatting and the host of other Internet-related issues. Vishva V. Ramlall, B.A., LL.B., J.D. works in the Information and Technology Trade Policy Division of Canada’s Department of Foreign Affairs and International Trade. He has represented the Government of Canada at several key international meetings including at the WTO. Ramlall has a broad range of experience in intellectual property issues and has published numerous articles both in the United States and Canada on a variety of technology-related issues. Previously he worked at the law firm of Cassels Brock and Blackwell, LLP and at Nortel Networks. This article was originally published in “The Docket” (The Alumni Magazine of the University of Detroit Mercy School of Law), Spring 2001. The views expressed herein are solely those of the author.

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