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Two years ago, the legal rubric governing domain names and trademark law changed with the invocation of the Internet Corporation for Assigned Names and Numbers Uniform Domain Name Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act. Since then, decisions by ICANN-approved arbitration panels and courts interpreting the ACPA have outlined the contours of these mechanisms governing domain name disagreements between trademark-holders and owners of domain names. An analysis of case decisions finds that trademark-holders are not always winning as easily as perhaps many anticipated in the late 1990s when these mechanisms were being debated. Organizations comprising large trademark-holders lobbied for passage of the ACPA and exerted political pressure on the shaping of policies that resulted in the current ICANN procedures, yet it appears that only the strong and famous trademarks are actually benefiting from these policies. But in some cases, the domain-holder has held onto a domain name or escaped the clutches of ACPA liability. ICANN is a nonprofit, private-sector corporation formed by consensus among business, technical, academic and user communities on the Internet. ICANN has no inherent authority but derives authority from voluntary contracts and compliance with consensus policies by the global Internet community. ICANN promulgates a Uniform Domain Named Dispute Resolution Policy as well as the rules for the policy. Registration, renewal or making changes to the registration information of any domain name with a domain name registrar, such as Network Solutions or Register.com, requires adherence to the policy and its terms. Among these is an agreement to submit to arbitration before an ICANN-approved arbitrator in the event that the domain name is challenged by a complainant on trademark grounds. A complainant bears the burden of demonstrating: 1. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 2. the domain name registrant has no rights or legitimate interests in respect of the domain name; and 3. the domain name was registered or being used in bad faith. Arbitration decisions are all published on the Internet at the Web site of the arbitration form. Adverse decisions can be “appealed” de novo to a court with competent jurisdiction within 10 days of the panel’s decision before the domain name registrar enacts the panel’s decision. Among arbitration decisions in which the trademark-holder fails, the common denominator is inability to convince the arbitrators that the domain name was registered in bad faith or that there was a lack of confusion. Panel decisions cite any number of reasons, many of which indicate a view of the totality of the evidence — not only the domain name, but also the content (if any) of the site, as well as the complainant’s use of the trademark. For example, in Alcoholics Anonymous World Services Inc. v. Friends of Bill W. and Jimmy K., the World Intellectual Property Organization panel found this year that Alcoholics Anonymous World Services Inc. could not wrest control of www.alcoholicsanonymous.org from its owners due in large part to the presence of a prominent disclaimer on the front page of the site that disclaimed affiliation, sponsorship, approval or endorsement by Alcoholics Anonymous. Also significant in the panel’s decision was the decentralized nature of Alcoholics Anonymous and the fact that the national organization encouraged local chapters to set up their own Web sites. ACPA DECISIONS A recent federal district court decision from the Eastern District of Michigan provides comprehensive analysis of the elements and application of the ACPA. In Ford Motor Co., et al. v. Greatdomains.com, et al., the court last December considered motions to dismiss a suit by Ford Motor Co. against a domain name auction site and each individual seller whose domain name incorporated a Ford mark. The court provided extensive analysis of the “bad faith intent to profit” element of the ACPA. Significantly, after reviewing the eight non-exhaustive, “bad-faith” factors identified in the ACPA, the court concluded “the ACPA was designed to target persons who commandeer a domain name for no reason other than to profit by extortion, yet bypass persons with legitimate interests in the domain name — even if they do incidentally profit from the domain name’s status as a trademark.” This interpretation was bolstered by legislative history that demonstrated “Congress sought to prevent the ACPA from being trolled as dragnet, catching every small-fry Internet user whose domain name happens — in some small degree — to correspond with a protected trademark.” The court found the auction site was not liable under the ACPA because it did not “use” or “traffic in” domain names, in large part because the auction site never actually owned the domain names at issue. The district court rejected Ford’s theory of contributory liability of the auction site, finding the Web site was not analogous to flea markets found liable for trademark infringement under some circumstances. This finding was based primarily on the court’s determination that “legitimate uses of other marks [may be] protected under the ACPA” and that only persons directly receiving or transferring property interests in a domain name can be held liable as cybersquatters. ICANN-approved arbitrations will satisfy the need for fast, inexpensive resolution in cases of clear-cut cybersquatting, but more complicated, higher-stakes cases ultimately will be resolved by the courts, and parties can save the extra step by filing a suit rather than forcing arbitration. Adam Alexander is an associate with Cooper & Scullyin Dallas.

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