Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Law and order is taking hold in the Wild West of the Internet. Cybersquatters who try to steal domain names from their legitimate owners have long plagued online commerce. But an arbitration program that just marked its fifth anniversary has resolved more than 13,000 domain name disputes, 81 percent of them in favor of trademark holders. And if companies need stronger remedies, they can turn to the federal anti-cybersquatting statute, also five years old. The arbitration program, known as the Uniform Domain-Name Dispute Resolution Policy (UDRP), has its limits, say in-house lawyers. It’s best suited for simple disputes. Still, an arbitration is quicker and easier than a suit 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. A partner at Skadden, Arps, Slate, Meagher & Flom, Rodin 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 registered by someone with no legitimate claim to that mark. UDRP, which was officially adopted in October 1999, is administered by The Internet Corporation for Assigned Names and Numbers. Based in Marina del Rey, Calif., ICANN is the nonprofit entity responsible for top-level domain names, including those ending in .com, .org, and .net. But though ICANN oversees the program, disputes are actually decided by a handful of approved arbitration providers like 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 Sunnyvale, Calif.-based Yahoo! Inc. says that its attorneys have filed 65 arbitrations to date. John Tiedge, assistant general counsel for trademarks and copyrights at Hewlett-Packard Co., estimates that the Palo Alto, Calif.-based computer maker has resolved more than 50 domain name disputes under UDRP. And Dell Inc. files anywhere from four to six arbitrations a month, according to Daniel Noonan, legal director of trademarks and copyright at the Round Rock, Texas, company. Dell and Yahoo each say they are undefeated in UDRP cases. Hewlett-Packard has lost only one or two arbitrations, says Tiedge. Compared to 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 is quick. After submitting a statement explaining its case, the complaining party typically gets a decision from the arbitrator within six to eight weeks. The main drawback of UDRP is that it provides limited relief. Because the policy isn’t the product of any international law or treaty, its remedies are restricted to transferring or canceling the domain name, Rodin says. Companies wanting to take a tougher approach have turned to the federal Anticybersquatting Consumer Protection Act. The law offers statutory damages of $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. But though the potential rewards are higher in an ACPA suit, so are the legal expenses. Dell’s Noonan says that his company is currently spending “tens of thousands” of dollars on an action against dellkillers.com. The site is owned by CompAmerica.com of Cranford, N.J., and according to Noonan, features “defamatory” content about Dell. A spokesperson for CompAmerica.com says the dellkillers.com Web address constitutes comparative use of the Dell name, not cybersquatting, and that the disputed content on the site is from publicly available sources on the Web. Still, the wide scope of ACPA makes it worth the cost for in-house lawyers like Thomas Onda, the chief intellectual property counsel at Levi Strauss & Co. In August 2002 the San Francisco-based clothing manufacturer took action against 80-plus domain names infringing its trademark. Rather than track down and initiate arbitrations against the individual owners of each domain name, Levi’s 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 Levi’s. “In one fell swoop we were able to knock them all out rather than dealing with them individually,” says Onda. In the unpredictable world of the Internet, that kind of success is as good as it gets.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.