Beginning on January 1, 2000, domain name registrars began a new dispute policy that incorporates ICANN’s new Uniform Dispute Resolution Policy (UDRP). Along with complying with ICANN’s dispute methods, they are also following the policies and laws set forth in an amendment to the United States Trademark law, the Anticybersquatting Consumer Protection Act (“The Act”).
These dispute policies are intended to resolve arguments over whether the registered owner of a domain name is acting in good faith by owning a domain name that violates another party’s registered trademark. In order for a registration for the domain name use to be found illegal, the domain must be identical or “confusingly similar” to the trademark, as well as be found to be used in bad faith.
Whether use is in bad faith is decided on a case by case basis. The issues considered include: if the domain name owner acquires the domain name with the express intention of selling, renting, or in some other sense transfer it to a party who owns a registered trademark, or to a competitor of that trademark; registration with the intention of preventing the trademark owner from registering the domain; using the domain to disrupt the business of a competitor; or attempting to draw visitors through creating a chance of confusion between the domain and the trademark.
Finding the domain owner to be in bad faith is a tool for the trademark owner to use in order to warrant a dispute claim. The defendant (domain name owner) then has the right to attempt to defeat the claim of bad faith by proving they have a legitimate right to own the domain.
Claims against a domain name registration may be made through the United States trademark law or through the UDRP, with different variations on actions to be made, depending on the route through which the claimant decides to proceed.
Before the new policies were put in place, a hold would be put on a domain name simply by the claimant proving to have a registered trademark dated prior to the domain name registration date. However, because this acts as a non-judicial injunction, this practice has been repealed. Under the new policies, the registrar will cancel, transfer, or otherwise change a domain status only after it receives either authorization from the domain name owner, a court order requiring such changes, or a decision requiring changes by the ICANN panel.
In the case of Julia Roberts v. juliaroberts.com, the famous actress filed a dispute against the owner of juliaroberts.com. The owner of the domain name was also the owner of several other celebrities and had put juliaroberts.com up for sale on an auction. Once the dispute was filed, the UDRP had to determine: whether the domain was identical to the actress’s name; whether the actress had a trademark or trademark rights; whether domain owner had any legitimate rights to the domain name; and whether the domain owner was in bad faith.
Issue 1 was simply solved because Julia Roberts and juliaroberts.com are clearly identical names. In the case of issue 2, the actress did not have a trademark on her name, but it was decided that the name had established a “secondary meaning,” and therefore held “trademark rights,” even without a registered trademark. A secondary meaning implies that the name is instantly recognizable by the general public as meaning one particular thing (i.e.: Kleenex tissue, Band-Aids, Xerox, etc.). In issue 3, the domain name owner was found not to have rights to the domain name through fair use because the owners name was not the same as the actress, and the page did not relate to the actress in any form, such as a fan-club or parody site. Lastly, because the owner had created a pattern of buying and selling domain names of famous celebrities for profit, the owner indeed owned the domain name in bad faith. The UDRP ordered the domain’s ownership to be transferred to Julia Roberts.
A similar case involving the domain name “jimihendrix.com” ended with the domain owner transferring the domain to the estate of the famous Jimi Hendrix. When it was found that “The Jimi Hendrix Fan Club” that owned the domain also owned various other domains including jethrotull.com and elvispresley.com, it was decided that the owner possessed the ownership in bad faith.
When Jerry Falwell filed a similar case against the owner of both jerryfalwell.com and jerryfallwell.com, his case was overturned because the ownership was found to be in fair use and good faith. The owner was using the websites as parody sites, which are protected as fair use practices. The ownership was also in good faith because there were no attempts made to sell these domains back to Jerry Falwell himself in order to make a profit.
I believe that the courts’ decisions in all three cases were completely fair and right. The owners of the domains containing Julia Roberts and Jimi Hendrix’s names were acting in the sole expectation of making money off of the ownership and exploitation of the famous people’s successes. Had the owners been using the sites for anything useful, such as a fan club, or as in Jerry Falwell’s case, a parody site, and NOT be attempting a sale of the domain, their ownership would have been justified and there would be no case against them. This reasoning was upheld in the case of Jerry Falwell’s crusade against the owner of the domain containing his name. His attempts at blocking the site were purely political, attempting to block a completely legal parody of his character. Had his case succeeded, it would have been a huge blow to First Amendment Freedom of Speech rights.
Posted by mraneo 