Internet Domain Names and ICANN Arbitration: The Emerging "Law" of Domain Name Custody Disputes
Badgley, Robert A., Texas Review of Law & Politics
The Internet is transforming business, communication, and even personal habits. The extent to which it will transform the law remains to be seen. However, new legal concepts, doctrines, and even causes of action are already emerging to deal with the opportunities and opportunism generated by the Internet.
This article focuses on the development of legal responses to disputes revolving around one of the cornerstones of the Internet: the domain name. In particular, the article surveys developments concerning the phenomenon known loosely as "cybersquatting." Even more precisely, this article surveys the development of an international arbitration regime established in late 1999 to address cybersquatting issues. It concludes in general that the arbitration system has largely achieved its goals but that a standing committee should be established to maintain the integrity and consistency of the rules that the arbitrators are required to apply.1
Cybersquatting has come to mean many things these days. Two classic forms of cybersquatting are: (1) an individual registers a domain name identical or confusingly similar to a well-known trademark with the hope of selling it to the trademark owner at a hefty profit;2 and (2) an individual registers a domain name that is identical or confusingly similar to a well-known trademark with the hope of luring mistaken Internet users to his web site.3 Through the latter form, often known as cyberpiracy but treated here under the general rubric of cybersquatting, the domain name owner typically generates revenues at his web site by selling advertisements, selling goods or services, and so forth.4
Cybersquatting, as that term has evolved, implicates issues of trademark law, unfair competition law, free speech rights, and other legal concepts. To the extent that it is seen as a problem, cybersquatting can be addressed in numerous ways.
First, the trademark owner can simply buy the domain name from the alleged cybersquatter.5 Although this has been done in a few instances, it hardly seems an appropriate solution for most trademark owners who believe that they must protect their intellectual property rights and not give in to the demands of cybersquatters.
Second, the trademark owner may be able to file a trademark infringement or unfair competition lawsuit against the domain name registrant.6 However, this is often an expensive proposition. Moreover, an infringement action generally requires the trademark owner to show that the alleged cybersquatter has used the domain name as a trademark.7 In other words, the defendant must be using his domain name to identify the source of some product or service. Such a showing is not possible in cases where the alleged cybersquatter has simply registered the domain name and done nothing further with it.
Third, the trademark owner may file a trademark dilution lawsuit under the 1995 Federal Trademark Dilution Act (FTDA).8 However, the FTDA applies only to famous trademarks, and many trademark owners, therefore, may not satisfy the requirements of the Act.9 Moreover, as with an infringement action, a dilution claim is predicated on a showing that the alleged cybersquatter has used the domain name in such a manner as to dilute the plaintiff's mark.10 The "passive cybersquatter" thus remains outside the reach of the FTDA.
Fourth, the owner of a distinctive or famous trademark may turn to the 1999 Anticybersquatting Consumer Protection Act (ACPA).11 The ACPA has already proven a capable tool for wresting away domain names from cybersquatters, including those whose web site content arguably is not infringing of the plaintiffs trademark.12
However, by far the favorite anticybersquatting tool at the disposal of trademark owners is the international cyberarbitration regime established by the Internet Corporation for Assigned Names and Numbers (ICANN).13 Effective December 1, 1999, ICANN implemented the Uniform Domain Name Dispute Resolution Policy (Uniform Policy). …