ICANN’T Believe That Domain Name
November 13, 2007 by Eli HansenIn the article “ICANN’t Believe That Domain Name,” Wired’s Oscar S. Cisneros details some of the issues and concerns surrounding the current process of resolving disputes between trademark holders and the owners of Internet domain names. This comment will briefly outline the dispute resolution process described in the article before arguing that the current system needs to be adjusted in order to provide a more balanced outcome that respects the competing interests involved in such disputes.
The Uniform Dispute Resolution Process (UDRP) which governs disputes over domain names is, as pointed out by Mr. Cisneros, a powerful tool for trademark holders with some three quarters of disputes being resolved in their favour. In order to be successful under the UDRP, a trademark holder must show that “the disputed domain is identical or confusingly similar to its trademark, that the domain holder has no legitimate interest in the domain, and that the domain was registered and used in bad faith.”
While the above-mentioned UDRP requirements are on the right track, they seem to tilt the balance too far in favour of the trademark holder. With this in mind, any changes to the UDRP must be made with the goal of establishing an appropriate balance between protecting the legitimate rights of trademark owners on the one hand, while at the same time ensuring that the rights of the public at large, most notably freedom of expression, continue to flourish.
In order to address this issue, the UDRP in interpreting decisions must ensure that the rights of legitimate users are being protected. The fact that a domain name is “identical or confusingly similar to” that of a registered trademark should not be of primary importance when one is addressing the question of whether or not the rights of a trademark owner have been infringed, rather it should merely be a prerequisite to such a finding. The emphasis of such inquiries should be placed on the final two requirements; that the domain holder have a legitimate interest in the domain, and that the domain be registered and used in good faith. Should the user be able to meet these two requirements, the domain name itself should be of little relevance.
Therefore, the requirement that the domain be “identical or confusingly similar to” the trademark should be de-emphasized so as to address the fact that the actual danger to the trademark holder arises from the possibility of a public assumption that the website in question is affiliated with the trademark holder. In other words, it is not in the name of the website where the danger to the trademark holder is to be found, but in its content. For example, the article refers to a dispute centering on the website crew.com whereby the clothing retailer J. Crew succeeded in obtaining the disputed domain name from its original owner. While it can surely be argued that the domain name in this case was confusingly similar to the trademark, so long as the website itself was not being used in a way that is harmful to the trademark holder it should be permitted to continue. For example, the article notes that the domain owner may have wished to use the website to cover the results of crew races. Legitimate uses such as this should be permitted. However, uses that could harm the trademark holder, such as establishing an online retail clothing business, should not be permitted. The key issue therefore seems to be one of association. Would a reasonable person come to the conclusion that the trademark holder is associated with the website? And if so, would this association harm their interests, business or otherwise?
If these questions were to be answered in the affirmative, then it seems logical that the domain in question would be in violation of the rights of the trademark holder. Adding a requirement such as this to the UDRP that highlights the threat to trademark owners of association, would strike an appropriate balance in the area of domain name disputes by providing adequate protection for the rights of trademark holders, while at the same time allowing enough leeway for legitimate activities such as parody, reporting, and commentary to flourish under the protection of freedom of expression.
One Response to “ICANN’T Believe That Domain Name”
Mr. Hansen has proposed a different structure for UDRP’s infringement test: without identical or confusing similarity the applicant’s claim cannot succeed; upon establishing similarity the next step is to assess good faith use, legitimate interest and, Mr. Hansen’s addition, association. I completely agree and will use the following example to illustrate why.
Suppose small, special interest Org 1 finds large, multi-national Corp. 2’s, business conduct utterly reprehensible. Org 1 registers a domain name ingeniously similar to Corp. 2’s. Org 1’s web content expresses what it believes is everything wrong with Corp. 2 and in doing so makes obvious Corp. 2 has no association with Org 1.
Using the current UDRP infringement test, it is arguable that Org 1 could be liable and be forced to surrender its domain name. However, with Mr. Hansen’s test, Org 1 would be saved by the association factor. Org 1’s freedom of expression is preserved while leaving Corp. 2 its own protection through defamation or other civil actions, should they be warranted.
It should also be noted that UDRP, being a more informal process than a civil infringement action, can be an important forum providing access to justice. For example, Org 1 with little to no resources would surely be disadvantaged compared to Corp. 2’s significant resources in a formal court-based infringement action. However, the “justice” in access to justice depends on a balanced and appropriate test of infringement. After all, we should ensure in the technology era e-commerce does not silence e-expression.
By sambrozy on Nov 28, 2007