If you were looking for information on Jay Leno's talk shows, what would you type into the browser's URL bar? There are a number of possibilities, but odds are many people might try TheJayLenoShow.com as it is the name of his new show and the common name of his old show. It makes sense but if they did that a few weeks ago, it would also be wrong. I bring up Jay Leno not because I'm a fan or because the case is particularly unique, but because two of his recent domain disputes provided the starting point for my research (TheJayLenoShow.com, WeeknightsWithJayLeno.com). In this article, I aim to present an overview of the criteria of the Uniform Domain-Name Dispute Resolution Policy (UDRP, I'm not sure which D was skipped) and issues which confront trademark owners and domain owners (both legitimate and otherwise).
Uniform Domain-Name Dispute Resolution Policy
The Internet Corporation for Assigned Names and Numbers (ICANN) administers two fundamental systems on the Internet. They assign IP addresses (the numeric identifiers of computers and networks on the Internet) and run the domain name system (the human-readable names that point to IP addresses). Domain registrants are required to accept the UDRP which sets out a framework for arbitrators to follow in addressing disputes. The World Intellectual Property Organization (WIPO) is the largest accredited UDRP arbitrator. The UDRP requires a complainant to show three things in relation to a disputed domain:
1. That the domain is identical or confusingly similar to the complainant's trademark
This criterion is easily satisfied (see this IPilogue article for an argument that it is too easily satisfied). The only concern at this step of the analysis is the existence of the complainant's mark. The UDRP recognizes both common law and registered trademarks (see Ribbel-med.com, JonesApparelGroup.com). Jay Leno, for example, does not have a registered trademark in his name but (as is generally the case with celebrities) the panel recognized a common law trademark. Common law trademarks are only applicable to names of companies and individuals that sell or produce something such that their name itself takes on a secondary meaning as a source. The average person, therefore, cannot carry a complaint under the UDRP (KarlLingenfelder.com).
It is advisable for complainants to assert common law rights even if they have an infringed registered trademark. UDRP panels very strict in determining whether a trademark applies. Words that are disclaimed or omitted in trademark registrations may still ground common law rights. This may make the difference between success and failure. In an example of this, the Jones Apparel Group failed to win JonesApparelGroup.com because, although it operated under that name and had several related trademarks, it relied solely on the registered marks which were deemed not close enough to the disputed domain. More recently, a company with a product line called "Prescription Cosmetics" and several registered device trademarks including that phrase was denied PrescriptionCosmetics.com because it had disclaimed the phrase as generic in its registrations. The arbitration panel noted that it may have been able to make a case for common law rights to the phrase but failed to submit evidence.
2. The owner has no rights or legitimate interest in the domain name
Having a recognized mark does not mean that a complainant has the right to prevent use of every identical or similar domain. There are, in general, three ways in which a domain owner might demonstrate a right to use the domain. First, he may have a competing trademark right. This happened in the JackAss.com case (see IPilogue comment). In that case, the company had a registered trademark itself for the same mark in a different area of business. Second, individuals and companies that have no official trademark rights can show that they are known by that name. Thus, an individual nicknamed after a trademarked cartoon character would keep his eponymous domain if he could prove to the panel's satisfaction that people actually called him, for example, Pokey. Finally, he may have a use interest. Under the UDRP, the plaintiff must make a prima facie case that the respondent has no legitimate interest. That being done, the burden shifts to the owner. Generally this interest is demonstrated either by example of the use at present or by submitting documentation of the planned usage (email discussions, design mockups, etc). Mere assertion of intent (such as by WeeknightsWithJayLeno.com) is not enough. Uses explicitly condoned by the UDRP include the offering of goods and services and most non-commercial uses. In the JackAss.com case, for example, the panel also considered the respondent's argument that he intended to create a website devoted to donkeys and their historical contributions (a fact widely picked up in the media, but not decisive in the case). Link farms, domain parking sites, forwarders, sale and other uses that profit merely from the existence of the domain are not considered legitimate. A serious domain squatter would be well advised to come up with a more interesting method of generating revenue or at least contemplate a legitimate use prior to registration.
3. The domain was registered and used in bad faith
The UDRP lists four (non-limiting) guidelines for bad faith use: (i) purchase with intent to sell to the trademark holder at an inflated price, (ii) intent to block trademark holder from use, (iii) disrupting the business of a competitor, (iv) attempting to attract for commercial gain visitors seeking the trademark owner. In both Jay Leno cases (and in the majority of cases I have read) the panel finds the fourth to be the case. TheJayLenoShow.com redirected visitors to a commercial site and WeeknightsWithJayLeno.com merely hosted a domain parking page with advertising.
The third criterion is often confusingly intertwined with the second. The notion of bad faith is often incorporated into the analysis of the legitimacy of the interest. Thus, it is almost a forgone conclusion that a site with no legitimate interest in a domain has held it in bad faith. However, it is possible that a complainant may fail solely on the third criterion. This generally happens where they are unable to prove that the respondent was aware of their mark. For example, EuroData.com was registered by a company explicitly for the purpose of resale (D2009-0465). The American registrant was found to have no legitimate interest and a matching trademark was held by the German company Euro Data GmbH & Co. In this case, however, it was found that the domain was registered merely because it was a concatenation of two common terms and not because the respondent had any knowledge of or interest in the complainant company. It was merely held for general sale to any interested party.
The UDRP is merely an expedited transfer process. It also does not have a system of binding precedents. These can both lead to surprising or contradictory results, particularly where cases involve borderline issues of trademark infringement, contracts or fair use. The WIPO's stated position is to err on the side of caution and allow trademark owners to pursue legal action. As mentioned above, the second and third criteria are more complexly related than the bare wording of the Policy would suggest. The Policy is also weighted in favour of corporations and famous individuals. A regular individual cannot dispute the link farm parked at HisOrHerName.com. It does however provide individuals with a shield in relation to their own name or nickname. The UDRP also offers no disincentives to domain squatters. The arbitrators do not have the power to do more than cancel or transfer a domain. They cannot penalize squatters and successful complainants must still pay the full cost of the arbitration. Even considering these limitations, the UDRP provides a sensible framework for addressing a certain class of domain disputes. The argument might be made that these disputes do not need to be addressed, but that would be for another article.