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Cybersquatting and Trademark Infringement

Author: Monica Kilian PhD
Issue: Volume 7, Number 3 (September 2000)

Contents

Cybersquatting and Trademark Infringement

    Introduction

  1. "Cyberlaw" is fast evolving into its own discipline, and "traditional" law firms are keen to enter the lucrative new legal area. To date, the most active area for legal skirmishes has been domain name disputes that involve accusations of trademark infringement, usually by cybersquatters. Until recently there has been no legislation governing trademark infringement through domain names. The United States is the first country to introduce cyberspace-specific trademark legislation with the Anticybersquatting Infringement Act of 1999 (ACPA), which is now part of U.S. trademark law.

  2. Trademark law has evolved to ensure the consumer is not mislead about the source of a product; in this sense a trademark acts as a kind of quality assurance for the consumer. The benefits of a trademark extend equally to the trademark owner. For successful businesses, a trademark represents a significant amount of goodwill in the form of consumer recognition and trust. Trademarks are therefore valuable business assets that their owners are keen to protect. However, as soon as the Internet became a valuable commercial tool, companies have been plagued by cybersquatters, who register trademarks as domain names, thereby preventing trademark owners from establishing web sites using their own mark. Thus the emerging area of cyberlaw has concentrated chiefly on trademark issues, with the greatest emphasis on domain name disputes with a gradual expansion towards other Internet uses of trademarks, such as meta tags.

  3. Because domain name disputes involve trademarks, courts have applied "traditional" trademark law, as well unfair competition, defamation, misleading and deceptive practices, passing off, and similar laws.[1] Transposing such laws into the realm of cyberspace, however, presents an unprecedented difficulty: cyberspace is not "real" space, and the constraints of geography, political boundaries, legal jurisdiction, and even time considerations of "real" space do not apply. Add to this the uncontrollable global reach of cyberspace, and it is clear that traditional law applied to cyberspace is bound to run into difficulties. Nevertheless, courts have managed to deal reasonably well with trademark infringements in domain names, simply because this problem is analogous to the way trademarks are infringed in "real" space. More difficulties are already on the horizon with disputes involving the use of trademarks in practices such as meta tagging and linking, but these issues are beyond the scope of this paper.

  4. An added complication, which is starting to emerge fully only now, is that there is no convenient break-up of jurisdiction in cyberspace. Cyberspace is global in the broadest sense: its reach is not curtailed by international treaties or geographical or political boundaries. Indeed any computer anywhere can connect to the Internet, as long as the necessary infrastructure is available, and even infrastructure limitations are rapidly decreasing with the advance of satellite communication. Cyberspace is virtually everywhere and in reality nowhere. Its non-territorial ubiquitousness gives rise to jurisdictional issues and related problems, such as conflict of laws and enforceability issues. Although cyberspace is global in the sense that every country can participate in the Internet, the development of cyberlaw has proceeded from a U.S.-centric perspective, mostly due to the historical reason that the Internet originated in the United States. This caused few problems when Internet use, particularly in the commercial area, was concentrated in the U.S. However, it is questionable whether this trend will be allowed to continue, given the increasing presence and commercial importance of non-U.S. users.

  5. This paper will look at the phenomenon of trademark infringement through cybersquatting and discuss how the Anticybersquatting Consumer Protection Act contributes to regulating cyberspace-related trademark infringement. Because the ACPA is U.S. law, the cases touched on are U.S. cases. Finally, the paper will consider the issue of jurisdiction concerning domain name disputes, both on a national and an international level. The paper concludes that "real space" based legislation such as the ACPA may be relatively effective for cyberoffences that mirror the kinds of offences found in "real" space. However, given the global reach of cyberspace, "traditional" law that depends on legal and territorial boundaries may become less relevant.

    Domain names disputes

  6. Rarely has there been such a rapid spurt of growth in any business activity as in domain name registration. In 1993 the Internet was still in its infancy, with few businesses realising the commercial opportunities it offered. Surprisingly, even large corporations were slow to identify the commercial opportunities offered by the new technologies of the Internet. Patrick Gunning reports that 100,000 domain names were registered worldwide in 1995 and 5 million at the beginning of 1999. This figure jumped to fifteen million domain names by the year 2000.[2] The battle for domain names representing trademarks has heated up accordingly. The Arbitration and Mediation Centre of WIPO reports a total of 904 cases filed with it by the end of July 2000.[3] What is telling is not so much the number of cases as the rate at which domain name cases are increasing. According to WIPO case filings, 182 cases were filed in June 2000, a 550% jump up from January's 28 case filings.[4] Apart from WIPO, there are also numerous court cases concerning domain name disputes, especially in the U.S.

  7. As this proliferation of cases suggests, domain names are more than mere addresses. They can be closely identified with the company itself in the sense that customers believe that a domain name should reflect the company name, as the court suggested in Cardservice Int'l v McGee ("A customer who is unsure about a company's domain name will often guess that the domain name is also the company's name")[5] and in MTV Networks Inc v Curry ("a domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base").[6]

  8. Domain names frequently represent a company's intellectual property in the form of trademarks, either registered or common law, or words and phrases associated with the company. Trademarks as domain names are not only contested by businesses, but also by individuals whose names have been used as trademarks (hence celebrity domain name disputes, such as juliaroberts.com, sting.com, and madonna.com). The fact that the commercial value of trademark domain names far exceeds the cost of registration was recognised early by enterprising individuals who registered domain names with the intent of selling them on (at a high price) to the companies or individuals whose trademarks the domain names represented.

    Trademark infringement

  9. Technically, a domain name is simply the address of an individual computer connected to the Internet. From a user's point of view, a domain name is an IP address in a human-friendly form. And if the human-friendly form of the IP address coincides with the name of a business or a trademark, it becomes a valuable asset. It is unlikely that the current cybersquatting phenomenon would exist if IP addresses were not given human language representations. There is no magic of association - let along trademark - with an IP address called 192.186.0.12. But as soon as the IP address turns into something like "nike.com" (or "anywellknowncompany.com") we enter into a whole new world: that of goodwill and consumer recognition associated with a trade or service mark. As soon as it is associated with a trademark, a domain name becomes a powerful commercial tool.

  10. Domain names can incorporate trademarks in a number of ways. The most obvious is the verbatim adoption of the mark followed by a gTLD, such as nike.com. A person who is not the trademark owner and registers the trademark as a domain name engages in relatively straightforward trademark infringement. However, trademark infringement can also take the form of trademark dilution, which is prohibited under the U.S. Federal Trademark Dilution Act (FTDA). The purpose of this act is to protect owners of famous marks against dilution and tarnishing of their mark. This spirit of this law is transposed into the Anticybersquatting Consumer Protection Act. Trademark dilution can be brought against domain name registrant who use a variant of a famous mark for their own purposes. An example here is the domain name gateway20000.com that takes advantage of a typing mistake and whisks off the unsuspecting user to a pornographic site, rather than to the Gateway 2000 company site (in this instance, Gateway decided to purchase the rights to the domain name, rather than bring an action in court,[7] which would most likely find trademark dilution).

    Cybersquatting

  11. Cybersquatting is the practice of registering a trademark as a domain name with the intent of profiting from it by selling it, usually to the trademark owner. As long as the cybersquatter owns the domain name, the trademark owner cannot register its own trademark as a domain name. In this sense, the cybersquatter breaches the fundamental rights of the trademark owner to use its trademark. However, it is important to note that there is nothing wrong with the practice of reserving a domain name. Frequently, cybersquatters register words or phrases they hope will some day be sought after by new companies or new business divisions. A trademark is not infringed by a domain name unless the trademark existed at the time of domain name registration. This kind of cybersquatting is speculative and legitimate. John D. Mercer also identifies "innocent" cybersquatting, whereby the registrant does infringe a trademark "based on some unrelated interest in the word itself, without intending harm to a trademark owner" and "concurrent" cybersquatting, whereby the registrant uses the same trademark as another commercial entity, but not within a competing industry.[8]

  12. However, the harmful kind of cybersquatting involves intentional bad faith trafficking in domain names that are the same as, or a dilution of, existing trademarks. Such domain name registrants are considered "modern day extortion[ists]." [9] Mercer offers a fitting definition: "an illegal cybersquatter should be one who acquires a domain name for the sole purpose of obtaining money or other advantage from the trademark owner, with no intent or desire to use the domain name, except as an instrument toward this purpose." [10]

  13. The acknowledged arch-cybersquatter is Dennis Toeppen, who registered a host of well-known trademarks as domain names (including deltaairlines.com, neiman-marcus.com and numerous other famous marks),[11] and who has been unsuccessful in defending his rights to them when sued by the trademark owners. Intermatic v Toeppen [12] and Panavision v Toeppen [13] are considered the pivotal cybersquatting cases and have had a profound impact on the development of cybersquatting case law, as well as on the drafting of the ACPA.

  14. Panavision illustrates some of the typical issues encountered in cybersquatting cases where trademark infringement is raised. Toeppen registered the domain name www.panavision.com and used the web site to display pictures of the city of Pana, Illinois. He offered to sell the domain name to Panavision for $13,000. Panavision declined and brought an action under the Federal Trademark Dilution Act (FTDA). The FTDA required the plaintiff to show that the trademark in question is famous, that the defendant was using the mark in commerce, that the mark became famous before the defendant started using it, and that the "defendant's use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services."[14] Toeppen argued that he was not making commercial use of the name, as he was merely displaying photographs on his web site. The court, however, decided that by having offered the domain name for sale, Toeppen had shown his intent to use the mark in commerce, which met the requirements for use in commerce test. The court further remarked on the fact that a domain name carried the reputation of a trademark.

  15. In Intermatic, the court conceded that Toeppen was not using the trademark in commerce, as he had merely registered it, but nevertheless found infringement through dilution. Importantly, the court in Intermatic recognised that if Toeppen were allowed to operate the web site intermatic.com, Intermatic's "name and reputation would be at Toeppen's mercy."

  16. The rulings in Panavision and Intermatic affirmed that "traditional" trademark and trademark dilution law applied in cyberspace. It is not only the "unadulterated" trademark that can be protected, but also any variation of it that is likely to confuse or deceive, or in some way dilute the "distinctive quality" of the mark.[15] The Anticybersquatting Consumer Protection Act incorporates the dilution and tarnishment provisions of the FTDA, but without the FTDA's requirement for use in commerce. This significantly broadens the concept of trademark infringement.

    Anticybersquatting Consumer Protection Act

  17. Is cyberlaw based on "traditional" law really the best way to regulate the proliferation of cyber-offences? The fact that the United States thought it wise to enact legislation that specifically targets trademark infringements in cyberspace arguably indicates a growing awareness that the Internet is indeed a different kind of legal space and may require cyberspace-specific law.[16] Although the Anticybersquatting Consumer Protection Act is cyberspace-specific, it is still based on "traditional" legal principles of trademark law, and importantly, refers to jurisdictional parameters of domestic law, which are defined by "real" territorial boundaries. Moreover, the ACPA fails to account for the global reach of cyberspace, and the Act reads as if the Internet were confined to the U.S. This is because the ACPA is domestic law rooted in "traditional" law and does not attempt to pioneer a new kind of law beyond its own jurisdiction. In any event, the ACPA is a milestone in the regulation of cyberoffences and provides a useful blueprint for similar regulations (ICANN's Uniform Dispute Resolution process, which has also been adopted by the WIPO Mediation and Arbitration Centre, is substantially similar to the ACPA).

  18. According to the U.S. Senate, the ACPA was enacted "to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks--a practice commonly referred to as 'cybersquatting'."[17] The Act states that cybersquatting occurs when the person registering a domain name containing a trademark "has a bad faith intent to profit from that mark" and "registers, traffics in, or uses" a domain name that contains the trademark, either verbatim or in a diluted form ("identical or confusingly similar to or dilutive of that mark").[18]

  19. The ACPA lists nine non-exclusive factors that courts may consider when determining whether the plaintiff has acted with bad faith intent:

  20. It appears that the Act nudges the courts towards finding bad faith intent. In fact, the only reason that no bad faith intent is found is when the defendant "believed and had reasonable grounds to believe that the use of the domain name was a fair use of otherwise lawful." With the ACPA the cards are undeniably stacked against the cybersquatter.

  21. As mentioned above, the Act incorporates elements of the Federal Trademark Dilution Act, which is meant to protect "famous" marks. As mentioned before, under the ACPA trademark infringement in domain name cases is not confined to use in commerce, but can also be found when the defendant "disparages" or "tarnishes" the trademark for whichever reason.[19] While the FTDA suggests a series of non-exclusive tests to determine that a mark is famous, the ACPA does not give any guidelines. As a result, the interpretation of what is a "famous" mark is left even more open than under the FTDA, to the extent that prohibition against trademark dilution can arguably apply to virtually any mark, famous or obscure.[20] Finding the element of fame in a mark, it now appears, is left to the discretion of the courts. This of course broadens the reach of the act considerably: provided that something is considered a trademark or service mark, the owner of the mark can take action against practically any kind of use of its mark in cyberspace, either on the basis of trademark infringement, or dilution & tarnishment, both of which are incorporated into the ACPA.

  22. A case that illustrates the power of the dilution & tarnishment provision in the ACPA is Toys "R" Us v Akkaoui.[21] Here, the defendant registered the domain name adultsrus.com and used the eponymous web site to sell sexual devices over the Internet. The court found that the domain name adultsrus.com "tarnishes the 'R Us' family of marks by associating them with a line of sexual products that are inconsistent with the image Toys R Us has striven to maintain for itself" and issued an injunction against the defendant. This kind of case is somewhat worrying, in the sense that it is difficult to see how it could cause consumer confusion, as the two businesses were in different industries altogether. Here, however, it was enough that the domain name shared some elements of a trademark, even in a non-competing industry.

  23. Despite its name, the ACPA is not strictly about cybersquatting, as Sporty's Farm L.L.C. v. Sportsman's Market, Inc.[22] - the first case to be tried under the ACPA - demonstrates. Sporty's concerns one party's blatant attempt to take commercial advantage of a well-known registered trademark by trying to obtain a declaration prohibiting the trademark owner from using its own trademark in a domain name. Though this case does not fit the "traditional" cybersquatting pattern (the domain name owner did not try to sell the name to the trademark owner), it nevertheless contains elements that fit perfectly with the ACPA. The domain name in dispute was sportys.com. "Sporty's" was a mark used by Sportsman's Market throughout its catalogues and advertisements over many years. The plaintiff owned the domain name and brought an action against Sportsman's Market seeking a declaration that the trademark owner had no rights to the domain name. Sportys.com was first registered by the plaintiff's parent company, Omega, which intended eventually to compete in the same market as Sportsman's Market (selling aviation goods via catalogues). Sporty's Farm was established solely to demonstrate its rights in the domain name and did not operate in the same market as Sportsman's (Sporty's Farm grew Christmas trees). However, it emerged that the intention of the plaintiff's parent company was to transfer the domain name to a yet to be formed subsidiary that would compete directly with Sportsman's Market. Sportsman's brought a counterclaim for trademark dilution, trademark infringement and unfair competition. The district court found for the defendant on the basis of the Federal Trademarks Dilution Act (the ACPA was not yet in force) and enjoined the domain name owner from using it. On appeal, the court applied the ACPA, as the legislation was law by the time the appeal was heard, and affirmed the district court's order on the grounds that the mark "Sporty's" was distinctive, that sportys.com was confusingly similar to the mark, and that the domain name owner acted with bad faith intent and sought to profit from the mark. This combination places the plaintiff's conduct squarely into the reach of the ACPA. (Oddly, the court did not order transfer of the domain name to Sportsman's Market.)

  24. The Act specifically points out that it is not necessary that the registrant use the domain name for any purpose at all apart from having a "bad faith intent" to profit from it. The mere fact that he has possession of domain name means that the trademark owner can bring an action against him, provided the trademark owner can show bad faith intent. The only defence left to the domain name owner is that he "believed and had reasonable grounds to believe that the use of the domain name was a fair use of otherwise lawful."[23]

    The ACPA and Free Speech

  25. Although generally welcomed by trademark owners, the APCA has been criticised for its potential to limit free speech. This danger is inherent in the Act's recognition of tarnishment & dilution as trademark infringement. Some critics believe the APCA is biased towards trademark owners wealthy enough to bring law suits against individuals whose only "crime" has been to register a domain name that happened to be a variation of a trademark.[24]

  26. The issue of free speech and fair use of a trademark arises in cases involving so-called "sucks sites" or "gripe sites" where domain name holders incorporate a trademark into their domain name, usually as a form of protest against the trademark owner (for example, famouscompanysucks.com). The ACPA, it is feared, can be used to sue sucks site owners criticising or parodying a trademark.

  27. Whether there is trademark infringement in the case of sucks sites depends on a variety of factors that may outweigh the free speech defence.[25] These include confusing the consumer regarding source of the site (even causing "initial confusion"),[26] trademark dilution & tarnishment, and defamation. While fair use provisions would allow a site to publish a critical editorial about a company, it appears that many sucks sites are de-mobilised by the courts, to the delight of the trademark owners.

  28. To deter disgruntled consumers from tarnishing the goodwill of their trademark in cyberspace, many companies go out of their way to register every conceivable undesirable variation on their name. Start-up companies do the same in anticipation of critical sites that may spring up in the future. As Verizon Wireless demonstrates, this exercise can be futile. A hacker magazine attempted to register verizonsucks.com, only to find that Verizon itself owned the domain name. The magazine then registered verizonreallysucks.com, upon which Verizon threatened to bring an action under ACPA. Undeterred, the magazine declared it was not making unlawful use of the name and proceeded to register other Verizon-related names, including verizondoesreallysuck.com. In the end, Verizon conceded that the magazine's use of the trademark was fair.[27] Undoubtedly, Verizon's zeal in trying to stamp out the offending sucks site only contributed to a proliferation of further sucks sites incorporating the Verizon trademark. This case indicates that the dilution & tarnishment provisions of the ACPA are unsatisfactory to both trademark owners and people who use the trademark to exercise free speech.

  29. Furthermore, given that further gTLDs are in the offing, the effort required to register a plethora of related names in an effort to stem the tide of future sucks sites is daunting indeed. In addition, the ephemerality of the Internet makes it near impossible to keep tabs on all possible trademark infringements, as web sites may appear, disappear and reappear at a moment's notice. A further complication occurs when sucks sites are registered by registrars not based in the United States. It is questionable whether a sucks site owner in a foreign jurisdiction could be sued effectively by the offended company on the basis of the dilution and tarnishment provision of the ACPA. This brings us to the issue of jurisdiction, which the ACPA appears to envisage as a U.S.-specific problem to which it offers a U.S.-specific solution.

    Jurisdiction and enforcement

  30. An innovative feature of the ACPA is that it enables in rem jurisdiction in domain name disputes - this means that the trademark owner does not have to sue the domain name owner personally, but can take action against the domain name itself.[28] This provision recognises that cybersquatters frequently give out false contact information, presumably in anticipation of possible law suits. Normally, in U.S. law, a person who cannot be located cannot be sued. And since domain name registrars are not liable for registering domain names that infringe trademarks[29] the fact that the registrant cannot be located would be prejudicial to the rights of the trademark owner to claim infringement.

  31. To take advantage of the in rem provision the trademark owner must take steps to satisfy the courts that the registrant cannot be found. For straightforward cybersquatting offences the in rem provision is useful. However, in cases where there is a genuine question whether the domain name infringes the rights of the trademark owner, the desirability of this provision is another matter.[30] On the other hand, if the plaintiff uses the in rem provision he cannot claim damages, as the only remedies available are cancellation or transfer of the domain name. Thus it is more beneficial for the plaintiff to obtain personal jurisdiction if the infringing domain name caused material damage to the trademark. In a related matter, it needs to be pointed out that most trademark owners prefer to use ICANN's Uniform Dispute Resolution Policy (whose provisions are similar to those of ACPA) rather than face the expense of litigation. This route is popular among trademark owners who do not so much want to use the domain name themselves as to prevent others from using it.[31] Like action under the ACPA's in rem provision, the Uniform Dispute Resolution Policy permits only cancellation or transfer of the domain name, not damages. Thus for more grievous cases and to recover damages the plaintiff would still need to go to court and sue the cybersquatter personally.

  32. In rem jurisdiction depends on the location of the gTLD registrar. Until recently, the only official registrar was Network Solutions, Inc. Gradually, other registrars were permitted to register gTLD names (.com, .net, .org), including foreign registrars. As long as the trademark owner wants to bring an in rem action against a domain name registered with a U.S. registrar, the ACPA is adequate. But what happens if the registrar is located outside the U.S. and has no intention (for whatever reason) to assist the complainant? If a registrar in Korea registered a "famousintheUS.com" domain name and the web site is widely accessible to United States users, what is the likelihood of the trademark owner winning his suit in court? And in which court could he sue effectively, and whose laws would apply? How would a U.S. court claim jurisdiction, and even if it succeeded to do so, how would it be enforced? In theory, the U.S. court could order the deletion of the domain name from the central registry. But this action would be extremely undesirable for the sake of international harmony. Such strong-arm tactics would doubtlessly be resented by the Internet community. In this sense, the usefulness of the ACPA even for U.S. based companies are stops at the U.S. border.

    Whose Cyberlaw?

  33. Until recently, the commercial use of cyberspace was the purview of relatively few countries that shared similar socio-economic and political backgrounds (ie., democratic first world countries) and were reasonably familiar with each other's legal systems. But what will happen when the commercial use of the Internet becomes more wide-spread, when more and more countries with various legal, political and economic backgrounds start on the path of e-commerce? Trademark owners will need to increase their vigilance to preserve the integrity of their marks.

  34. This brief run-down of some of the problems encountered with domain names and trademarks can only hint at the myriad legal issues yet to arise in cyberspace. Perhaps the most pressing question now is whether reliance on domestic laws is adequate in addressing cyberspace squabbles. So far, most case law has come from the United States. But it is hardly to be expected that foreign courts will adopt U.S. court decisions as precedents, especially if foreign courts would normally decide the issues differently. While following U.S. precedents is probable among common law countries, it is less likely in countries with different legal traditions International law governed by treaties and conventions is difficult enough to administer, and it is doubtful that international agreements on cyberlaw will prove to be an exception. Furthermore, because of the internet's literally boundless "territory" it is unlikely that anything like an international cyberlaw would be achievable, as long as geographical, legal and political jurisdictions need to be considered.

  35. Scholarly opinion on the future direction of cyberlaw ranges from the conservative to the extravagant. "Traditional" legal commentators believe that cyberspace is no different than any other "space" occupied by telecommunications. National telecommunication laws are well developed, so why should cyberspace laws be any different? Thus Jack Goldsmith[32] believes that cyberlaw should follow in the footsteps of international law, whereby "each nation remains responsible for regulating harms that cause effects locally."[33]

  36. Goldsmith's idea, however, has its drawbacks in the global non-space of the Internet. If cyberspace were to be governed by something like international law, all countries active on the Internet would need to enter into an agreement with all other Internet-using countries. Furthermore, achieving uniformity of law and application would entail adopting a kind of trans-national law that domestic courts would need to adhere to, even if such a law would contradict local law. Achieving such global harmony is unlikely. In the realm of cyberspace, where a web site owner cannot control the dissemination of material, it would be potentially unfair to allow the application of local law (in a conflicts of law case, for instance). For example, consider what would happen to international relations if a country with Islamic law were to claim jurisdiction over a web site owner resident in a common law state who, either intentionally or inadvertently, publishes material considered blasphemous under Islamic law, which is somehow accessible to residents of the Islamic law country. The degree of ill feeling such a case would elicit can only be imagined. Nor would the solution Goldsmith suggests be particularly useful to the earlier mentioned hypothetical U.S. trademark holder taking issue with a domain name registered in Korea, as suing in a Korean court under Korean law would be not only expensive but also uncertain. Given the inevitability of jurisdictional squabbles on an international level, combined with the notion that cyberspace is non-territorial, self-regulation of some issues, at least, may be an answer.[34]

  37. One of the more interesting (and controversial) cyberlaw scholars is David Post. In essence, Post suggests that cyberspace should remain free of any geographical legal boundaries, because cyberspace is an a-geographical space where time and distance constrictions are minimal due to the almost real-time quality of Internet communication.[35] He also contends that "many events and transactions [on the Internet] have no recognizable tie at all to physical places but take place only on the network itself, which, by its very nature, is not a localizable phenomenon" and that the very concept of location is meaningless in cyberspace, where space is "only in reference to a virtual space consisting of the 'addresses' of the machines between which messages and information are routed; this machine addressing system is entirely independent of the physical address or location of those machines."[36]

  38. It appears that the non-geographical location and a-temporality of cyberspace is a difficult concept to fit into the confines of "traditional" law that governs "real" space. It is understandable that the metaphors used to describe cyberspace mirror "real" space and time. Virtual space becomes real space (and therefore familiar) when we talk about Internet "addresses," "chat rooms" that we can enter and leave, "sites" that we can visit, and so on. This is not surprising, as all new ventures require metaphors rooted in the familiar to make the new phenomenon intelligible. Similarly, metaphors taken from familiar legal territory are necessary for the development of new law.[37] As Post comments, "[cyberspace] is not a system designed for the convenience of lawyers."[38]

  39. Trademark infringement through cybersquatting has so far been regulated by adopting the law of "real" space to that of cyberspace. The Anticybersquatting Consumer Protection Act is an example of this kind of "real space" based legislation that transposes the familiar to the unfamiliar. This practice is useful to litigants as long as courts are able to claim jurisdiction and ensure reinforcement of their orders. However, as as trademark infringement in cyberspace is bound to proliferate globally, national legislation is unlikely to be effective. On the other hand, relying on the kind of international law that requires endorsement from participating countries - as is the case in international conventions, such as the Vienna Convention on the International Sale of Goods - may not work well in cyberspace, as this would entail shutting out non-signatory countries from the Internet. The global reach of the Internet cannot be curtailed without profoundly effecting the very technology that makes the Internet possible.

Notes

[1] In the absence of cyberspace-specific legislation like the United States' Anticybersquatting Consumer Protection Act domain name disputes in common law jurisdictions are subjected to "traditional' areas of trademark law and relvant trade practices legislation.

[2] Patrick Gunning, "Trade Marks and Domain Names" (2000) Cyber Law Res 1. Available on http://www.austlii.edu.au/au/other/CyberLRes/2000/1/

[3] http://arbiter.wipo.int/domains/statistics/filings.html

[4] Above n 3.

[5] Cardservice Int'l v McGee 950 F Supp 737, 741 (E.D. Va. 1997).

[6] MTV Networks Inc v Curry 867 F Supp 202, 203-204 (S.D.N.Y. 1994).

[7] Jonathan Eisenberg, "A Guide to the Anticybersquatting Consumer Protection Act" (2000) www.gcwf.com/articles/journal/jil-march00-1.html

[8] John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway" (2000) 6 Boston University Journal of Science and Technology Law, 11.

[9] Christopher R. Perry "Trademarks as Commodities: The 'Famous' Roadblock to Applying Trademark Dilution Law in Cyberspace" (2000) 32 Connecticut Law Review, 1127.

[10] Mercer, above n 8, 4.

[11] See Christopher P. Rains, "A Domain By Any Other Name: Forging International Solutions For the Governance of Internet Domain Names" 14 Emory International Law Review, 355, 365.

[12] Intermatic, Inc v Toeppen 947 F. Supp. 1227 (N.D. Ill. 1996).

[13] Panavision Intl v Toeppen 141 F.3d 1316 (9th Cir. 1998).

[14] Quoted in Jeremy D. Mishkin, "Master of Your Domain - An Overview Of the Anticybersquatting Consumer Protection Act" (2000) 18 Communications Lawyer, 3. (Available on Westlaw).

[15] Rains, n 11 above, 367.

[16] The ACPA was enacted in November 1999.

[17] Senate Report No. 106-140, at 4.

[18] 15 U.S.C. § 1125 (d) (1) (A)(i) and (ii).

[19] F. Gregory Lastowka explains that "[t]arnishment occurs when a defenandt uses a plaintiff's famous mark in an unwholesome context or in a context out of keeping with the plaintiff's image." F. Gregory Lastowka, "Search Engines, HTML, and Trademarks: What's the Meta For?" (2000) 86 Virginia Law Review 835, 843.

[20] For example, Morrison & Foerster LLP v Brian Wick, et al., No 00-B-465, 2000 U.S. Dist. (D. Colo. April 19, 2000). Here, the defendant registered a range of law firm names as sites (using either the name verbatim or some variation of it), claiming he wanted to use them for parody purposes. However, the court rejected this argument, saying that the defendant's action "is more analogous to source identification than to a communicative message." (1135).

[21] Toys "R" Us v Akkaoui No C 96-3381 CW, 1996 WL 772709 (N.D. Cal. Oct 29, 1996).

[22] Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F3d C.A. 2 (Conn Feb 2000).

[23] 15 U.SC. § 1125 (d) (1)(B)(IX) (ii).

[24] See for example, Evan Hansen, "House, Courts Make Decisions on Cybersquatting" Oct 26, 1999 http://news.cnet.com/category/0-1005-200-1402912.html.

[25] See "Legal Tips for Your 'Sucks' Site" Oscar Cisneros, Wired News, 14 August 2000 http://www.wired.com/news/politics/0,1283,38056,00.html

[26] Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036, 1066-67 (9th Cir. 1999).

[27] See David Streitfeld, "Making Bad Names for Themselves; Firms Preempt Critics With Nasty Domains" The Washington Post, Friday September 8, 2000, Westlaw 25414864.

[28] 15 U.SC. 1125 (d) (2)(A) states: "The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located".

[29] Lockheed Martin Corp v Network Solutions Inc, 985 F. Supp. 949 (C.D. Cal 1997), aff'd, 194 F 3d 980 (9th Cir. 1999).

[30] For example, in Nissan Motor Co., Ltd v Nissan Computer Corp, 89 F. Supp. 2d 1154 (C.D. Cal, March 2000) the defendant registered nissan.com in 1994. His named happens to be Uzi Nissan, and he had been using "Nissan" as a business name since 1985. This case concerned only the question of jurisdiction - the outcome of the court case to follow is foreshadowed by the District Court judge's opinion that the trademark has been infringed and that, moreover the defendant showed bad faith intent (after being approached by Nissan Motors, Mr Nissan apparently saw a commercial opportunity and refused to part with the name unless Nissan Motors agreed to pay him several million dollars).

[31] Tamara Loomis, "Disputes get swift resolution under UDRP" (2000) 224 New York Law Journal 18. Westlaw 7/27/2000 N.Y.L.J. 5, (col. 2).

[32] Jack Goldsmith, "Cybercrime and Jurisdictions" (2000) http://www.oas.org/juridico/english/cybercrime_and_jurisdiction.htm

[33] Rains, above n 11, 374.

[34] However, there are areas of cyberspace activity, where self-regulation would clearly not work, such as electronic commerce, fraud or other criminal activity.

[35] See for example, David Post and David R. Johnson, "Law and Borders: The Rise of Law in Cyberspace" (1996) 48 Stanford Law Review, 1367. Also available on http://www.tau.ac.il/~nimrodk/bibli-huva/Borders.html

[36] David Post, "Governing Cyberspace" (This article was to appear in Fall 1997 in Wayne Law Review).

[37] F. Gregory Lastowka, "Search Engines, HTML, and Trademarks: What's the Meta For?" (2000) 86 Virginia Law Review 835.

[38] David Post, "Governing Cyberspace" above n 36.


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