law of computer technology fall 2015 © 2015 michael i. shamos domain names michael i. shamos,...

LAW OF COMPUTER TECHNOLOGY FALL 2015 © 2015 MICHAEL I. SHAMOS

Domain Names

Michael I. Shamos, Ph.D., J.D.Institute for Software ResearchSchool of Computer ScienceCarnegie Mellon University


Trademarks• A trademark is “any word, name, symbol, or device, or

any combination thereof, used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

• Examples: Apple

Can You Hear Me Now?


Trademark Infringement

• In connection with any goods or services, or any container for goods, use of any trademark, or any false designation of origin, which(A) is likely to cause confusion, mistake, or deception as to affiliation, origin, sponsorship, or approval of goods, services, or commercial activities, or

• (B) in commercial advertising, misrepresents the nature, characteristics, qualities, or geographic origin of goods, services, or commercial activities. See 15 U.S.C. §§1114, 1125

• Jurisdiction over trademark infringement is concurrent between the states and the federal government


Trademark Dilution

• “The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark …” 15 U.S.C. §1125(c)

http://www4.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001125----000-.html




Not Dilution

• “The following shall not be actionable under this section:(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.(B) Noncommercial use of a mark.(C) All forms of news reporting and news commentary.”

15 U.S.C. §1125(c)





Trademarks v. Domain Names

• A domain name can be a trademark if it designates the origin of goods or services

• Examples: amazon.com, google.com, usairways.com• Not all domain names are trademarks• (1) If they are not used in conjunction with goods or

services, e.g. personal home pages• (2) If they are not distinctive: books.com


Assignment of Domain Names

• In 1997, Pres. Clinton directed the Department of Commerce to privatize domain name management

• Memorandum of Understanding with ICANN: Internet Corporation for Assigned Names and Numbers

• Formed in 1998 as an international coalition of Internet interests“global, consensus-driven, non-profit organization”

• No statutory authority!• “Shared Registration System” (SRS)• Authorizes “registrars” to issue domain names

– About 1000 accredited registrars

http://www.icann.org/en/about/

http://www.icann.org/registrar-reports/accredited-list.html


Uniform Dispute Resolution Policy (UDRP)

• Approved by ICANN• Complex procedure equivalent to arbitration• “Provider” (not ISP) = approved arbitrator• Parties: “Complainant,” (wants the domain)

“Respondent” (has the domain), “Registrar” (organization that registered the domain)

• Complaint, then Response• Three-member panel is appointed• Language used = language of registration agreement

http://www.icann.org/en/help/dndr/udrp/policy

http://www.icann.com/

http://www.icann.org/udrp/approved-providers.htm


Uniform Dispute Resolution Policy (UDRP)

• Fast (~60 days)• Inexpensive ($1-2K in arbitration fees), more in

attorney’s fees• Submissions are electronic only• No hearing• No administrative appeal• Only remedy is transfer of domain name, which

happens in 60% of cases• Does not remove jurisdiction of courts to determine

damages• See complete list of arbitrated disputes


Zyliss Dispute

• Zyliss AG is a Swiss company that makes kitchen products

• Gourmet Kitchen is a U.S. company that sells kitchen products, including Zyliss products

• Gourmet Kitchen registered the domain zylissonline.com. The site offers genuine Swiss Zyliss products

• Zyliss AG filed a complaint with the National Arbitration Forum to force the registrar, BulkRegister.com, to transfer the domain zylissonline.com to Zyliss AG.

http://www.zyliss.com/

http://www.gourmet.org/

http://zylissonline.com/


Zyliss AG Contentions

• It has owned a U.S. federal trademark registration for “Zyliss” since 1975

• Gourmet Kitchen registered zylissonline.com in 2001• zylissonline.com is confusingly similar to zyliss.com

(a member of the public would assume zylissoline.com was associated with Zyliss)

• Gourmet Kitchen is not normally known as zylissonline• Gourtmet Kitchen is in bad faith because it is attempting

to divert Zyliss customers to its own website


Gourmet Kitchen Contentions

• Started in business in 1994 selling kitchen products, including Zyliss

• Only Zyliss products are offered on zylissonline.com• Gourmet Kitchen carries the full Zyliss product line• Handing over the domain to Zyliss would give Zyliss the

benefit of Gourmet Kitchen’s clientele and would be unfair

• Zyliss does not sell to end users; Gourmet Kitchen does


Zyliss Arbitration Decision

• Complainant Zyliss AG must show:

1. zylissoline.com is identical or confusingly similar to a trademark or service mark of Complainant

2. Gourmet Kitchen has no rights or legitimate interests in zylissonline.com; AND

3. zylissonline.com has been registered and is being used in bad faith


Zyliss Arbitration Decision

• Respondent used the domain name in connection with a bona fide offering of genuine Zyliss goods since 2001 and has not used the domain name in relation to any goods which were not genuine Zyliss goods. Hence it has a legitimate interest in the domain

• Complainant has failed to show (2)• The panel need not reach (3)• Complaint DENIED


Uniform Rapid Suspension System (URS)

• Lower-cost, faster alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP)

• Used for obvious cases of infringement• Electronic filing. Low fee: $300-500.• Automatic “locking” of domain in 24 hours• Owner must respond in 14 days. limited to 2500 words• One “examiner”• Same standards as UDRP for • Remedy is SUSPENSION, not TRANSFER• BUT: burden of proof is “clear and convincing evidence”

http://newgtlds.icann.org/en/applicants/urs


Full Sail Inc. v. Spevack

• Full Sail is a film school in Florida, established 1979. It owns the domain fullsail.com

• Spevack, in Arizona, owns Shitty Schools, Inc. which registered the domain name fullsailsucks.com

• “This website was started as an informational resource for students interested in attending Full Sail in Winter Park, Florida. This website hopes to present students with objective and unbiased reviews of the school in a concise manner so future students can make an educated decision before deciding to attend the school.”

• It posts largely unflattering comments about Full Sail on the site.


Full Sail Inc. v. Spevack• Full Sail sued Spevack in U.S. District Court in Florida for

trademark dilution by disparagement

• The court found that it had no jurisdiction over Spevack because of lack of minimum contacts

• The Florida long-arm statute confers jurisdiction on a person who commits a tortious act in Florida

• Injury from trademark infringement occurs where the trademark owner resides (Florida)

• Spevack’s site offered $100 for a photo of Full Sail’s premises with someone holding a sign reading “fullsailsucks.com”

• But: Spevack’s site was passive under Zippo.


Full Sail Inc. v. Spevack

• Full Sail brought an arbitration under the UDRP to force Spevack to transfer the domain to Full Sail

• The arbitrator found that the site used “fullsail” for fair comment

• “The evidence indicates that the Domain Name is used for a non-commercial commentary about Complainant’s business, and the allegations of bad faith are not supported by sufficient evidence to support a finding in Complainant’s favor on bad faith.”

• Complaint DENIED


Cyberpiracy• Cybersquatting = registering, trafficking in, or using a

domain name confusingly similar to a registered mark• “A person shall be liable in a civil action by the owner of a

mark … if … that person(i) has a bad faith intent to profit from that mark … ; and (ii) registers, traffics in, or uses a domain name that– (1) in the case of a mark that is distinctive at the time of

registration of the domain name, is identical or confusingly similar to that mark;

– (2) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark.”

15 U.S.C. §1125(d)





Cybersquattingporschecar.com, porschagirls.com, 928porsche.com, accessories4porsche.com, allporsche.com, beverlyhillsporsche.com, buyaporsche.com, calporsche.com, e-porsche.com, everythingporschie.com, formulaporsche.com, ianporsche.com, idoporsche.com, laporsche.com, myporsche.com, newporsche.com, parts4porsche.com, passion-porsche.com, porsche.net,porsche-911.com, porsche-944.com, porsche-autos.com,porsche-books.com, porsche-carrera.com, porsche-cars.com, porsche-classic.com, porsche-net.com, porsche-nl.com,porsche-online.com, porsche-rs.com, porsche-sales.com,porsche-service.com, porsche-supercup.com, porsche-web.com, porsche356.com, porsche4me.com, porsche4sale.com, porsche911.com, porsche911.net, porsche911.org, porsche911parts.com, porscheag.com, porscheaudiparts.com, porschebooks.com, porschecars.com, porschecarsales.com porschecasino.com, porschechat.com, porschedealer.com


Bad Faith Factors• Is the domain name a name that is otherwise commonly used

to identify the plaintiff?• Defendants’ bona fide prior use of the domain name in

offering of any goods or services; • Defendant’s bona fide noncommercial use of the mark in a

site accessible under the domain name; • Defendant’s intent to divert consumers from the mark owner’s

online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site

15 U.S.C. §1125(d)





Bad Faith Factors

• Defendant’s offer to sell the domain name to the mark owner or any third party for financial gain without having used … the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

• Material and misleading false contact information when applying for the registration of the domain name.

• Defendant’s registration of multiple domain names which the person knows are identical or confusingly similar to marks of others 15 U.S.C. §1125(d)





AntiCybersquatting Consumer Protection Act

• The owner of a mark may file an in rem civil action against a domain name in the … district in which the domain name registrar, domain name registry … is located, if– (i) the domain name violates any right of the owner of a mark registered

in the Patent and Trademark Office … and

– (ii) the court finds that the owner

– (1) is not able to obtain in personam jurisdiction over a person who would have been a defendant … under paragraph (1); or

– (2) through due diligence was not able to find a person who would have been a defendant … under paragraph (1)

15 U.S.C. §1125(d)

• In rem remedies limited to a court order for the forfeiture or cancellation of the domain name or transfer of the domain name to the owner of the mark.





Deep Linking• Linking to the web page of another beneath the home page

– user does not necessarily know that the link is to a different website

• Is it copyright infringement?• Is it trademark infringement? Dilution?• Ebay, Inc. v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058

(N.D. Cal. 2000)– Bidder’s Edge site accumulates information about online auction– Requires numerous “hits” to eBay to assemble information and

links to eBay– Successful theory: trespass to chattels– Preliminary injunction issued


Framing

• Showing the web page of another framed with one’s own border (usually with logo and banner advertising)

• Washington Post Co. v. Total News, Inc., No. 97 Civ. 1190 (PKL) (S.D.N.Y., filed Feb. 20, 1997). Settled.

• Issues:– deceptive?– likelihood of association? – dilution?– unfair? (using content of another to draw advertising

viewers)– First Amendment freedom to link?– Trespass theory?


Metatagging• Placing hidden text in a web page (usually another party’s

trademark) so that one’s own page will be retrieved when a search is done for the other party’s mark (cyberstuffing)

• Issues:– deceptive?– likelihood of association? – dilution?– unfair? (using content of another to draw advertising viewers)– First Amendment freedom to link?– Trespass theory?

• Only one defendant has ever won a metatagging case (on special facts): Playboy Enterprises, Inc. v. Terri Welles, Case, 279 F.3d 796 (9th Cir. 2002)


Typopiracy

• Registering misspellings of domain names in the hope of tricking users who make typing errors

• www.chrysler.com www.chrsyler.com www.chrylser.com

• www.amazon.com www.amazin.com

• www.ford.com www.frod.com

• Is it trademark infringement? False advertising? Deceptive trade practice?

http://www.chrysler.com/

http://www.chrsyler.com/

http://www.chrylser.com/

http://www.amazon.com/


Banner Ads

• User searches for “Estée Lauder.” Search engine displays a banner ads for other companies

• Is it trademark infringement? False advertising? Deceptive trade practice?

• Geico v. Google– Users searched for “Geico” but got ads for

competitors– Geico sued; Google moved to dismiss– Court allowed the case to continue, but did not

decide whether this was a trademark infringement


Major Ideas• A trademark (service mark) is any word, name, symbol,

or device, or combination, used to identify and distinguish a source of goods (or services)

• The touchstone of trademark infringement is likelihood of confusion as to source or association with the goods or services

• Domain names can be trademarks• Domain name disputes can be settled in court or in

ICANN arbitration under the Uniform Dispute Resolution Policy (UDRP)

• Cybersquatting is prohibited federally• Trespass is an important theory to protect against forms

of web page piracy


QA&


Visa v. JSL Corporation• Visa is a worldwide association of credit-card issuing

banks

• JSL is owned by Joseph Orr. It has no employees and operates out of his apartment in New York City

• When Orr lived in Japan in the late 1990s, he formed a school named “Eikaiwa Visa” to teach English. “Eikaiwa” means “English conversation” in Japanese.

• Orr testified that he used “Visa” because visa suggests international travel

• Visa started using “Visa” in 1976 and has 43 Federal trademark registrations containing “Visa”

• Visa operates in all 50 states and over 200 countries


Visa v. JSL Corporation• Visa has issued 750 million cards, which are acepted by

more than 21 million merchants

• Visa has operated a website visa.com since 1994. It furnishes millions of page views per month

• JSL registered the domain name “evisa.com” in 1997

• evisa.com is not a school. It claimed to offer “e-commerce, Web site development, and payment services”

• In 1999, Visa offered to buy the domain evisa.com for $10K. Orr demanded $250K

• In 2001, Visa brought suit against JSL for trademark dilution to enjoin (stop) the use of evisa.com by JSL

Visa v. JSL Corporation• The case was procedurally complicated.

• The trial court considered testimony of expert and fact witnesses that “Visa” was a famous mark

• Because there was no genuine issue of material fact, the Court issued the injunction without sending the case to a jury (called “summary judgment”)

• The Ninth Circuit reversed because the trial court had not used the correct standard for finding dilution. The U.S. Supreme Court, in Moseley v. V-Secret Catalogue, said that “actual dilution, rather than a likelihood of dilution” must be proven

• On remand, JSL mounted unsuccessful Daubert challenges to Visa’s witnesses

• The court applied Moseley and issued the injunction

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