Eric Goldman Interview: Domain Name Exceptionalism - Is Special Treatment Warranted (Part 2)

Eric Goldman is an Associate Professor of Law at Santa Clara University School of Law. He also directs the school's High Tech Law Institute. Before joining the SCU faculty in 2006, he was an Assistant Professor at Marquette University Law School, General Counsel of Epinions.com, and an Internet transactional attorney at Cooley Godward LLP. Eric teaches Cyberlaw and Intellectual Property and previously has taught courses in Copyrights, Contracts, Software Licensing and Professional Responsibility.   Eric's research focuses on Internet law, intellectual property, marketing, and the legal and social implications of new communication technologies. Recent papers have addressed topics such as search engines and online marketing practices.

Eric runs two popular blogs Tech & Marketing Blog & Goldman's Observations Blog. Part 1 of Eric Golman's interview can be found here.

ANNOUNCER: Today’s program is brought to you by Traverse Legal. A law firm specializing in internet law, domain disputes, intellectual property and technology company representation. That’s Traverse Legal www.traverselegal.com. Welcome to the Vertio Talk Radio tech spotlight with your host Damien Allen.

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Professor Eric Goldman on Domain Name Exceptionalism - Is Special Treatment Warranted? (Part 1)

Eric Goldman is an Associate Professor of Law at Santa Clara University School of Law. He also directs the school's High Tech Law Institute. Before joining the SCU faculty in 2006, he was an Assistant Professor at Marquette University Law School, General Counsel of Epinions.com, and an Internet transactional attorney at Cooley Godward LLP. Eric teaches Cyberlaw and Intellectual Property and previously has taught courses in Copyrights, Contracts, Software Licensing and Professional Responsibility.   Eric's research focuses on Internet law, intellectual property, marketing, and the legal and social implications of new communication technologies. Recent papers have addressed topics such as search engines and online marketing practices.

Eric runs two popular blogs Tech & Marketing Blog & Goldman's Observations Blog.

Play Show: Domain Name Exceptionalism - Is Special Treatment Warranted? (part 1)
Traverse Legal, PLC
Read Transcript

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Domain Name Disputes Handled By WIPO Continue To Rise

DN Journal just noted that WIPO disputes have continued to increase over the past five years, linking to an article at pingdom.com.  Pingdom notes that domain disputes have doubled since 2003 and that the United States is the origin of most of the domain name disputes handled by WIPO.  Forty percent of the defendants are U.S.-based, despite the fact that the U.S. only has 15% of the world’s internet population.  Here is the chart posted on Pingdom.

S. 2661 is a Fox in Sheep’s Clothing? Why Call it an Anti-Phishing Bill When It Is Also A Trademark Bill?

Chuck Kisselburg at the ICANNblog makes a good point about he so-called Anti-Phishing Bill, Senate Bill 2661. While the bill is not close to becoming a law at this juncture, Chuck correctly notes that "the bill feels like a fox in sheep’s clothing as the bill’s name suggests a bill against anti-phishing. Instead the bill not only discusses anti-phishing but seems to be based around the use, or misuse of domain names."

More Cybersquatted Domain Names for Your Buck With One UDRP Complaint

Rule 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy states, “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”  This means that if a trademark owner’s business is being harmed by multiple unrelated cybersquatters, she must file one complaint against each registrant.  What if you have a popular trademark and/or domain name (which usually coincides with a popular product or service) that you believe is being cybersquatted by numerous domain name registrants?  Based upon the number of UDRP Complaints that name only one domain, most Complainants, and even their attorneys, believe you have to file one Complaint against each domain name registrant.

Win or Lose: The UDRP Is Not Your Only Option When It Comes to Domain Names

While the UDRP is an efficient and relatively cost-effective mechanism by which a trademark owner can acquire a domain from a cybersquatter, it is not the only option.  This is especially true since the proofs needed to win a UDRP are not the same as those required to win an ACPA federal lawsuit, although similar.  If your UDRP Complaint requesting that the domain name be transferred is denied, you can still pursue an ACPA lawsuit for cybersquatting, as long as you do so within the applicable statute of limitations.   

Should you be on the receiving end of a UDRP Complaint and lose, you have rights that may be worth pursuing.  However, you do need to know that if you lose, you must file a lawsuit in a court of law to stay, or prevent, the domain name from being transferred to the Complainant that prevailed under the UDRP.

The UDRP is a form of adjudication, but as the below excerpt from a known case makes clear, it is no court of law. 

Bounty Hunters to Track Down Cybersquatters?

Rick Schwartz has been warning other domainers for some time about the dangers that lurk ahead.  One lawyer at Out-law.com is proposing that trademark holders band together to track down and police cybersquatters worldwide.  This effort would be funded by large global corporations. 

John Mackenzie, an intellectual property and technology law expert at Pinsent Masons, the law firm behind OUT-LAW.COM, said that businesses should band together to tackle the multi-million dollar cybersquatting industry pro-actively.

"What is really needed and what may occur is a trade organization pushing a policing function whose only purpose is to chase these people," said Mackenzie, saying that it could be similar to business-funded copyright protection groups such as the Business Software Alliance.

"Brands have no choice," he said. "This is turning from the opportunistic registration of domains with people making small amounts of money in garden shed operations into activity from highly sophisticated organizations who are operating around the world."

Essentially, what is being proposed here is a common fund to bring cybersquatters into court in order to sue for damages, as opposed to the limited relief of domain transfer allowed under the UDRP and similar policies.

UDRP: Lack of Use of a Domain is NOT Always a Defense

The mere holding of an infringing domain name without active use can constitute use in bad faith under the UDRP.  Despite this, all too often trademark owners watch as domains are registered that incorporate their trademark.  Unfortunately for the trademark owner, they think costly litigation under the ACPA is the only means of redress for what appears to be clear cybersquatting.  While the UDRP is cost effective and efficient, there is a general understanding (or more appropriately misunderstanding) that there must be a use of the domain name in order to file a UDRP complaint and win the UDRP.  In fact, the rules for the Uniform Domain Name Dispute Resolution Policy, states that the domain name must have been registered in bad faith and used in bad faith to satisfy the policy.  Registration in bad faith was, and continues to be perceived by some, as not enough.  That said, recent panels have held that a Respondent’s failure to make an active use of the web site, such as merely parking the web site with a web hosting company, is enough to satisfy bad faith registration and use under policy paragraph 4(a)(3).

Dell Lawsuit Exposes the Seedy Side of Domaining and Domain Monetization

Follow the Latest Developments In The Dell Typosquatting / ACPA Lawsuit Here.

At the heart of the Dell ACPA cybersquatting lawsuit is the concept of the now highly controversial Add Grace Period (AGP) implemented by ICANN, which is  the technological and policy foundation of domain tasting.  A Grace Period refers to a specified number of calendar days following a Registry operation in which a domain action may be reversed and a credit may be issued to a registrar. AGP is typically the five day period following the initial registration of a domain name. AGP appears as a contractual term in some, but not all gTLD registry agreements.

AGP was implemented for consumers to correct of typos and other errors by registrants. Once a domain name is deleted by the registry at this stage, it is immediately available for registration by any registrant through any registrar. When a domain name is registered through an ICANN accredited registrar, that registrar may cancel the domain name at any time during the first five calendar days of the registration and receive a full credit for the registration fee from the registry.

Few companies have publicly taken on the serious serious issues of cybersquatting and the policies of ICANN which create and support the practice of domain tasting, a commercial activity which has little if any legitimate justification in cyberspace. Few companies have the financial ability to take these matters to court and expose the seedy practices of cybersquatting, typosquatting and domain tasting. In many instances, the defendants are hard to locate or even identify, making the possibility of collecting damages remote.

In the Dell lawsuit, it is alleged that the defendants set up a network that cycled infringing domain names from one registrar to the next in order to hold onto the domains indefinitely without ever paying for them, all the while profiting from pay-per-click ads on the sites that often served visitors with ads for Dell's competitors.  These allegations suggest one of the most obvious examples of intentional bad faith cybersquatting. Unfortunately, this level of cyber and typosquatting is not only common, but rampant on the world wide web today.

These blatant squatters are also difficult to coral.  Because of private registration, it is often difficult to identify the registrant behind a particular domain registration. Even if the registrant is identified, the more sophisticated squatters use offshore companies to The complaint further charges that the registrars created and controlled a series of shell corporations in the Bahamas to act as the entities registering the domains, including Caribbean Online International, Domain Drop S.A., Domibot, Highlands International Investment, Keyword Marketing Inc., Maison Tropicale, Marketing Total S.A, Click Cons Ltd., Wan-Fu China Ltd. and Web Advertising Corp.

Free Cybersquatting Report

Traverse Legal offers a free Cybersquatting Report to anyone interested in determining whether or not their domain name is having traffic diverted, website visitors forwarded to competitor websites or are otherwise the victim of cybersquatting. 

Many companies go for months or years without realizing that their web traffic is being diverted to other locations as a result of cybersquatting activity.  Contact us for a free Cybersquatting Report and find out who's stealing your website visitors.