Trademark Developments

Introduction to Cyber-Squatting

In the 20th and 21th Century, some individuals have registered well-known trademarks as Internet domain names even though they do not own the mark or have any relation to the owner. For instance, a person with no connection to the Sony Corporation might register the name as a Web site. Often they do this with the hope that the trademark owner will pay them to turn over the domain name. These individuals are often called cyber-pirates or cyber-squatters. In 1999 Congress passed a law to deal with the problem of cyber-squatting. This law makes it illegal to use another party’s trademark as a domain name on the Internet with a “bad faith intent to profit.”

There is also an international system for arbitration of domain name disputes, which is administered by the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit corporation responsible for Internet protocols. Courts have held, however, that it is permissible to use another party’s trademark along with a negative word, such as “stinks,” as the domain name for a Web site criticizing the trademark owner. The courts reasoned that such domain names do not create any confusion about who is sponsoring the Web site, because consumers understand that trademark owners do not normally criticize or make fun of their own trademarks. ” (1)


From the Document “The Anticybersquatting Consumer Protection Act of 1999, section 3006 concerning the abusive registration of domain names”:

The Procedure and Policies of the Internet Corporation for Assigned Names and Numbers

On June 5, 1998, the United States Department of Commerce issued a Statement of Policy entitled Management of Internet Names and Addresses (the “White Paper”) setting forth the
Administration’s policy for privatizing management of the domain name system in a procompetitive manner that would also facilitate global participation. The White Paper may be found on the Department of Commerce, National Telecommunications and Information Administration Web site.

The White Paper called upon the private sector to create a new, not-for-profit corporation to assume responsibility, over time, for the management of certain aspects of the domain name system. The Department ultimately entered into agreements with ICANN, a non-profit corporation formed by the private sector, to undertake this transition.

As described in the White Paper, the United States sought the assistance of the World
Intellectual Property Organization (WIPO) to initiate a balanced and transparent international
process to:

  • develop a set of recommendations for an approach to resolving trademark / domain name disputes involving cyberpiracy;
  • develop recommendations for the protection of wellknown marks in the generic TLDs; and
  • evaluate the effects of adding new TLDs and related dispute resolution procedures on domain name and trademark holders.

The results of the study were to be submitted to the board of the new, not-for-profit corporation for consideration.

WIPO undertook a thorough process to investigate the complex issues that included convening
an experts committee from around the world, conducting a series of international consultations, and soliciting public comment on the issues. On April 30, 1999, WIPO released its final report, entitled The Management of Internet Names and Addresses: Intellectual Property Issues (this report may be found online at

This report identified for ICANN a range of considerations and recommendations on questions arising out of the interface between intellectual property rights and the global domain name system.

With respect to conflicts arising from the bad faith registration of trademarks as domain names,
the WIPO report recommended a speedy online administrative system for dispute resolution that would not limit a party’s right to seek relief in a court of law. WIPO noted in its April 30, 1999, report that areas requiring further consideration and investigation included “the problem of bad faith, abusive domain name registrations that violate intellectual property rights other than trademarks or service marks, for example, geographical indications and personality rights.” The Management of Internet Names and Addresses: Intellectual Property Issues, Executive Summary, “First Steps and Outstanding Issues,” pp. (vii)-(viii).

Uniform Domain Name Dispute Resolution Policy (UDRP)

Based on these recommendations and after additional public consultation, ICANN approved
rules and implementing documents for a uniform domain name dispute resolution policy (UDRP) for the resolution of disputes arising from trademark/domain name conflicts.

The UDRP is designed to be an expeditious, inexpensive process for resolving disputes, with remedies consisting of transfer or cancellation of the disputed registration to successful complainants.
Complaints brought under the UDRP are administered by approved dispute resolution service
providers.10 The proceedings are conducted by administrative panels appointed by the dispute
resolution service providers. UDRP dispute resolution providers have rendered over 1,500
determinations in cases alleging cybersquatting.

Although the policies and procedures of the UDRP were not developed specifically to address
allegations of personal name cybersquatting, several dispute determinations have been rendered under the UDRP that apply the policy to cases of abusive domain name registration involving personal names, or variations of personal names. In the online context of memorable domain names, a cybersquatter may use common typographical errors to confuse users about the origin of a product or service that the cybersquatter is offering. For example, a cybersquatter may purposefully transpose the lettering of a personal name and then register a resulting domain name that is confusingly similar to a well-known or trademarked personal name.

In those cases, determinations in favor of complainants have been rendered where the complainant has demonstrated trademark-based or other rights in the personal name that, in the judgment of the administrative panel, would satisfy the requirement of the UDRP. Administrative decisions held under the UDRP have stated that disputes involving personal names do not require registration of a personal name with a government agency
to be considered under the procedure.

Such determinations have resulted in the transfer of the contested domain name, as provided under the UDRP. We note that while several personal domain name cases have been arbitrated under the ICANN UDRP, issues regarding the appropriateness of employing the UDRP, as currently written, to resolve such disputes will likely be considered through additional work by ICANN and WIPO.

Generally, under the UDRP, a Complainant will be required to prove the following three

  • that the domain name is identical or confusingly similar to a trademark or service
    mark in which the Complainant has rights,
  • that the domain name holder does not have legitimate interests in the domain name, and
  • that the name was registered and being used in bad faith.

The domain name holder, or Respondent, must thereafter demonstrate in a response
whether he possesses legitimate interests in the domain name. This proof of legitimate interest
should include whether:

  • the name used in the domain name is connected to the bona fide offering of goods or services;
  • the domain name holder is commonly known by the name used as a domain name; or
  • the domain name holder is making a legitimate noncommercial or a fair use of the domain name without intent to divert consumers or tarnish the trademark at issue.

Administrative Proceedings Involving Personal Names

In several UDRP decisions, panelists have clarified the requirement that the Complainant prove
that he has demonstrable trademark rights. A Complainant must prove, according to these
cases, that he or she is the owner of either a trademark or service mark in the personal name by a registration of the mark, or in other cases by offering evidence of his or her common law rights to the personal name.

See the following sections:

  • Several UDRP Decisions have Relied Upon Registration of Personal Name as
    Trademarks to Find in Favor of the Complainant
  • Several UDRP Decisions have Relied Upon “Common Law Rights” in Personal
    Names to Find in Favor of the Complainant

Several UDRP Decisions have Relied Upon Registration of Personal Name as Trademarks to Find in Favor of the Complainant

In several disputes resolved through the UDRP, it was noted and/or relied upon that the
Complainant possessed a trademark registration for the personal name in dispute. On February
13, 2000, the private company Harrods Limited submitted a Complaint to WIPO Arbitration
and Mediation Center seeking a domain name transfer of . Harrods Limited v. Robert Boyd (Case No. D2000-0060) (WIPO March 16, 2000, decision). Harrods, the
owner of a European Community trademark in the words “DODI FAYED,” maintained that the
Respondent in the case had registered the disputed domain name and was offering the domain
name for sale in an effort to capitalize unjustly on the public interest in the late Mr. Emad
Mohamed al-Fayed, who died in the accident that also killed Princess Diana of Wales.
The administrative panel in Harrods turned to an examination of the three UDRP factors.

Regarding the trademark rights element, the panel concluded that the name “Dodial Fayed” was
simply a more formal version of a nickname which would be confusingly similar to the European Community trademark. This similarity satisfied the first requirement of the UDRP. The panel further found that Complainant’s European Community trademark (there was no evidence that Complainant had pursued a trademark in the United States) demonstrated legitimate rights that the Respondent could not claim. The Respondent’s bad faith use of the mark was implied from his sales offer which, according to the panel further demonstrated that the Respondent did not have a legitimate interest in the name. Consequently, the panel decided the proceeding in favor of Complainant and ordered the domain name transferred. Other UDRP cases involving personal names for which trademark (or service mark) protection was previously obtained include:

  • CMG Worldwide, Inc. v. Alessandro Bottai (Case No. FA0004000094661) (National Arbitration Forum May 31, 2000, decision) (domain name transfer of to Complainant, an international licensor of celebrity marks);
  • Yanni Management, Inc. v. Progressive Industries (Case No. FA0006000095063)
    (National Arbitration Forum August 2, 2000, decision) (domain name transfer to
    Complainant, a famous musician);
  • Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “” (Case No. D2000-0847) (WIPO October 12, 2000, decision) (domain name transfer of to Complainant, an internationally known entertainer, from Respondent who also held a bona fide trademark in Tunisia in the word “MADONNA” ).

In the UDRP decision Calvin Klein, Inc. v. Spanno Industries (Case No. FA0007000095283 (WIPO August 21, 2000, decision), the administrative panelists transferred to Complainant retailer Calvin Klein the domain name .
Calvin Klein had previously obtained registered marks in both the United Kingdom and
the United States. Respondent Spanno Industries failed to file a response to the
Complaint in the case, and the uncontested facts of the case indicated that Spanno was a
bad faith user of the domain name. More particularly, the Respondent registered the
domain name years after the retailer registered its own identifying trademarks, used the
subject domain name to display obscene and terrorist materials, was not commonly known
by the domain name, and was not licensed or otherwise authorized to use the Calvin Klein

Several UDRP Decisions have Relied Upon “Common Law Rights” in Personal Names to Find in Favor of the Complainant

Several UDRP decisions have been in favor of the Complainant regardless of whether he could
demonstrate a prior registration of the name as a mark within some jurisdiction. These decisions have relied upon mostly common law rights with a basis in English or U.S. law, such as a right against passing off and acquiring secondary meaning, respectively.

For an example, in May of 2000, Jeanette Winterson v. Mark Hogarth (Case No. D2000-
0235) (WIPO May 22, 2000, decision), decided in favor of this British author stating that she
had “common law rights” in her name. In dispute were the following domain names:
“”, “”, and “”. The
Respondent had registered not only these names, but also the domain name “” with the declared intention of developing Web sites devoted to over 100 writers of renown. Complainant, a Booker Prize-winning author, could claim no registered or pending trademarks in her name, but instead asserted that the mark “JEANETTE WINTERSON” had come to be recognized by the general public as indicating an association with her works. Complainant initiated proceedings under the UDRP on March 30, 2000, after the Respondent telephoned her offering the domain name for sale.

Cybersquatting in Electronic Commerce

Cybersquatting in the Online Business Law


Overview of Cybersquatting in relation to cyber crime: [1]One notable cybersquatting case was People for the Ethical Treatment of Animals v. Michael T. Doughney. In this case, Mr. Doughney registered the domain name ”” and created a Web site named ”People Eating Tasty Animals.” People for the Ethical Treatment of Animals (PETA) sued Mr. Doughney for trademark infringement. Lawyers representing the firm argued that PETA’s trademark was being infringed upon. PETA won the case and was able to gain control of the domain name for its own use.


Notes and References

1. By Shaun M. Jamison

See Also

  • Types of Cybercrime
  • Cybercriminal

Further Reading

American Bar Association. (2008). U.S. Patent and Trademark Office: Basic facts about registering a trademark. Available at (internet link) intelprop/comm106/106trade.html#etr; Electronic Freedom Foundation et al. (2008). Chilling Effects Clearinghouse: Frequently Asked Questions (and Answers) about ACPA. Available at (internet link); Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club. (2000). Available at (internet link) d2000-0364.html; PETA v. Doughney. (2000). Available at; United Nationals World Intellectual Property Organization (WIPO). (2008). Available at (internet link) index.html.en; Virtual Works, Inc. v. Volkswagen of America, Inc. (2001). U.S. Ct. of Appeals, 4th Circuit. Available at (internet link)


See Also

  • E-Commerce Regulations
  • Online Business Law
  • Online Business Regulations


Notes and References