September 27, 2008
Gives the Web a Bad Name Again
Homesteading or squatting, pioneers or nesters, what you call a practice all depends on your point of view. Cybersquatting, as the World Intellectual Property Organization (WIPO 2008) recently acknowledged, is still with us and growing. According to WIPO, the number of cybersquatting cases filed through its domain name resolution service in 2007 set a new record. Cybersquatting, or cyberpiracy as U.S. legislation calls it, is the practice of registering as domain names the service names or trademarks of others toward the end of profiting by the sale of the domain names to others or by the use of the domain names for other purposes.
Some alleged cybersquatters may register domain names such as thesimpsonsmovie.com to attract Simpson fans to a website, a variation on the classic bait and switch. Innocent "cybersquatters," including the boy nicknamed Pokey and the girl named Veronica who were each challenged by the manufacturer of Pokey toys and the publisher of Archie Comics, respectively, may also find themselves involved in legal hassles.
Domain name speculation has been big business for quite some time. In March 2000, 1 wrote about the domain name speculation business in Searcher's pages ["I Think ICANN: Climbing the Internet Regulation Mountain," vol. 8, no. 3, pp. 44+]. In that paper, I described a law review article by Ira Nathenson published in 1997. He identified three variations on cyberpiracy: "squatters, twins and poachers, and other para- sites." Squatters are those who register a domain name, usually a domain name identified with a well-known trade or service mark. "Froogle" became a cybersquat cause celebre in 2002. On Dec. 11,2002, Google launched its froogle.com service. Google failed to register the trade name on the co.uk and other inter- national ccTLD domains as the service launched. The froogle. co.uk name was "pirated" out from under them. Google took its case to Nominet, the appropriate .uk registry, to request the transfer of the domain name from LWD Internet to Google. Google prevailed. Similarly, froogle.ca was transferred from a private person to Google by a Canadian arbiter in 2005. Of course, since then, Google has abandoned the Froogle name for the more prosaic Google Products.
Types of Cybersquatters
A twin is not actually a cyberpirate; it is an entity that has historical or other claims to a trade name shared by another. Many service and trade names are similar - they may offer very different services and products in the same geographic area or they may offer similar services and products in different geographic areas. For an example of the former, consider the use of the name Delta, a trademark of both the plumbing fixture maker and the airline. An experienced searcher tells the tale of trying to guess the URL for Dun & Bradstreet and finding herself whisked to a small shop in England selling Delft and Battersea china. Who knows how many Mom and Pop restaurants there are? That term is both generic and the name of some establishments.
In contrast, a poacher seeks to gain some competitive advantage from the service or product provided due to name similarity, e.g., googel or google. This practice is also sometimes known as "typosquatting." A typosquatter might profit from click throughs to advertisers on the offending website. (See S. GH. press release dated lune 200 1 [http: / /www.weblaw.co.uk/news_ cyber. php], for an example.)
Yet another variation involves acquiring a domain name on a different generic top-level domain (gTLDs) or country code second- or third-level domains (ccTLD). For example, nasa.gov points one, as you would expect, to the U.S. government site for the space agency. Nasa.com, nasa.org, and nasa.net find hotels. With the proliferation of new gTLDs scheduled to be underway in 2009 and the many ccTLDs already in existence, opportunities abound. In an article on ZDNet dated Oct. 8, 2007, Lynn Tan reports a proliferation of cybersquatting on Asian ccTLDs, particularly on the Chinese .en.
Homographie spoofing can also create cyberpiracy opportunities. A URI homographie spoof uses symbols that closely resemble others that are resolved by browsers similarly. ICANN (2005) suggests examples as "0 zero" and "O oh" or the Latin B and the Greek B. As the internet becomes more sensitive to different character sets (another development scheduled for expansion in 2009 with changes in ICANN's internationalized domain name policies), migration from ASCII to punycode to UNICODE should, we hope, resolve some of the problems.
Spoofing takes other forms. In 2006, a Canadian undertook to register variants of "credit union" as parts of domain names and mimic actual credit unions in webpages. Political dirtytricksters have more than once set up what appear to be the legitimate websites of opposing candidates to try to discredit them. A common phishing strategy is to provide what appears to be a legitimate URL (a bank, PayPal, etc.). The link may, in fact, resolve to something all together different. Finally, email spammers often spoof legitimate domain names in order to penetrate firewalls, increase readability, and confer legitimacy to their missives.
Domain names can and do change hands. The whole point underlying most cybersquatting is the opportunity to parlay a popular domain name into profit by reselling to another, sometimes for substantial profit. Sometimes that exchange involves two parties both with a legitimate claim to a name, like the Delta faucet maker who transferred delta.com to Delta airline. Then there's the migration to and acquisition of once very different domain names by the sex industry. I was recently embarrassed when a link I provided in a course I teach on metadata, once a perfectly good metadata resource, took my students to a pornographic site.
Another concern is domain name "salvage." On more than one occasion, the owner of a useful domain name will suffer from an oversight and fail to renew the domain name registration. An adept observer may, when a registration expires, sweep in and register the "abandoned" name out from under the previous owner. The chagrined former owner may then have to pony up "big bucks" to reclaim its good name.
The last in this litany of domain name shenanigans is domain name theft. Perhaps the best-known or the most notorious of these was the theft ofsex.com in the mid-1990s. As one might imagine, sex.com provides access to a variety of erotic entrepreneurs. In 1995, Network Solutions transferred the ownership ofsex.com from one owner to another, based on fraudulent documents provided to it by the second party. The upshot of the sex.com case (aka Kremen v. NSI, 325 F.3d 1035, 9th Cir. 2003, cert, denied) was the judicial recognition of domain names as property. (For a discussion of the sex.com case, see Eric Goldman 2006).
Where Have We Been? Where Are We Going?
The .comgTLD represents almosthalf of all websites. Itis the primary target of the cybersquatter. That said, one reason for the increase in cybersquatting claims stems from the proliferation of new gTLDs and particularly the increase in the number of what ICANN calls unsponsored TLDs (uTLDs). Cybersquatting is also a concern in the ccTLD arena. There are more than 240 ccTLDs that signify country, regional, or territorial registrars. The various ccTLD registrars may operate under specific regulations. (See, for example, the Australian Domain Name Authority regulations for registrars on the .au ccTLD at http://www.auda. org.au/policies/ auda-2002-17.)
The original set of gTLDs were .com, .edu, .gov, .int, .mil, .net, and .org. In 2000 and later, ICANN added .aero, .biz, .cat, .coop, .info, .jobs, .niobi, .museum, .name, .pro, and .travel. These latter gTLDs were further designated as sponsored (sTLD) and unsponsored (uTLD) top-level domains. Sponsored TLDs, those proposed and maintained by specific communities of interest, include .aero, .cat, .coop, .jobs, .mobi, .museum, and .travel. In order to register a domain name under an sTLD, applicants must meet criteria established by the sponsor. For example, only museums may register on .museum. Only firms associated with travel may register on .travel. Of the original seven gTLDs, .edu, .gov, .int, and .mil limit registrations to educational institutions, the U.S. government (including state and local entities), international organizations, and the U.S. military, respectively.
ICANN maintains a mechanism for the creation of new gTLDs, a mechanism scheduled to expand. New uTLDs will probably become as fertile for cybersquatting as the current set. At a meeting in late lune 2008, ICANN announced a draft policy to expand the number of gTLDs from 21 to what appears to be an unlimited number of possibilities. To quote from the lune 26, 2008, posting:
This proposal allows applicants for new names to selfselect their domain name so that choices are most appropriate for their customers or potentially the most marketable. It is expected that applicants will apply for targeted community strings such as (the existing) .travel for the travel industry and .cat for the Catalan community (as well as generic strings like .brandname or .yournamehere). There are already interested consortiums wanting to establish city-based top level domain, like .nyc (for New York City), .berlin and .paris.
The nuts and bolts of the new policy will not be worked out until early 2009, but the ICANN board voted overwhelmingly to adopt the new policy. (For more details, read Barbara Quint's Infotoday.com NewsBreak, "Dot-Mania: ICANN Opens the Domain Door," IuIy 3, 2008 [http: / /newsbreaks.infotoday.com/ nbReader.asp?ArticleId=49783] .) Another new policy approved at the ICANN meeting involved adopting non-Latin characters for internationalized domain names. This policy is also scheduled for implementation in early 2009. Cybersquatting may be less troublesome for sTLDs, where sponsor criteria control those registering domain names. I suspect, however, that as the number of new gTLDs increases, so will the opportunities to cybersquat. ICANN is already preparing procedures to deal with controversial claims for gTLDs. Cybersquatting a dot-whatever?!! The best protection here probably lies in the estimated $100,000 to $500,000 - nonrefundable - application fee.
Several mechanisms have been developed to resolve cyberpiracy and cybersquatting disputes.
A number of jurisdictions have sought to address cybersquatting. Within the U.S., case law, treaty law, and trademark legislation have been used to resolve cybersquatting disputes. The Trademark Cyberpiracy Prevention Act, also known as the Anticybersquatting Consumer Protection Act of 1999, specifically addresses Cybersquatting (15 USC [section] 1125):
(d) Cyberpiracy prevention
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that
(I) 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;
(II) 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 ofthat mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
ICANN has also sought to implement conflict resolution mechanisms. In 2001 and 2002, ICANN recognized four organizations to mediate disputes between claimants. These were the Asian Domain Name Dispute Resolution Centre, the CPR Institute for Dispute Resolution, the National Arbitration Forum, and WIPO. Many ccTLDs registrants have also recognized dispute resolution services for their particular ccTLDs. For example, the British Columbia International Commercial Arbitration Centre is so recognized by the Canadian Internet Registration Authority.
Web Searchers, Beware!
As web law goes, cybersquatter jurisprudence is well established. ICANN maintains mechanisms for regulating the creation of newgTLDs and the occasional new ccTLD (e.g., .eu). ICANN, U.S. federal courts, and national registrants could find new uTLDs and ccTLDs as fertile for cybersquatting as the current set.
Does cybersquatting matter to the searcher community? What if a client asks you to perform a trademark search, including domain names? On the web, trademarks and service marks can take on a life of their own. Old McDonald, trying to register his farm, might encounter resistance, just as Pokey and Veronica did. In the early 1990s, my wife and I registered - and have since abandoned - It's a Snap Aerobatics as a service mark. A quick Google check in 2008 turns up www.itsasnap.org and www.its-a-snap.com. Then there's wwwitsasnapwireandcable. com. None of these have anything to do with flight training. Could we have a case against any or all of these entities? Almost certainly not, and we wouldn't try. But what is the due diligence for a searcher asked to research, for example "itsasnapanything" as a potential domain name for a flight trainer or anybody else?
Second, searchers will have to be familiar with the wide range of TLDs and the potential for finding relevant information in a variety of places - http: / /www.mcdonalds.co.uk, http: / /www. mcdonalds.com, http://www.mcdonalds.fi/index.php, or the interesting variation http://www.mcdonaldsindia.com. Under the new ICANN initiative, start watching for such TLD s as .med, .mickyd, and, to switch brands, .whopper. Searchers should also watch for variations on famous and not-so-famous marks held by cybersquatters and their fellow travelers.
And, finally, beware of spoofs.
Does cybersquatting matter to the searcher community? What if a client asks you to perform a trademark search, including domain names?
Eric Goldman blog, "Sex.com - An Update," Oct. 30, 2006 [http:// blog.ericgoldman.org/archives/2006/10/sexcom_an_updat.htm].
Internet Corporation for Assigned Namesand Numbers, "ICANN Statement on IDN Homograph Attacks and Request for Public Comment," Feb. 23, 2005 [http://www.icann.org/announcements/announce ment- 23feb05.htm]. Accessed April 14, 2008.
Internet Corporation for Assigned Names and Numbers, Top-Level Domains (gTLDs) [http://www.icann.org/tlds]. Accessed April 3, 2008.
Internet Corporation for Assigned Names and Numbers, New gTLD Program [http://www.icann.org/topics/new-gtld-program.htm]. Accessed April 3, 2008
Internet Corporation for Assigned Names and Numbers, "Biggest Expansion in gTLDs Approved for Implementation" [http://www. icann.org/en/announcements/announcement-4-26jun08-en.htm]. Accessed July 2, 2008.
Wallace Koehler, "I Think ICANN: Climbing the Internet Regulation Mountain," Searcher, vol. 8, no. 3, March 2000, pp. 49-53.
Ira S. Nathenson, "Showdown at the Domain Name Corral: Property Rights and Personal Jurisdiction Over Squatters, Poachers and Other Parasites," University of Pittsburgh Law Review vol. 58, 1997, pp. 911+.
Lynn Tann, "Cybersquatting Escalates in Asia," ZDNet, Oct. 8, 2007 [http://news.zdnet.co.Uk/internet/0, 1000000097, 39289849, 00. htm]. Accessed April 14, 2008.
Phil Muncaster, "New lcann rules could end defensive registrations," IT Week, June 30, 2008 [http://www.itweek.co.uk/ itweek/news/22 20340/icann-rules-defensive]. Accessed July 3, 2008.
World Intellectual Property Organization, "DNS Developments Feed Growi ng Cybersq uatti ng Concerns" [http://www.wi po. i nt/ pressroom/ en/articles/2008/article_0015.html]. Accessed April 3, 2008.
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