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Domain Name Law Essentials
Clarke Douglas WaltonWalton Internet Law
Our Roadmap• Popular Legal Remedies (UDRP &
ACPA)• Case Study• 5 Minute Trademark Law• Essential Tips
Resolving Domain Disputes
UDRP– Uniform Domain Name
Dispute Resolution Policy (1999)
• Binding arbitration
• Less formal rules
• No hearing
ACPA- Anti-cybersquatting Consumer
Protect Act (1999)
• Federal court• Very formal rules
about procedure and evidence
• Live court hearings required
Two Ways to Resolve Domain Name Disputes
Resolving Domain DisputesBenefits and Costs
UDRP• Benefits:
– Fast (decision in 60 days)
– Works against international registrants
– Fixed Costs• Filing fee: less than
$1,500• Attorney fees: $3,000 to
$5,000• Downside:
– Only remedy is transfer of domain name
– Can’t recover damages– Can’t recover costs or
attorney’s fees
ACPA• Benefits:
– Get domain name transferred
– Recover damages (up to $100,000 per domain name)
– Recover court costs and attorney fees
– Get emergency relief (restraining order, injunction)
• Downside:– Difficult to estimate costs– Slow process (3-6 months is
minimum, can take years)
Case Study• Brett’s instructions:
– “Clarke - you have unique first hand experiences with this topic as a domainer. I would like to see you use a case study to prop up your central theme.”
Pubcon.com• Pubcon.com domain name
registered September 22, 2003
Trademark Strength• Trademark = Source identifier• Not All Trademarks Are Created Equally• 5 Levels of Trademark Strength
– Fanciful (very strong)– Arbitrary (very strong)– Suggestive (strong)– Descriptive (weak)– Generic (no strength at all)
Internet Examples• Fanciful (very strong)
– Zillow, Expedia• Arbitrary (very strong)
– Kayak, Amazon• Suggestive (strong)
– Youtube, Moviebuff, Gamespot, SeatGuru• Descriptive (weak)
– The Internet Movie Database, HomeLoanCenter
• Generic (no strength at all)– Hotels.com, Lawyers.com
Who Has Priority?• Date of first TM use in commerce
determines priority (in U.S.)• Not date of TM filing • Not date of TM registration
Pubcon.com Trademark
• Filed March 16, 2004• Registered September 27, 2005• First Use: June 30, 2001
– Common law rights began
Pubcon.com: Brett vs ClarkeWho wins?
• Pubcon.com strength?– Probably suggestive
• Priority?– Domain name registered by Clarke
September 23, 2003– Brett’s First Use: June 30, 2001
• Bad Faith?– Depends
Content on Domain Matters• Suppose you register Venetian.com
– “Venetian” for casino services is arbitrary, so it’s strong.
– “Venetian” for Venice, Italy is generic (geographically descriptive)
– Publish content about Vegas casinos? • You’re in trouble.
– Publish content about Venice, Italy?• You’re probably fine.
Domain Name Law Essentials
– UDRP vs ACPA– Not all TMs created equally– Priority is key (date of first use in
USA)– Content affects rights
• Be careful about content on your parked pages
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