I. INTRODUCTION

A. The Basics:  The Internet, Domain Names, and Trademarks

1. The Internet
2. Domain Names
3. Trademarks

B. The Great Collision

III. THE UNITED STATES' ANSWER:  THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT

A. Requirements Under the ACPA
B. Remedies Available Under the ACPA
C. In Rem Proceedings Under the ACPA
D. Where Does this Leave the Domain Name Holder?

V. HOW TO LAWYER THROUGH THE MAZE OF DOMAIN NAME POLICY AND LEGISLATION

VI. THE HORIZON IS EXPANDING?

VII. SUGGESTIONS

VIII. CONCLUSION

ENDNOTES

The Second Circuit has said that attempting to apply established trademark law in the fast-developing world of the Internet is somewhat like trying to board a moving bus.1  Anyone familiar with the history of domain name registration and trademark law would agree that the Second Circuit was right on track with their statement.  The Internet and its technology is forging ahead much more quickly than the law.  In the past six months, there have been great changes, both nationally and internationally, in legislation and policy regarding trademark law and domain names in the past six months.  The early court decisions seem to be sound.  But just what will the effect of the new policies be?  How will they affect the First Amendment rights of the American public?  Will big-name trademarks take control of the Internet?  This paper seeks to answer some of these questions as well as describe the processes currently in use throughout the world in domain name registration and trademark dispute resolution.
 
A typical Internet surfers' first option when looking for a specific company, instead of using a search engine is usually to type in the name of the company followed by ".com."   This system often works.  However, in some instances, a person may be surprised by their results.  Someone else may have registered the same name and are using the Web site in a different way that what the Internet user expected.  A problem arose however, when entrepreneurial Internet users began registering domain names with the intent to sell the names for profit.  In order to prevent registering these names in bad faith, the United States Government and the international community have set out to combat this in several ways.
 
A. The Basics:  The Internet, Domain Names, and Trademarks

1. The Internet

In the past ten years, Internet use has come from being something done by a few high-ranking government officials to an almost every day event in the lives of over 200 million people.2  In general terms, the Internet can be defined as a "network of networks." 3  The Internet is not a physical or tangible entity, but rather a giant interconnection of innumerable smaller groups of linked computer networks.4  It allows users to gain access to information stored on any other computer connected to the networks.5  The information accessed can including sound, still pictures or video, as well as printed material.  Each Web page can have links to other Web pages, and all material accessed can be downloaded to the user's computer hard drive or printed.6

2. Domain Names

In order to get information on the Internet, a user must know where to look.  Radio and television stations have channels, books in the library have call numbers, and Internet sites have domain names.  A domain name is a numerical Web page address addressed in "human-friendly form." 7

Domain names are actually only one part of a two-part system known as the domain name system (DNS), which serves to navigate user through the Internet.8  The two components of the DNS are the domain name and the corresponding Internet Protocol (IP) number.  The domain name serves are the easy-to-remember written form, such as www.ibm.com, while the IP is the underlying numeric address read by the computer, such as 197.27.392.19.  Databases on root servers store this information and then use both of DNS components together to direct Internet users to their requested Web pages.9  In essence, domain names appear as words to humans, and as numbers to computers.  Each computer has to have a unique domain name in order for the computer to send and receive e-mail and offer a Web site.10

Domain names are read by computers from right to left, with the most general part of the name at the far right, known as the top level domain (TLD).  There are two types of TLDs:  generic or international (gTLDs) and national (nTLDs).11  There are currently seven gTLDs, with ".com," used for commercial organizations, being the largest.  The others are ".org," for organizations; ".net," for network servers; ".edu," for educational organizations; ".gov," for nonmilitary government organizations; ".mil," for United States military sites; and ".int," for international organizations.12  National top-level domains are assigned according to country, for example ".uk," for the United Kingdom; ".au," for Australia; and ".jp," for Japan. 13

In front of the TLD, is the second level domain (SLD), which is allocated to users according to their unique address.  This part of the Web address identifies the specific Web page identity.  For example, in the Web address, www.uiowa.edu, ".edu," would be the gTLD, signifying that the address is an educational organization, and "uiowa" is the SLD, or the identifying feature letting the user know that the Web address is that of the University of Iowa, and the "www" merely indicates that the site is on the World Wide Web.  SLDs are usually memorable words or the company's trademarked name.

As the Internet has continued to grow exponentially, the request for domain names has grown along with it, with thousands of requests for new names being made daily.14  It is becoming increasingly difficult to register a popular name on the Internet.  And as more and more domain names are registered, the chance that a specific name is still available dwindles.  For example, according to a Wired News report, in April 1999, only 1,760 of the 25,500 standard dictionary words (such as www.cars.com, www.bread.com) were still available on the ".com" domain.15  Many companies that are latecomers to the Internet age are finding that another user has already registered their desired name.  For a company planning to do business on the Web, a domain name represents goodwill.  The traffic generated by a Website, and consequentially the value of that Website, is heavily influenced by the domain name.  The domain name affects how easy it is to find a particular company on the Web.16  Many companies are finding that their desired domain name is in use, which is often their registered trade or service mark.

3. Trademarks

For most companies, a trademark is their "identity."  Protection of these marks from unwanted use becomes a high priority in order to abate consumer confusion or trademark dilution.17

The Trademark Act of 1946, known as the Lanham Act, provides the guidelines courts use to define trademarks.  The Act defines a trademark as "any word, name, symbol or device or any combination" that a person uses to identify and distinguish their goods, and to indicate the source of the goods.18  A service mark is similar to a trademark, except that it identifies a service, such as banking, dry cleaning, or a restaurant, instead of goods.19  "Diet Coke" and "Sony" would be trademarks, while "Pizza Hut" or "Citibank" would be service marks.  In this paper, "trademark" will be used to refer to both trademarks and service marks.

A trademark must be distinctive, not merely descriptive.  Sony could not register a trademark of "television," as it is a common descriptive term.  However, hypothetically, Sony could produce a television called "Sonyvision" and register that name as a trademark.
 

A trademark serves to identify a company and their goods.  However, two companies could have the same trademark if it would not cause confusion between the products.  This can be done through geographical means or differences in products.  For example, a donut maker in Minnesota could call his product "Sony Saucers," and if Sony, the maker of Sonyvision sued, a court would most likely not find a trademark violation, as the goods are not part of the same market and would not be easily confused.  This is where the two worlds of domain names and trademarks collide.

B.  The Great Collision

Unlike trademarks, which can be identical in different markets, domain names need to be globally unique to be easily recognizable to information seekers on the Internet, and most importantly, in order for computers to find individual pages.  Domain names are similar to trademarks in the fact that the address becomes the "identity" of the Web page.  However, unlike trademark law, there cannot be more than one particular domain name.  For example, there can only be one "sony.com" on the Internet.  Yet within the same country, there could be more than one registered trademark of "Sony," as seen above, with respect to different goods or services by different businesses, or the trademark could be registered in different countries by different businesses.20  A domain name is unique, like a telephone number.  Two people can't have the same telephone number, for each one must be individual in order to correctly find the individual person when receiving a call.  One famous example of this concerns the trademark "Delta."  There are hundreds of businesses in the world with the word "Delta" in their name, with Delta Airlines, Delta Dental, and Delta Faucets being three of the more famous examples.

However, there can only be one "delta.com" on the Internet, which happens to be owned by Delta Financial Corp.  Delta Airlines had to settle for "delta-air.com."  In cases such as these, where more than one organization has the right to the same trademark, the courts will grant the domain name to whoever gets it first, as long as they have a bona fide right to the name.  The organization that it denied its trademark then can either choose a different variation of the their name, as Delta Airlines did, or they can buy the domain site from the rightful owner.  In 1998, Compaq, the owner of the Alta Vista search engine, purchased "altavista.com" from Alta Vista Technology for $3.35 million.21

Problems between different organizations with the same trademark are only one problem that the DNS has.  The problem that has caused need for legislation and policy making across the globe is cybersquatting.

A typical "squatter" is a person that has claim to something because they got to their desired object first.  The early settlers of the West would set up stakes around the land they "discovered" and "squat" the land for themselves.  College dorm students practice squatter's rights by having first choice as to stay in the dorm room they lived in the previous year.  However, the connotation that surrounds the word "cybersquatter" is not as friendly as that of the other squatters.  Cybersquatting, used interchangeably with cyber piracy, involves the registration of domain names that are identical or similar to trademarks owned by others, usually in order to extort money from the trademark owner, profit from the confusion, or prevent a competitor from easily entering the Internet.

One of the first cybersquatting cases was Panavision International, LP v. Toeppen.22 This case centered around the defendant buying the domain names Panavision and Panaflex, both trademarks of the plaintiff.  Toeppen's Panavision site contained only a photo of Pana, IL, and the Panaflex site merely said hello.23  Panavision requested Toeppen to relinquish the domain names to them, for which Toeppen asked $13,000.24  The Ninth Circuit granted Panavision an injunction under the Federal Trademark Dilution Act (FTDA), finding that Toeppen's use of Panavision's trademarks as domain names lessened the capacity of the marks to identify and distinguish Panavision's goods and services.25

Cases such as these were brought under trademark infringement or trademark dilution cases until November 29, 1999, when President Clinton signed into law an omnibus budget bill that included significant new intellectual property provisions, including the Anticybersquatting Consumer Protection Act.

The Anticybersquatting Consumer Protection Act (ACPA) gives trademark owners "important tools to protect their intellectual property" within the DNS.26  The ACPA was passed "to promote consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill commonly referred to as 'cybersquatting'."27  This Act amends the Trademark Act of 1946, creating a specific federal remedy for cybersquatting.  The new act will come under 15 U.S.C.§ 1125(d).

A. Requirements Under the ACPA

Under the ACPA, three inquiries are made to determine whether an injunction is appropriate.  First, it must be determined whether the registered domain name is a distinctive or famous mark entitled to protection.  Second, it must be determined if the registered domain names are identical or confusingly similar to the mark in dispute.  Finally, it must be decided if the domain name was registered with a bad faith intent to profit from the name, or in the alternative, if the registrant is entitled to safe harbor because the registration was not made with a bad faith intent and is protected. 28

 To determine the first factor, if a domain name is a famous or distinctive mark, there are several criterion laid out in 15 U.S.C. § 1125(c)(1).  They are:

1) The degree to which the mark is distinctive, either inherently or acquired;
2) The duration and extent of the use of the mark in connection with the goods or services for which the mark is used;
3) The extent and duration of publicity and advertising of the mark;
4) The geographical extent of the trading area in which the mark is used;
5) The channels of trade for the goods and services with which the mark is used;
6) The degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
7) The nature and extent of use of the same or similar marks by third parties.

Thirdly, the statute lists nine factors to determine when a registrant has acted with a bad faith intent to profit.  This list, however, is not exhaustive, and courts can consider other options when making this determination.33  The list to consider includes (person refers to the registrant):

1) the trademark or other intellectual property rights of the person, if any, in the domain name;
2) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
3) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
4) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
5)  the person'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;
6) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, 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;
7) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;
8)  the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
9)  the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous. 34

The first case decided under the new legislation was Sporty's Farm v. Sportsman's Market, Inc.36  Sportsman's is a mail order catalog company that specializes in products for people involved in aviation.37  Sportman's registered the trademark "Sporty's," and used it to identify its catalogs and products.38  Omega, a direct competitor, registered the domain name "sportys.com" in 1995.39  Omega then formed a wholly-owned subsidiary, Sporty's Farms, and sold the domain name to them for $16,200.40  Sporty's Farms grows Christmas trees and sold them on the Internet.41  Sportsman's discovered in March 1996 that Omega had registered "sportys.com" as a domain name, and brought charges against Sporty's Farms and Omega for trademark infringement, trademark dilution, and unfair competition.42  This complaint was brought before the enactment of the ACPA, however, when the appeal was pending, Congress passed the ACPA, and although as general rule, the law that exists at the time of the appeal governs, the Second Circuit found it was more appropriate to apply the ACPA to the appellate case instead of causing a remand to district court.43

The court in Sporty's followed the analysis of the ACPA and found that "Sporty's" is a distinctive or famous mark as it had been widely used by Sportsman's for almost forty years, appeared on Sportman's catalogs, and was a registered trademark.44  The court also found that the domain name "sportys.com" was identical or confusingly similar.45  In finding that Sporty's acted with a bad faith intent to profit, the court found that neither Omega nor Sporty's Farms had any intellectual property rights in the name "sportys.com" when it was registered, the first of the nine factors in the ACPA to determine bad-faith intent.46  The court also found that the domain name did not contain the legal name of the registering party (Omega) in violation of the second factor and that Sporty's Farm did not begin offering a bona fide good or service until after the litigation was underway.47  Instead, the court found that Omega's main purpose for registering the domain name "sportys.com" was to keep the name away from Sportsman's, Omega's competitor.48

 The ACPA also provides protection from cybersquatters to personal names.  Under the ACPA, all legal names are protected, not only the names of famous people.  Even ordinary people are protected from having their names cyberpirated in hopes of ransoming them back to the people who happen to have those names.49  In § 1125(d)(1)(B)(II), a court may find bad-faith intent to profit to "the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify a person."  Musician, composer, and television personality John Tesh  recently settled a suit under the ACPA.50  Tesh had registered the domain name "tesh.com" and operated it for the convenience of his fans.51  The defendants, whom owned a domain name called "celebsites.com" (Celebsites) that acted as a host to Websites of celebrities, as well as offers of advertising, contests, reports, and news.52  The defendant then registered the domain name "johntesh.com" without Tesh's knowledge or consent.53  Celebsites then portrayed that "johntesh.com" was Tesh's "official" Website.54  Tesh's complaint alleged that the defendant's act was wrongful registration and was done only for the profit of Celebsite's own advertising purposes.55

Test also alleged that Celebsites intended to sell the domain name for a profit, the defendant's use of the domain name was likely to cause confusion or deceive the Internet user, and that the defendants acted willfully and deliberately with an intent to reap the benefits of Tesh's goodwill and dilute the distinctiveness of Tesh's name.56  The ACPA "scared off" litigation with its harsh remedies before it happened, and Tesh settled with the defendants by receiving the domain name from Celebsites.57

B. Remedies Available Under the ACPA

The creation of specific remedies through the ACPA has provided much guidance to courts that previously were uncertain as to how to award damages.  Under the ACPA, in wrongful registration, trafficking, or use of a domain name that occurs after the enactment of the act, plaintiffs are eligible for the same monetary damages and injunctions as are available under the Lanham Act.58  The courts have the power to grant injunctions to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or as part of a proceeding under the ACPA.59  Monetary damages, as available under 15 U.S.C. § 1117(a), include (1) defendant's profits, (2) up to three times damages, (3) costs, and (4) in exceptional cases, attorney's fees.  The Act also gives plaintiffs the option of statutory damages in 15 U.S.C. 1117(d).  This section provides that at any time prior to final judgment the plaintiff can waive his or her actual damages and instead recover "an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just."60

The ACPA also specifically provides for injunctions ordering cancellation or transfer of domain names that were registered before, on, or after the enactment of the Act.61

C. In Rem Proceedings Under the ACPA

One problem in cybersquatting cases, before the enactment of the ACPA, was the ability to find the registrant of the domain name in order to bring suit.  Registrants of domain names must provide contact information when registering, but that information was found often to be incorrect or outdated when a suit arose.  Before the ACPA, if the registrant could not be found or identified, no action could be brought.  Now, under the ACPA, an in rem action, which is a suit brought directly against the domain names as property, is allowed.  A trademark owner to bring an action in rem against the domain name itself, overturning Porsche Cars North American Inc. v. Porsche.com.62  Under the new law, if a trademark owner cannot obtain personal jurisdiction or if after sending notice to the registrant through postal mail and e-mail, there is no answer, a trademark owner can bring an in rem action against the domain itself.63  The suit is then brought in the jurisdiction of where the registrar of the domain name is located or where "documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court."64

Advantages to trademarks owners are that domain name registrants can no longer hide from litigation, and with a letter to the postal address listed on the registration and a message to the listed e-mail address, the notice and service procedures are very easy to fulfill.65  As soon as the plaintiff gives the registrar a file-stamped copy of the filed complaint, the registrar must freeze the domain name, so that the registrant can't transfer or cancel the registration on their own.66

However, under an in rem proceeding, the only remedies available are injunctive relief.  No monetary damages are awarded, although, the trademark owner may still file a civil action against the domain name holder.67

D. Where Does this Leave the Domain Name Holder?

While the domain name registrant may file suit if they believe their use of the domain was lawful, what happens to those registrants who know that they are registering a trademark, but are doing so under free speech/First Amendment rights.  Sites such as "bellatlanticsucks.com" and "microsoftsucks.com" have either been bought out by the owners of the trademarks or relinquished under pressure of litigation.

The requirements for finding bad faith under the APCA are not bright line.  Almost any registrant could be found to have a bad faith intent to profit under the factors listed in § 1125(b)(i)(I)-(IX) just by using the trademark of another in the domain name.  This makes it almost impossible to have a critical Web site.  Just as it is easier for users of the Internet to find the company they are looking for by typing in the trademark as the SLD, those users looking for critical information need to have an easy way to find the information as well.  The Act, in essence, gives those with famous and distinctive marks a power over all others in registering domain names.  Professor Michael Froomkin, University of Miami College of Law, points out, "[T]he definitions will make every fan a criminal.  A file document about Batman, for example, which uses the trademark 'Batman' in its name, which also identifies its online location, could land the writer in court under this bill. This bill is simply overbroad; cybersquatting is not about file names." 68 At Congressional hearings before the passing of the ACPA, Senator Patrick Leahy, gave the following example.

"The bill would criminalize dissent and protest sites. A number of Web sites collect complaints about trademarked products or services, and use the trademarked names to identify themselves. For example, there are protest sites named "boycott-cbs.com" and "www.PepsiBloodbath.com." While the speech contained on those sites is clearly constitutionally protected, S. 1255 would criminalize the use of the trademarked name to reach the site and make them difficult to search for and find online."69

Professor Michael Froomkin, quoted above, also made statements to the Wall Street Journal expressing his fears that the "legislation may end up reducing the visibility of online political activism by making it difficult for protestors to latch onto a company name to launch a critical Website."70 Professor Froomkin also serves on a panel of experts appointed by the World Intellectual Property Organization (WIPO), which has recently helped create the international policy for cybersquatting.

The United States isn't the only one taking advances at fighting cybersquatting.  The Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for the delegation of TLDs, adopted in October 1999 a Uniform Domain Name Dispute Resolution Policy (UDRP).71  The UDRP came into effect on January 3, 2000, and since then has served as the first stop for most domain name disputes worldwide.

Before the formation of ICANN, the organization responsible for the TLDs was the Internet Assigned Numbers Authority (IANA), which is based in the United States, and Network Solutions Inc. (NSI) was given the rights to allocate SLDs using a gTLD suffix.72  In 1998, the United States Department of Commerce issued its White Paper, calling for a non-profit organization to handle the management of the Internet's infrastructure, from which ICANN was formed.73  ICANN was formed to assume responsibility for the IP address space allocation, protocol parameter assignment, domain name system management, and root server system management functions.74  ICANN then awarded franchises to companies worldwide to distribute SLDs.75

 The White Paper also called asked the World Intellectual Property Organization (WIPO), a United Nations-affiliated organization to conduct a consultative study on trademark and domain name issues.76  The 118-page report was presented to ICANN in April of 1999, and using the recommendations of WIPO, ICANN adopted the UDRP.77

The UDRP was created to replace the dispute resolution policy previously used by NSI.  The UDRP was created to apply only in instances of genuine cybersquatting.78 Through the UDRP, a registrant is subject to a mandatory arbitration process if an action is filed against them.79  Under the UDRP, a complainant filing a report against a domain name must establish three critical elements:

1) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) that the domain name registrant has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.80

1) where the domain name was registered or acquired for the purpose of extracting payment from the trademark owner or its competitors that is in excess of the costs associated with registering or acquiring the domain name;
2) the domain name was registered in order to prevent the trademark owner from being able to use it as a domain name, provided that the domain registrant has engaged in a pattern of such conduct in connection with other domains;
3) the domain name was registered for the purpose of disrupting the business of a competitor; or
4) the domain name registrant has used the domain name to divert commercial traffic to its Web site by creating a likelihood of confusion among Internet users.81

The UDRP, just implemented in January 2000, has shown to be much quicker and less costly than litigation for the parties involved.  The first case decided under the new policy was decided in just six weeks, and the cost of the filing fees (ranging from $1,000 to $3,00088) for the complaint paled in comparison to litigation costs.89  In the first UDRP decision, the complainant, the World Wrestling Federation (WWF), brought an action against Michael Bosman, a California resident who had registered the domain name "worldwrestlingfederation.com."90  Bosman attempted to sell the domain name to WWF after registering it for $1,000, which Bosman portrayed to WWF was much less than the cost of going through litigation, even with the new ACPA legislation.91  Instead of paying the money to Bosman, the WWF instead brought a complaint under the UDRP through WIPO.92  The arbitration panelist easily found that the disputed name was identical to WWF's trademark, that Bosman had no legitimate interest in the name, and as Bosman had attempted to sell the site to the WWF, Bosman had registered the name in bad faith.  Bosman was ordered to transfer the domain to the WWF.93

Hundreds of disputes have been brought under the new policy since its enactment in January.94  The process has worked smoothly so far, with many decisions being made quickly and quietly.
Unlike the APCA, the only remedies available under the UDRP are the cancellation of the disputed domain name and the subsequent transfer of the name to the complainant.95  If a claim is brought under the UDRP, however, the claim is not prevented from being submitted to a court for a judicial decision under the ACPA or similar provisions according to the country of the registration.96

As a lawyer, several steps should be taken in order to protect your client's trademarks and domain name rights.  Here are a few suggestions:

1) First, register your client's trademark with the U.S. Patent and Trademark office.

2) Make sure the client documents their bona fide selling of goods and services or their bona fide intention to sell goods and services using the domain name.  This is to help fend off other companies who may claim a right to the domain name in the future.

3) Identify all domain names that are owned by others but that are similar to your trademark.  Visit those sites and print out the pages that show whether or not they are being used in a bona fide offering of goods and services.  By obtaining printed pages, your client can have proof of lack of bona fide offering of goods and services before the cybersquatter could change them.

4) Collect and document all offers received from cybersquatters to sell their domain names.

5) Advise your client to register similar names to their chosen address to prevent Web traffic from being diverted from their site.

As part of the WIPO recommendations in their report101, ICANN is in the process of considering adding new gTLDS.  Plans proposed have included new gTLDs such as ".arts," ".firm," ".store," ".law," and ".info."102  This is currently being researched by ICANN's Domain Name Supporting Organization (DNSO), with no set timeline for recommendations.103

As the Internet grows, the freedom new entrants have to the Web seems to diminish.  Protecting trademark and intellectual property through legislation on the Internet needs to be a priority, however, while doing so, legislators and policy makers need to be careful not to tread on the rights of the Constitution, in particular the First Amendment right to freedom of speech.  Right now any company that finds its trademark, or a name similar or confusing to its trademark, in a domain name, that company can bring an action through the UDRP or the ACPA.  For example, a domain name that is the same name as a trademark, but is spelled differently, would be an actionable domain dispute under the new law, as long as it could be found similar or confusing.  This gives trademark owners the rights to thousands of Web addresses, simply by having a word trademarked.

While DNSO considers new gTLDs, an alternative may be to create a gTLD with no barriers as to domain names and trademarks.  Anyone interested could register a name in the gTLD, regardless if it was a trademark.  By allowing this, critical Websites or fan Websites could be launched with the name of any company/organization/person in the title without worrying about trademark infringement.  Users would know where to look for this sort of information, as it would all be located on one gTLD, thus eliminating confusion as to who operated the Website.  No restrictions should be placed on who can register domain names on this new TLD, in order to not discriminate.  A trademark owner could register its trademark as a domain name or choose not to.  The gTLD should be entirely open for all, in order to truly uphold the Constitution.  However, in order to keep trademark owners from buying up all the sites that include their name, a regulation would be placed that allowed each registrant only one domain name on the new gTLD.  This would prevent a company from blocking all the sites that relate to their trademark, and one angry consumer couldn't register every domain name with "mircosoft" in it.  This would allow other registrants to have different domain names with the word "mircosoft" for positive sites or other critical sites.  This gTLD would create a level of fairness that is not now present on the Web.  The gTLD could be seen as the alternative newspaper of the Internet.  And, if companies are resourceful, they will acknowlege the good of this gTLD for the consumers and in turn for their company.  Public relations specialists recognize the idea that any publicity, either negative or good, is still publicity, and companies could look at this gTLD in this way.

One recommendation to ICANN similar to the suggestion described above has been made by John Richard, Director of Essential Information, and James Love, Director of Consumer Project on Technology.104  Their suggestion was for 10 new gTLDs, including ".customer," ".sucks," and ".union."  Each gTLD would operate a little differently, but for example, ".sucks" would be a domain where registrants could register any name, regardless of trademark, however, the trademark owner could not register their own name.105  This proposal doesn't seem very likely as there is a great level of unfairness in its ideas as to who can register on the new domains.

No matter what approach is taken, some sort of action needs to happen to protect the rights of ordinary people trying to make a point.  Cybersquatting, when trying to sell a domain name for a profit, should be an actionable violation.  However, when legitimate free speech rights are being blocked because of use of a famous or distinctive mark, cybersquatting goes too far.  This problem needs to be examined before the freedom of the Internet becomes clouded by big name business, and instead of being a great source of information turns into one giant advertisement.  

1 Martin B. Schwimmer, Closing in on 'Target":  The Internet and Personal Jurisdiction,  Domain Names Supplement, May 1999 (quoting Bensusan Restaurant Corp. v. King, 126 F.3rd 25, 27 (2nd Cir. 1997)
2  ACLU v. Reno, 929 F.Supp. 824, 831 (E.D.Penn 1996)
3 See id at 830.
4 See id at 831.
5 Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 498  (2nd Cir. 2000).
6 See id at pg. 489.
7 The Management of Internet Names and Addresses:  Intellectual Property Issues, Final report of the WIPO Internet Domain Name Process, pg. V  (April 1999).
8 Id at 2.
9 Id at 2.
10 Nigel Miller & Simon Taylor, What's in a Name?, Domain Names Supplement, pg. 4 (May 1999).
11 Id. at 4.
12 Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 498  (2nd Cir. Conn.) (Feb. 2000)
13 See Michael Dennison & Margaret Smith Kubiszyn, WWW.YOURCLIENT.COM:  Choosing Domain Names and Protecting Trademarks on the Internet, 61 Ala. Law. 40, 41 (Jan. 2000); Nigel Miller and Simon Taylor, What's in a Name?, Domain Names Supplement, pg. 4. (May 1999)
14 Richard J. Grabowshi, Strategies for Securing and Protecting Your Firm's Domain Name, 17 No.11 Legal Tech Newl. 7 (February 2000).
15 See "Domain Name List is Dwindling" at www.wired.com/news/technology/story/19117.html.
16 William L. Norton, Jr., Domain Names as Assets, Norton Bankruptcy Law and Practice 2d, 6A Norton Bankr. L. & Prac.2d § 151:48.
17 Michael Dennison & Margaret Smith Kubiszyn, WWW.YOURCLIENT.COM:  Choosing Domain Names and Protecting Trademarks on the Internet, 61 Ala. Law. 40, 41 (Jan. 2000)
18 15 U.S.C. §1127
19 American Bar Association, What is a Trademark?, pg. 2 (1995).
20 Nigel Miller & Simon Taylor, What's in a Name?, Domain Names Supplement, pg. 5 (May 1999)
21 See Christopher Null, Name Grab, PC Computing from ZDWire, (April 1, 2000); Michael Dennison & Margaret Smith Kubiszyn, WWW.YOURCLIENT.COM:  Choosing Domain Names and Protecting Trademarks on the Internet, 61 Ala. Law. 40, 44 (Jan. 2000).
22 141 F.3d 1316 (9th Cir. 1998).
23 Id at 1319.
24 Id at 1319.
25 Id. at 1325-27.
26 H.R.Rep. 106-412, Trademark Cyberpiracy Prevention Act, October 25,1999, pg. 5.
27 S.Rep. No. 106-140, at 4. (1999).
28 Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1).
29 PL 106-113, 1999 HR 3194, 15 U.S.C. § 1125(d)(1)(A)(ii)(I-II).
30 Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 498  (2nd Cir. 2000).
31 Id at 498.
32 Id at 498, citing 874 F. Supp 54, 56 (E.D.N.Y. 1994).
33 Shields v. Zuccarini, 2000 WL 298300, 8 (E.D. Pa. 2000)
34 ACPA, \PL 106-113, 1999 HR 3194, 15 U.S.C. § 1125(d)(1)(B)(i)(I-IX).
35 15 U.S.C. §1125(d)(1)(B)(ii) ACPA, \PL 106-113, 1999 HR 3194.
36202 F.3d 489 (2nd. Cir. 2000).
37 Id at 493.
38 Id at 494.
39 Id at 494.
40 Id at 494.
41 Id at 494
42 Id at 494.
43 Id at 495-96.
44 Id at 497.
45 supra, pg. 8.
46 Sporty's, 202 F.3d at 499; 15 U.S.C. § 1125(d)(1)(B)(i)(II).
47 Id at 499.
48 Id at 499.
49 15 U.S.C. §  1129(b)(1)(A); see Joel Voelzke, New Cybersquatting Law Gives Trademark Owners Powerful New Weapons Against Domain Name Pirates, 17 Computer Law. 3, 4 (Febrary 2000).
50 Tesh Sues and Settle in Domain Name Dispute, Intellectual Property Strategist, 6 NO.5 Intell. Prop. Strategist 5, pg. 1 (February 2000)
51 Id at 1.
52 Id at 1.
53 Id at 1.
54 Id at 1.
55 Id at 1.
56 Id at 1.
57 Id at 1.
58 15 U.S.C. § 1116, 1117(a).
59 15 U.S.C. § 1116.
60 15 U.S.C. §1117(d).
61 15 U.S.C. § 1125(d)(1)(C).
62 51 F. Supp.2d 701 (E.D.Va. 1999).  Posche International attempted to bring and in rem action against over 100 domain names that contained their trademarks, Porshe and Boxster.  However, the court found that the Federal Trademark Dilution Act (FTDA) did not permit exercise of in rem jurisdiction without regard to personal jurisdiction over registrants of domain names.
63 17 Computer Law. 3, 5.
64 15 U.S.C. 1125(d)(2(C).
65 17 Computer Law. 3, 5.
66 15 U.S.C. § 1125(d)(2)(D)(i).
67 Id at § 1125(d)(3)-(4).
68 Statement Of Senator Patrick Leahy, Ranking Member, Senate Judiciary Committee, Hearing On "Cybersquatting And Consumer Protection: Ensuring Domain Name Integrity" July 22, 1999; see <http://www.senate.gov/~judiciary/72299pjl.htm>.
69 Id.
70 Phyllis Plitch, New Law Put Squeeze on Net Domain-Name Cybersquatters, Wall Street Journal, (Dec.20,1999), no page numbers available.
71 Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute-Resolution Policy,< http://www.icann.org/udrp/udrp-schedule.htm>.
72 Nigel Miller & Simon Taylor, What's in a Name?, Domain Names Supplement, pg.5 (May 1999)
73 See<http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm>.
74 See <http://www.icann.org>.
75 See <http://www.icann.org/registrars/accredited-list.html>.
76 See <http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm>.
77 See http://www.icann.org/urdp/urdp-schedule.htm; The Management of Internet Names and Addresses:  Intellectual Property Issues, Final report of the WIPO Internet Domain Name Process located at <http://ecommerce.wipo.int/domains/process/eng/final_report.html>.
78 Susan L. Crane, ICANN's New Policy:  What It Covers, 16 No.9 ECOMMERCE 1 (January 2000).
79 See <http://www.icann.org/udrp/udrp-policy-24oct99.htm>.
80 Id.
81 Id.
82 See Appendix 2, Domain Name Dispute Complaint Form, The National Arbitration Forum.
83 See <http://www.icann.org/udrp/approved-providers.htm>.
84 See <http://arbiter.wipo.int/domains/>.
85 See <http://www.arbforum.com/domains/>.
86 See <http://www.eresolution.ca/>.
87 See <www.icann.org/udrp/udrp-policy-24oct99.htm>.
88 See Christopher Null, Name Grab, PC Computing from ZDWire, (April 1,2000)
89 World Wrestling Federation Wins WIPO Arbitration Ruling Against Registrant of "worldwrestlingfederation.com" Domain Name; Applying ICANN Uniform Dispute Resolution Policy, Arbitrator Orders Registration Transferred to WWF, Entertainment Law Reporter, 21 No.10 Ent. L. Rep. 9.
90 WIPO Arbitration and Mediation Center, Administrative Panel Decision, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001.
91 21 No.10 Ent. L. Rep. 9.
92 Id.
93 Id.
94 See <http://www.icann.org/udrp/proceedings-list.htm>.
95   See <www.icann.org/udrp/udrp-policy-24oct99.htm> at Remedies.
96 Id at Availability of Court Proceedings.
97 See <www.netbenefit.com>.
98 Id.
99 See <http://www.netbenefit.com/domains.html>.
100 See <http://www.netbenefit.com/domains_risks.html>.
101 The Management of Internet Names and Addresses:  Intellectual Property Issues, Final report of the WIPO Internet Domain Name Process located at <http://ecommerce.wipo.int/domains/process/eng/final_report.html>.
102 Nigel Miller & Simon Taylor, What's in a Name?, Domain Names Supplement, pg. 5  (May 1999).
103 See <http://www.icann.org/general/faq1.htm#gtlds>.
104 See <http://www.cptech.org/ecom/icann/tlds-march1-2000.html>.
105 Id.