I. Introduction. . . . . . . . . .1

 A. Domain Name Hijacking Scenario. . . . .1

 B. Problem Background. . . . . . . .2

 C. Domain Names. . . . . . . . .4

 D. Cybersquatting. . . . . . . .7

II. Quia Timet Relief. . . . . . . . .9

 A. British Telecom. And Others v. One In A
  Million And Others. . . . . . . .9

 B. Quia Timet Relief in the United States. . . .12

  (1) Quia Timet in Validating Marital Status. .12

  (2) Quia Timet in Real Property Dispute. . .14

  (3) Quia Timet in Personal Property Dispute. .15

  (4) Quia Timet in Nuisance Action. . . .19

  (5) Quia Timet in Surety Contract Dispute. . .20

 C. Reasons for Quia Timet Obscurity. . . . .25

 D. One In A Million Approach to Quia Timet. . .26

 E. Possible United States Judicial Approaches
  To One In A Million Factual Situation. . . .27

 F. Hijacking Is An Extraordinary Circumstance
  Warranting the Intrusion of Equity. . . .28

 G. Danger of Misapplication of Quia Timet
  By Courts. . . . . . . . .32

 H. Applying Traditional Quia Timet Requirements
  to Hijacking Scenario. . . . . . .35

III. Substantive Legal Protection Against Hijackers
 in the United States. . . . . . . .38

 A. Trademark and Servicemark Infringement
  Under the Lanham Act. . . . . . .39

 B. Trademark Anti-Dilution Act. . . . . .40

 C. Common Law Service Mark. . . . . . .41

 D. Other Protections. . . . . . . .42

IV. Conclusion: When it Happens To You. . . . .43   

  A. Domain Name Hijacking Scenario

Imagine yourself as an attorney for Dew, Good & Wright.
Your biggest client is Goodtillnow Antacid.  Goodtillnow is a large corporation that has been in business many years and is a household name.  Last month, the younger executives convinced the Board of Directors to launch a large scale marketing campaign focusing on a contemplated high-tech website allowing customers greater access to Allwellangoodtillnow products in emergency situations.  The campaign is scheduled to start next month.
Last week, Goodtillnow's CEO, Len Bremer, received a letter from Showmedamoney Associates.  The letter said that Showmedamoney had registered the name Goodtillnow.com with NSI (the national registry for .com domain names).  Showmedamoney is a business comprised of two recent university graduates who have a telephone and a computer in the basement of one of their parents' home.  Showmedamoney said in its letter that it will give Goodtillnow the domain name registration for $20,000.00.  Otherwise, Showmedamoney will have to spend the next year figuring out how to best use the registration itself.  Len Bremer is irate.  He just called you and said that he refuses to write a check to anyone who call themselves Showmedamoney, and he wants the name Goodtillnow.com by next month when the advertising campaign is scheduled to begin.  After all, Goodtillnow paid Dew, Good & Wright thousands of dollars over the years to obtain patent and trademark protection.
 You told Len Bremer that you would review the law and get back to him.  After satisfying yourself that a court will most likely find jurisdiction over the dispute, you discover that the court will not grant injunctive relief - or any relief at this point because there has been no legal harm.  All of the precedent you can find on the subject states that mere registration of a domain name does not constitute legal harm for which relief will be granted.  Can it be true that the law will allow Showmedamoney to benefit from trademark and related common law not created with the Internet in mind?  The answer is no.  This paper sets forth one way to seek equitable relief in the form of Quia Timet.  This should allow Goodtillnow to obtain relief prior to a finding of legal harm, as is typically required in the preliminary injunction context.

B. Problem Background

 The use of the Internet has increased significantly over the past few years.  This growth was fueled by both expanded personal and commercial use.  The increased use of the Internet has created a corresponding increase in the need for companies to have a presence on the Internet to remain competitive.  Maintaining a web site allows companies to advertise, conduct commercial transactions and exchange valuable information with current or potential customers.  Some enterprising individuals have found a way to translate the value of an Internet presence for companies into cash for themselves.  This practice is known by terms such as: "cybersquatting", "hijacking", "pirating" and most likely other creative names by businesspeople who encounter it.
The typical scenario involves someone registering a domain name with Network Solutions, Inc. ("NSI") that contains the name of a well-known business.  The registration fee is modest, and NSI grants the domain names on a first-come first-served basis.  The registrant does have to make certain representations regarding the legality of using the domain name; however, affected third party businesses are forced to pursue remedies that take valuable time.  This valuable time combined with the legal costs of pursuing such remedies translate into bargaining chips for the enterprising registrants who are happy to part with their registration for a cash payment.
 Affected businesses view this practice as extortion.  Undoubtedly, the enterprising individuals who engage in this practice view it as using the registration system to their advantage.  The purpose of this paper is to explore quia timet as a way in which to use the legal system to attack the practice of hijacking as quickly and inexpensively as possible.
Quia timet relief is unique in the fact that it is judicial relief based on the threat of irreparable harm.  As such, quia timet relief is available at a very early stage.  A hijacker's bargaining capacity relies heavily on the elements of time and expense in companies seeking a remedy. Depending upon the sophistication and financial position of the hijacker, forcing an injunction proceeding at an early stage may even persuade the hijacker to forego defending the proceeding.
The remainder of the introduction will provide an overview of domain names, the NSI registration system, and the various types of cybersquatting that currently exist.  The next section of the paper will explore the use of quia timet relief in a variety of different contexts with an eye toward discerning whether courts will or should expand quia timet to hijacking cases.  The third section of the paper will discuss the substantive law which has been used to defend against hijacking practices.  The fourth and final section of the paper will provide a procedure for companies to follow when they fall victim to a hijacker.

 C. Domain Names

 Each web page on the Internet has its own web site.  Technically, each web site has its own Internet Protocol ("IP") number.  For the purpose of convenience to web users, each web site also has its own "domain name".  A "domain name" is a plain language description of a name or other alphanumerical sequence.  A domain name system translates domain names into IP numbers that serve as routing addresses.1  Domain names encompass two different levels.  Top level domains are the end designations such as .gov for government institutions, .edu for educational institutions, .org for non-profit organizations, .net for networks, and .com for commercial which is the catchall designation for business and personal sites.  The secondary domain is the beginning portion of a "domain name" which is the unique name or alphanumerical sequence that identifies the site.  For example, the "domain name" mcdonalds.com is broken down into the top-level domain (.com) and the secondary domain (mcdonalds).2
 Pursuant to the manner in which the Internet was created, the United States Government has retained supervisory authority over the assignment of IP Numbers and Domain Name assignments.  For all domain names with the .com designation, the United States government designated the authority for registering/assigning domain names to Network Solutions, Inc.  Registering a domain name with NSI is a relatively simple process.  All that a prospective registrant needs to do is pay a modest registration fee (in 1997 it was $100.00), and
[r]epresent and warrant as an express condition of registering a domain name that (1) the applicant's statements are true and the applicant has the right to use the requested domain name; (2) the 'use or registration of the domain name ... does not interfere with or infringe the rights of any third party in any jurisdiction with respect to trademark, service mark, trade name, company name or any other intellectual property right'; and (3) the applicant is not seeking to use the domain name for any unlawful purpose, including unfair competition.3

Of course problems with hijacking arise when registrants make the above representations without following the spirit, if not the letter of such representations.
 NSI was given the authority to assign the popular .com domain names in 1992 by the U.S. government.  That agreement has come to an end in so far as the U.S. has decided to open up the registration process to other privately run corporations which will compete with NSI.  On January 30, 1998 the Department of Commerce issued for comment "A Proposal to Improve the Technical Management of Internet Names and Addresses". This document is commonly referred to as the "Green Paper".4  The Green Paper recognized six current elements of the domain name registration system which evidenced a need for change:
[1] There is widespread dissatisfaction about the absence of competition in domain name registration. [2] Conflicts between trademark holders and domain name holders are becoming more common.  Mechanisms for resolving these conflicts are expensive and cumbersome. [3] Many commercial interests, staking their future on the successful growth of the Internet, are calling for a more formal and robust management structure. [4] An increasing percentage of Internet users reside outside of the U.S., and those stakeholders want to participate in Internet coordination. [5] As Internet names increasingly have commercial value, the decision to add new top-level domains cannot be made on an ad hoc basis by entities or individuals that are not formally accountable to the Internet community. [6] As the Internet becomes commercial, it becomes less appropriate for U.S. research agencies to direct and fund these functions.5

The Green Paper raised further concerns about unlawful use of company names stemming from the fact that NSI registrants obtain access to domain name addresses prior to paying the registration charge.  NSI also does not keep records of individuals that register domain names.  This leads to hijackers having fast access to companies' domain names, and to companies having a difficult time contacting the hijackers.
 The Green Paper discussed ways in which to provide increased formalism and legitimacy to the domain name registration system.  Details of the identified principles will largely depend on decisions made by proposed advisory panels or councils comprised of various stakeholder groups with an interest in the system. Private corporations that enter the new market of domain name registries will also be included.6  The two main elements of the domain name registration system that have provided the opportunity for hijacking are: (1) first-come first-served registration, and (2) the lack of initial protection of third-party trademark or service mark holders in the registration system.  These elements will likely survive this transition period.  The domain name registries will continue to be privately run, and making drastic changes to the registration process to counter hijacking is extremely difficult without upsetting goals of efficiency in operation and fairness to all prospective registrants.  The change in governance of the .com registration system will therefore remain vulnerable to hijacking.

 B. Cybersquatting

 There are three different ways in which registration of domain names conflicts with laws protecting businesses with trademarks or common law service marks.  The first situation occurs when someone registers a domain name that is the same or legally similar enough to a company's registered trademark or common law service mark that problems of confusion arise.  The second type of dispute arises when two different companies have the same trademarks that are either registered in different jurisdictions or are legally distinguishable types of products under trademark law.
Hijacking, which is the third way, and the focus of this paper, is where an individual registers a domain name s/he knows is a trademark or service mark that is valued by a business or other organization.  The intent of the individual is to translate the value of the domain name to the trademark or service mark holder into a cash payment for agreeing to transfer the mark to such mark holder.7
 The hijacking of a name before a company or organization registers it's trademark or service mark also arises in situations where the individual who registers the domain name doesn't seek cash payment, but rather intends to create a web site that serves to advance a personal or commercial interest that is diametrically opposed to the interests of the mark holder.  This may be done by a competing corporation advertising an alternative product, or by an individual that wants to protest the policies or ideology of the mark holder.  An example of this would be Pepsi registering Coca-Cola.com to advertise Pepsi products, or a pro-choice organization registering pro-life.com to send a pro-choice message to web users.

 Perhaps the earliest point at which a mark holder attained judicial relief against a hijacker occurred in British Telecommunications Plc and Others v. One In A Million and Others.8  This case was tried and appealed in the United Kingdom and it allowed the Plaintiff companies to attain an injunction based on quia timet relief.  The Defendants were companies dedicated to registering famous trade names with Nominet UK (the British equivalent of NSI) prior to the name holders doing so, for the purpose of attaining cash payments from the famous name holders.  The Plaintiffs obtained injunctions against the hijackers when the only actions taken by the hijackers was the registration of the famous domain names with Nominet UK and correspondence with the Plaintiffs offering to sell the registrations.
 Quia timet literally means 'to fear or apprehend' in Latin.9  Quia Timet relief is an equitable remedy deeply entrenched in the common law of both the United Kingdom and the United States.  It gives relief to parties who face an imminent threat or danger of tortious harm for which there is no adequate later legal relief available.10  The harms identified by the plaintiffs in One In A Million and Others were the tort of passing off and trademark infringement, both under United Kingdom Law.
Under United Kingdom law, five characteristics must be present to create an action for passing off:
(1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage or (in a quia timet action) will probably do so.11

The relevant portions of United Kingdom Trade Mark law are Section 9(1) and Section 10(3) of the Trade Marks Act 1994.
Section 9(1) states: (1) the proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.  The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.  Section 10(3) is in these terms: (3) A person infringes a registered trade mark if he uses, in the course of trade a sign which - (a) is identical with or similar to the trade mark, and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.12

The trial judge granted injunctive relief on the basis of quia timet under the substantive law of both passing off and trade mark infringement.  The trial judge's analysis which was approved by the appellate court was:
For a dealer in Internet domain names there are in principle only four uses to which the names can be put.  The first and most obvious is that it may be sold to the enterprise whose name or trade mark has been used, which may be prepared to pay a high price to avoid the inconvenience of there being a domain name comprising its own name or trade mark which is not under its control.  Secondly, it may be sold to a third party unconnected with the name, so that he may try to sell it to the company whose name is being used , or else for the purposes of deception.  Thirdly, it may be sold to someone with a distinct interest of his own in the name...with a view to its use by him.  Fourthly, it may be retained by the dealer unused and unsold, in which case it serves only to block the use of that name as a registered domain name by others, including those whose name or trade mark it comprises.13

In upholding this analysis by the lower court, the appeals court noted the language of the correspondence between the hijackers and the famous companies discussing sale terms of the domain name registrations.  The appeals court also discussed evidence presented to the trial court obtained by private investigators showing that the hijacking companies had engaged in similar practices in the past, including receiving cash payments by other famous companies.  Undoubtedly, the above evidence had an impact on the appellate judges in disregarding the arguments of the trial defendants that they intended merely to add the famous names to their "personal collection"14, and therefore did not present a threat of passing off or trade mark infringement to the plaintiff companies.

 B. Quia Timet Relief In The United States

Quia Timet relief has been sought in a number of different factual situations in the United States.  "Bills quia timet are in the nature of writs known at the common law as brevia anticipantia, or writs of prevention, to accomplish the ends of precautionary justice.  They are ordinarily applied to prevent wrongs or anticipated mischief, and not merely to redress them when done."15  Not surprisingly, the basic requirements for obtaining this kind of equitable relief are similar to the requirements in the United Kingdom.  Each situation in which it is successfully used generally contains three elements: (1) no actual present injury, (2) a reasonable fear of future harm, and (3) a danger of irreparable harm if the requested relief is not granted.16
  (1) Quia Timet in Validating Marital Status
In Untermann v. Untermann, 117 A.2d 599 (N.J. 1955), the plaintiff wife sought a declaratory judgment which was fashioned as quia timet relief.  The wife sought a ruling that her husband's divorce was not valid at the time of his death.  This would entitle her, and not a woman the husband married subsequent to the Mexican divorce, to a house owned (according to the plaintiff wife) by the husband and plaintiff wife as tenants by the entirety.  Neither the trial court, nor the Supreme Court of New Jersey, questioned the right to seek equitable quia timet relief.  However, under the facts of the case, both courts refused to grant the relief sought because the validity of the plaintiff wife's marriage to her deceased husband depended on the status of the plaintiff wife's marriage with her own prior husband which she tried to end.  She did that by going to Las Vegas, living there for a day, claiming domicile in Nevada, and getting a divorce decree without ever giving notice to her prior husband.
  The New Jersey Courts agreed that granting quia timet relief in equity involves a great deal of discretion by the court to determine whether granting the relief will serve the ends of justice considering the entire factual and legal context.  Because the plaintiff wife did not come to the court with "clean hands" due to her employing the same questionable legal tactics as her deceased second husband in obtaining a divorce, the courts did not feel quia timet relief was justified.  Furthermore, a determination in the case depended on facts of an earlier divorce in Nevada which precluded the New Jersey court from having all of the material facts necessary to make a reasoned judgment.
Had the plaintiff wife not entered the New Jersey court with "unclean hands", the requirements for quia timet may have been met.  At the time of seeking quia timet relief, she had no actual present harm because title to the deceased husband's estate had not yet been determined. There was a threat of future harm to the plaintiff wife's title to the house because the next wife of the deceased husband was seeking his interest in the house. In addition, there was arguably a danger of irreparable harm because title of the house being transferred to another would deprive the plaintiff wife of both use of the house as well as the value of the house for a minimum period of the time it would take to litigate the issue in the probate court and elsewhere.
  (2) Quia Timet in Real Property Dispute
In Lenett v. Lutz, 110 S.E.2d 628 (Ga. 1959), a husband and wife were divorced and the husband was directed to pay child support.  Subsequent to the divorce, the husband attained custody of the children and made all required payments to the wife. Despite this, the wife filed a false affidavit with the court issuing the divorce and received an execution order against the husband for $1,000.00.  At the time, a Georgia statute provided for quia timet relief in certain situations:
Ga. Code ( 37-1407: The proceeding quia timet is sustained in equity for the purpose of causing to be delivered up and canceled any instrument which has answered the object of its creation, or any forged or other iniquitous deed or other writing, which, though not enforced at the time, either casts a cloud over complainant's title or otherwise subjects him to future liability or present annoyance, and the cancellation of which is necessary to his perfect protection.17

In deciding that the action brought by the husband to nullify the fraudulently obtained execution fell within the parameters of the statute, the court rejected the arguments of the wife that the husband's petition failed to state a claim, and that there was an adequate remedy at law.  The fact that quia timet relief in this case was derived from statute, not common law, tends to distinguish its application in the facts of the Goodtillnow scenario.
It is important to note, however, that there was strong reason for equity to intervene in this circumstance. At the time the plaintiff husband filed a petition for quia timet relief, no legal harm had been suffered.  The wife was simply in possession of the execution order and had not taken any further steps of having the sheriff levy the property of the husband.  There was a danger of harm to the husband if and when the wife followed through with the execution order.  The husband could have filed suit later once legal harm had taken place, however, in this case it was the defendant wife who fraudulently obtained the execution order.  The only result of the wife having possession of the execution order could be harassment or legal harm.  Disallowing the trial court discretion to let equity intervene in the case would have been tantamount to letting the wife use the court to further a scheme to advance her malicious interests at the expense of her husband.
  (3) Quia Timet in Personal Property Dispute
In Newman Machine Co., Inc. v. George F. Newman, Jr., Trustee,18 the defendant ("George"), who was a former officer and majority shareholder of the plaintiff corporation ("Machine Co."), sold all of his shares to the corporation.  Six years after the sale of the shares, George's attorney sent a letter to the Machine Co. stating that the sale of the shares was not valid because of the grossly undervalued price they were sold for.  The letter threatened legal action if a settlement could not be reached.  For two years after the letter was sent, George continued to make threats of bringing legal action, but never did so.
Machine Co. brought suit at that point for a declaratory judgment that the sale of the stock was valid, and therefore George had no further legal interest in the stock.  The Supreme Court of North Carolina did not make a decision on whether the complaint stated a cause of action under the Declaratory Judgment Act. It decided that the complaint did state a cause of action in equity that could be maintained as quia timet relief.  The Court noted that North Carolina had a statute similar to the statute in the Lennett case providing that an action in the form of quia timet relief was available to parties seeking to remove a cloud over title to real property. However, in this case the statute did not apply to personal property which was the subject of the suit.  This led the Court to examine common law equitable quia timet.
The Court held that even where there is not a statute providing for quia timet relief, the same equitable principles govern whether quia timet relief may be sought where "due to exceptional circumstances, there is no adequate remedy at law."19  The Court was not clear about which facts satisfied which prongs of the requirements ordinarily required when quia timet relief is granted.  The Court, however, based it's holding on the fact that, because plaintiff was in possession of the corporation stock at issue, there was a lack of justiciable legal harm.  Defendant had continuously made threats of bringing suit, but had failed to do so.  Therefore, there was a threat of legal harm stemming from defending a subsequent lawsuit as well as a possible threat to the reputation of the company.  The Court further recognized the fact that at the indeterminate future time when suit could be brought by George, Machine Co.'s evidence to rebut it may be lost.  A key officer of Machine Co. was seventy years old at the time Machine Co. sought relief.  The Court further stated: "With the ever increasing importance of personal property in the business world of today, especially stocks, bonds, and other intangibles, there is no sound reason why this equitable remedy should not be available to quiet title to personalty as well as realty."20
The analysis of the Court in Newman Machine Co. is interesting because the description of "exceptional circumstances" arising from the facts of the case either mitigates, replaces, or serves as satisfaction of the third prong of ordinary quia timet analysis.  This is the requirement that irreparable harm would result if relief wasn't granted at the time Machine Co. sought equitable relief.  Ordinarily, something more than just monetary loss is required to show irreparable harm.21
An argument can be made that loss of potential evidence
for a subsequent action brought by George would take
place.  However, that interest is normally set by public policy in limitations statutes.  The irreparable harm could also be an intangible loss to the reputation of Machine Co., however, this interest could be presumably tracked in profit margins and equity valuation.
Another possibility is that the Court looked to the three ordinary requirements for granting equitable quia timet relief and decided that the prongs of the standard test are not individual conditions precedent to relief.  Instead, they are factors to be viewed as a whole, along with the entire factual situation in which courts of equity view a broad situation to effectuate justice between the parties.
It may also be the case that the Court used "extraordinary circumstance" to describe another situation.  A party which has created a threat of harm may rely on the fact that no legal harm has yet occurred and thus no judicial relief being available.  This is an inducement or a bargaining chip in persuading the innocent party to take the non-judicial approach of settlement.  It is asking a lot of a court sitting in equity to remain silent when that silence is a part of a threat designed to induce inequitable non-judicial settlement.
(4) Quia Timet in Nuisance Action
Quia timet relief is a traditional part of nuisance law which continues today.  In Village of Wilsonville et al. v. SCA Services, Inc.22, the Defendant was the operator of a chemical waste disposal site which was located over abandoned coal mines.  Prior to suit there were problems with leakage and dust affecting adjoining properties.  Such problems, however, had yet to become serious enough to cause significant legal harm to the adjoining properties.  The Plaintiff town, county, county farm bureau, and state attorney general obtained a permanent injunction against the disposal site operator on the basis of public and private nuisance in equity.  This would not only force the operator to cease waste storage activities, but would also force the operator to remove all current waste and transport it to another site.
The reason Plaintiff sought such a drastic remedy was due to the prospective danger of subsidence23 at the site resulting in a serious contamination of drinking water.  The Defendant site operator did not dispute the availability of relief based upon the threat of future harm.  The Defendant did, however, argue that the trial court position should be reversed because the court failed to balance the interests of the parties and take into account the general societal policy toward risk-taking before declaring a nuisance.
The Supreme Court of Illinois started it's analysis by citing Professor Prosser and previous Illinois precedent for the proposition that an Illinois court sitting in equity may enjoin a defendant from activities which show a "dangerous probability that the threatened or potential injury will occur."24 The Court then proceeded to uphold the trial court's application of the permanent injunction on the grounds that it was inherently clear in the trial court's statement of facts that it did properly use it's equitable powers in taking a wide view of the facts to fashion appropriate relief.  The Court said: "Under these circumstances, if a court can prevent any damage from occurring, it should do so."25
 (5) Quia Timet in Surety Contract Dispute
Currently, the most popular area of law in which quia timet relief is sought is commercial surety law.  A surety is similar to an insurer in some respects.  A commercial surety is a company or other organization which guarantees an obligation of another business.  Ordinarily, the surety is in turn fully indemnified by the business which it guarantees, often in the form of a bond or separate indemnity agreement.  An example is the Miller Act26 which requires that contractors on government projects obtain surety bonds that guarantee things such as the work being completed in satisfactory form, and that all subcontractors, etc. are paid for their work on the project.  If something goes wrong on the project, the government can seek damages from either the contractor or the surety company.  However, under standard indemnity provisions in surety contracts, the surety may seek payment in full from the contractor for any payments the surety is forced to make.  In essence, the surety company is guaranteeing or insuring the solvency of the contractor.
The situation in which quia timet relief is sought in this area is where a surety is fully indemnified by the principal (the business guaranteed by the surety).  When the surety learns that they will have to make payment under their guarantee, there is a common problem of the principal spending, transferring, declaring bankruptcy, etc.  This leaves the surety with no way to collect from the principal the money the surety is obligated to pay the party benefiting from the surety's guarantee.  The surety wants a way to guarantee that funds will be available to satisfy the principal's obligations under the indemnity agreement.
At this point, the surety often has suffered no legal harm because the principal isn't yet required to make the payment required by the indemnity agreement.  There is a danger of legal harm when a principal takes actions that indicate it is likely it will spend, transfer, etc. it's assets, such that the surety will lose the benefit of it's bargain in the indemnity agreement.  This threat of legal harm is irreparable because if the principal's assets are squandered, the surety will never be able to get relief.
In Escrow Agents' Fidelity Corporation v. Superior Court of Los Angeles County27, the surety guaranteed the obligations of licensed escrow agents against loss of trust obligations resulting from embezzlement, theft, or mysterious disappearance.  One agent allegedly embezzled over four million dollars from a guaranteed trust fund.  The surety filed a petition for quia timet relief and imposition of a constructive trust on the agent after the agent filed for bankruptcy.  The attorney for the agent, in defending the action before the Superior Court of Los Angeles "without citing any specific authority to support her argument, persuaded the respondent court that quia timet was a concept that pre-dates movable type, and has virtually no application in modern society."28  The appeals court took strong exception to the Superior Court's ruling and quoted Fireman's Fund Ins. Co. v. S.E.K. Construction Co.29, by stating:
No principle in equity is more familiar, or more firmly established, than that a surety, after the debt for which he is liable has become due, without paying or being called to pay on it, may file a bill in equity in the nature of a bill quia timet to compel the principal to exonerate him from liability by its payment, provided no rights of the creditor are prejudiced thereby.30

In the surety context, the first two ordinary requirements of quia timet relief, no present legal harm and a threat of future harm, are easy to see from an equity perspective.  Because of the unique positions of the surety contract parties, without quia timet relief, a principal would have an unfettered opportunity to perpetrate a fraud on the surety company by liquidating it's assets in order to avoid having to meet it's contractual obligations in the indemnity agreement.
By traditionally holding that the third requirement of irreparable legal harm is satisfied, however, courts are protecting surety companies that profit from insuring the solvency of another business from insolvency.  When a principal takes the action of liquidating assets in order to avoid indemnifying a surety, this is a drastic measure.  The reality of the situation is that a principal could not make a practice of doing this because without assets, the principal could not continue doing business.  Furthermore, a surety would not guarantee the business in the future without being grossly negligent in assessing the risk of the transaction.
As professional risk allocation organizations, surety companies are in a unique position prior to guaranteeing the solvency of a principal.  It can analyze the financial records of the principal.  It can ascertain how long the principal has been in business.  It can analyze the success of past principal operations and it can include contractual guarantees, such as having at least a portion of the proceeds of the principal's operation go into an account that is not accessible to the principal until the guaranteed operation is complete to the point of the surety being released from it's obligation.
 When focusing on the surety's position, the equity of a court finding that irreparable legal harm will result if quia timet relief is not granted would simply result in monetary loss. This monetary loss would not be recoverable because the defendant principal is judgment proof.  An argument can be made that monetary loss against a company in the business of allocating risk is not an extraordinary circumstance warranting the intrusion of equity.
A stronger argument for the use of equitable quia timet relief is made when the focus is on the activities of the defendant principal.  The surety, like an insurer, guarantees the risk of certain occurrences.  The definition of occurrences in surety or insurance contracts seldom include the future actions of the principal or insured taking specific measures to destroy the other party's interest in the contract.31
The extraordinary circumstance warranting a judge to exercise the highly discretionary quia timet action in equity after viewing the facts and legal positions of the parties should come from the outrage of a judge when a defendant's legal argument to the court is essentially: Your honor, in looking at the facts it may appear as though we are clearly engaged in activities designed to do legal harm to the plaintiff.  But there is nothing you can do about it because no legal harm has yet occurred, and there is a small chance that our activities are purely accidental, and hence are not part of a scheme to benefit from threatening to harm the legal rights of the plaintiff.

C. Reasons for Quia Timet Obscurity

Quia timet is not a familiar form of equitable relief primarily because of its rare use in a relatively small number of substantive legal areas.  Even before the Declaratory Judgment Act and other statutory enactments which provided alternatives to parties in need of early relief, quia timet relief was not widely used.32  Furthermore, an increase in statutory enactments has provided increased protections for parties who would otherwise be in need of quia timet relief.33
For example, in property disputes, harmed parties have the use of lis pendens statutes which give public notice of the harmed party's claim to property, and therefore hinders transactions that would cause future harm.  By virtue of attachment statutes, creditors are in a better situation to protect themselves against debtors liquidating assets in violation of contract.  In the area of nuisance, where parties were once forced to rely on quia timet when another person's activities would result in imminent and irreparable harm, there are now widespread city planning and zoning ordinances that protect against numerous forms of nuisance.34  And the list goes on.
The decrease in the use of quia timet resulting from this increase in legislation may serve to decrease the equity of a court employing quia timet because some parties are now in a better position to engage in planning which should avoid a situation calling for equitable intrusion.  However, where it is not reasonable to punish a party for failing to engage in reasonable planning, there is no legal reason why a party's access to equitable quia timet relief should be any different now than it was at early common law.

D. One In A Million Judicial Approach To Quia Timet

In a hijacking case such as the one presented in the British case of British Telecom, Plc. and Others v. One In A Million, Inc. and Others35, the only activities the hijackers had taken was to register the famous domain names, and send correspondence to the famous name trade or service mark holders.  The correspondence was to the effect of - make a cash payment to us if you want an Internet presence, or at a minimum we will simply hold the registration and add it to our personal collection of domain names36.  Under substantive laws of the United Kingdom and United States, no legal harm has occurred to the famous name trade or service mark holders at this point.
There is certainly a threat of legal harm if and when the hijacker takes just about any additional action with the domain registration under one of a number of substantive laws.  The subject of controversy in all areas of law in which quia timet is used is that irreparable legal harm will occur if plaintiff's quia timet remedy is not granted.
There are two relevant questions to a company in British Telecom's position: (1) what should a court do, and (2) what will the court do?  The British trial court in One In A Million37 took the position that it had wide discretion to look at all facts and substantive legal arguments of the parties, and then incorporate any traditional requirements of quia timet relief into a broad ruling on the equity of the situation.  The appellate court focused not on whether each element of a quia timet action was independently satisfied, but rather on the range of allowable equitable discretion of the trial court given the facts of the case.
E. Possible United States Judicial Approaches to One In A
Million Factual Situation

A United States federal or state court could either engage in a similar analysis as was made by the United Kingdom Courts in One In A Million, or it could follow a different approach such as looking at the three traditional requirements for equitable quia timet relief as being independent conditions precedent for such relief.  Alternatively, a court could employ an even more narrow analysis by not considering the traditional elements of a successful quia timet action.  This would involve a simple initial inquiry into whether there is any precedent of quia timet use in the relevant trade mark or other substantive actions which have been used to address hijacking or factually analogous situations.  If there is no such precedent, the analysis could end there.
  While the type of analysis used by a court faced with a quia timet request may vary due to the individual judge or court, it also depends heavily upon the pleadings and briefs of the parties.  The less familiar a decision maker is with the history and use of quia timet, the less predictable her decision will be.

F. Hijacking Is An Extraordinary Circumstance Warranting the Intrusion of Equity

Quia timet is a relief in equity.  It has not traditionally been used in the area of domain name hijacking or trademark infringement.  In determining whether quia timet is appropriate in such areas, it is important to inquire into the way equity has been applied by courts.  Equity is unique because its rules often take the form of principles and maxims to be applied with discretion in a wide range of diverse factual situations.  So long as no constitutional or statutory terms preclude or override the use of equity in a given circumstance38, courts should be flexible in applying such principles and maxims when asked to do so.
The term "equity jurisdiction" does not mean the power granted to a court by higher authorities such as a legislature or constitution to decide controversies and enforce its decisions.  Instead, it means all of the different types of controversies in which a court sitting in equity may use its power to grant equitable relief.39  Usually, equity jurisdiction will be found when either an equitable remedy such as an injunction is sought, or alternatively, when an equitable right is sought.  An example of an equitable right would be the right of a trust beneficiary to demand an accounting by the trustee.40
In order to get equity jurisdiction, the plaintiff needs to make it clear in the pleadings that the main focus of the complaint is equitable41.  Usually, the basis of distinction between legal and equitable actions focuses on the remedy sought by the plaintiff42 In Goodtillnow's case, a complaint seeking injunctive relief against Showmedamoney's use and ownership of Goodtillnow.com would be equitable.
A prerequisite to equity jurisdiction is when a party has a legal right, but no legal remedy.  Therefore, when a plaintiff seeks equitable relief, no new legal right is being sought, but rather only a new remedy is being sought for a right that already exists43.  In Goodtillnow's situation, it has the legal right for Showmedamoney not to illegally use its trademark.  While registration of the domain name alone does not constitute use, it is for a court to decide whether Showmdamoney's intent to extort money for the registration does harm a legal right for which there is no existing remedy.
There are no hard and fast rules about when equity should be applied.  Instead, a court should look to the individual circumstances of each case to decide which party has the burden of proof on individual issues44, and to what extent relief should be given45.  Goodtillnow can therefore request that Showmedamoney bear the burden of showing it has a legitimate use for the registration.  It can also ask that Showmedamoney prove that it has enough funds to sustain a later adverse award of damages in a suit brought by Goodtillnow.  This should be granted because if Showmedamoney has insufficient funds, Goodtillnow will be irreparably harmed by refusal of an injunction.  That is the important third prong of the quia timet test.
The unique role of equity calls for its use on a case-by-case basis46.  Furthermore, in deciding whether or not to grant equitable relief, courts should take into consideration a wide range of circumstances as well as a wide range of equitable procedures47  The Supreme Court of Connecticut cited J. Pomeroy in saying: "A hallmark of equity is its capacity of expansion [beyond the common law], so as to keep abreast of each succeeding generation and age."48
In Harper v. Adametz49,  the Plaintiff purchaser offered $7,000.00 for an entire lot of land.  The Defendant agent, however, told the seller that the offer was $6500.00, which the seller accepted. The agent then erroneously told the purchaser that the seller would only sell a portion of the land.  The purchaser made a counteroffer for the portion of the land for $6,000.00. The agent then arranged to have the remaining portion of the land conveyed to his son. The Plaintiff sued in equity for fraud seeking conveyance of the remainder of the land when the agent's activities were discovered.
There was a problem with the damages requirement for fraud, however, because the Plaintiff purchaser got exactly what he bargained for in his counteroffer.  Therefore, it was difficult for the court to order conveyance of the remainder of the farm as relief.  Furthermore, the agent did not have a fiduciary duty to the Plaintiff purchaser because the agency relationship was only between the seller and the agent.  Ordinarily, such a fiduciary relationship was required to grant such extraordinary relief.  The Court granted the Plaintiff his requested relief despite such problems and said: "Equity is a system of positive jurisprudence founded upon established principles which can be adapted to new circumstances where a court of law is powerless to give relief."50
When a court faces a domain name hijacking situation involving facts similar to the Goodtillnow and One in a Million situations, where a party is seeking early injunctive quia timet relief, it should not simply look to whether quia timet has been used in hijacking or trademark cases in the past.  Instead, the court should look at the wide range of facts and circumstances in which that form of relief has been granted in the past.  It should also look at all of the facts of the present case, and then make a reasoned comparison with precedent.  The traditional tests for quia timet relief should at a minimum be applied to the situation using applicable precedent as a guide to defining the individual tests.
In deciding whether to grant quia timet relief, the court should take into consideration that the need for equitable relief arises from the conduct of the parties in combination with an absence of applicable statutory or common law protection of a legal right of one of the parties.  Therefore, if a court is to deny quia timet relief to a party in the position of Goodtillnow, it would not be well-reasoned to do so merely on the basis that quia timet has not been traditionally used in that substantive area of law.
An argument against granting quia timet relief may be asserted on the grounds that equity should be used only in extraordinary circumstances.  A twenty thousand dollar payment to a large business may not constitute such an extraordinary circumstance.  Equity, however, can be offended in different ways.  "Some courts have held that pecuniary loss need only be slight [for equitable relief to be granted]."51  A hijacker relying on the inaction of a court to serve as a bargaining tool in getting money for a domain name for which it has no legitimate use should be offensive to equity.

G. Danger of Misapplication of Quia Timet Relief by Courts

When a court is faced with a party seeking quia timet relief, which is a somewhat obscure use of equity, there is an obvious danger of the court making an overly restrictive analysis of it's use.  In In re Lockwood52, a case which is not good precedent because it was vacated at a late stage of the appeals process, an alleged patent infringer made an analogy to quia timet relief in arguing for the power of the court to grant declaratory relief. The other party argued that it was entitled to a jury resolution of the underlying facts under the Seventh Amendment of the United States Constitution.  In response to the analogy to quia timet the court stated: "Contrary to American's assertions, it does not appear that an alleged infringer could have used a bill quia timet to challenge patent validity in a court of equity.  We have not been informed of any such cases by American." 53  The court then went on to list the substantive legal areas in which quia timet had been used.
In NTN Communications, Inc. v. Interactive Network, Inc.54, NTN Communications, Inc. ("NTN") sought injunctive relief under the Lanham Act for threatened use of its trademark relating to an interactive game played in conjunction with televised football games.  NTN had an exclusive licensing agreement with the National Football League ("NFL"), and prior to this action Interactive Network, Inc. ("Interactive") had a sub-license for the same.  When Interactive entered into a licensing agreement with the Canadian Football League ("CFL"), NTN brought this action for injunctive relief against Interactive's alleged unlawful use and competition.
At the point NTN sought injunctive relief, Interactive had not taken any actions beyond entering the CFL licensing agreement.  Interactive filed a 12(b)(6) motion to dismiss for failure to state a claim because it argued that NTN's claim for injunctive relief was not ripe because Interactive's use of the trademark "was merely intended or threatened."55  NTN claimed the injunctive relief was sought in equity; however, neither the court opinion, nor the cases cited in the opinion as attributable to NTN even referenced quia timet relief.  Interactive argued that NTN could only seek relief for intended or threatened use of a trademark under the Declaratory Judgment Act, which doesn't provide such a remedy.
The trademark cases briefed by NTN, and found dispositive by the court were National Lampoon, Inc. v. American Broadcasting Co.56, Bertolli U.S.A., Inc. v. Filipo Bertolli Fine Foods, LTD.57, and Monsanto Chemical Co. v. Perfect Fit Manufacturing & Co.58.  None of these cases appeared to be plead in terms of quia timet, as the words quia timet did not appear in the text of the opinions.  The discussion in the cases rather focused on obtaining preliminary injunctions under Rule 65 of the Federal Rules of Civil Procedure.  That rule requires a plaintiff to demonstrate irreparable harm, and either the likelihood of being successful on the merits, or there being sufficiently serious questions on the merits to show fair grounds for litigation.  The rule also requires a balance of hardships favoring the moving party59
The NTN court granted Interactive's 12(b)(6) motion for failure to state a claim on the grounds that even the authorities cited by NTN granting early relief required that not only must Interactive show intent to infringe a trade mark, but it must also take steps to market it's infringing product or somehow use it in commerce as well.  This case is an example of quia timet relief simply not being sought when it could have been.

 H. Applying Traditional Quia Timet Requirements to Hijacking Scenario

In One In A Million and the Goodtillnow scenarios, the only actions the defendant hijackers had taken was to register the plaintiffs' famous names and then correspond with the plaintiffs regarding a sale of the registration.
At this stage, courts will not likely find that the plaintiff has suffered legal harm.  Therefore, the first requirement of no present legal harm is satisfied.  The second requirement of there being a threat should also be satisfied.  Given the facts that the plaintiff's name/trade or service mark has been registered as a domain name with NSI, it is clear that the defendant hijacker is both aware of the plaintiff company and the plaintiff's interest in having unique access to it's commercial name(s) on the Internet.  Otherwise, it would not have contacted the mark holders requesting a substantial cash payment.
In the above Bertolli USA, Inc.60 case in which the Defendant shared the same last name as the Plaintiff, the court even in that situation quoted Judge Friendly in A.T. Cross Co. v. Jonathan Bradley Pens, Inc.61 in saying: "we do not look with much favor on the businessman who, out of the wealth of words available, chooses as a trademark one which comes as close as he dares to a well-known mark on the identical product."  Because practically any use of the domain name beyond simply holding the registration will cause legal harm pursuant to at least one of the substantive laws applicable to the facts.  And also considering the fact that simply holding the registration would evidence some form of malicious intent such as seeking a settlement with the plaintiff for the registration, or looking for another person like a competitor who has a similar malicious interest in the name.  There should be a sufficient threat of future legal harm.
For the third traditional requirement of quia timet relief, which has already been discussed in some length above, a number of different approaches can be taken to argue that there is a sufficient danger of irreparable harm stemming from the threat.  In a hijacking situation such as this, it may very well be the case that the hijacker does not have significant assets.
If the term "irreparable harm" is used by the court in the same way it is used in a straight preliminary injunction analysis, Omega Importing Corp. v. Petri-Kine Camera Company, Inc.62 becomes relevant.  In Omega Importing Corp., which was an action for a temporary injunction based on trademark infringement, the Second Circuit overruled the District Court's conclusion that the temporary injunction should not be granted.  In it's analysis of 'irreparable harm', the court found that receiving money damages in the future for trademark infringement, unfair competition, and passing off does not afford the affected party full compensation due to the nature of the harm involved.  The stated reasons in Omega were that calculating damages resulting from such harms is "notoriously difficult"63.  Even if the damages can be accurately calculated, there is still a likelihood of harm to the plaintiff's reputation which cannot be quantified.  The court's final consideration was that since the defendant had just emerged from Chapter 11 bankruptcy, it would be unlikely that it could afford to pay the damages caused by it's alleged activities.  The same factors should apply in a hijacking situation, i.e. calculating damages, loss of reputation, and the financial situation of the defendant. All of these weigh in favor of finding that the threatened harm is irreparable.
If irreparable harm is analyzed in the same way courts have analyzed it in the traditional areas of the law that equitable quia timet actions have been used, it is important to focus on the analysis of such past courts in reaching their conclusions.  The fact that most of the opinions do not follow an element by element breakdown of the traditional quia timet action tends to guide toward taking a wide look at the facts and legal positions of the parties.  After that, incorporate the traditional requirements as considerations in making a broad equitable determination.  Irrespective of the analysis a court makes, it is important to bring to light the unspoken traditional analysis of courts granting quia timet relief, which is to also take into account the actions, intent and designs of the defendants in making an equitable ruling. 

When a company having a trade or service name that is registered by someone else as a domain name for the purposes attributable to hijacking, there are a number of statutory and common laws for such company to use in both identifying the threat and the point at which legal harm will occur. These substantive protections can also be used together in a well plead complaint to foreclose the possibility that any use of the trade or service mark by the hijacker short of simply sitting on the registration will be an infraction of at least one of the protections.

 A. Trademark and Service Mark Infringement Under the Lanham Act

Under 15 U.S.C. ( 1127, a "trademark" is defined as:
[A]ny word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

   Under that same Section, a "service mark" is defined as:
[A]ny word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.

If a company wants to show that a hijacker is infringing the company's legal rights under the Lanham Act, the company has to show that "(1) the mark is valid and legally protectable, (2) the mark is owned by the plaintiff and (3) use of the same mark by the defendant is likely to create confusion among the relevant consumers."64  It is important that any complaint for injunctive or declaratory relief contain proof or sufficient allegations of these requirements.
For legal harm to occur under this section in the hijacking context, it would be necessary for the hijacker to take the step beyond domain name registration and correspondence with the name holder of posting a web site that relevant consumers of the company's business may think is related to the company.  It is not a valid defense for a hijacker to argue that the registered domain name is not identical to the company's trade or service mark because courts have consistently held that the questioned use is similar enough to the trade or service mark that the relevant consumers of the business be deceived.65 It would be ironic for a hijacker to defend on this ground, as the point of hijacking is to satisfy this requirement as much as possible.

B. Trademark Anti-Dilution Act

The Federal Trademark Dilution Act says: "The owner of a famous mark shall be entitled ... to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark."66 If a company wants to use this section to protect against a hijacker, the company must show: "(1) the mark is famous; (2)the defendant is making a commercial use of the mark in commerce; (3) the defendant's use began after the mark became famous; and (4) the defendant's use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify goods and services."67  Trademark Anti-Dilution is a useful protection to defend against hijacking because a company simply needs to show that the use by another of it's famous mark will harm the usefulness of the mark by limiting an Internet user's ability both to locate and distinguish between the company's and the hijackers use.
Furthermore, it is not a defense for the hijacker to claim that it's use of the name is not "commercial" because the web site they established is for personal use.  The fact that they have corresponded with the mark-holding company to sell the domain name registration back to the company satisfies the commercial use requirement of the section because of the evidence that the hijacker sought profit from registering the trademark as a domain name and seeking remuneration from the trademark holder. This is the business of a hijacker.68 Again, under this section, no justiciable legal harm takes place until the hijacker takes the further step of setting up a web site with the domain registration name.  This section does, however, significantly narrow the possible use of a domain name registration by anyone other than the famous-name mark holder.

C. Common Law Service Mark

Under common law, a business can attain rights to a service mark which is often the name of the business or a product which the business sells.  This is similar to protections afforded under the Anti-Dilution Act; however, the source of the right to the service mark is common law and not a statute.  Therefore a company which has not registered a service mark under trademark legislation will still receive protection.  A business acquires common law service mark protection by using it's mark in connection with services it offers69.  Such protection is granted when another entity uses a sufficiently similar mark in such a way as to create confusion about the origin of the business using the mark or the origin of the services offered in connection with the mark70.
The amount of protection provided depends upon how distinctive the mark is71.  In order to determine the relative distinctiveness of a mark, courts classify marks into the following categories: "(1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive and (5) generic"72.  The above classifications are listed in order of the amount of protection they receive.  Fanciful marks are given a high level of protection, while generic marks are not protected at all73.  In order to determine which classification a mark falls under, courts employ further multi-factor tests for each classification74.
Depending on the classification of a business's mark therefore, a business with a distinctive mark is able to seek relief irrespective of whether it has registered the mark as a trademark when someone creates a web site that will likely create confusion amongst relevant web users as to the owner of the site and the services the web site may offer.

D. Other Protections

There are a number of other common law protections which may be applicable to hijacking situations such as common law unfair competition, consumer fraud, and state deceptive practices acts based on the Uniform Deceptive Practices Act. Depending upon the facts of a particular hijacking case, any number of different substantive protections will need to be used.  The Court must see that any use of the domain name beyond simply holding the registration will result in legal harm for which there is existing legal protection.  By eliminating any possible legitimate uses of the domain name registration, it shows the court that the hijacker will not be harmed by forfeiting the registration.  It will also show the futility or malicious intent of a hijacker making an argument that it simply wants to hold on to the name. 

 If you find yourself in the Goodtillnow situation, it is first necessary to correspond with Hijacker in order to better ascertain their position and intentions.  It is easiest if the hijacker contacts you first, because their knowledge of your existence is evidence of their intent to engage in hijacking.  If you are forced to contact the hijacker, it may be useful to do so in the form of a demand letter.  In the letter, you should both ask about the hijackers position and intentions and also detail your substantive legal right to all uses of the domain name they registered.  Be sure to include a reasonable time period in which you expect them to respond.  The ideal letter will therefore have goals of acquiring information, getting evidence of bad intent, sending a threatening message, and setting a reasonable time for reply.
If you find that the facts are similar to the Goodtillnow or One In A Million Situation, then file a temporary restraining order and complaint for injunctive relief.  This should get you before a judge within a matter of weeks.  If the hijacker makes an appearance at the TRO conference, be well versed on the judge's discretion to place the burden of proof of individual issues on either party.  Also be well versed on the history and nuances of quia timet.  At the TRO conference request that the hijacker provide evidence of financial stability sufficient to sustain an award of later financial damages in an infringement or other suit.  Also request that the hijacker provide a legitimate anticipated use for the registered domain name.  It is also important to provide proof of your trademarks, or if you are relying on common law protection, proof that you have a legal right to the name.
If the case proceeds to a preliminary injunction hearing, be prepared to further elaborate to the judge exactly why defendant's domain name hijacking is an extraordinary circumstance that warrants the intrusion of equity.  At best, Showmedamoney does not show up for court in the first place and you win by default.  At worst, you are able to avoid calling Len Bremer to tell him there is nothing you can do about Showmedamoney's hijacking. 

1 Dept. of Commerce, Statement of Policy, Management of Internet Names and Addresses, Docket No. 980212036-8146-02.
2 For a good introduction to the technical background of the Internet and domain names giving rise to cybersquatting disputes, See Panavision v. Toeppen, 141 F.3d 1316, 1318 (9th Cir. 1998)
3 Panavision, 141 F.3d at 1319.
4 The Green Paper and comments thereto can be found at <http://www.ntia.doc.gov>
5 Dept. of Commerce, Statement of Policy, Docket Number 980212036-8146-02.
6 Id.
7 Fitzgerald, Gamertsfelder and Gulliksen, UNSW Law Journal: Marketing Your Website: Legal Issues Relating to the Allocation of Domain Names, <http://law.unsw.edu.au>
8 British Telecom Plc And Others v. One In A Million And Others, [1998] Masons C.L.R. 165, See also <http://www.nic.uk/news/oiam-judgment.html>.
9 Blacks Law Dictionary, 1415 (rev. 4th ed.).
10 1956 ABA Section of Insurance, Negligence and Compensation Law Proceedings 173.
11 One In A Million at [1998] Masons C.L.R. 165.
12 Id.
13 Id.
14 Id.
15 Escrow Agents' Fidelity Corp. v. Superior Court of Los Angeles, 5 Cal.Rptr.2d 698, 700, quoting Connors, California Surety & Fidelity Bond Practice (C.E.B. 1969), ( 13.13. p. 176, citing Roman Catholic Archbishop of San Francisco v. Shipman, 11 P. 343 (Cal. 1886).
16 Jay M. Mann and Curtis A. Jennings, Quia Timet: A Remedy for the Fearful Surety, 20 Forum 685, 687.
17 Lennett, 110 S.E.2d at 628.
18 166 S.E.2d 63 (N.C. 1969).
19 Newman Machine Co. v. George F. Newman, Jr., Trustee, 166 S.E.2d 63, 69 (N.C. 1969).
20 Newman Machine Co., 166 S.E.2d at 69.
21 See Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D. N. J. 1998).
22 426 N.E.2d 824 (Ill. 1981).
23 Subsidence is the settling of ground caused from insufficient underground support structure.
24 Restatement (Second) of Torts sec. 933(1), at 561, comment b (1979)), 426 N.E.2d at 836.
25 426 N.E.2d at 837.
26 40 U.S.C.A. ( 270 et seq.
27 5 Cal.Rptr.2d 698 (2d Dist. Div. 5 1992).
28 Escrow Agents Fidelity Corp., 5 Cal.Rptr.2d at 701.
29 436 F.2d 1345, 1349 (10th Cir. 1971).
30 Id. at 701.
31 Ambassador Ins. Co. v. Montes, 388 A.2d 603 (N.J. 1978)
32 Roman Catholic Archbishop of San Francisco, 11 P. at 343.
33 Escrow Agents' Fidelity Corporation, 5 Cal.Rptr.2d at 700.
34 Id. at 701.
35 One In A Million.
36 Id.
37 Id.
38  See state statutory interpretation acts for limitations on the use of equity where there is possible conflict.
39 See McClintock, Equity ( 40 (West Pub. Co. 2d Ed. 1948) and Clark v. Teeven Holding Co, Inc. v. M&M Cleaners, 625 A.2d 869, 876 (Del. Chanc. 1992).
40 See Bird v. Lida, 681 A.2d 399, 402 (Del. Chanc. 1996).
41 See Synacek v. Oklahoma Cold Storage, 527 N.W.2d 91 (Neb. 1995), See also State of Nebraska ex. rel. Stenberg v. Moore, 571 N.W.2d 317, 321 (Neb. 1997).
42 See Hammons v. Ehney, 924 S.W.2d 843, 846 (MO 1996).
43 See Juaire v. Juaire, 259 A.2d 786, 788 (Vt. 1969), See also Chapman v. Sheridan - Wyoming Coal Co., 338 U.S. 621, 630-31 (1950).
44 See Boone v. Lightner, 319 U.S. 561, 569-70 (1943).
45 See International Salt Co. v. United States, 332 U.S. 392, 400-01 (1947).
46 See In re Marriage of Cargill, 843 P.2d 1335 (Colo. 1993).
47 See Assoc. Home Utilities, Inc. v. Town of Bedford, 424 A.2d 186, 189 (N.H. 1980).
48 Associated Investment Co. L.P. v. Williams Associates IV, 645 A.2d 505, 511 (Conn. 1994) partially quoting 1 J. Pomeroy, Equity Jurisprudence (5th ed. 1941) ( 67, p. 89.
49 113 A.2d 136 (Conn. 1955).
50 Harper, 113 A.2d at 138 citing 1 Pomeroy, Equity Jurisprudence (5th Ed.) p. 78.
51 Harper, 113 A.2d at 139.
52 50 F.3d 966 (Fed. Cir. 1995).
53 In re Lockwood, 50 F.3d at 979.
54 1995 WL 569419 (N.D. Cal. 1995) (Not Reported in F. Supp.)
55 NTN Communications, Inc. v. Interactive Network, Inc., 1995 WL 569419 (N.D. Cal. 1995).
56 376 F. Supp. 733 (S.D.N.Y.), aff'd 407 F.2d 1343 (2d Cir. 1974).
57 662 F. Supp. 203 (S.D.N.Y. 1972).
58 349 F.2d 389 (2d Cir. 1965).
59 Bertolli, 662 F. Supp. At 205, citing Church of Scientology International v. Elmira Mission, 794 F.2d 38, 41 (2d Cir. 1986)
60 662 F. Supp. 203, 206 (S.D.N.Y. 1987).
61 470 F.2d 689, 692 (2d Cir. 1972).
62 451 F.2d 1190, 1195 (2d Cir. 1971.
63 See also Pure Foods, Inc. v. Minute Maid Corp., 214 F.2d 792, 797 (5th Cir.), cert. denied, 348 U.S. 888 (1954).
64 Jews for Jesus, 993 F. Supp. at 294.
65 Fisons Horticulture, Inc. v. Vigoro Industrial, Inc., 30 F.3d 466, 477 (3d Cir. 1994).
66 Panavision International L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998) quoting 15 U.S.C. ( 1125(c).
67 Id. at 1324 citing 15 U.S.C. ( 1125(c).
68 Id. at 1325.
69 Caesars World, Inc. v. Caesar's Palace, 490 F. Supp. 818, 821 (D.N.J. 1980).
70 Id. at 823.
71 Id. at 821.
72 Dranoff-Perlstein Assoc. v. Sklar, 967 F.2d 852, 858-59 (3d Cir. 1992).
73 Jews For Jesus, 993 F. Supp. at  296.
74 For "generic" analysis see Blinded Veteran's Assoc. v. Blinded Am. Veterans Found., 872 F.2d 1035 (D.C. Cir. 1989), for "descriptive" and "suggestive" analysis see Trustco Bank, 903 F. Supp. at 342, for ""arbitrary" and "fanciful" analysis see Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (( 11.20 - 11.25.