1

_______________________________________________________________________ _

Cybersquatting: An introductory guide for Australian legal practitioners

Chris ODonnell1
Law Student, Deakin University, Australia

November 2002 _______________________________________________________________________ _ Whenever a new technology arrives there is always an initial honeymoon period as everyone excitedly examines the possibilities. So it was when the first automobile first churned the dust on quiet country roads, and heralded the end of the horse and buggy. In time of course the roads were sealed, a traffic code developed, drink driving was outlawed and cars were fitted with anti pollution controls. The Information superhighway, in contrast is still in its early days.2

The author would like to acknowledge and thank Peter McIntosh (Legal practitioner and IT law expert), Dr Staniforth Ricketson (Barrister of the Supreme Court of Victoria and WIPO panelist), Bruce Dennison (Director of Business Resource Development), Sally Shrimpton (Partner of law firm Griffith Hack), Marnie Williams (Articled clerk for Griffith Hack), Sandra Pyke (Deakin University law librarian) and Clayton Utz for their research assistance; and Dominic Triaca (Solicitor for Rennick & Gaynor), Amanda Pun (Solicitor for Clark Rushford) and Claire Weigall (Deakin law student) for their editorial assistance. Any errors or omissions remain the sole responsibility of the author. 2 Evan Bromily, If You Are Going to Use the Internet, Youd Better Know the Road Rules (1995) 27 Computer & Law 12.

Table of Contents Introduction Part 1

1.1

5 6
6
6 7

Domain Names

The concept of domain names

(a) The domain name system (b) The anatomy of domain names

1.2

Registration of domain names

9
9 10 13

(a) Registration of gTLDs (b) Registration of dot.au domain names (c) The impact of registration policies and pricing on cybersquatting

1.3

The commercial value of domain names

15

Part 2

Cybersquatting
17

17

2.1 Modes of cybersquatting

(a) Traditional cybersquatting (b) Typo-squatting (c) Domain hunters

17 18 19

2.2

Motives for engaging in cybersquatting

20
20 22

(a) The profit motive (b) The damage motive

2.3

The morality of cybersquatting

Evicting cybersquatters in the dot.com and dot.net name space 25

23

Part 3

Part 4

ICANNs Uniform Domain-Name Dispute-Resolution Policy (UDRP)

26

4.1 4.2

Synopsis of the UDRP Benefits of the UDRP

26 34

(a) Abrogation of jurisdictional problems inherent in domestic court proceedings 34 (b) Expediency and cost 35

4.3

Shortcomings of the UDRP

36
36 37 40 43 44 48 49

(a) Failure to protect non-trademark owners (b) Absence of precedence (c) No appellate body (d) Lack of finality (e) Forum shopping and complainant bias (f) Limited and inflexible remedies. (g) Possible invalidity of the UDRP

Part 5

Difficulties involved in using Australian courts to evict Cybersquatters.

50

5.1 5.2

Jurisdictional obstacles The inadequacy of existing domestic legal actions to evict cybersquatters.

50 53
54 57 59

(a) Trademark infringement (b) Passing off (c) Fair Trading and Trade Practices

5.3 5.4

Time and expense of court proceedings Suggested reforms

60 61
61 62

(a) The US Anti-cybersquatting Protection Act (ACPA) (b) Proposed legislation to combat cybersquatting in Australia

Part 6

Alternative solutions to

65

combat cybersquatting
6.1 6.2 6.3 6.4 Use of filters Auction system Company ICON page Multilateral treaty 65 66 67 68

Part 7

Preventative Measures

69
69 71 73

(a) Selection of SLDs (b) Selection of gTLDs and ccTLDs (c) Maintenance of the policy

Part 8

Conclusion

73 75

Bibliography
Section 1 Section 2 Section 3 Section 4 Section 5 Section 6 Section 7 Section 8 Books Journal and Law Review Articles Newspaper Articles Reports Case Law Legislation Domain name dispute policies Other

75 75 78 79 80 82 83 83

Introduction
The objectives of this paper are two-fold. First, to provide Australian legal practitioners with an introductory guide to the issue of

cybersquatting. Secondly, to provide Australian legal practitioners with a critical evaluation of the legal actions available to evict cybersquatters. Part 1 of the paper explains the concept of domain names, the domain name registration process and the commercial importance of domain names. Part 2 explores the modes, motives, and morality of

cybersquatting. Part 3 canvasses the available legal actions that Australian entities can use to evict cybersquatters in the dot.com and dot.net name spaces. Part 4 outlines and critically evaluates ICANNs Uniform Domain-Name Dispute-Resolution Policy. Part 5 examines the difficulties of pursing cybersquatters through Australian courts. Part 6 discusses alternative solutions to combat cybersquatting. Part 7 outlines a defensive domain name registration policy to circumvent cybersquatters. Part 8 concludes the paper.

Part 1

Domain Names

1.1 The concept of domain names

To understand the concept of cybersquatting it is necessary to have a basic understanding of the Internet, 3 the domain name system (DNS) and domain names. 4

(a)

The Domain Name System (DNS)

The DNS is the means by which people locate websites on the internet. 5 Every website address leads directly or indirectly to a physical computer attached to the Internet. 6 Each such computer has a numerical address such as 43.23.142.63. 7 Remembering such a long string of numbers in order to access websites was held to be cumbersome and impractical.

Consequently, to make accessing websites more user friendly, a protocol was developed to enable a numeric address to be matched with a mnemonic name known as a domain name (e.g. 43.23.142.63 is the

For an introduction to the Internet see Jay Forder and Patrick Quirk, Electronic Commerce and the Law (2001) 5-16. 4 This essay provides a basic explanation of the concept of a domain name. For a more expansive explanation see Forder and Quirk, above n 1, 198 - 224. 5 Ibid 202. 6 Ibid. 7 Ibid.

7 numeric address of the www.maa.net website). 8 This protocol is referred to as the Domain Name System (DNS).

A domain name is thus an Internet address identifying a website on the Internet in the same way a street address identifies a business office in the bricks and mortar world. 9 Due to the structure of the DNS no two entities can have the same domain name. 10

(b). The anatomy of domain names

A domain name consists of two parts: a top level domain (TLD) and a secondary level domain (SLD) 11. TLDs are normally divided into two categories:

(i) Generic top level domains; and

Generic TLDs (gTLDs) were created with the aim of identifying the category of user who has reserved the domain name (e.g. dot.com for commercial entities) 12 and can be divided into two categories, open gTLDs and restricted gTLDs. 13 There is no restriction on the persons or entities
8

Andr Brunel, Trademark Protection for Internet Domain Names (1996) April International Business Lawyer 174. 9 Forder and Quirk, above n 1, 202. 10 Ibid 203. 11 Ibid 202. 12 Stacey H King, The "Law That It Deems Applicable": ICANN, Dispute Resolution, and the Problem of Cybersquatting (2000) 22 Hastings Comm. & Ent. L.J. 453, 458. 13 Forder and Quirk, above n 1, 203.

8 who may register open gTLDs. 14 Thus an entity that is not a commercial entity (e.g. a child wishing to set up a website for a school project) is able to register a dot.com domain name. Conversely, certain criteria must be met by entities wishing to register restricted gTLDs. 15

(ii) Country code top level domains (ccLTDs) . 16

There are currently between 240 and 250 ccTLDs. Each of these domains bears a two-letter country code (e.g. dot. a u
dot.ca (Canada), dot.kr (Korea), dot.sa (South Africa)). (Australia), dot.br (Brazil),
17

The SLD is the remainder of the address and may be comprised of a combination of letters, numbers and/or typographical symbols. 18 For instance, in the domain name www.christmastrees.com.au , 19 the gTLD is dot.com, the ccTLD is dot.au and the SLD is christmastrees. Presently, domain names are only available in the ASCII character set. 20
14

The open gTLDs include, dot.com, dot.net, dot.org, and dot.info. See Oznetlaw Domain Name Fact Sheet (21/08/2002) OzNetLaw <http://www.oznetlaw.net/facts.asp?action=content&categoryid=223> at 10 September 2002 (hereinafter Oznetlaw Sheet). 15 Restricted gTLDs include the following, (a) dot.aero: restricted to use by the air-transport industry; (b)
dot.biz: restricted to use by businesses; (c) dot.coop: restricted to use by cooperatives; (d) dot.edu: restricted to use by degree-granting colleges and universities; (e) dot.gov: restricted to use by agencies of the federal government of the United States of America; (f) dot.int: restricted to use by international organisations; (g) dot.mil: restricted to use by the military of the United States of America; (h) dot.museum: restricted to use by museums; (i) dot.name: restricted to use by individuals; and (j) dot.pro: restricted to use by professionals (soon to be available). See Ibid.
16 17

Forder and Quirk, above n 1, 203. Oznetlaw Sheet, above n 14. 18 Forder and Quirk, above n 1, 202. 19 This domain name is registered and co-owned by the author and his business partner, Dominic Triaca, a solicitor with Melbourne law firm Rennick & Gaynor. 20 World Intellectual Property Organisation, The recognition of rights and the use of names in the internet domain name system: Report of the Second WIPO Internet Domain Name Process (2001), WIPO <http://ww.wipo2.wipo.net> at 20 September 2002 (hereinafter WIPO Report 2).

9 Thus one cannot register a domain name in Japanese kanji. Efforts are underway, however, to make domain names available in non-ASCII scripts including Arabic, Chinese, Cyrillic, Japanese and Korean scripts. 21

1.2 Registration of domain names

(a)

Registration of gTLDs

Registration

of

domain

name

is

generally

straightforward

and

inexpensive. The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for regulating the registration of gTLDs. 22 The registration of a gTLD such as a dot.com can be obtained via any registrar accredited by ICANN. Australian registrars accredited by ICANN include Domain Intellect Pty Ltd, Registrars Asia Pty Ltd and Melbourne IT. 23 The registration of gTLDs operates on a first come first served basis. 24 With open gTLDs, other than checks made to ascertain if the requested domain name is available, no check is done of any trademark database or to confirm the details of the registrant. 25 When registering restricted gTLDs the registrant must meet specific criteria. 26 As at 15
21 22

Ibid. Forder and Quirk, above n 1, 203. 23 For a complete list of Australian registers accredited by ICANN visit <http://www.icann.org/registrars/accredited-list.html>. 24 Peter Hourigan, Domain Names and Trademarks: an Australian Perspective in A Fitzgerald, et al (eds), Going Digital 2000: Legal Issues for E-commerce, Software, and the Internet (2nd ed, 2000) 140. 25 Ibid. 26 See above n 8.

10 November 2002, the cheapest price to register a dot.com domain name this author could find was $14.50 27 for a single year registration. 28

(b)

Registration of dot.au domain names

In Australia, .au Domain Administration Ltd (auDA), a non-profit Australian company endorsed by the Australian government and ICANN, is responsible for regulating the registration of the dot.au name space. 29 AuDAs Policy 30 for the dot.au name space also operates on a first come first served principle 31 but has added requirements. To be eligible to register in the dot.com.au space 32 an entity must fall within one of the following categories:

an Australian registered company; trading under a registered business name in any Australian State or Territory; an Australian partnership or sole trader; a foreign company licensed to trade in Australia; an owner of an Australian Registered Trade Mark;
27 28

All dollar amounts cited in this essay are in Australian Dollars. See <http://www.assurancehosting.com/domains/default.asp>. 29 Oznetlaw Sheet, above n 14. 30 auDa, Domain Name Eligilibity and Allocation Policy Rules for Open Second Level Domains (2002) auDA <http://www.auda.org.au/docs/auda-2002-07.txt> at 1 September 2001 (hereinafter auDa Policy). 31 Ibid Sch A 1. 32 The eligibility and allocation rules vary for each open gTLDs in the dot.au name space (see auDa Policy, above n 30, Sch A-F). For the purposes of this paper an explanation of the eligibility and allocation rules for the dot.com.au name space will suffice.

11 an applicant for an Australian Registered Trade Mark; an association incorporated in any Australian State or Territory; or an Australian commercial statutory body. 33

AuDAs policy prescribes three conditions that set out the parameters for SLDs in the dot.com.au space. The first condition is that SLD cannot be a name on AuDas Reserved List. 34 The list only contains word or phrases that are restricted under Commonwealth legislation (i.e. the names of suburbs such as Abbotsford and Dandenong). 35 The second condition is that the composition of the SLD must satisfy defined criteria (i.e. the SLD must be a minimum length of two characters). 36 The third condition can be satisfied in one of two ways:

(i) The SLD must exactly match or be an acronym or abbreviation of the business name or a trademark name of the registrant; or . 37
33 34

auDa Policy, above n 30, Sch C 1(a)-(h). Ibid Sch A 7; auDA, Reserved List Policy (Policy No 2002-11) (2002) auDa <http://www.auda.org.au/docs/auda-2002-11.pdf> at November 26 2002 (hereinafter auDAs Reserved List Policy). 35 The complete list is available at <http.//www.auda.org.au/policy/auda-reserved-list.csv>. 36 auDa Policy, above n 30, Sch A 3(a)-(d). 37 Ibid Sch C 2(a)(i)-(ii)&(b).

12

For example, Nike Incorporated can, pursuant to this rule, register www.nike.com.au or www.onlinenike.com.au . This rule is easily satisfied as demonstrated by the example below:

Assume the domain name www.coles.com.au is not registered. X, who has no connection with Coles Myer Ltd, seeks to register www.coles.com.au . To satisfy auDAs policy, X only needs to register a business name that incorporates the name Coles. For example, X could register the business name Mike and Coles lawn mowing services and then would be able to register

www.coles.com.au under auDAs policy.

(ii) The SLD must have a close and substantial connection to the registrant because the domain name is, inter alia, a product the registrant sells, a venue the registrant operates or an event the registrant organises. 38 For example, Nike Incorporated pursuant to this rule is permitted to register www.airjordanshoes.com .

Recent changes by auDA now also permit entities to register generic words as domain names (e.g, www.business.com.au ). There is no restriction on the number of domain names that may be registered by a
38

Ibid Sch C 2(c)(i)-(vi).

13 registrant. 39. As at 15 November 2002, the cheapest price for a dot.com.au domain name was $59.99 for a two-year registration. 40

(c)

The impact

of

registration

policies

and

pricing

on

cybersquatting

The registration policies and prices that are adopted for a specific domain name space play an influential role in the prevalence of cybersquatting. 41 In the dot.au space Australia has incurred few cybersquatters to date owing to its registration procedures. 42 Prior to 1 July 2002, a cybersquatter to operate in the dot.au space would need to register a business name and was only permitted to register one domain name per business name. Thus, the cost of procuring a single dot.au name could be achieved at a minimum of $210 (business registration $70 43 and domain registration $140 44). Under this system the cost of a cybersquatter warehousing 10 domains names was $2,100. In addition to these requirements, the domain name was required to be an exact match or abbreviation or acronym of the registrants business name. Comparatively, a person registering an open gTLD is merely required to pay $14.50 45 and is free to register the domain name of their choosing. Cybersquatters taking advantage of bulk billing
39 40

Ibid Sch A 6. See <http://www.namescout.com.au>. 41 Philip Catania, Lisa Cohn, and Lucy Turner, Domain Names and Trademarks, (2001) 31. 42 Ibid. 43 See <http://www.consumer.vic.gov.au/cbav/fairsite.nsf/pages/of_bnames_fees>. 44 Prior to deregulation of the market in the dot.com.au name space Melbourne IT held a monopoly in the market and charged $140 for a two year registration of a domain name. 45 See Part 1.2(a).

14 discounts can register 145 dot.com domains for $2,100. 46 Given the difference in registration policies and pricing between open gTLDs and open dot.au ccTLDs it is not surprising cybersquatting has flourished in the former name space.

Recent changes to the dot.au name space have opened the door for cybersquatters by making it easier to register dot.au names. For example, the restriction of one dot.com.audomain name per entity no longer applies. Registrants are now able to register an unlimited number of domain names provided certain conditions are satisfied (see Part 1.2(b)). In an effort to stop cybersquatters taking advantage of loosened registration requirements, auDA published clarifications that make it clear registrants are: (a) strictly prohibited from selling dot.au domain names; 47 and (b) may only transfer dot.au domain names in well defined narrow circumstances. 48 These conditions seemingly preclude the

possibility of cybersquatting. Cybersquatters, however, sidestep these prohibitions by registering the domain name in the name of a business. A domain name owned in the name of a business can be "transferred" by changing the owner details of the business name. This indirect means of transfer escapes the effect of the policy because the owner details of the

46

Cheap Domain Registration, Register Domains in Bulk, Cheap Domain Registrtion <http://www.secureserver.net/bulkRegister.asp?prog_id=domains> at 10 Nov 2002. 47 auDA, Clarification of Domain Name Licence - Prohibition on Sale of Domain Name by Registrant (No 2002-24) (22/08/2002 ) auDA <http://www.auda.org.au/docs/auda-2002-24.pdf> at 20 Nov 2002. 48 auDA, Transfers (Change of Registrant) Policy (No 2002-27) (14/10/02) auDA <http://www.auda.org.au/docs/auda-2002-27.pdf> at 20 Nov 2002.

15 domain name do not change; the business name is still the owner, and therefore the domain name is not at any stage sold or transferred. 49

1.3 The commercial value of domain names

Gartner 50 projects that worldwide online holiday sales in 2002 will total $67.8 billion, a 48.4% from the same period last year. 51 Businesses wanting to capture a percentage of this lucrative and increasing market must establish an Internet presence. This requires registering a domain name and setting up a website. Just as in the bricks and mortar world, the more easily consumers can locate a business on the Internet the greater its chances of being profitable. The ease with which consumers can locate a business on the Internet is a direct function of the businesss domain name. Domain names incorporating names that are memorable, self explanatory (e.g. product names such as www.cars.com ), 52 well-known (e.g. trademark and company names), correctly and easily spelt 53 and concise (eight characters or less) 54 are easier to locate than names that
49 50

Email from Lauren Eade (Solicitor for Gilbert Tobin) to Chris ODonnell, 26 November 2002. Gartner Incorporated is a US based research and advisory firm that can be located at <http://www3.gartner.com>. 51 Laura Rush, Online Holiday Shopping Stats Scorecard (22 November 2002) Ecommerce-guide.com <http://ecommerce-guide.com> at 24 November 2002. 52 Xuan-Thao Nguyen, Cyberproperty and Judicial Dissonance: The Trouble with Domain Name Classification (2001) 10 George Mason Law Review. 183, 189. 53 A domain name that is easily and correctly spelled can save consumers considerable time. For example, if Presents-for-you-dot-com was heard over the radio, the consumer is faced with the task of determining the actual domain name which could be, inter alia, giftsforyou.com, gifts4you.com or gifts4u.com. See M Jepson, Domain Name Valuation (2001) Whichhosts <http://www.whichhosts.com/domain_valuation.php> at 23 September 2002. 54 Drugs.com is easier to remember than drugstore.com.

16 lack these characteristics. Thus www.sex.com is valued at $443.50 million whilst www.business-for-women.com is valued at $443.50. 55

Memorable domain names, in addition to increasing online sales, provide advertising and marketing advantages. 56 Websites www.espn.com and www.weather.com earned advertising revenue of $78.26 million and $56.44 million respectively for 2001. 57 As the above discussion

highlights, securing the right domain name can make a big difference to the bottom line of a business. Bruce Dennison, director of Business Resource Development and IT expert, interestingly points out that despite the revenue earned by domain names they are not considered by the Australian Taxation Office to constitute an asset. 58

Part 2

Cybersquatting

2.1 Modes of cybersquatting

(a) Traditional cybersquatting

55 56

Nguyen, above n 52, 184. Ibid 190. 57 Michael Pastore and Christopher Saunders, Ad Spending Down, Use of Larger Ads Increases (8 March 2002) CyberAtlas <http://cyberatlas.internet.com/markets/advertising/article/0,,5941_987871,00. html> at 15 November 2002. 58 Interview with Bruce Dennison, director of Business Resource Development (Conducted at BRD offices [Level 1, 823, Glenferrie Rd, Hawthorn, VIC, 3122], 19 Nov 2002) (hereinafter Dennison Interview).

17 The traditional cybersquatter registers a domain name that is identical to name a third party holds legitimate interests in. The type of names registered by cybersquatters include, inter alia , trademarks, family names, personal names and geographic names. 59

Trademarks registered by cybersquatters as domain names include: www.panavision.com , 60 www.airnewzealand.com, 62 www.thewiggles.com, 61 www.burgerking.co.uk , 63 and

www.oxforduniversity.com . 64 The names of famous people registered as domain names by cybersquatters are endless and include: Bill Gates; James Packer; Eddie McGuire; John Howard; Natalie Imbruglia; and Jesus. 65 In the US one cybersquatter registered 10,000 domain names based on family surnames. 66 According to his website, these names accounted for 70% of the population in the US and Canada and over 200 million people. 67

As well as family names, cybersquatters have registered numerous geographic names. Of 46 African nations, only three own their countries
59

Chad de Souza, Specific Remedies for Cybersquatting Part 1 (2000) 3(4) Internet Law Bulletin 49, 50. Jennifer Golinveaux, What's in a Domain Name: Is "Cybersquatting" Trademark Dilution? (1999) 33 U.S.F.L. Rev 641, 647. 61 Jenny Sinclair, Squatters on the Run after Wiggles Win, The Age (Melbourne), 9 May 2001, 1. 62 Ibid. 63 Chad de Souza, Specific Remedies for Cybersquatting Part 2 (2000) 3(5) Internet Law Bulletin 65, 65. 64 De Souza, above n 59, 51. 65 Alice Ghent, Who Missed out on the .com Gold Rush?, The Age (Melbourne), 9 May 1999, 4. 66 See Avery Dennison Corp v. Sumpton, 51 U.S.P.Q. 2d (BNA). 67 Ibid; Two attorneys were recently sued by tennis stars Serena and Venus Williams over the registration of the domain names www.serenawilliams.com and www.venuswilliams.com. The attorneys agreed to transfer the domain names and settled out of court. See Brenda Sandburg, Lawyers Hit a Double Fault with Net Racket, The Recorder, 28 Oct 1999, 30.
60

18 dot.com domain names. 68 Of the 55 non-African countries with the most Internet users, only Australia owns the dot.com version of its own name. 69 Cybersquatters also register film titles as domain names as soon as the MPAA (Motion Picture Association of America) registers film titles, which is often months before the movies are scheduled to appear. 70

(b)

Typo-squatting

The other main mode of cybersquatting is known as typo-squatting. This method involves registering a domain name with a non-substantive variation to a well-known and heavily advertised trademark. 71 Examples include www.micros i ft.com (Micros o ft) 72,

www.hotmai.com (hotmai l : omits L) 73, www.d o sney.com (D i sney) 74, www.int le .com (In te l), and ww wc itibank.com (no full stop after www) 75. The typo-squatter relies on the human propensity to strike the

wrong key on a keyboard. To foil typo-squatters many companies now routinely register trademarks and non-substantive variations of the

68

Elder, Rachael Garland and Lucy Davis (2002) 49 Computers and Law, 20. See also Virtual Countries at <http://www.virtualcountries.com> which owns and controls the dot.com sites for, inter alia, South Africa, Ecuador and New Zealand. 69 Elder, above n 69, 21. 70 WIPO Report 2, above n 20, 317. 71 David Yan, Virtual Reality: Can We Ride Trademark Law to Surf Cyberspace? (2000) 10 Fordham Intellectual Property Media and Entertainment Law Journal.. 773, 809. 72 Ghent, above n 66, 1 & 4. 73 Yan, above n 72, 809. 74 B D Fisher, Feature: The Anticybersquatting Consumer Protection Act : Two Cases Addressing Cybersquatting Before and After the Act (2001) 75 Florida Bar Journal. 12, 15. 75 Ghent, above n 66, 4.

19 trademarks as domain names. Encyclopedia Britanica, for example, owns www.brita n ica.com and www.brita nn ica.com .

(c)

Domain hunters

A distinction needs to be made between cybersquatters and domain hunters. A domain hunter registers generic words as domain names. 76 Examples include www.business.com , www.internet.com , and

www.clouds.com . 77 Like cybersquatting, domain hunting can be highly lucrative 78 but, unlike the former activity, it is generally accepted as a legitimate business practice.

2.2 Motives for engaging in cybersquatting

Cybersquatting is a global practice 79 that is engaged in for two primary motives: (a) profit; and (b) damaging third parties.

76 77

Ibid. Ibid. 78 The domain names <http://www.business.com> and <http://www.AsSeenOnTv.com> sold for $13.74 million and $9.16 million respectively. So Whats a Domain Name Worth? Rock Bottom Domains <http://www.rockbottomdomains.com> at 25 September 2002. 79 For an overview of how various nations are dealing with the issue of cybersquatting see Diane Cabell, Foreign Domain Name Disputes 2000 (2000) 17 The Computer & Internet Lawyer 5.

20

(a)

The profit motive

The four main methods of achieving profit via cybersquatting are re-sale, advertisement, product sales and traffic diverting. Re-sale cybersquatters typically register trademarks or company names as domains with the intention of on-selling the domains to the trademark holder or company for a profit. 80 To motivate the buyer, cybersquatters may place

pornographic or other lewd materials on the domain name website. 81 For example, a typosquatter registered the domain name www.dosney.com (Disney) and placed pornographic material on the site. 82 The larger sales figures collected by cybersquatters include $8.90 million for

www.korea.com and $5.96 million for www.altavista.com. 83

The profits that have been reaped from re-sale cybersquatting has led to the warehousing of domain names. This practice involves registering a large number of domain names and offering them to the highest bidder. 84 One cybersquatters partial inventory of domain names included CocaCola, Pepsi, Burger King, KFC, McDonald's, Subway, Taco Bell, Wendy's, BMW, Chrysler, Dodge, General Motors, Honda, Hyundai, Jaguar, Mazda,
80

de Souza, above n 59 , 50. John M Carson, Amy C Christensen and John N Kandara, Claim Jumping on the Newest Frontier, Cybersquatting, and the Judicial Interpretation of Bad Faith (2000) 8 University of California and Los Angeles Entertainment Law Review. 27. 82 Fisher, above n 75, 15. The websites paulmccartney.com and mickjagger.com also display pornographic material. See de Souza, above n 59, 51. 83 Top Domain Name Sellers (last updated 30 June 2001) SUBMERGEDideas.com <http://www.submergedideas.com> at 13 November 2002. 84 Sites that trade domain names include <http://www.famousdomains.com>, <http://www.greatdomains.com>, and <http://www.rockbottomdomains.com>.
81

21 Mercedes, Nissan, Porsche, Rolls-Royce, Saab, Saturn, Toyota and Volvo. 85

In addition to on-selling domain names, cybersquatters derive profits by using the domain name to advertise or sell products. For example, a cybersquatter could register www.reebok.com and then place advertising banners on the site. Each time a prospective Reebok purchaser entered the site and clicked on an advertisement banner, the cybersquatter would receive a fee from the business whose banner was selected (for revenue figures earned by websites see Part 1.3).

The final method of making profit via cybersquatting is traffic diverting. This practice involves a business registering a competitors name as a domain name for the purpose of diverting the competitors customers to their site. For example, in the US case of Bargain Bid v Ubid , 86 Ubid registered www.barginbid.com (leaving out the a in bargain) and hyperlinked the domain name site to its home site www.ubid.com . Ubids aim was to divert Bargain Bid customers that omitted the "a" in www.bargainbid.com directly to " www.ubid.com ."

(b)

The damage motive

85 86

Fisher, above n 75, 13. Bargain Bid v Ubid, CV-99 7598 (LDW), 2000 U.S. Dist. LEXIS 3021 (E.D.N.Y. January 3, 2000).

22 Cybersquatting can be used to harm third parties in various ways. An entity could, for example, register a competitors trademark as a domain name and leave the name dormant. Such action would preclude the targeted competitor from establishing an easily identifiable online

presence. For example, if Nokia registers www.kodak.com , Kodak is forced to promote a less intuitive domain name such as

www.ekodak.com or www.kodakonline.com . Another means is to register an enemies name and place pornographic material or other defamatory content on the domain name website.

2.3 The morality of cybersquatting

Having addressed the modes and motives of cybersquatting it is time to consider the morality of cybersquatting. Dennison 87 is of the view that cybersquatters are chasing a do nothing dollar and that they should get

out and make an honest living by providing goods and services. 88 Cybersquatters are undoubtedly chasing the easy dollar but does this necessarily mean that their activities should be castigated?
87 88

In a sense,

See Part 1.3. Dennison Interview, above n 58.

23 domain names are similar to real property they are both valuable assets whose cost depends on multiple factors. For example, inner city property is more valuable than regional property. Similarly, dot.com domains are more valuable than dot.net domains. 89 Property with a mansion on it will fetch more than a property with a one-bedroom townhouse. Likewise, a second level domain that is concise and easy to remember will add more to the value of a domain name than a longer and more cumbersome second level domain (i.e., www.ubid.com compared to

www.onlinebidding.com). 90 Consider the example over the page:

89

Dot.com domains are estimated to be worth 1.7 times the same domain in dot.net and 2.2 times the same domain in dot.org. See Assessing the Value of a Domain Name, DomainConquest.com <http://www.domainconquest.com/sell/valuation.htm> at 14 November 2002 (hereinafter Conquest Valuation). 90 Jepson, above n 53.

24

Two people read in the newspaper that McDonalds are looking to put a franchise in their suburb. Person 1 after reading the article takes no action. Person 2 reads the article and then proceeds to buy the last remaining vacant lot of land zoned for commercial use in the suburb. Person 2 after acquiring the land onsells it to McDonalds for a profit. 91 Similar parallels can be made to cybersquatting.

Admittedly, when it comes to domain names, one does need to account for the fact a company may have spent enormous sums promoting a trademark or business name. Further, any cybersquatter whose sole intention is to harm another entity is nothing more than a rogue operator. However, at the end of the day every entity has the same opportunity to register domain names. Thus, is it fair to require the quick to relinquish their rights to the dead?

91

In 1994 Joshua Qittner registered www.mcdonalds.com in order to demonstrate how insecure the domain name registration system was. Qittner, prior to registering the domain name, highlighted to McDonalds that its name was free for anyone to register as a domain name. McDonalds responded to Qittner that abbreviated domain names were preferable and that it had already registered www.mcd.com and had no need to register www.mcdonalds.com. It is reported that McDonalds ultimately settled the case for $3,500 worth of computer equipment donated to a New York City school. See Kenneth L Port, Intellectual Property in an Information Economy: Trademark Monopolies in the Blue Nowhere (2002) 28 William Mitchell Law Review. 1091, 1094.

25

Part 3

Evicting cybersquatters in the dot.com and dot.net name spaces

In Australia, the vast proportion of all domain name registrations are in the dot.com and dot.net name spaces rather than the dot.au space. 92 Consequently this paper examines actions available to evict cybersquatters in the dot.com and dot.net name spaces. An Australian entity contesting a cybersquatter in the dot.com and dot.net name spaces has three possible options available:

(a) Commence an action under ICANNs Uniform Domain-Name Dispute-Resolution Policy (UDRP); 93 (b) Commence civil litigation in a domestic court; and/or (c) Private settlement of the dispute.

Parts 4 and 5 of the essay explain and critically evaluate the dispute resolution methods outlined in paragraphs (a) and (b).

Part 4

ICANNs

Uniform

Domain-Name

Dispute-Resolution Policy (UDRP)

92 93

Catania, Cohn, and Turner, above n 41, 57. ICANN, Uniform Domain Name Dispute Resolution Policy (1999) <http://www.icann.org/udrp/udrp-policy-24oct99.htm> at July 10 2002 (hereinafter UDRP).

ICANN

26

4.1 Synopsis of the UDRP

The UDRP is a privatised and mandatory dispute resolution procedure designed to resolve disputes between trademark holders and

cybersquatters in the dot.com, dot.org, and dot.net name spaces. 94 The UDRP, drafted by the Internet Corporation for Assigned Names and Numbers (ICANN) based on recommendations from a report prepared by the World Intellectual Property Organization (WIPO), 95 came into

operation on 24 October 1999. 96

The UDRP procedure is simple to use. To invoke the UDRP, a complainant files a complaint 97 with a dispute resolution service provider (RSP) approved by ICANN. by ICANN: the Asian There are currently four RSPs approved Name Dispute Resolution Centre

Domain

(ADNDRC); the CPR Institute for Dispute Resolution ("CPR"); the National Arbitration Forum ("NAF"); and WIPO. 98 Each RSP follows the
94

The UDRP is not considered to be an appropriate forum for resolving disputes between competing legitimate intellectual property rights (ie a dispute between two companies that own an identical trademark in respect to different goods). Various UDRP decisions suggest that such matters should be referred to domestic courts. See Inforspace.com Inc v Infospace Technology Co Ltd, (D2000-0074); Adaptive Molecular Techs, Inc v Woodward, (D2000-0006). See Catania, Cohn, and Turner, above n 41, 58. 95 WIPO, Final Report of the WIPO Internet Domain Name Procees (30 April 1999) WIPO <http://ecommerce.wipo.int/domains/process/eng/processhome.html> at August 15 Nov (hereinafter WIPO Report 1). 96 See <http://www.icann.org/udrp/udrp-policy-24oct99.htm> 97 Forms to file a complaint under the UDRP are available electronically from all RSPs. See Edward C Anderson and Timothy S Cole, The UDRP A Model for Dispute Resolution in E-commerce (2002) 6 Journal of Small & Emerging Business Law. 235 at 249. 98 ICANN, Approved Providers for Uniform Domain Name Dispute Resolution Policy (1 March 2002) ICANN <http://www.icann.org/udrp/approved-providers.htm> at 10 September 2002. Note, eResolution

27 Rules for the Uniform Domain-Name Dispute-Resolution Policy 99 as well as their own supplemental rules. 100

A complainant is able to choose which RSP to refer the dispute 101 and may also choose whether to have the matter heard by a single-member or threemember panel. 102 Where the claimant chooses a single-member panel the respondent has the power to override this selection and have the case heard by a three-member panel. 103 The panelists are usually lawyers, judges or academics with extensive intellectual property experience. 104 Complainants pay the RSPs fees unless the respondent chooses a threemember panel in which event fees are paid equally between the parties. 105 The typical fees charged by RSPs are quite modest. For example, if one domain name is in dispute, the WIPO fee for a single arbitrator is $2,750 and for a three-person panel $5,500; the NAF fees are $1,740 and $4,580

was a former RSP that has subsequently gone out of business. 99 ICANN, Rules for Uniform Domain Name Dispute Resolution Policy (24 October 1999) ICANN <http://www.icann.org/udrp/udrp-rules-24oct99.htm> at July 31 2002 (hereinafter The Rules). 100 ADNDRC, ADNDRC Supplemental Rules to ICANNs UDRP and Rules for the UDRP (28 February 2002) ANDRC <http://www.adndrc.org/adndrc/hk_supplemental_rules.html> at 1 September 2002; CPR Institute for Dispute Resolution, CPRs Supplemental Rules and Fee Schedule, CPR Institute for Dispute Resolution <http://www.cpradr.org> at 1 Setpember 2002; NAF, Uniform Domain Name Dispute Resolution Supplemental Rules (1 February 2002) NAF <http://www.arbforum.com/domains/UDRP/rules.asp> at 1 September 2002; WIPO, Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (1 December 1999) WIPO <http://arbiter.wipo.int/domains/rules/supplemental.html> at 1 September 2002. 101 UDRP, above n 94, 4(d). 102 The Rules, above n 100, 3(b)(iv). 103 Ibid 5(b)(iv). 104 de Souza, above n 59, 52. 105 The Rules, above n 100, 5(c), 6(b)-(c), and 19.

28 respectively. 106 The average cost for a US lawyer to prepare or defend a case under the UDRP system is between AUD$9,000 and AUD$18,000. 107

Following a compliance review the RSP forwards the complaint to the domain name holder. 108 The domain name holder must submit a response to the RSP within 20 days of the commencement of a proceeding. 109 In the event no response is submitted, the RSP panel decides the case solely on the evidence furnished by the complainant. 110

Panels are required to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable. 111 In-person hearings are conducted only in exceptional circumstance and at the discretion of the provider. 112 Thus panels when deciding disputes under the UDRP are limited to considering written submissions 113 made by the parties. 114 Generally, all RSPs require a complaint to be less than 5,000 words or a maximum of ten pages. 115 Panel decisions must be published

106

WIPO, Schedule of fees under the ICANN Policy (15 August 2000) WIPO <http://arbiter.wipo.int/domains/fees/index.html> at 2 September 2002; NAF, Schedule of Fees (1 Feb 2002) NAF <http://www.arb-forum.com/domains/domain-fees.asp> at 2 Septmeber 2002. 107 Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICAANs UDRP (June 2002) Convergence Center <http://dcc.syr.edu/markle/markle-report-final.pdf> at 10 September 2002, 18 (hereinafter Success by default). 108 The Rules, above n 100, 4(a). 109 Ibid 5(a). 110 Ibid 5(e). 111 Ibid 15(a). 112 Ibid 15(a). 113 Ibid 15(a). 114 Anderson and Cole, above n 98, 249. 115 See above n 101.

29 within 17 days of the appointment of the panel on a publicly accessible website. 116

A complainant to win a case must prove three elements:

Element 1: The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights 117

It is clear complainants can satisfy the trade or service mark component of this element by referring to a registered trade or service mark in one or more jurisdictions. 118 The trade or service mark component may however be satisfied by different means. In countries where the application of a trademark right is sufficient for the exercise of trademark rights (such as the Benelux countries) evidence of a trademark application satisfies this element. 119 UDRP panels have also accepted common law trade mark rights as a basis for bringing proceedings under the UDRP. 120

The UDRP does not make it a condition for a complainant to be a trademark owner, the complainant merely has to have rights in respect

116 117

The Rules, above n 100, 15(b) and 16(a); and UDRP, above n 94, 4(j). UDRP, above n 94, 4(a). 118 See Telstra Corporation Ltd v Nuclear Marshmallows, (Case No D2000-003). 119 Wolter W Bettink, Domain Name Dispute Resolution under the UDRP (2002) 5 E.I.P.R. 244, 245. 120 Grobat Filing Company, Inc. v. The Exchange Jewelry Supply, (FA0006000094960); and CBS Broadcasting Inc . v. VanityMail Services Inc, (D2000-0379).

30 to the mark. 121 Thus a licensee (such as an agent or distributor) can invoke proceedings under the UDRP and effect the transfer of a domain name to his/her own name, without the permission of the trademark holder. 122 Where the trademark is a device or graphic, the graphical elements of the mark are disregarded. 123

Confusing similarity is a question of fact and is said to exist when a domain name is so similar to a previously existing trademark as to cause interested persons to assume the website designed by the domain name is somehow connected with the products supplied under the trademark. 124 Examples that satisfy the confusing similarity

component of this element include:-

A domain that incorporates a mark in its entirety (e.g. mark is autolamps and domain is www. e autolamps .com). 125

121 122

UDRP, above n 94, 4(a)(i). Weber-Stephen Products Co. v. Armitage Hardware, (D2000-0187); Draw-Tite, Inc. v. Plattsburgh Spring Inc., (D2000-0017). Sally Shrimpton, a partner at Melbourne IP law firm Griffith Hack, is aware of instances where clauses have been included in trademark licencing agreements that prohibit licencees from registering domain names that incorporate the trademark. Her advice would be to insert in the licensing contract a clause that specifies a non exhaustive list of domain names that the licencee is prohibited from registering. For example, if the trademark was Panda, the non exhaustive list would include www.panda.com, www.epanda.com, www.onlinepanda.com, www.panda.com.au etc. Email from Sally Shrimpton to Chris ODonnell, 19 Nov 2002. 123 General Machine Products Company, Inc v Prime Domains, (FA 0001000092531); Football Club des Girondins de Bordeaux v Annie Arr, (No D2000-0149). See Catania, Cohn, and Turner, above n 41, 63. 124 Royal Crown Company, Inc v New York Broadcast Services, Inc, (D2000-0315). 125 Eauto v Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, (D2000-0047).

31 Adding an s to the end of the domain name (e.g. mark is national geographic and domain is www.nationalgeographic s .com). 126

A difference of one letter (phonetically identical) (e.g. mark is Neuberger Berman and domain is www.ne w bergerberman.com). 127

Element 2: The domain name holder (hereinafter Respondent) has no legitimate interests in respect of the domain name 128

The UDRP imposes the onus on the complainant to establish that the respondent has no legitimate interest in the disputed domain name. If the complainant successfully discharges this burden, the onus shifts to the respondent to establish it possesses a legitimate interest in the domain name. 129 The following are circumstances in which the

respondent has been held to lack a legitimate interest in the domain name: Collecting domain names as a hobby is not considered to be a legitimate interest. 130

126 127

National Geographic Society v Stonybook Investments, (FA 0096263). Neuberger Berman Inc v Alfred Jacobsen, (D2000-0323); Expedia, Inc v European Travel Network (D2000-0137). 128 UDRP, above n 94, 4(a)(ii). See also Catania, Cohn and Turner, above n 41, 76. 129 Education Testing Services v Netkorea Co, (D2000-0087). Document Technologies, Inc v International Electronic Communications Inc, (D2000-0270). 130 Boardwalk Bank v Thorogood, (D2000-0213).

32 Diverting business from a competitor is not a legitimate interest. 131 The fact an individual changes their name to match a famous trademark does not create a legitimate interest (i.e. changing your name to Mr Oxford University). 132

Element 3 The domain name has been registered and is being used in bad faith. 133

The UDRP provides a non-exhaustive list of circumstances that evidence bad faith registration and use of a domain name. 134 Two examples include:

The domain name holder has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the complainant or to a competitor of the complainant for valuable consideration in excess of out of pocket costs. 135

The domain name have been registered primarily for the purpose of disrupting the business of a competitor. 136

131 132

Travel Services Inc v Tour Coop of Puerto Rico, (FA0001000092524). The Chancellor, Masters and Scholars of the University of Oxford v Dr Seagle, (D2000-0308). 133 UDRP, above n 94, 4(a). 134 Ibid 4 (b). 135 Ibid 4(b)(i). 136 Ibid 4(b)(iii).

33 The requirement of use in bad faith was interpreted widely in Telstra v Nuclear Mushroom 137 to include passive holding of a domain name. Passive holding is where a domain name is registered but remains inactive (ie not hosted on the Internet) and is incontrovertibly non-use of a domain name. Despite this fact, subsequent UDRP panels have endorsed and applied the principle that passive holding can constitute use of a domain name. 138

The respondent can defeat a claimants case by demonstrating a legitimate interest in a domain name by presenting evidence that:

Prior to notification of the dispute, the respondent used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired.

137 138

(D2000-0003). Do the Hustle, LLC v. Donald Wilson , (D2000-0627); ABF Freight Sys., Inc. v. Am. Legal , (D20000185); CBS Broad. Inc. v. Edward Enters., (D2000-0242); Guerlain S.A. v. Peikang, (D2000-0055); Marconi Data Sys., Inc. v. IRG Coins and Ink Source, Inc. , (D2000-0090); Compaq Computer Corp. v. Boris Beric, (D2000-0042). For other UDRP cases that endorse this view see John G White, INTELLECTUAL PROPERTY C. TADEMARK 2. DOMAIN NAME b) ARBITRATION: ICANN's Uniform Domain Name Dispute Resolution Policy in Action (2001) 16 Berkeley Technology Law Journal. 229, 242.

34 Legitimate non-commercial or fair use of the domain name, without intent to divert consumers or tarnish the trade or service mark for commercial gain, is being made.
139

Remedies under the UDRP are limited to the cancellation or transfer of a domain name. 140 Recent transfer decisions include www.niketown.com, www.dior.org and www.westfieldshopping.com. 141 As at 27 February 2002, 4,819 proceedings had been commenced under the policy involving 8,262 domain names. 142

4.2 Benefits of the UDRP

The three key benefits of the UDRP are the abrogation of court jurisdictional hurdles, expediency and cost.

(a)

Abrogation

of

jurisdictional

problems

inherent

in

domestic court proceedings

The UDRP eliminates jurisdictional problems involved in contesting domain name disputes in domestic courts (see Part 5.1). ICANN has

139 140

UDRP, above n 94, 4(c)(i)-(iii). Ibid (4)(i). 141 Elder, above n 69, 19. 142 P Waters and J Callaghan, Asia Pacific Gets its Own UDRP Service Provider (27 February 2002) World eBussines Law Report <http://www.worldebuinesslawreport.com> at 13 July 2002.

35 ultimate control over the gTLD name space and thus is able to dictate the terms under which licensed registrars will register gTLD domain names. ICANN used this power to:

(i) Require all licensed registrars of gTLD domain names to enforce UDRP decisions;
143

and

(ii) Require all licensed registrars to incorporate the UDRP by reference into registration agreements for gTLD domain names.

Thus, registrars are contractually bound to enforce UDRP decisions and registrants of gTLD domain names contractually agree to submit to UDRP proceedings. This effectively abrogates the jurisdictional problems

outlined in Part 5.1.

(b)

Expediency and cost

RSPs take approximately 50 days to decide UDRP cases 144 and fees to submit a complaint to an RSP start from $1,740. The cost for legal

143

ICANN, Registrar Accreditation Agreement (17 May 2001) ICANN <http://www.icann.org/registrars/ra-agreement-17may01.htm> at 5 September 2002. See Anderson and Cole, above n 98, 250. 144 Port, above n 92, 1101; Elder, above n 69, 19.

36 counsel in Australia to prepare a complaint under the UDRP is

approximately $7,000 for unresisted cases 145 and $10,000 for resisted 146 cases. 147 By contrast, suing a cybersquatter via Australian domestic courts will cost approximately $30,000 for an unresisted case and $50,000 for resisted cases. 148 If any opposition is put up against the plaintiff, however risible and fanciful, the court proceedings will take at least a year. 149

4.3 Shortcomings of the UDRP

Whilst providing the aforementioned benefits the UDRP is not without faults. Faults are however to be expected during the infant stages of any dispute resolution process. Thus the UDRP should not be judged to harshly for the below listed shortcomings.

(a)

Failure to protect non-trademark owners

The UDRP system only deals with disputes between trademark holders and cybersquatters. 150 Consequently a significant range of cybersquatting activity falls outside the UDRP. 151 Such activities include, inter alia , the
145 146

An unresisted case is where the domain holder provides no opposition to the claimants claim. A resisted case is where the domain holder provides opposition to the claimants claim. 147 Email from Peter Knight (Solicitor for Clayton Utz) to Chris ODonnell, 28 November 2002. 148 Ibid. 149 Ibid. Peter Knight of Clayton Utz said one domain dispute his firm was involved took a year and $200,000 to resolve even though the domain name holder had no genuine defence. 150 UDRP, above n 94, 4(a)(i). 151 Marcelo Halpern and Ajay K Mehrotra, From International Treaties to Internet Norms: The Evolution of International Trademark Disputes in the Internet Age (2000) 21 University of Pennsylvania Journal of

37 abusive registration of personal names, family names, geographical names, the names and acronyms of international government organisations (such as the United Nations) and international non-proprietary names for pharmaceutical substances (INNs). 152

It is submitted that to ensure the UDRP is as fair as possible it must be accessible to any party who wishes to have a desired domain name, irrespective of whether they own a registered trademark. 153

(b)

Absence of precedence 154

There is no doctrine of precedent under the UDRP system. Panels deciding cases under the UDRP are not bound by prior decisions but may consider them in resolving disputes. UDRP panels have varied in their

interpretation of this rule, with some panels treating prior decisions as binding precedent, and others electing to completely ignore them. 155

International Economic Law. 523 at 557. 152 See Part 2.1. 153 Luke A Walker, Berkeley Technology Law Journal Annual Review of Law and Technology I. Intellectual Property; C. Trademark Icanns Uniform Domain Name Dispute Resolution Policy (2000) 15 Berkeley Technology Law Journal. 289, 309. 154 M J Matorin and M Boudett, Domain name disputes: cases illustrate limitations of ICANN policy (2001) 45 B.B.J. 4, 16; White, above n 139, 239. 155 Patrick D Kelley, Intellectual Property: Emerging Patterns in Arbitration Under the Uniform DomainName Dispute-Resolution Policy (2002) 17 Berkeley Technolog Law Journal. 181, 195; David E Sorkin, Judicial Review of ICANN Domain Name Dispute Decisions (2001) 18 Santa Clara Computer and High Tech Law Journal. 637, 52; and Diane Cabell, Overview of Domain Name Policy Development (20 April 2000) Berkman Centre for Internet & Society <http://eon.law.harvard.edu/udrp/overview.html> at 19 July 2002.

38 A review of UDRP decisions reveals that panels do not uniformly refer to previous UDRP decisions when deciding cases. A survey of the 138 cases from 7 April - 5 May 2000 indicate that only 28% cited at least one prior UDRP decision. 156 A similar survey of the previous 110 cases put the figure at 24%. 157 The citation by panels of previous UDRP decisions has, however, increased over time. A survey of all UDRP cases up to 30 June 2001 reveals that UDRP decisions cite prior UDRP decisions more than half of the time. 158

Given the aforementioned statistics it is not surprising panels have on occasions made Examples of vastly different decisions in cases with similar facts. 159 inconsistency under the UDRP are conflicting

determinations as to what constitutes bad faith use of a domain name. Some cases have held that offering domain names for sale on a broker website constitutes bad faith use 160 whilst other cases have reached the opposite conclusion. 161 Other issues in dispute under the UDRP include:

Whether registration of a domain name without performing a trademark search can constitute bad faith registration; 162

156 157

Catania, Cohn, and Turner, above n 41, 90. Ibid. 158 Success by default, above n 108, 19. 159 Kelley, above n 156, 195. 160 Ellenbogen v Pearson, (D2000-0001); America Online, Inc v QTR Corporation, (FA0092016). 161 Educational Testing Service v TOEFL, (D2000-0044). 162 Allocation Network GmbH v. Gregory, (D2000-0016) cf FormLinc Info. V. Credit Suisse Group , (FA0102000096750).

39 Whether the UDRP requires both registration and use of a domain name in bad faith; 163 Whether the use of a company name as a domain name to run a criticism site constitutes legitimate fair use; 164 Which party bears the burden of proof in relation to the issue of legitimate interests in a domain name; 165 The consequence of a respondents default on the burden of proof in relation to substantive issues; 166 Whether a domain name that incorporates a trademark and adds the word sucks (e.g. www.pepsisucks.com ) is confusingly similar to the trademark. 167

Precedence is arguably integral to creating a dispute resolution policy that is consistent and free of arbitrariness. Doctor Staniforth Ricketson, Barrister and WIPO panelist, points out that the UDRP is not readily

163

World Wrestling Fed'n Entm't, Inc. v. Bosman , (D99-0001) cf Phillips Int'l, Inc. v. Tella, (FA 0008000095461). 164 Milton Mueller, Rough Justice, An Analysis of ICANNs Uniform Dispute Resolution Policy (November 2000) Convergence Center <http://dcc.syr.edu/miscarticles/roughjustice.pdf> at 10 July 2002 (hereinafter Rough Justice). Mueller in Rough Justice documents eight UDRP cases that deal with this issue. Out of the eight cases, four panels dismissed the complaint and four panels ordered the transfer of the disputed domain name. See Daniel J. Quirk, Inc v Maccini, (FA 0006000094964) cf Quirk Nissan, Inc v Maccini, (FA 0006000094959). For a discussion on the UDRP and its impact on freedom of speech see G K Hadfield, Privatizing Commercial Law: Lessons from ICANN (2000) 6 J. Small & Emerging Bus. L. 257. 165 Do The Hustle, LLC v Tropic Web, (D2000-0624). 166 Cyro Indus v Contemporary Design, (D2000-0336); Softquad Software Inc. v. Eleven-Eleven Ltd, (AF0143) cf. to Loblaws, Inc v Charlo Barbosa, (AF-0163), Slep-Tone Entm't Corp v. Sound Choice Disk Jockeys, Inc., (FA93636); Wine.com, Inc. v. Zvieli Fisher, (D2000-0614). 167 Asda Group Limited v. Mr Paul Kilgour, (D2002-0857) cf Diageo PLC v Zuccarini, (Case No. D20000996); Accor v. Philippe Hartman, (D2001-0007); and Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,INC., (D2001-1121).

40 amendable to the incorporation of a doctrine of precedent. 168 This is so because the UDRP, unlike judicial systems that adhere to stare decisis , has no hierarchy of courts or appellate body. Thus, a decision made by a WIPO three-member panel is not considered more or less forceful than a decision made by a single NAF panelist. A possible solution to this situation is the implementation of an appellate body, which would create a hierarchy of panels under the UDRP. The UDRP could prescribe that all appellate decisions are binding on panels at first instance, thereby creating a doctrine of precedent.

(c)

No appellate body

As already stated, the UDRP does not provide an appellate process. 169 Presently, the only means of contesting a UDRP decision is to submit the case to a domestic court. 170 The implementation of an appellate body for the UDRP would be beneficial for two reasons. The first benefit an appellate body would provide is a more accessible, affordable and equitable means to contest UDRP decisions. Currently the losing party of a UDRP decision has only ten business days to lodge an appeal in a court of mutual jurisdiction 171 before the panels decision is
168

Interview with Dr Staniforth Ricketson (Conducted at Owen Dixon Chambers West [Room 223, Lonsdale St, Melb, VIC, 3000] 21 Nov 2002) (hereinafter Ricketson Interview). 169 White, above n 139, 238. 170 UDRP, above n 94, 4(k). 171 Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b)

41 implemented.
172

This short duration coupled with jurisdictional obstacles

(outlined in Part 5.1) and uncertainty as to how courts will handle UDRP cases 173 places the appealing party in an unenviable position. Implementing an appellate body would eliminate the aforementioned problems and thereby provide a more viable means to appeal UDRP decisions. To date, few UDRP decisions have been challenged in court. 174 The second advantage an appellate body would deliver is an improvement in the consistency and quality of UDRP decisions. An appellate body would improve the consistency of UDRP decisions by enabling the implementation of a doctrine of precedent (see Part 4.3). An appellate body would improve the quality of UDRP decisions by providing a mechanism to overturn patently erroneous decisions. 175 Examples of farcical decisions under the UDRP include, inter alia :

A single panelist ruling that the Respondent, by refusing to accept the Complainant's offer to purchase the disputed domain name for $100, was implicitly requesting more money and was therefore acting in bad faith. 176

the domain-name holder's address as shown for the registration of the domain name in the Registrar's Whois database at the time the complaint is submitted to the Provider. See The Rules, above n 100, 1. 172 Ibid. 173 Sorkin, above n 156, 44. 174 See Patrick L Jones, UDRP Court Challenge Database (last modified 15 Aug 2002) The Uniform Domain Name Dispute Resolution Poicy Legal Information Site <http://www.udrplaw.net/UDRPappeals.htm> at 3 September 2002. The site provides a database of 59 UDRP decisions that are being challenged or were challenged in US Courts. 175 Elizabeth G Thornburg, Fast, Cheap and Out of Control: Lessons from the ICANN Dispute Resolution Process (2002) 6 Journal of Small and Emerging Business Law. 191, 224. 176 Sd-Chemie AG v. tonsil.com, (D2000-0376). See Port, above n 92, 1114; Rough Justice, above 165, 23.

42 Implausible findings of confusing similarity between domain names and trademarks. Examples include:

(i)

www.monacogambling.com

was

considered

confusingly

similar to the trademark Casino de Monte-Carlo. 177 The Panel in this case said:

While it is not identical to the Domain Name, this registered trademark (Casino of Monte Carlo) is similar if only by the ideas suggested by it, to the Domain Name "monacogambling.com", registered by the Respondent. The Panel is of the opinion that the registered words "Monaco" and "Gambling" are essentially synonyms to the words "Monte-Carlo" and "Casino", which happen to be the principal elements in the Complainants Trademark.

(ii)

cangov.com

was

considered

confusingly

similar

to

the

trademark Government of Canada. 178 The Panel in this case provided no reasoning whatsoever for reaching this conclusion.

Without an appellate body it is unclear how current variations in the application of the UDRP can be reduced or eliminated. The type of

177 178

(D2000-1332). (D2001-0470).

43 appellate structure adopted by the UDRP 179 should be aimed at maintaining the key advantages of the UDRP simplicity, speed and cost. 180

(d)

Lack of finality

UDRP decisions lack finality as they can be submitted for appeal to a domestic court. 181 The right of appeal to a domestic court removes any certainty attaching to a UDRP decision and also inhibits the fast track resolution of disputes. 182 This particular shortcoming is, however, outside the control of the UDRP given that it is a privatised dispute resolution system. No private entity can unilaterally abrogate a persons sovereign right to settle disputes in his or her domestic court. 183

(e)

Forum shopping and complainant bias

179

For a discussion and analysis on the possible types of appellate structures the UDRP could adopt see Kelley, above n 156, 195. 180 White, above n 139, 194. 181 UDRP, above n 94, 4(k). 182 Matthew E Searing, Whats in a Domain Name? A Critical Analysis of the National and International Impact on Domain Name Cybersquatting (2000) 40 Washburn Law Journal. 110, 135. 183 Alan Redfern and Martin Hunter, Law and Practice of International Commercial Arbitration (3rd ed, 1999) 390.

44 The UDRP provides complainants with the right to choose which RSP will adjudicate their domain name dispute. 184 Complainant choice of RSPs has pros and cons. On the up side, complainant choice promotes price competition amongst RSPs. On the downside, complaint choice may encourage competition amongst RSPs to be perceived as the most complainant friendly in order to win increased market share. 185

Competition in the latter category is evidenced by the marketing techniques of particular RSPs. For example, 10 out of 11 press releases distributed by NAF from May August 2001 promoted a complainant win. 186 Headlines of these releases included, inter alia , Kevin Spacey prevails over Usual Suspect in Domain Name Case and May the Registrant of magiceightball.com Keep the Domain Not Likely. 187

Michael Geist, a professor of the University of Ottawa, has undertaken extensive research into the issue of RSP forum shopping and bias. 188 Statistical data collected by Geist reveals that forum shopping is an established practice under the UDRP. As of February 18 2002, 189

184 185

The Rules, above n 100, 3b(iv). Michael Froomkin and David Post, Froomkin and Post Send Letter to ICANN Board (26 January 2000) ICANNwatch <http://www.icannwatch.org/archive/post_froomkin_udrp_letter.htm> at 28 July 2002. 186 Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP (August 2001) University of Ottawa <http://aix1.uottawa.ca/%7Egeist/geistudrp.pdf> at 10 August 2002. 187 Ibid. 188 Geist, above n 187, 4 -5. 189 All statistics in respect to UDRP cases are current to 22 February 2002.

45 approximately 94% of all UDRP cases were bought before two of the four RSPs, namely WIPO and NAF (59.20% and 34.46% respectively). 190

If forum shopping is common practice under the UDRP why does it occur? Geist submits statistical data indicates that forum shopping under the UDRP is predominantly a function of case outcome. 191 The two providers that adjudicate the most cases have a complainant winning percentages of 83%(NAF) and 80%(WIPO). 192 Comparatively, the remaining two

providers that adjudicate the least cases have a complainant winning percentages of 68%(CPR) and 61% (eResolution) 193.

Complainant winning percentages drop considerably when a three-member panel adjudicates a case. Across all RSPs, complainants win 83% of the time when a single panelist determines the outcome, compared with 58% of the time when three-member panels hear the case. 194 The disparity in complainant winning percentages between single and three member panels may be explained by fact the two panels have different procedures for allocating panelists:

190

UDRP Decisions Database (last updated 22 February 2002) UDRPinfo.com <http://www.udrpinfo.com/dcsn.php> at 27 July 2002 (hereinafter UDRP stats). 191 Geist, above n 187, 6. 192 UDRP stats, above n 191. 193 eResolution was a former RSP that has subsequently gone out of business. The current four RSPs are listed in Part 4.1. 194 UDRP stats, above n 191.

46 Selection of panelists for single member panels The RSP selects the panelist when the case is to be adjudicated by a single member panel. 195 The UDRP provides no guidance on how the RSP is to select a panelist leaving it to the discretion of the RSP to establish its own selection policy. 196 All RSPs maintain panelist allocation occurs on a random basis. 197 NAFs assertion of random allocation is suspect considering that 44% of all single member panel cases adjudicated by NAF (512 of 1379) were decided by only 4 panelists. 198 The complainant winning percentage in those cases was 97%. 199 NAF three member panels during the same period had a 49% complainant winning percentage. 200

Selection of panelists for three member panels Panelists for three member panels are selected by the RSP in consultation with both the claimant and respondent. 201 The RSP selects one panelist from the list of panelists provided by each of the complainant and the respondent. 202 The third panelist is selected by the RSP from a list of five candidates submitted by the RSP to the parties. 203 The general approach is for the RSP to allow

195 196

The Rules, above n 100, 6(b). Ibid. 197 Geist, above n 187, 22. 198 UDRP stats, above n 191. 199 Ibid. 200 Ibid. 201 The Rules, above n 100, 6(e). 202 Ibid. 203 Ibid.

47 each party to strike out up to two names from the list of five. 204 In addition to both parties contributing to the selection of panelists, the number of available panelists increases when a three-member panel is used. In a single panel case the RSP chooses a panelist from its roster of panelists. Comparatively, the complainant and respondent can choose any panelist from any ICANN-accredited RSPs roster. Thus a respondent defending a complaint lodged by a complainant with WIPO could select a NAF panelist. This rule doubles the number of panelists the disputing parties may select. 205

Three is better than one Disregarding complainant winning statistics, it is submitted threemember panels are preferable to single member panels for two reasons. First, three panelists precludes the possibility of a capricious or incompetent single panelist misinterpreting the UDRP and subsequently rendering a wrong decision. 206 Secondly, three member panels would improve the quality of decisions under the UDRP by forcing panelists to justify their decisions to other panelists. 207

204 205

Geist, above n 187, 16. Ibid 22. 206 Ibid 21. 207 Ibid.

48 The fact that complainants win on average 80% of the time under the UDRP does not conclusively prove complainant bias under the UDRP. 208 The substantive merits of each case would need to be analysed to resolve this issue. The fact WIPO and NAF handle a large number of uncontested cases is also a factor to consider. 209 For example, the panelist claimed to be most biased by Geist, Michael Carmody, heard 140 cases of which 114 were default. 210 If the defaulting cases are left out, the percentage of procomplainant decisions drops from 97.5% to 77.5%. 211 Whilst Geists study does not conclusively prove complainant bias, the statistics from his report warrant further investigation into this issue.

(f)

Limited and inflexible remedies

Remedies under the UDRP are limited to the cancellation or transfer of a disputed domain name. Thus claimants under the UDRP are unable to claim an account of profits or compensation (e.g. compensation for damage caused to the reputation of a trademark or loss of Internet traffic). Further, the UDRP cannot make conditional orders to arrive at more just outcomes. For example, an order that registration of a domain name

208 209

UDRP stats, above n 191. As of Feb 18 2002 over half of the respondents in all UDRP cases heard by WIPO and NAF had defaulted. See Ibid. 210 Bettink, above n 120, 250. 211 Ibid.

49 remains undisturbed unless the registrant sells goods in specified

countries. 212

(g)

Possible invalidity of the UDRP

The contract between the registrar and registrant for the licensing of a domain name is a private contract subject to national laws. The UDRP is incorporated into the domain name contract and thus is also subject to national laws. National laws in certain jurisdictions may have the consequence of voiding the UDRP. 213 To provide an example, consider French consumer protection laws. 214 It is unclear whether a contract between a registrar and registrant falls within these laws but assume for discussion purposes it does. Law No. 94-655 of August 4, 1994 mandates that the designation, offer, presentation, and warranty of a good or service in France has to be in French. 215 French domain name registrars offer their services in France to domestic consumers. The UDRP is incorporated into that offer and thus pursuant to Law No. 94-665 should also be in the French language. 216 The French register, Top Level Domain Names (TLDnames), 217 currently does not offer a French translation of the
212

Wal-Mart Stores Inc v. Walmarket Canada, (D2000-0150). See S Jones, A Childs First Steps: The First Six Months of Operation The ICANN Dispute Resolution Procedure for Bad Faith Registration of Domain Names (2001) E.I.P.R. 66 at 67. 213 Holger P Hestermeyer, The Invalidity of ICANNs UDRP Under National Law (2002) 3 Minnesota. Intellectual Property Review. 1 . 214 Ibid 42. 215 Ibid. 216 Ibid. 217 <http://www.tldnames.com/fr/index.htm>.

50 UDRP. Assume a French citizen registers a dot.com domain name with TLDnames. Subsequently a complainant invokes UDRP proceedings and the RSP decides to transfer the domain name to the complainant. The French citizen, in accordance with the UDRP, appeals the panels decision to a French court. What is the likelihood of the court voiding the part of the registration contract incorporating the UDRP based on non-compliance with Law No. 94-655, thereby rendering the panels decision ineffective? Better than average one would think based on Frances legendary contempt for the use of other languages in France.

Part 5

Difficulties involved in using Australian courts to evict cybersquatters

5.1 Jurisdictional obstacles

Australians challenging cybersquatters in domestic courts face difficult and multiple jurisdictional obstacles. To commence legal proceedings, a cybersquatter must be present on Australian soil in order to be served with a writ. 218 Serving a writ may prove difficult as it is not always easy to ascertain the identity and location of a cybersquatter. All registrants are required to provide accurate identity and contact details when registering

218

Supreme Court (General Civil Procedure) Rules 1996 (Vic) order 6.02.

51 domain names. 219 This information is publicly accessible via a registrars Whois subsite, which theoretically should make identifying and locating a cybersquatter an easy task. In practice, however, cybersquatters often provide inaccurate information (such as an alias or an unofficial business name) or fail to maintain current information, making it very difficult to identify and locate a defendant. 220 If a cybersquatter cannot be located, a plaintiff will need to apply for substituted service, 221 a procedure that increases both the cost and duration of a court proceeding.

Evein if the identity and location of the cybersquatter can be ascertained it is quite possible s/he may reside outside of Australia. While there are methods for an Australian court process to be served on persons outside Australia, 222 such action further increases the cost and duration of proceedings. For example, delays of three to six months can be expected when using diplomatic channels to serve a writ on a cybersquatter who is a German resident. 223

Assuming a writ is successfully served on the cybersquatter a plaintiff will still need to persuade a court that it has jurisdiction to adjudicate the dispute. Where the disputed domain name is registered with a foreign
219

UDRP, above n 94, 2; Melbourne IT, Domain Name Registration Agreement (2001) Melbourne IT <www.melbourneit.com.au/policies/gtldtermcond.php3> at 11 September 2002, term 21. 220 Catania, Cohn, & Turner, above n 41, 46. 221 Supreme Court (General Civil Procedure) Rules 1996 (Vic) order 6.10. 222 A list of these procedures are available at the Attorney-Generals Department of International Judicial Assistance Page at <http://law.gov.au/aghome/legalpol/cld/int_judicial_asst/service_abroad/index.html> (hereinafer the Attorney Generals page). 223 Ibid.

52 registrar and is owned by a defendant with no connection to Australia, a court is unlikely to be easily persuaded it has jurisdiction to adjudicate the dispute. 224

Assuming a plaintiff successfully persuades a domestic court it has jurisdiction to hear the dispute, issues arise as to the enforceability of judgment. The enforceability of Australian judgments overseas depends on the arrangements in place with the country in question. 225 Consider this example, the Victorian Supreme Court orders a cybersquatter who resides in and is a citizen of Finland to transfer a domain name to the plaintiff and pay court costs. Will a Finland court enforce the judgment against the cybersquatter? As there is no reciprocal relationship between Australian and Finland in relation to the enforcement of judgments in civil matters the answer is probably no. 226 The same dilemma is faced by plaintiffs litigating against cybersquatters who are residents of, inter alia , the US, Austria, Chile, China, Denmark, Finland, Mexico and Sweden. 227

Additionally, a question arises as to whether a domestic court will have jurisdiction over the registering body for the domain name and thereby be able to enforce an order for transfer or deregistration. It is submitted registrars will generally be reluctant to facilitate a transfer or

224 225

Catania, Cohn, and Turner, above n 41, 47. Attornery Generals page, above n 223. 226 Ibid. 227 Ibid.

53 deregistration on the basis of an order from a court located outside its own jurisdictional territory. 228

5.2 The inadequacy of existing domestic legal actions to evict cybersquatters.

Imagine a plaintiff has successfully served an illusive cybersquatter with a writ and has also convinced a court it has jurisdiction to adjudicate the dispute. What substantive legal actions can be mounted to evict the cybersquatter? Based on Australian case law 229 and cases from other common law jurisdictions, 230 the potential causes of action against cybersquatters under Australian law include trademark infringement, passing off and Fair Trading and Trade Practices. It is submitted that

these actions are inadequate on the basis they are inapplicable to or easily circumvented by cybersquatters. Analysing each action in turn:

228 229

Catania, Cohn, and Turner, above n 41, 47. Australian cases: Australian Competition and Consumer v Internic Technology [1999] 818 FCA; Melbourne Information Technologies Australia Pty Ltd v. Marilyn Strauss (No V331/1999) (unreported); Capital Webworks Pty Ltd v Adultshop.com Ltd [2000] FCA 492. 230 NZ cases: Oggi Advertising Ltd v McKenzie [1999] 1 NZLR 631; New Zealand Post Ltd v Leng (1988) 45 IPR 263; Qantas Airways Ltd v The Domain Name Co Ltd P26-SD99 (unreported, 9 December 1999). UK cases: Avnet Inc v Isoact Ltd [1998] FSR 16; British Telecommunications Plc v One in a Million (1997) 42 IPR 289 (One in a Million); One in a Million v Marks & Spencer Plc (1998) 42 IPR 309 (One in a Million 2); Pitman Training Limited v Nominet UK [1997] FSR 797. US cases: Bargain Bid L.L.C. v. Ubid Inc., CV-99 7598 (LDW), 2000 U.S. Dist. LEXIS 3021 (E.D.N.Y. January 3, 2000); Panavision International LP v Toeppen 141 F 3d 1316 (9th Cir 1998); Porsche Cars North America, Inc. et al. v. Spencer, 2000 U.S. Dist. LEXIS 7060, 55 U.S.P.Q.2D 1027 (E.D. Cal. 2000). Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc. 202 F.3d 489 (2nd Cir.2000); Virtual Works Inc. v. Volkswagen of America, Inc., et al, 238 F.3d 264 (4th Cir.2001). For more US cases see Steve H Bazerman and Beverley A Andree, A Year of Anti-Cybersquatting (2001) 5 Entertainment Law Review 157.

54

(a)

Trademark infringement

Relief against cybersquatters in Australia may be possible under the Trade Marks Act 1995 (Cth) ( TMA ). The elements of trademark

infringement under the Act include the use as a trademark of a sign that is identical to or substantially identical or deceptively similar to a registered trade mark. 231 To constitute an infringement the sign must be used in relation to goods or services covered by the trademark registration or closely related to the registered goods or services. 232 The TMA includes additional measures for the protection of well-known marks. In such cases, the use of the infringing sign may be for goods or services unrelated to the trademark registration provided the sign would be likely to be taken as indicating a connection between the unrelated goods and services and the registered owner of the trademark. 233

Where a trademark is not well-known a cybersquatter may be able to circumvent the TMA . One way this could be achieved is where a cybersquatter registers a trademark as a domain name and uses the site to sell goods unrelated to the trademark holder. For example:

X is the registered proprietor of the mark Dominator in relation to chainsaws. The mark is not well known. Y, a competitor of X,
231 232

Trade Marks Act 1995 (Cth) s 120 (hereinafter TMA). Ibid. 233 Ibid s 120(3).

55 registers Dominator as a domain name to preclude X from establishing an easily identifiable online presence. In an attempt to circumvent the TMA Y advertises nappies from the site. Will Y successfully evade the TMA ?

The answer to the above question is yet to be settled by an Australian court. However, it is arguable Y has not contravened the TMA on the basis Ys product (nappies) has no connection to the good (chainsaws) covered by Xs registered trademark. In Avnet Inc v Isoact Ltd , 234 a UK case with very similar facts to the above example, the court ruled no trademark infringement had occurred.

Irrespective of whether the mark is or is not well-known a cybersquatter may potentially circumvent the TMA by registering a trademark as a domain name and leaving it dormant. In such a situation the mark is not being used in relation to any goods or services. The TMA ostensibly requires use of a mark in relation to goods or services before a trademark infringement can be established. 235 Consequently, a cybersquatter that simply registers a domain name and leaves it dormant arguably does not contravene the TMA .

234 235

[1998] FSR 16. TMA, above n 232, s 120.

56 In the UK and US, courts have found cybersquatters that have left domain names dormant to have used the mark. In the UK case of One in a Million 236 the court held that registering a domain name with the intention of selling it to the logical owner was use under the Trade Marks Act 1994 (UK). Similarly, the US case of Panavision International LP v Toeppen 237 found that registration of a domain name with the intention of re-sale amounted to commercial use within the meaning of the Trademark Dilution Act 1996 (US). However, the terminology employed in the TMA is quite different from the language used in the UK and US trade mark legislation. The TMA requires an infringer to use the trademark as a trademark. This requirement is significantly different from the in the course of trading (UK) or commercial use (US) criteria. Consequently, heavy reliance should not be placed upon these two cases.

(b)

Passing off

Passing off requires a plaintiff to make out three elements: (a) reputation; (b) misrepresentation; and (c) damage to goodwill. 238 The key common law case dealing with the application of passing off to the issue of cybersquatters is the One in a Million 239 case. As noted in Part 5.2(b) the cybersquatters in this case had left the domain names dormant. At trial the

236 237

(1998) 42 IPR 289. 945 F Supp 1296 (1996). 238 Cadbury Schweppes Pty Ltd v The Pub Squash Co Ltd [1980] 2 NSWLR 865 (Powell J). 239 (1998) 42 IPR 289.

57 defendants argued that the mere registration of domain names did not amount to passing off. Given that passing off ostensibly requires misrepresentation and damage the argument had strong merit.

In a result oriented ruling the court awarded an injunction on the basis that there was only one possible reason why anyone who was not part of the [group] should wish to use such a domain address and that is to pass himself off as part of that group or his products as theirs. 240 On the basis of the potential breach the injunctions were granted. The Court of Appeal 241 upheld the decision and stated: The placing on the register of a distinctive name makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in a name. 242

It is submitted the One in a Million case stretched the rules to bring law and order to the electronic jungle 243 to an extent that is way beyond the scope of passing off. 244 The court in the One in a Million case essentially imputed to the defendants an intention to use the name when no such intention existed. The defendant merely intended to re-sell the domain

240 241

Ibid 306. One in a Million v Marks & Spencer Plc (1998) 42 IPR 309. 242 Ibid 314. 243 Paul Sumpter, When are Domain Names Trade Marks When they are Used?: Unfair Reapers in Cyberspace get the Common Law Treatment (2000) 11 Australian Intellectual Property Journal 103, 104. 244 Sumpter in his article cited directly above refers to two articles that dissect the One in a Million case: C Thorne and S Bennet, One in a Million Case: Domain Names Internet Warehousing: Has Protection of Well-known Names on the Internet Gone Too Far? (1988) EIPR 468; and M Emslie, The One in a Million Case (1998) Entertainment Law Review 283.

58 name and no evidence was provided that they had any plans to use the domain name.

Additionally, contrary to the courts assertion, the defendants could use the domain names without committing passing off. Consider this example:

Assume the domain name www.nike.com.au is not registered. X, a cybersquatter, registers the domain name www.nike.com and on the site makes the following two statements: (a) The domain name www.nike.com.au is for sale; (b) The current registrant of the domain name

www.nike.com.au has no connection or affiliation to the Nike company;

Has X committed the wrong of passing off?

It is arguable X has not committed passing off. By notifying visitors to the site that X has no connection to Nike no misrepresentation can occur. In the absence of misrepresentation passing off cannot be established.

(c)

Fair Trading and Trade Practices

59 In 1999, Melbourne IT successfully relied on section 52 of Trade Practices Act 1974 (Cth) ( TPA ) to defeat a cybersquatter.
245

The

requirements of section 52 of the TPA do however provide loopholes for cybersquatters.

Section 52 requires the defendant to be a corporation. Thus cybersquatters can circumvent section 52 by registering domain names via an

unincorporated entity. An unincorporated entity may be caught by the extended application provisions in section 6 of the TPA (which is highly possible given the nature of the Internet). 246 In any event, an

unincorporated entity if not caught by the TPA will fall within the Fair Trading Act 1999 (Vic) ( FTA ). 247

Assuming a cybersquatter is caught under either the provisions of the TPA or FTA , will they satisfy the misleading or deceptive conduct criteria? Consider the nike.com story in Part 5.3(b). If the same facts occurred how could it be argued X had engaged in misleading or deceptive conduct? The words on the website clearly preclude Xs conduct from have a misleading or deceptive effect.

245

Australian Competition and Consumer v Internic Technology [1999] 818 FCA (14 July 1999). In this case the cybersquatter had registered www.melbourneit.com.au and was conducting the business of selling domain names. 246 B Fitzgerald, L Gamertsfelder and T Gulliksen, Marketing Your Website: Legal Issues Relating to the Allocation of Internet Domain Names (1999) 21(2) University of New South Wales Law Journal 20. 247 The FTA unlike the TPA is not backed by a powerful government authority such as the ACCC and thus potentially is less of weapon than the TPA.

60

5.3 Time and expense of court proceedings

Everyday a cybersquatter maintains control of a domain name a trademark holder or company may be losing potential customers who are not finding the correct site. 248 Given that over 30 million people use the net daily, 249 trademark holders would be imprudent not to act immediately against cybersquatters. It is this potential loss of customers coupled with the duration and costs of court proceedings (see Part 4.2(b)) that provides leverage to a cybersquatter: Either buy my domain name or face a lengthy and expensive court proceeding that will cost you multiple potential customers!. 250 The cybersquatters position is further strengthened by the fact that after paying a small fee to register the domain name there are minimal ongoing costs (i.e., only the renewal of registration). 251 If court proceedings drag on for whatever reason the cybersquatters bargaining position becomes stronger again. Thus, the court itself is being used as vehicle by cybersquatters to sell domain names way above acquisition costs. In short, domestic courts are a time and cost ineffective means of resolving domain name disputes.

5.4 Suggested reforms

248 249

Walker, above n 154, 307. Ibid. 250 Cybersquatters have written to trademark holders and hinted or directly stated they are prepared to sell the domain name at a price marginally below court costs. See Success by default, above n 108, 87. 251 Ibid.

61

Part 5.2 demonstrated the potential inadequacy of existing Australian legal actions to combat cybersquatters. Rather than leave it to the court to creatively stretch existing law to evict cybersquatters, it is submitted Australia should follow the lead of the US and enact cybersquatting specific legislation. 252

(a)

The US Anti-cybersquatting Protection Act (ACPA)

In late November 1999 the US Congress passed the first cybersquatting specific legislation in the world, 253 the Anti-cybersquatting Protection Act (1999) ( ACPA ). 254 This legislation was passed as cybersquatters were adapting their activities to avoid liability under existing trademark protection laws.
255

The ACPA creates a new cause of action against

anyone who (1) with bad faith intent to profit from another's trademark (including a personal name which is protected as a mark); (2) "registers, traffics in, or uses a domain name" that is; (3) identical or confusingly similar to that mark or, for famous marks, is either confusingly similar to or dilutive of that mark. 256 Bad faith is determined by eight non-exclusive factors enumerated in the ACPA . 257 If a plaintiff is successful under the
252

An alternative to this reform is to introduce a cybermark registration system. For further information see Fitzgerald, Gamertsfelder and Gulliksen, above n 247, 20. 253 de Souza, above n 64, 67. 254 The legislation is available at <http://www.mama-tech.com/antipiracy.html>; see also the Lanham Act at 15 U.S.C. 1125(d), 15 U.S.C. 1114 and 15 U.S.C. 1117. 255 Carson, Christensen and Kandara, above n 82, 28. 256 Searing, above n 183, 121. 257 Ibid.

62 ACPA , a number of remedies are possible. A court may order the forfeiture or cancellation of the domain name, the transfer of the domain name, and in certain circumstances damages. 258

(b)

Proposed legislation to combat cybersquatting in Australia

It is submitted that the legislation Australia draft and enact to combat cybersquatting should be a hybrid of the UDRP and the ACPA with extras. It is beyond the scope of this paper to detail the specifics of the mooted legislation, however, a few points can be made. Ideally the legislation should:

Provide a right of action against cybersquatters for both trademark and

non-trademark entities.

Achieving this task could not be achieved unilaterally by either Federal or State governments because of the Constitutional division of powers. For example, the Federal government could not legislate provisions to evict unincorporated cybersquatters. Similarly, the State government is unable to legislate provisions to evict incorporated cybersquatters. One solution is for State governments to refer power to the Federal government. Alternatively the Federal government could legislate on the issue and

258

de Souza, above n 64, 67.

63 State governments could enact mirror legislation for natural persons, similar to the TPA and FTA situation.

Provide an account of profits and damages as a remedy for persons

aggrieved by cybersquatters

The only remedies under the UDRP are transfer or cancellation of a domain name. Under the ACPA the complainant has the aforementioned remedies as well as actual damages, an account of profits, and statutory damages which can be awarded in the courts discretion ranging from $1,000 to $100,000. 259

Include provisions that close loopholes for cybersquatters.

A key issue identified in Part 5.2 is the potential inability of existing legal actions to evict resale cybersquatters that leave domain names dormant. The main difficulty involved in evicting such cybersquatters was the requirement of existing laws to actually use the domain name. The UDRP overcomes this difficulty by providing that the registration of a domain name primarily for the purpose of resale for consideration in excess of acquisition costs constitutes bad faith. There is no

requirement that the domain name actually be used. Thus a domain name

259

ACPA, fn. 252 at 1117(d), 1129(2) (2000).

64 holder cannot escape the clutches of the UDRP by leaving the domain name dormant.

A second loophole was identified in the Dominator example (see 5.2(a)). The bad faith factors enumerated in the ACPA would also

defeat the Dominator cybersquatter, whereas the TMA arguably would not. Similar facts to the Dominator story arose in the US case of Sporty's Farm v Sportsman's Market . 260 In this case, Sportsman had used the term "Sporty's" for its aviation products catalog for decades and had a federal registration for the name. 261 A competitor named Omega registered

www.sportys.com as a domain name and then created a subsidiary named "Sporty's Farm" and sold the domain name to the subsidiary. After the lawsuit was brought, Omega began to sell Christmas trees from the www.sportys.com site. 262 The court found that Omega and Sporty's Farm had contravened the ACPA . A bad faith intent to profit was imputed to the cybersquatter on the basis that: (a) Omega and Sporty's Farms lacked any intellectual property rights in the www.sportys.com domain name; (b) the domain name did not include the legal name of the party at the time of registration because the formation of Sporty's Farm occurred after the registration of the domain name; (c) no goods or services were sold on the website until after the filing of the lawsuit; and (d) absence of a bona fide

260 261

202 F.3d 489 (2d Cir. 2000), cert. denied, 120 S. Ct. 2719 (June 26, 2000). Fisher, above n 75, 22. 262 Ibid.

65 explanation for registering the domain name. 263 Australian legislation should seek to enact similar provisions to the ACPA to close loopholes for cybersquatters.

Part 6

Alternative cybersquatting

solutions

to

combat

6.1 Use of Filters

Cybersquatting has led experts in the areas of law and IT to try and devise alternative solutions to stop the activity. The following discussion looks at four alternative solutions to cybersquatting. One solution suggested is to require Registrars to filter domain name applications through a global trademark database. 264 If registered trademarks are disclosed the applicant could be required to demonstrate grounds as to why they deserve the domain name. 265 Alternatively, registrants notified of the trademarks corresponding to their desired domain name could result in the burden of proof in UDRP proceedings being imposed on the registrant rather than the complainant. With trademark systems around the world becoming automated the technology is available to implement this solution. The
263

Sandra Edelman, Cybersquatting Claims Take Center Stage (2001) 18(1) Computer and Internet Lawyer 1, 3. 264 Port, above n 92, 1119. 265 Ibid.

66 major difficulty in implementing this solution is the fact that Registrars are immune from liability in respect to the registration of third parties trademarks as domain names. 266 Thus no reason exists for Registrars to expend time and money on filters given this immunity. In any event, this solution only assists trademark holders in their fight against

cybersquatters and does nothing to solve cybersquatting problems for nontrademark entities.

6.2 Auction system

A second solution posited is for ICANN to auction domain names prior to registration. 267 Under such method the successful bidder for a domain name would receive an unchallengeable right to the domain name against the rest of the world. For example, if McDonalds outbid Kentucky Fried Chicken (KFC) for www.kfc.com then KFC would have no legal redress to force McDonalds to transfer the domain. This solution based on the outcome in the aforementioned example is unlikely to be implemented. The other problem with this solution is the inequity of existing domain holders having secured domains via a first come first served basis, and future domain holders who may encounter bidding wars to secure domains.

6.3 Company ICON page

266 267

Ibid. Hadfield, above n 165, 272.

67

A non-legal means of solving cybersquatting dilemmas could involve restructuring the DNS so that more than one entity can use identical domain names. 268 The way this would work would be for entities to place a stylised icon on the site of their desired domain name. The logo would outline the products and services of the entity and would hyperlink to another site that would act as the entitys homepage. For example, if a user types in the domain name www.dunlop.com they would be taken to a website that has icons for Dunlop Tyres, Dunlop Art Gallery, Dunlop Golf Equipment etc. Under this system a cybersquatter could not exclusively hijack a domain name and instead would be forced to share the domain name with other entities. Such a system is not without problems however. In the aforementioned example Dunlop Tyres would presumably want their icon to appear prominently at the top of the site. How would such an issue be decided? Additionally, Dunlop Tyres would not wish their icon to appear on the same site as an icon for Dunlop Tyres Sucks.

6.4 Multilateral treaty

The ultimate solution is for governments to negotiate and ratify an international treaty that adopts a hybrid version of the UDRP and ACPA . This is probably the most desirable option to combat cybersquatting as it would create an internationally valid and accepted process with legislative

268

Golinveaux, above n 60, 669.

68 rather than merely contractual force. A key problem with such a solution is the time and expense involved in drafting and implementing such treaties. Dr Francis Curry, the Assistant Director-General of WIPO, said

A Treaty on a fast track takes about five years of multilateral negotiations, and then there is no automatic binding jurisdiction of the Treaty. It has to be voluntarily adopted by each country and that whole process takes 10 years before the Treaty has any reasonable widespread effect. 269

Thus, at a minimum a multi-lateral treaty dealing with domain name disputes would take 15 years to get off the ground. This is problematic as the technical structure of the Internet changes constantly and consequently the current means of accessing websites through domain names may change. 270 Nevertheless, we live in the present and cannot ignore problems based on the hope they may be resolved in the future. 271 Governments should pursue this long-term goal but in the meantime work towards solving the shortcomings of current dispute resolution processes.

Part 7

Preventative measures

269

F Gurry, Real and Virtual Identities (Paper delivered at the seminar Cybersquatting: Internet Domain Name Disputes, the WIPO/ICANN Resolution Procedure and the Emerging Law, Melbourne, 9 March 2000). 270 Hestermeyer, above n 214, 57. 271 Ibid.

69 The age-old maxim prevention is better than cure is as applicable today as ever. Given the low cost of registering domain names ($15 for dot.coms and $60 for dot.aus) 272 compared to the high expense in evicting cybersquatters ($1000s), entities should adopt a defensive domain name registration policy. 273 The policy should be comprised of three sections:

(a)

Selection of SLDs

The first step in the policy is to determine what SLDs an entity should register. It is advised entities adopt the following policy with respect to SLDs:

Register

key

marks,

acronyms,

product

names,

slogans

and

nicknames. 274

A smart strategy for a start-up company would be to register domain names of intended marks prior to applying for trademark registration. Such action would preclude cybersquatters accessing trademark databases and registering the mark as a domain name prior to the entity. For

272

See Part 1.2 Sweet and Maxwell, Domain Names, vol 2 (hereinafter Domain Names); Loc Damilaville, White Paper on Domain Name Management (Nov 2002) <http://apce2.jetonline.fr/upload/ouvrage/wpdnm.pdf> at 10 November 2002. 274 Damilaville, above n 274, 5.
273

70 specifics as to the desired characteristics of a domain name (ie number of characters, memorability, spelling etc) see Part 1.3

Register company names with the suffix sucks.

This strategy makes it more difficult for an aggrieved party to set up a criticism site against the entity. 275

Register variations of the above registered domain names.

An entity with the trademark Michelangelo Pizza is advised to register mich e langelo.com and mich ea langelopizza.com. One problem with

implementing this strategy is cost. In the michelangelo example the owner of the mark has to pay an ongoing registration fee for two domains. If a company registers 20 domains and then registers three variations for each domain the company in total will need to pay ongoing registration fees for 80 domains. A second problem with the strategy is there are multiple variations to a term that an entity may miss such as substituting the letter o for the number zero or leaving out the dot between www and the SLD (see Citibank example in Part 2.2). 276 To quote Loic Damilaville, a consultant for AFNIC (the registry in charge of dot.fr space), it is

275 276

Domain Names, above n 274, 12. Ibid 13.

71 impossible to guess all the combinations of a branding name; 100% safety does not exist. 277

(b)

Selection of gTLDs and ccTLDs.

After completing the first part of the policy the entity must then decide what gTLDs and ccTLDs to register the SLDs in. It is advised entities:

Register domain names in the dot.com, dot.org, and dot.net name space.

The large portion of domain registrations throughout the world is in the dot.com, dot.net, and dot.org spaces (88.42% in total: 69.15%, 11.62% and 7.65% respectively). 278 The aforementioned figures indicate the popularity of the dot.com, dot.net, and dot.org spaces, which are incontrovertibly the blue chip domains. In terms of prioritization, dot.com domains are estimated to be worth 1.7 times the same domain in dot.net and 2.2 times the same domain in dot . org . 279

Register the names in relevant ccTLDs

277 278

Damilaville, above n 274, 5. World Domain Stats (2001) NetNames <http://www.domainstats.com> at 15 November 2002. 279 Conquest Valuation, above n 90.

72 As mentioned previously, there are over 240 ccTLDs 280. It is not economically viable or sensical to register a name in each ccTLD as few entities have the global presence or budgets to afford adopting such a policy. This being the case an entity is first advised to register domain names in jurisdictions where it is based, where it has established trademarks, and in any jurisdictions where it intends to enter in the future. 281 The second step is to register domain names in jurisdictions were infringers are most active (such as the US, UK, Argentina, Russia, and Israel). 282 As countries have different registration policies in relation to their ccTLD space an entity may not be able to register a domain name in a desired ccTLD. For example, an Australian based toy company that plans to distribute its products in Greece cannot register a domain name in the dot.gr space. This is so because the body regulating the dot.gr space has imposed registration conditions that require prospective

registrants to own an active company in Greece. 283

(c)

Maintenance of the policy

It is imperative registered domains are not allowed to lapse and be acquired

280 281

by

third

parties.

Additionally,

the

person

in

charge

of

See Part 1.1(b). Domain Names, above n 274, 28. 282 Ibid 28. 283 Ibid 13.

73 implementing the policy must be prepared to react to changes in the DNS. For example, a foreign company seeking to enter the Japanese market should be up to date with changes that occurred in 2000 which enable nonJapanese companies to use the dot.jpname space. 284

Part 8

Conclusion

Cybersquatters are individuals with commercial foresight and intelligence. The key to circumventing cybersquatters lies in the enactment of stringent registration requirements for domain names and for entities to develop idiosyncratic domain name registration policies. No doubt due to the cunning nature of cybersquatters they will, irrespective of any safeguards, discover ways to practice their trade. Consequently, entities require efficient and inexpensive dispute resolution procedures to determine disputes between themselves and cybersquatters. The UDRP is a good beginning but currently has too many shortcomings, the most noticeable being the lack of precedent and an appellate body, which is resulting in patently inconsistent and erroneous decisions. Utilising courts to evict

cybersquatters is too onerous and difficult owing to jurisdictional issues, the inadequacy of domestic legislation to combat cybersquatters, expense and time. The course for the future is for countries to formulate and ratify a multilateral treaty that deals with this issue. The treaty adopted should
284

Ibid 33.

74 ideally be a hybrid of the UDRP and ACPA and provide both trademark and non-trademark entities an avenue to resolve disputes with

cybersquatters. Until then, if you have a problem with a cybersquatter, offer them $1,000 in cash and keep your fingers crossed.

75

Bibliography
Section 1 Books

_______________________________________________________________________ _ Banks, C, and Douglas, H, 2000, Law on the Internet (2000). Catania, P, Cohn, L and Turner L, Domain Names and Trademarks (2001). Forder, J, and & Quirk, P, Electronic Commerce and the Law (2001). Golvan, C, An Introduction to Intellectual Property LawI (1992). Kalakota, R, and Whinsto, A,B, Frontiers of Electronic Commerce (1996). Redfern, A, and Hunter, M, Law and Practice of International Commercial Arbitration (3rd ed, 1999). Rosenoer, J, CyberLaw: The Law of the Internet (1997).

Section 2

Journal and Law Review Articles

_______________________________________________________________________ _ Anderson, EC and Cole, TS, The UDRP A Model for Dispute Resolution in Ecommerce (2002) 6 J. Small & Emerging Bus. L. 235. Azmi, IM, Domain Names And Cyberspace: The Application Of Old Norms To New Problems (2000) 8 IJL&IT 193. Barkey, A, TRADE MARKS AND TRADE NAMES: International News Wipo (2001) 6 TW 142. Bettink, WW, Domain Name Dispute Resolution under the UDRP (2002) 5 E.I.P.R. 244. Browne, A, Trade Marks and Copyright on the Internet (1997) (2) Media and Arts Law Review 135.

76 Cabell, D, Foreign Domain Name Disputes 2000 (2000) 17 Computer and Internet Lawyer 5. Carson, JM, Christensen, AC and Kandara, JN, Claim Jumping on the Newest Frontier, Cybersquatting, and the Judicial Interpretation of Bad Faith (2000) 8 UCLA Ent. L. Rev. 27. De Souza, C, Specific Remedies for Cybersquatting Part 1 (2000) 3(4) Internet Law Bulletin 49. De Souza, C, Specific Remedies for Cybersquatting Part 2 (2000) 3(5) Internet Law Bulletin 65. Edelman, S, Cybersquatting Claims Take Center Stage (2001) 18(1) Computer and Internet Lawyer 1. Fisher, BD, Feature: The Anticybersquatting Consumer Protection Act: Two Cases Addressing Cybersquatting Before and After the Act (2001) 75 Fla. Bar J. 12 Geist, M, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP (August 2001) University of Ottawa <http://aix1.uottawa.ca/ %7Egeist/geistudrp.pdf> at 10 August 2002. Golinveaux, J, What's in a Domain Name: Is "Cybersquatting" Trademark Dilution? 33 U.S.F.L. Rev 641. Gunning, P, Trade Marks and Domain Names[2000] CyberLRes 1. Hadfield, GK, Privatizing Commercial Law: Lessons from ICANN (2000) 6 J. Small & Emerging Bus. L. 257. Halpern, M and Mehrotra, AK, From International Treaties to Internet Norms: The Evolution of International Trademark Disputes in the Internet Age (2000) 21 U. Pa. J. Intl Econ. L. 523. Hestermeyer, HP, The invalidity of ICANNs UDRP Under National Law (2002) 3 Minn. Intell. Prop. Rev. 1 Jones, S, A Childs First Steps: The First Six Months of Operation The ICANN Dispute Resolution Procedure for Bad Faith Registration of Domain Names [2001] E.I.P.R. 66. Kelley, PD, Intellectual Property: Emerging Patterns in Arbitration Under the Uniform Domain-Name Dispute-Resolution Policy (2002) 17 Berkeley Tech. L.J. 181.

77 King, ST, The "Law That It Deems Applicable": ICANN, Dispute Resolution, and the Problem of Cybersquatting (2000) 22 Hastings Comm. & Ent. L.J. 453. Litman, J, The DNS Wars: Trademarks and the Internet Domain Name System (2000) 4 J. Small & Emerging Bus. L. 149. Maclachlan, A, WIPO2 -- the Domain Name Consultation Process (2001) 151 (6981) NEW LAW JOURNAL 596. Maersch, K, Comment: Icannt Use My Domain Name? The Real World Application of ICANNs Uniform Domain-Name Dispute Resolution Policy (2001) 34 J. Marshall L. Rev. 1027. Matorin, MJ and Boudett, M, Domain name disputes: cases illustrate limitations of ICANN policy (2001) 45 B.B.J. McCarthy, JT, Domain Names and Trade Marks (1998) 9 AIPJ 53. Mueller, M, Rough Justice, An Analysis of ICANNs Uniform Dispute Resolution Policy (November 2000) Convergence Center <http://dcc.syr.edu/miscarticles/roughjustice.pdf> at 10 July 2002. Mueller, M, Success by Default: A New Profile of Domain Name Trademark Disputes under ICAANs UDRP (June 2002) Convergence Center <http://dcc.syr.edu/markle/markle-report-final.pdf> at 10 September 2002. Nguyen, XN, Cyberproperty and Judicial Dissonance: The Trouble with Domain Name Classification (2001) 10 Geo. Mason L. Rev. 183. Port, LK, Intellectual Property in an Information Economy: Trademark Monopolies in the Blue Nowhere (2002) 28 Wm. Mitchell L. Rev. 1091. Searing, EA, Whats in a Domain Name? A Critical Analysis of the National and International Impact on Domain Name Cybersquatting (2000) 40 Washburn L.J. 110. Sorkin, D.E. Judicial Review of ICANN Domain Name Dispute Decisions (2001) 18 Santa Clara Computer & High Tech. L.J. 637. Stoodley, J, Internet Domain Names and Trade Marks (1997) 9 EIPR 509. Sumpter, P, When are Domain Names Trade Marks When they are Used?: Unfair Reapers in Cyberspace get the Common Law Treatment (2000) 11 AIPJ 103. Thornburg, GE, Fast, Cheap and Out of Control: Lessons from the ICANN Dispute Resolution Process (2002) 6 J.Small & Emerging Bus. L. 191.

78

Thorne, C and Bennett, S, Domain Names Internet Warehousing: Has Protection of Well-known Names on the Internet Gone too Far? (1998) 12 EIPR 468. Underwood, K, Trade Marks, Domain Names and the Internet in Whats New in Intellectual Property Law: (2000) Seminar Paper. Vergani, GN, Electronic Commerce and Trade Marks in the United States: Domain Names, Trade Marks and the Use in Commerce Requirement on the Internet (1999) 9 EIPR 450. Walker, LA, Berkeley Technology Law Journal Annual Review of Law and Technology I. Intellectual Property; C. Trademark Icanns Uniform Domain Name Dispute Resolution Policy (2000) 15 Berkeley Tech. L.J. 289. White, JG, INTELLECTUAL PROPERTY C. TADEMARK 2. DOMAIN NAME b) ARBITRATION: ICANN's Uniform Domain Name Dispute Resolution Policy in Action (2001) 16 Berkeley Tech. L.J. 229. Located on 2 September 2002 at: http://www.lexis.com. Winn, JK, Survey: Electronic Commerce Law: 2001 Developments (2001) 57 Bus. Law. 541. Yan, D, Virtual Reality: Can We Ride Trademark Law to Surf Cyberspace? (2000) 10 Fordham I. P., Media & Ent. L.J. 773 at 809

Section 3

Newspaper articles

_______________________________________________________________________ _ Amjadali, Samantha, The Game of the Name, The Weekend Australian (Melbourne), 23 Oct 1999, 48. Amjadali, Samantha Grab Domain or Lose Name: NetRegistry, The Australian (Melbourne), 9 February 1999, 48 Chong, Florence, Cybersquatters Move In: Many Countries Cant Deal with Trade Problems Arising from Internet Crime, The Australian (Melbourne), 1 April 1999, 34. Chong, Florence, Mind Your Language, The Australian (Melbourne), 27 February 2001, 53-54. Gaunt, Clive, Dollar Rules in Pursuit of edomain, The Australian (Melbourne), 15 December 1999, 2.

79 Ghent, Alice Who Missed Out on the .com Gold Rush?, The Age (Melbourne), 9 May 1999, 1 & 4. Hayes, Simon Celebrity Hijacks on Names Agenda, The Australian (Melbourne), 8 February 2000, 40. Hayes, Simon, Names War: Fight to Help Small Fry, The Australian (Melbourne), 24 August 2000, 49. Hayes, Simon Scare Tactic Fears Over New Names, The Australian (Melbourne) 28 November 2000, 40. Hellaby, David, Council Takes on Squatters, The Australian (Melbouren), 13 February 2001, 36. Huhn, Mary, Whats in a Name? Not Much for Cyberspace Consumers, The Australian (Melbourne) 8 July 1999, 25. Macleay, John, Lawyer Master of his domain, The Australian (Melbourne), 22 June 2000, 25. MacKenzie, Kate Reseller Beats New Domain Changes, The Australian (Melbourne), 27 February 2001, 46. Minahan, Simon, Faith an Issue in Domain Names: There are Legal Means of Dealing with Cybersquatters, The Age (Melbourne), 11 July 2000, 9. Minahan, Simon, Marks for Users, not Squatters, The Age (Melbourne), 31 October 2001, 9. Needham, Kristy, Internets Reclusive Pionner Hangs on to Keys to Web, Sydney Morning Herald (Sydney), 13 June 2001, 25. Sinclair, Jenny, Squatters on the Run after Wiggles Win, The Age (Melbourne), 9 May 2001, 1 & 8. Tebbutt, D and Hellaby, D, Melbourne IT Moves Against Net Squatters, The Australian (Melbourne), 17 August 1999, 34.

Section 4

Reports

_______________________________________________________________________ _ World Intellectual Property Organisation, The recognition of rights and the use of names in the internet domain name system: Report of the Second WIPO Internet Domain Name

80 Process (2001), WIPO <http://ww.wipo2.wipo.net> at 20 September 2002 (hereinafter WIPO Report 2).

Section 5

Case Law

_______________________________________________________________________ _ Australian cases Australian Competition and Consumer v Internic Technology [1999] 818 FCA (14 July 1999). Cadbury Schweppes Pty Ltd v The Pub Squash Co Ltd [1980] 2 NSWLR 865. Capital Webworks Pty Ltd v Adultshop.com Ltd [2000] FCA 492. Melbourne Information Technologies Australia Pty Ltd v. Marilyn Strauss (No V331/1999) (unreported). New Zealand cases Oggi Advertising v McKenzie [1999] 1 NZLR 631. New Zealand Post v Leng [1999] 3 NZLR 631. Qantas Airways Ltd v The Domain Name Co Ltd P26-SD99, unreported, 9 December 1999. UK cases Avnet Inc v Isoact Ltd [1998] FSR 16. Marks & Spencer plc v One in a Million (1997) 42 IPR 309. One in a Million v Marks & Spencer plc (1998) 42 IPR 289. Pitman Training Limited v Nominet UK [1997] FSR 797. UDRP cases Accor v. Philippe Hartman, (D2001-0007)

81 Adaptive Molecular Techs, Inc v Woodward, (D2000-0006). Asda Group Limited v. Mr Paul Kilgour, (D2002-0857).; Allocation Network GmbH v. Gregory, (D2000-0016). America Online, Inc v QTR corporation, (FA0092016). Boardwalk Bank v Thorogood, (D2000-0213). CBS Broadcasting Inc . v. VanityMail Services Inc, (D2000-0379). Cyro Indus v Contemporary Design, (D2000-0336). Daniel J. Quirk, Inc v Maccini, (FA0006000094964) . Diageo PLC v Zuccarini, (D2000-0996). Document Technologies, Inc v International Electronic Communications Inc, (D20000270). Do The Hustle, LLC v Tropic Web, (D2000-0624). Draw-Tite, Inc. v. Plattsburgh Spring Inc., (D2000-0017). Eauto v Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, (D2000-0047). Education Testing Services v Netkorea Co, (D2000-0087). Educational Testing Service v TOEFL, (D2000-0044). Expedia, Inc v European Travel Network (D2000-0137). Familiar Ltd. v CTD Tech., Inc, (D2001-1009). Football Club des Girondins de Bordeaux v Annie Arr, (Case No D2000-0149). FormLinc Info. v Credit Suisse Group, (FA0102000096750). General Machine Products Company, Inc v Prime Domains, (FA0001000092531) Grobat Filing Company, Inc. v. The Exchange Jewelry Supply, (FA0006000094960). Inforspace.com Inc v Infospace Technology Co Ltd, (D2000-0074). Loblaws, Inc v Charlo Barbosa, (Case No AF-0163). National Geographic Society v Stonybook Investments, ( FA0096263). Northwest Plumbing Drain Station Inc. v. Sumnmer Plumbing (FA00200094197). Neuberger Berman Inc v Alfred Jacobsen (D2000-0323). Phillips Int'l, Inc. v Tella, (FA0008000095461). Quirk Nissan, Inc v Maccini, (FA0006000094959). Royal Crown Company, Inc v New York Broadcast Services, Inc, (D2000-0315). Slep-Tone Entm't Corp v. Sound Choice Disk Jockeys, Inc, (FA93636).

82 Softquad Software Inc. v. Eleven-Eleven Ltd, (AF-0143) . Telstra Corporation Ltd v Nuclear Marshmallows, (D2000-003). The Chancellor, Maters and Scholars of the University of Oxford v Dr Seagle, (D20000308). Travel Services Inc v Tour Coop of Puerto Rico, (FA0001000092524). Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,INC., (D2001-1121). Wal-Mart Stores Inc v. Walmarket Canada, (D2000-0150). Weber-Stephen Products Co. v. Armitage Hardware, (D2000-0187). Wine.com, Inc. v. Zvieli Fisher, (D2000-0614). World Wrestling Fed'n Entm't, Inc. v. Bosman, (D99-0001). US cases Bargain Bid L.L.C. v. Ubid Inc. , CV-99 7598 (LDW), 2000 U.S. Dist. LEXIS 3021 (E.D.N.Y. January 3, 2000). Panavision v Toeppen 141 F 3d 1316 (9th Cir 1998). Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2nd Cir.2000).

Section 6

Legislation

_______________________________________________________________________ _ Australian legislation Supreme Court (General Civil Procedure) Rules 1996 (VIC). Trade Marks Act 1995 (Cth). Trade Practices Act 1974 (Cth). United States of America Anti-cybersquatting Protection Act (1999).

83

Section 7 Domain name dispute resolution policies _______________________________________________________________________ _ auDA auDA, Clarification of Domain Name Licence - Prohibition on Sale of Domain Name by Registrant (No 2002-24) (22/08/2002 ) auDA <http://www.auda.org.au/docs/auda-200224.pdf> at 20 Nov 2002. auDa, Domain Name Eligilibity and Allocation Policy Rules for Open Second Level Domains (2002) auDA <http://www.auda.org.au/docs/auda-2002-07.txt> at 1 September 2001. auDA, Reserved List Policy (Policy No 2002-11) (2002) <http://www.auda.org.au/docs/auda-2002-11.pdf> at November 26 2002. auDA, Transfers (Change of Registrant) Policy (No 2002-27) <http://www.auda.org.au/docs/auda-2002-27.pdf> at 20 Nov 2002. ICANN ICANN, Uniform Domain Name Dispute Resolution Policy (1999) ICANN <http://www.icann.org/udrp/udrp-policy-24oct99.htm> at July 10 2002. ICANN, Rules for Uniform Domain Name Dispute Resolution Policy (24 October 1999) ICANN <http://www.icann.org/udrp/udrp-rules-24oct99.htm> at July 31 2002. Section 8 Other auDa

(14/10/02) auDA

_______________________________________________________________________ _ Froomkin, M, and Post, D, Froomkin and Post Send Letter to ICANN Board (26 January 2000) ICANNwatch <http://www.icannwatch.org/archive/post_froomkin_udrp_letter.htm> at 28 July 2002.

84 Jones, PL, UDRP Court Challenge Database (last modified 15 Aug 2002) The Uniform Domain Name Dispute Resolution Poicy Legal Information Site <http://www.udrplaw.net/UDRPappeals.htm> at 3 September 2002. UDRP Decisions Database (last updated 22 February 2002) UDRPinfo.com <http://www.udrpinfo.com/dcsn.php> at 27 July 2002.