A critical analysis of the legal effect of cybersquatting and typo- quatting on trademark law
Trademark Law And Cyber Law
Definition Of Terms
A general overview of the terms to be used in this dissertation and the alternate meanings assigned to terms in the field of cyber law and Internet based usage.
- URL – Universal Resource Locator, the complete address of any resource available on the internet, e.g. a website’s location on the Internet that consists of a communications protocol such as hypertext transfer protocol written in hypertext mark-up language, followed by the domain name (second level domain) and ending in one of the general top level domains such as .com/.net/.org. E.g. http://www.google.com.
- Website – A location on the Internet containing data generated, sent, received or stored by electronic means.
- Hosting – To serve as host to any number of collections of data.
- Visitor – An Internet user viewing the information contained at a specific domain name’s website.
- WIPO – World Intellectual Property Organisation, an intergovernmental organisation of the United Nations, responsible for the promotion of the protection of intellectual property throughout the world and administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property.
- ICANN – Internet Corporation for Assigned Names and Numbers, a company whose purpose is to regulate domain name and address registrations, formed in 1998.
- Domain name – Alphanumeric identifications for Internet based addresses which identify specific computers or servers connected to the Internet, including IP addresses, ASN and PPP numbers.
- IP – Internet protocol (“IP”) addresses.
- ASN – Autonomous System (“AS”) numbers.
- PPP – Protocol Port and Parameter numbers.
- Browser – A software program used to translate various Internet protocols, enabling a user to view a website graphically.
- Server – A computer which manages large amounts of data resources and provides services to Internet or network visitors or users.
- gTLD – General top level domains, these include dot-com, dot-edu, dot-net and dot-org.
- ccTLD – Country code specific top level domain names, these include dot-co-dot-za, dot-org-dot-za, dot-co-dot-uk etc.
- SLD – Second level domains, such as the words preceding TLD’s, (Yahoo, Google, Amazon)
- Intellectual Property – The concept of ownership of impalpable property resulting from creativity – the work of a person’s intellect or mind.
- Trademarks – A distinguishing symbol, mark, name or feature used by a manufacturer, company or person that no other manufacturer may use unless authorised, as it constitutes intellectual property.
- Whois Databases – (Who-is databases) A database maintained by registries and registrars licensed by ICANN, which contains information about domain name registrations in the top-level domains (dot-com, dot-net, dot-org, dot-edu, country codes such as dot-co.za). Effectively a directory of who the registered owner of a domain name is as well as other necessary information needed.
- SAIIPL – The South African Institute for Intellectual Property Law, leading law firms, practitioners and academics in the field of Intellectual Property, and by extension, Information and Communications Technology law.
This dissertation looks at the differing ways in which the phenomenon of cybersquatting and typosquatting is dealt with internationally, and how the South African legislator is faring at maintaining a standard of control and legislative remedy, comparable to that of our international neighbours. The focus will be on the legislative process and remedies as practiced in South Africa, the United States of America and the United Kingdom in combating the phenomenon of cybersquatting and typosquatting.
This particular field of ‘cyber’-practices has many derivatives and correlations to other forms of infringement issues, such as tarnishment, cybergriping, dilution, parody and meta tag deployment. Due to the nature of this dissertation, and the vast amount of information and arguments available on these issues, I will be limiting the research to domain name registrations that correlate to existing trademarks, and possibly misspelled or alternatively formatted trademark names. Issues such as cybergriping or parody registrations etc. will not be specifically covered within the scope of this dissertation.
What does cybersquatting and typosquatting entail and why the need to regulate it by way of an international standard?
Tammy Alexander writes:
“Domain names are a hot commodity … The rise in domain name commerce has resulted in an abundance of frauds targeted towards acquiring domain names from legitimate owners. Some of these methods are legal, others are not…”
To briefly summarize, cybersquatting and typosquatting entails the registration of unique web-identities (URL’s/domain names), linking to a website that may possibly be sought after by another party to which the web-identity’s incorporated trademark or business name in truth relates.
Ebersöhn explains the term cybersquatting, as the registration of someone else’s trademark or business name as a domain name for the purpose of making a profit off the domain by selling it back to the proprietor of the trademark or business owner; or, the registration of the unique domain for the purpose of preventing the “true” owner from being able to use it, for malicious or competitive reasons.
This is done by registering the domain name www.ipod.co.za before Apple Inc.; the company to whom the iPod registered trademark belongs; gets a chance to expand their Internet based services to a South African “.co.za” domain, for example. In turn this domain address may host information about iPod’s so as to seem related to the trademark or business name it assumed, using the popularity of a well known trademark or business name to draw Internet users to visit the website, generating income by way of hosting electronic advertisements.
Alternatively, one might exploit ownership of the domain name by informing Apple Inc. of one’s ownership and then request a great sum of money to sell back what is essentially their own trademark or business name to them.
In a recently decided case, for example, the URL’s www.jenniferlopez.net and www.jenniferlopez.org were registered by a web operator, Jeremiah Tieman, based in the United States, which used the American singer and actress’ name for commercial profit by hosting electronic advertisements on the domains. A ruling by an independent arbitrator of the World Intellectual Property Organisation (WIPO), ordered that the ownership of both these domain names be transferred to the Jennifer Lopez foundation, along with the income generated through paid advertisement hosting.
In his paper on cybersquatting, Ebersöhn discusses the problem systematically to determine that cybersquatting in all its forms results in consumer fraud and public confusion to the point of passing off as the original trademark, or by making the consumers believe that the website is either related to or endorsed by the proprietors owning the used trademarks.
This practice deprives proprietors of revenue, results in costly law suits and legal affairs, creates a burdening obligation on trademark proprietors to monitor the Internet for possible misuse or misrepresentation of their various trademarks and may in some instances result in the tarnishing of a proprietor’s trademark, as the linked websites may contain defamatory or otherwise negative content that detracts from the goodwill of the trademark.
The other form of infringement, typosquatting, mostly entails the same principle, as it is a form of cybersquatting, although instead of using the ‘original’ well known trademark or name, e.g. a phonetic equivalent, or a misspelled name, even if only by different representation, is used to intentionally lure and mislead visitors to use the site.
In typosquatting, one registers a common misspelling or phonetic equivalent of another’s trademark with the intent of attracting Internet users to one’s website when they search for the original trademark proprietor’s website. The term was coined by Zuccarini to describe his practice of registering domain names from common misspellings made by Internet users.
Should a user accidentally enter an incorrect domain name, they may be led to an alternative website owned by a cybersquatter. This practice has uses such as passing off as the ‘real thing’, causing confusion or even be defamatory. Numerous cases have been heard on this specific form of cyber-infringement on a known trademark or property.
According to ICANN, in order to reach another person/point/computer/node on the Internet one has to type an address into a network browser program, being either a name/word/phrase or a number (e.g. www.ipod.co.za or 18.104.22.168). The requirement for registration is that this address must be unique so computers and servers linked through the Internet ‘know’ where and how to find each other, almost like a fingerprint for computers.
ICANN, the Internet Corporation for Assigned Names and Numbers, is an international non-profit organisation, coordinating unique identifiers across the world, usually relating to general top level domains (gTLD) such as dot-net/dot-com/dot-org. Without this coordination we would not be able to maintain one global Internet network.
It is these unique identifiers, commonly known as Domain Names and Internet Protocol (IP) addresses, that are being used and registered increasingly often as the Internet becomes a more widely accepted platform for business use and the generation of income. It is the registration process of using trademarks or business names in these ‘addresses’ that leads to the phenomena of cybersquatting and typosquatting.
It is clear that cybersquatting and typosquatting both pose a real invasion and infringement on proprietors’ intellectual property, even though numerous systems exist to regulate their registration and use, differing from state to state, domain to domain, and in some states the criteria for legal protection to be founded, which may result in excluding the true proprietors from having a legal remedy.
It is therefore generally accepted internationally that cybersquatting and its various forms are condemned as illegal practices.
What Is A Trademark?
The main purpose of trademark law is to prevent confusion in the mind of a consuming public with regards to the source of goods or services rendered by a specific merchant or proprietor, to the extent that the distinguishing “mark” of such goods or services is protected from unauthorised use by another.
The Merriam Webster dictionary defines a trademark as follows:
- a device (as a word) pointing distinctly to the origin or ownership of merchandise to which it is applied and legally reserved to the exclusive use of the owner as maker or seller.
- a distinguishing characteristic or feature firmly associated with a person or thing.
A trademark is defined in US law, under section 1127 of Title 15 of the United States Code as:
“Any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others; and to indicate the source of the goods, even if that source is unknown”
In South African Legislation, the Trademarks Act defines a mark as follows:
“’Mark’ means any sign capable of being represented graphically, including a device, name, signature, word, letter, number, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”
And the act defines a trademark as follows:
“‘Trademark’, other than a certification trademark or a collective trademark, means a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person”
It is clear then, that where a mark is used; whether it is a word, symbol or device that is recognisable and distinguished indicating the goods or services of the “proprietor” thereof; this mark should be afforded a measure of legal protection for its proprietor.
When used to distinguish one’s services or goods, a domain name should then also be afforded the same measure of protection as the traditional trademark would receive.
As the Internet becomes more and more accessible to the public, the business value of having a presence on the Internet or conducting trade by means of Internet resources, traditional trademarks will soon find equal counterparts in representing domain names.
It is because of this, that cybersquatters and typosquatters have emerged to capitalise on the uncharted marketplace that has become the Internet. Unfortunately, legislators could not have foreseen all the possible loopholes and shortcomings that the Internet and electronic communication technology would bring to the existing remedies and governance provided by the traditional legislation at the time.
Cyber law, in context, can therefore be described as the area of law that seeks to adapt and extend the traditional reach and operation of legislation, to better govern, define and protect interactions on a “cyber-plane” where information and communications technologies provide the golden thread that is the common divider between these interactions.
My Aim With This Dissertation Is:
- To research the correlations and differences between South African and selected International legislation, whether from non-profit regulatory authority, legislative authority or internationally operating authority on:
- The qualification and definition of domain names as trademarks;
- The legal protection offered for domain names;
- The legal impact of cybersquatting and typosquatting on trademarks; and
- The resolution of domain name disputes.
- To critically analyse the effect of having different standards of legislation for national and international instances on this type of intellectual property infringement.
General Information And International Characteristics
There are numerous International bodies that help to regulate aspects of the Internet, for instance, with the registration of domain names, the main governing body is the Internet Corporation for Assigned Names and Numbers. ICANN licenses Registries to allocate domain names. Registries in turn license Registrars to register domain names.
Icann -> Registry -> Registrar -> Registrant
The registry is an entity that receives domain name service information from the registrars on newly registered second level domain (SLD) names in a specific top level domain (TLD) space. This information then gets added to a central database, from where it is spread via zone files, and gets accessed by domain name servers and application browsers.
Zone files contain information pertaining to a portion of the domain name space of a specified TLD. The zone file is used to match the registered domain names with Internet protocol numbers such as 192.169.0.001. The data describes the domain name, the ‘name server name’ associated with that domain name, and the IP address for the associated name servers.
The registrar is the contracting party that provides a domain name registration service to the ‘public’ customer or domain name registrant. The registrar keeps a database of its customers and their relevant information, as well as the domain name server information. The registrar processes domain name registrations for the individual or company who wishes to create a new domain name, and sends this information in the necessary format to the registries, who keep the information in a centralised database and finally seeding the information over the globally connected Internet network. In South Africa the registrar is UniForum SA.
From here on any Internet user with access via a browser can visit the domain name and access the website’s information once it is listed and registered.
The registrant or end user is the other party to the contract concluded during domain name registration. A registrant can be an individual, closed corporation or even a company. The registrant holds the right to use the domain name for a specified period, provided that the fees are paid, and contractual conditions are met. The contract between the registrar and the registrant is the Domain Name Registration Agreement, and the registrant agrees to be bound by the terms of this agreement.
Registries and registrars are obliged to maintain an accessible and user-searchable database service of the specific data in their charge. These databases are called whois (who-is) databases. The registry’s whois contains all second level domain names registered in its specific top-level domain space. The service is available to anyone and contains data pertaining to the domain name, the registrar, the URL, the name server, the date of creation, and the status among other things.
Each registrar is also obliged to keep a whois database on its specific registrations. The registrar’s whois database contains information on the networks, organisations, domain names and associated contacts in the top level domains and the necessary protocol (Internet/computer language) needed by a browser to translate and access the information located at the specific domain name address, for instance file transfer protocol or hypertext mark-up language. It also holds information such as the registrant’s contact details, telephone numbers, postal addresses, e-mail and fax numbers where applicable. This information becomes necessary particularly where a domain name dispute arises and the respondent party’s particulars are needed to proceed with legal action.
So when an individual or business wishes to register a domain name, it is done via a registrar-registrant contract with a registrar. All domain names are licensed on a first come, first served basis.
Icann Mission Statement:
“The mission of The Internet Corporation for Assigned Names and Numbers (“ICANN”) is to coordinate, at the overall level, the global Internet’s systems of unique identifiers, and in particular to ensure the stable and secure operation of the Internet’s unique identifier systems
ICANN also allows for a dispute resolution process whereby a trademark owner may receive a transfer of a registered domain name from the registrant if certain conditions are met. ICANN states that disputes must be resolved using the Uniform Domain-Name Dispute-Resolution Policy. This requires the applicant for transfer to resolve the issue with the registrant by agreement to transfer, dispute in court, or arbitrate via an intermediary. A registrar will then be allowed to cancel, suspend, or transfer a domain name to the plaintiff/applicant.
To invoke the policy, a trademark owner should either file a complaint in the court that holds proper jurisdiction, against the registrant or in case of abusive registration, such as cybersquatting or typosquatting; submit a complaint to an approved dispute-resolution service provider such as WIPO.
Another international organisation that has an impact on disputes in relation to domain name registration, is WIPO, the World Intellectual Property Organisation, a United Nations agency based in Geneva. WIPO concerns itself with intellectual property rights, and therefore also with registered domain names and the various incorporated business names and proprietary trademarks that they contain.
WIPO was established by the WIPO Convention in 1967 as an international organisation with a mandate from its member states to promote the protection of intellectual property throughout the world via cooperation among states in collaboration with international organisations.
WIPO has an Arbitration and Mediation Centre which provides dispute resolution services as a means of resolving domain name disputes between parties that have a legitimate interest in the domain name.
Independent adjudication by trademark specialists from over different countries is made available to assist with the dispute resolution process. However, being an international organisation, they do not have the jurisdictional power to make any decisions that are binding as precedents, and each case is decided on a case-by-case basis.
The adjudication procedure was intended to resolve abusive registration of trademarks and known business names as domain names by parties who are not the original proprietors.
For a concerned party to have ‘locus standi’ it will have to show that the disputed registered domain name is identical or confusingly similar to its trademark, that it was registered by the registrant in “bad faith” and that that the registrant has no true legitimate interest in the name.
Incidentally, this process is very similar to how the different states consider whether any other form of trademark infringement has been perpetrated.
Usa Federal Legislation
The legislation adopted in the United States of America is of significance as USA is one of the five primary members of the United Nations and its legislation model has a great impact on such international organisations as WIPO or ICANN.
A trademark is defined in US law, under section 1127 of Title 15 of the United States Code as:
- any word, name, symbol, or device, or any combination thereof;
- used by a person;
- to identify and distinguish his or her goods;
- from those manufactured or sold by others; and
- to indicate the source of the goods, even if that source is unknown.
Therefore, for mark used in the registration of a domain name to be regarded as a trademark, it has to be distinguishing, identifying the goods or services of its owner. Also, the owner will have to prove ownership of the mark, by showing that they were the first person to use the mark for this purpose, and have continually used it in commercial use over a certain period.
The United States Code regulates trademark infringement in Title 15, Chapter 22, Subchapter 3, and Section 1114(1):
“(1) any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive” shall be guilty of trademark infringement.
Furthermore, the United States also implemented the Anti-Cybersquatting Consumer Protection Act. With this act the application of statutory trademark infringement provisions and trademark dilution acts are extended so as to be more effectively applied to cases of cybersquatting in its various forms. It also provides for in rem actions to applicants in certain circumstances.
Cited as Section 1125(d) under Title 15
“(d) Cyberpiracy prevention
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) Has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) Registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark”
The Anti-cybersquatting Consumer Protection Act is a piece of federal legislation brought into effect on the 29th of November 1999. The main use thereof is to help legitimate trademark owners to get relief when domain name registrants obtain trademark-related domain names in “bad faith” that are in truth identical, or confusingly similar to a trademark or well known/famous commercial mark.
Remedies are available on the facts that a domain name is identical, confusingly similar or even dilutive to the proprietary mark.
Being of a dilutive nature basically means that the domain name in some way damages or subtracts from the original mark, or causes the capacity of the original mark, to be distinguishing and characteristic of a proprietary owner’s goods or services on the Internet, to decline.
This aspect has been dealt with by the courts in such cases as Avery Dennison v Sumpton, Intermatic Inc. v Toeppen and Panavision v Toeppen.
“Cybersquatting dilution is the diminishment of ‘the capacity of the marks to identify and distinguish the goods and services on the Internet’.”
The courts needed to decide whether the trademarks incorporated in domain names were registered by the ‘cybersquatter’ for “commercial use in commerce” as is contained in section 1125(c)(1) of the federal law, and secondly whether trademark dilution was likely to occur as a result of the domain name registry.
The court found in Toeppen’s cases that he did intend the domain names for commercial use in commerce as he registered the names with the intent of selling them back to the original proprietors once they wanted to obtain ‘their’ trademarks as Internet websites.
The court also found dilution to be present as the company Intermatic was not free to use their unique name to sell or advertise their goods or services on the Internet as Toeppen held the ownership of the domain name and the trademark’s effective use of helping consumers differentiate Intermatic’s goods or services on the Internet was thereby diminished.
The court also found in the Panavision case that cybersquatting on a well known trademark curtails the proprietor’s right to exploit the value of their registered trademarks on the Internet. If the proprietor is then forced to register their trademark under a slightly different name, or if a consumer were searching for the proprietor’s goods on the Internet, they would have to wade through all the different domain names registered on the Internet to find the website that in truth holds the products or services the consumers were looking for. This fact assisted the courts decision in finding that trademark dilution is inevitable if cybersquatters were allowed to register trademarks belonging to original proprietors.
Many similar court cases have since been heard and it is clear that the courts have ruled distinctively that if a domain name is registered for the purpose of selling the domain name to the owner of the identical or similar trademark, that use constitutes commercial use in commerce and further constitutes an infringement of the Anti-Cybersquatting Consumer Protection Act.
These practices are also a form of trademark dilution, and in effect diminish or tarnish the trademark’s goodwill value among its consumers. In the case of typosquatting, the same principle is employed to show that the domain name is confusingly similar to the trademark, and causes a form of trademark dilution, lessening the trademark’s ability to distinguish or identify the proprietor’s goods or services to the Internet using public.
Usa’s Method Of Resolution
In accordance with the ACPA a plaintiff must prove that:
- The defendant intends to make a profit from a domain name registration, by using a trademark or famous mark in bad faith.
- The defendant registered, used or traffics in a domain names that:
“(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark”
What is important to prove is that commercial use of, or profit is being made from the domain name and that it is being used or was registered in “bad faith”.
In an online article by Charles Runyan, Ph.D., he discusses the aspects of the ACPA and its implications and implementation. in determining if a defendant has acted in bad faith. The ACPA also includes some guiding factors, inter alia:
- Whether the defendant holds any trademark in, or intellectual property pertaining to the domain name related trademark, or well known mark;
- To what extent the domain name is similar to the existing trademark, and if the domain name in some way distinguishes the domain-registrant for any website related goods or services;
- If the defendant has any intention of using or employing the website for any bona fide rendering of goods or services; and
- Whether or not the registered domain name in any way poses a threat to divert Internet users from the mark proprietor’s website to any other website to the extent that trademark dilution may occur (such as with typosquatting practices).
The element of bad faith must show that the registrant in some way had knowledge that the practice was in fact unlawful, or that the registration of a known mark or trademark was unfair to the proprietor and could result in trademark dilution. A court will not grant relief to a plaintiff if it is found that the defendant lacked this knowledge or acted in good faith when registering the domain name.
Offering to sell the domain name to the proprietor of the trademark, will, in most cases result in the court finding that the registrant acted in bad faith, as was evident in the Toeppen-cases.
Remedies that may be granted by federal courts when deciding a case of cybersquatting or typosquatting include a court order for forfeiture of ownership, or cancellation of the registration of an offending domain name. Transfer of ownership to the legal proprietor of the mark may also be granted.
Where the use or registry of a domain name resulted in damages, section 1117(d) states that a court has discretion to appoint that statutory damages be paid in the amount of no less than $1000, and no more than $100 000 per offending domain name registration.
Zuccarini was ordered to pay $50 000 for each of five domain names that he registered in bad faith, the domain names being confusingly similar to those of the original mark.
He registered five spelling variations of the w
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