Internet Law and Domain Name Disputes

What Is Internet Law?

Internet law is not an actual type of law, but rather, is an expansive conglomeration and interrelationship between areas of law and legal doctrines related to intellectual property, contract law, warranties, privacy, constitutional law, and conflict of laws as they pertain to use of the Internet. Internet law and its related fields are also referred to as computer law and cyberlaw.

How Can Johnson & Martin, P.A. Assist With Issues Related to Internet Law?

Our firm assists clients with Internet-related matters in the areas of patent, trademark and copyright protection and enforcement and contract law. Examples of several of the Internet law-related matters with which we assist our clients include representation in and preparation and/or negotiation of:

• Software patents, including patent application for mobile device software applications
• Design patent protection for on-screen digital icons and graphical user interfaces (GUIs)
• Website and e-commerce related trademarks
• Internet common law and domain name-related trademark searches
• Copyright protection for websites; text, images and other works displayed over the Internet
• Copyright protection for software code
• Software license agreements
• Website terms and conditions (or terms of use)
• Website privacy policies
• End user license agreements (EULAs)
• Website development agreements
• Website purchase agreements
• Software development agreements
• Online marketing agreements
• Electronic data retention policies
• Domain name transfer agreements
• Cybersquatting disputes, including in rem civil actions against domain names
• Domain name disputes (or UDRP proceedings)
• Patent infringement disputes related to websites or other online activities
• Trademark infringement disputes related to websites or other online activities
• Copyright infringement disputes related to websites or other online activities
• Online defamation disputes
• Online right of publicity and privacy disputes

What Is Cybersquatting?

Cybersquatting is the unauthorized and unlawful use, registration of, or trafficking in a domain name that is:

(i) identical or confusingly similar to a registered trademark that was distinctive at the time of registration of the domain name, or
(ii) identical or confusingly similar to or dilutes a registered trademark that was famous at the time of registration of the domain name,

by an individual or business entity having a bad faith intent to profit from the mark. Under the U.S. federal anti-cybersquatting law, a trademark owner may file a civil lawsuit seeking damages and injunctive relief for violations of trademark rights by a party engaged in cybersquatting. In litigation related to such violations of trademark rights, the goods and services of the cybersquatter are not required to be identical, similar, or related to the goods and services of the trademark owner for liability to be found.

Can a Lawsuit for Cybersquatting Be Filed When the Domain Name Owner Cannot Be Located?

If a court finds that a trademark owner is unable to obtain jurisdiction, or through due diligence, was unable to find a person who would have been a defendant in a civil action (i.e., a lawsuit) for cybersquatting, the trademark owner may file an in rem action against the domain name itself through which the court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the trademark owner.

Can a Lawsuit for Cybersquatting Be Filed Against the Domain Name Registrar?

No. Under federal law, domain name registrars are not liable for damages or injunctive relief under the federal anti-cybersquatting law except in the case of bad faith or reckless disregard, which includes a willful failure to comply with a court order in a cybersquatting lawsuit.

What Is a Domain Name Dispute?

A domain name dispute is a dispute between two parties concerning the registration of a domain name. Like cybersquatting, domain name disputes arise from the registration of a trademark as a domain name by a party without the trademark owner’s consent.

In the absence of a negotiated settlement of such dispute between the parties involved, domain name disputes are generally settled either through (i) non-binding arbitration known as a domain name dispute (also known as a domain dispute resolution or a UDRP) proceeding, or (ii) litigation. Domain name dispute proceedings are a lower-cost alternative to cybersquatting litigation in court for enforcing a trademark owner’s trademark rights against a cybersquatter.

Domain name dispute proceedings are governed by the Uniform Domain-Name Dispute Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP governs domain name disputes related to all domain names registered under the major top level domains including disputes related to .asia, .biz, .com, .info, .mobi, .net, and .org domain names, among others. All domain name registrars engaged in the business of registering domain names under these top level domains must abide by the UDRP and the decisions of an ICANN-approved dispute-resolution service provider in any domain name dispute proceedings.

Domain name dispute proceedings are decided by either a single-member or three-member panel of arbitrators as decided by the parties involved in the dispute. Generally, in-person hearings are not required or permitted. ICANN maintains a list of approved dispute-resolution service providers.

Under What Circumstances Can a Domain Name Dispute Proceeding Be Filed?

A trademark owner may initiate a domain name dispute proceeding when (i) another party (i.e., the registrant) registers a domain name that is identical or confusingly similar to a trademark or service mark in which the trademark owner has rights; (ii) the registrant has no rights or legitimate interests in the domain name; and (iii) the domain name has been registered and is being used in bad faith by the registrant.

What Remedies Are Available to a Trademark Owner in a Domain Name Dispute Proceeding?

If the domain name dispute proceeding is decided in favor of the trademark owner, the dispute-resolution service provider can cancel, transfer or otherwise make changes to a domain name registration registered and used in bad faith by the cybersquatter.

Does the Decision of the Dispute-Resolution Service Provider Bar the Filing of a Lawsuit?

No. The decisions of the domain name dispute-resolution service provider are not binding on courts, and the parties may initiate litigation against one another either before, during or after the domain name dispute proceeding.

Please contact one of our attorneys if you require assistance with any Internet law matters, including if you require assistance either as plaintiff or defendant in a cybersquatting lawsuit or as complainant or respondent in a domain name dispute proceeding.