Apple commenced legal action in the WIPO against several domain names with obvious similarities to Apple products that host pornography instead of Apple-approved content. The domains in question are iphonecamforce.com, iphonecam4s.com, iphonesex4s.com, iphonexxxforce.com, iphone4s.com and porn4iphones.com, as reported by .��To succeed, Apple will likely have to demonstrate that it has the trade-mark (and that the trade-mark is identical or confusingly similar), that the registrant has no legitimate interest in the domain and that the domain name was registered in bad faith.

These types of cases raise interesting questions as the internet becomes ubiquitous in how companies market and sell their products. Given the universal importance of domain names as addresses in cyberspace, the legal identity of a domain name registration has not been clear. Are they property? Are they an extension of trade-mark? How should they be regulated? Should companies be able to register domain names corresponding to valuable trade-marks with the intention to either extort the companies to buy the domain names back from them or to free-ride off the goodwill developed by the trade-mark?

It appears that the worst of these offenders is iphone4s.com, which uses exactly the same brand name as Apple’s latest generation handset. An innocent customer may be misled when the customer accidentally types in the address, and gets a rather shocking surprise upon loading the webpage. There have been several recent cases at WIPO with similar facts where the administrative panel decided to transfer the domain name registration to the trade-mark owner after deliberating on the matter ().

However, for the other domain registrations, it may not be as simple for Apple to require the owners to transfer the registrations. Simply because a domain name registration is found by a company to be offensive to the particular brand strategy associated with their product might not be sufficient grounds to demonstrate bad faith by the registrant. For example, porn4iphones.com unsurprisingly redirects to a pornography site. Would Apple be justified in requesting a transfer, saying that the domain registration would dilute the goodwill associated with their iPhone product line? Would the situation be different if the domain owner used the website for a pornography website specifically targeted towards the iPhone market?

What is interesting about this particular situation is the relatively high profile of the dispute – the mere fact that it is Apple initiating the complaint has generated a large amount of discussion among the internet-using public. As such, it provides a good opportunity to take a look at comments and concerns raised from consumers who may not have a deep understanding of the underlying legal framework. In a cursory review of the and ��forums, I found several comments that I thought covered some rather cogent points:

• “Apple knew what they want to name their phones a long time ahead and could have registered that domain a long time ago… Apple has the same rights and this is a first come first serve service. Porn business might not be the most liked business but people invest money and expect returns. Buying or registering popular domains is a key feature of their business. For this reason, I absolutely disagree with what Apple is doing.” (Mad-B-One, Macrumors.com)
• “I'm sorry, but this is pretty hilarious... I feel bad for innocent folk who've gone to some of the more safe domain names, only to get a big surprise” (Sackvillenb, Macrumors.com)
• “Obviously Apple wants to do this because they are planning to launch their own porn site for iOS. That's why they are so adamant about no porn on the app store .. because they are planning their own porn newsstand app or perhaps Fap Store?” (HelveticaNeue, Macrumors.com)
• “So if you register a domain before some company copyrights the words...who wins?” (ZipZap, Macrumors.com)
• “They absolutely mislead the user. A lot of users are not Internet savvy. If they type "iPhone4s.com" into their browser...what do you think they expect to see? People can register domains - but if they register using someone else's brand/trademark then they are infringing. They are using Apples global brand presence to attract traffic to their sites… When a domain name has no meaning/relevance to the content or products and services on the site...this is classed as being registered in bad faith under UDRP.” (fleggy, Macrumors.com)
• “Can't Apple just buy the domain name from the current owners? It was registered 3 years ago, an although they are obviously trolls nothing stopped Apple from registering the address in advance.” (saa rek, Appleinsider.com)
• “Why pay the market price when you can take the average joe to court, beat him down with legal costs, and force him to give it up for much less.” (airnerd, Appleinsider.com)
• “Because Apple does not want the iPhone name linked with porn venders who are clearly using the popularity of the brand to lure in people who may have no need or interest for porn. Apple has every right to keep it's name clean and not associated with porn which is a controversial subject that they need no part of…” (Rtapps, Appleinsider.com)

It appears that there is public support for both sides of the coin but also some confusion with regards to the purpose of domain name dispute resolution mechanisms. Are they designed to protect innocent brand owners from market confusion and dilution of their brands, or is it a tool for brand owners to oppress domain name registrations that they find morally repugnant? Maybe by reading about high-profile matters like these, the average internet user will learn what constitutes “bad faith” and also what principles these domain name decisions are based on.

The post Finding The Law: Apple Disputes Domain Names Used For Porn Sites appeared first on IPOsgoode.

Background

The Sutherland Institute is a conservative think tank based in Utah. Their website is based at SutherlandInstitute.org. The respondent is a gay rights activist who set up a critical website at SutherlandInstitute.com. The respondent's website looks very nearly identical to the complainant's except for the background color and the text. Understandably, the Sutherland Institute was unhappy when a large donor confused the two and voiced their concern over the content on the Sutherland Institute's website. The Uniform Domain Name Dispute Resolution Policy (UDRP) requires the complainant show three things: (i) the domain is identical or confusingly similar to the complainant's mark, (ii) the respondent has no legitimate rights in the name, and (iii) the domain was registered and used in bad faith. For a much more detailed discussion of these elements, see "" on this website. Despite the confusion being generated and no defense being presented by the respondent, the arbitrator denied the Institute's request for transfer of the domain on the grounds that the complainant had not shown it was held in bad faith.

Free Speech and Domains

This dispute can be viewed as being about the limits of trademark's ability to infringe on free expression. Does the right to free speech give a person the legitimate right to use a trademark in a domain name? In copyright, fair use helps define this limit by protecting academic research, news reporting, and (in the US, anyway) parody. "Nominative fair use" of trademarks is recognized in US case law. You can use a trademark in speaking about the trademark owner subject to two conditions: you use the trademark only as necessary for your purpose and you do not imply that the trademark owner endorses your use. This was not the case here as the purpose of the respondent's website was to (initially at least) confuse visitors. Could the usage be considered a parody? The issue in UDRP cases is the domain name---the use of the mark---not the website. The mark itself is reproduced in the domain name in its entirety and in isolation.��A parody cannot be a mere copy and, as such, the panel determined that the Respondent's use��does not constitute parody.

However, despite finding no legitimate right to use the mark, the panel refused to say that the use of the domain was in bad faith---the third element the complainant must prove. The purpose of the UDRP is, primarily, to prevent the commercial exploitation of trademarks in domain names: to prevent companies from tricking users into visiting their site for monetary gain. In this case, however, the respondent was using the complainant's trademark to trick people into listening to opposing political speech. The panel could have found this to be bad faith usage but instead said this:

Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of "bad faith".

This statement can be viewed in two ways. It has been criticized as : by bringing local laws into the arbitration process they are moving away from the goal of uniformity and bringing complex choice of law issues into the mix. On the other hand, I believe it reflects the role of the UDRP. The UDRP provides an expedited arbitration process for quickly addressing the most common types of domain abuse. It was never intended to balance intellectual property rights against civil rights. The panel does not say that they are upholding the respondent's right to the domain based on the US Constitution, rather they simply say that the issue is beyond their competency. I think that that is a fair stance for them to take.

So, does free speech protect domain squatters? I guess it's an issue for the courts to decide.

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Sibling Rivalry: The intersection of Domain Names and Trade-marks

Domain names and trade-mark owners have always had a contentious co-existence.�� Whereas trade-mark rights are granted on a use basis, domain names are registered on a "first-come, first-serve" basis.�� Obtaining a trade-mark registration requires rigorous prosecution; the threshold for obtaining a domain name is very low.�� Trade-mark rights are granted territorially; domain names are global.�� Once a domain name is registered, there cannot be any duplicate domain name; identical trade-marks can exist in association with sufficiently disparate wares and services.

The exclusivity of the domain name registration and the "first-come, first-serve" characteristics of the domain name can be a great cause of frustration for trade-mark owners.�� There are countless examples of unauthorized domain names encompassing 3^rd party's trade-mark rights.�� Once these domain names are registered, the domain name is no longer available to the trade-mark owner.�� The practice of registering domain names containing trade-marks, without having a legitimate interest in those domain names, is commonly referred to as cybersquatting.��

The World Intellectual Property Office ("WIPO") recognized this contentious paradigm and instituted, in December 1999, a dispute resolution process, governed by the Uniform Dispute Resolution Policy ("UDRP").�� The UDRP is geared solely toward adjudicating between domain name registrations and trade-mark owners' rights over those domain names.�� Since its inception, close to 15,000 UDRP complaints have been lodged.�� WIPO recently reported that the number of UDRP complaints continues to rise with an 8% increase from 2007 to 2008.¹�� It is likely that this upward trend will continue with the introduction of new gTLD's.

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What is a gTLD?

A generic Top Level Domain (gTLD) is the end component of a domain name (i.e. ".com", ".net", ".info").�� Whereas some gTLDs are open to any party (i.e. ".com"), others are restricted to qualifying entities (i.e. ".museum").�� The plethora of gTLDs currently available (currently totaling 21 gTLDs) is a frustrating factor for trade-mark owners as there are multiple variations of domain names that can be registered that are comprised of a single trade-mark.�� For example, whereas the trade-mark owner may register the domain name "TRADE-MARK.com", there are 21 possible remaining domain names containing "TRADE-MARK" that are available.�� And this does not include country specific domain names, such as ".us", ".ca", ".uk".��

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A Cybersquatter's Heyday

After a detailed and lengthy consultation process, the Internet Corporation for Assigned Names and Numbers ("ICANN") has approved the introduction of new gTLDs. ��The decision to expand the number of gTLDs stems primarily from the old adage of supply and demand: with 1.5 billion internet users (a number that is ever expanding), increased gTLDs will allow for more flexibility and choice in the selection of domain names.����

The creation and ownership of the new gTLDs is not by WIPO or ICANN, but rather through public and private sector organizations who will be required to demonstrate that they meet certain criteria to safeguard cyber-security issues.�� Once again, this raises issues for trade-mark owners.�� Trade-mark owners have not been granted a sunrise period to submit their applications for the creation of gTLDs that contain their trade-marks.�� Trade-mark owners must apply for their gTLD at the same time as every other entity seeking to create and maintain a new gTLD.�� In the event that a 3^rd party applies to create and maintain a new gTLD containing a trade-mark, the onus is on the trade-mark owner to object to the application as ICANN does not provide any notification to the trade-mark owners of such gTLD applications.�� The proposed new gTLD applications will be published at which point the trade-mark owner can determine whether their rights will be infringed.������

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What Does this Mean?��

Ultimately, the trade-mark owner must be extra vigilant.�� First, is a 3^rd party seeking to create a new gTLD that contains your company's trade-mark(s)?�� Assess whether the proposed new gTLD should be opposed.�� However, the steps involved in the objection process are still unclear.����

Second, once the new gTLDs are released, are 3^rd parties registering domain names that are confusingly similar to your company's trade-marks?�� If yes, consider initiating UDRP proceedings against those infringing domain names.�� But once again, the onus is on the trade-mark owner to monitor the registration of new infringing domain names.��

The silver lining is that UDRP proceedings are relatively inexpensive and time efficient proceedings that have a very high success rate for trade-mark owners.�� In fact, WIPO estimates that 85% of UDRP complaints are decided in favour of the trade-mark owner.²�� The UDRP contains a three-part test to determine whether a domain name is infringing a trade-mark owner's rights:

1. whether the domain name is identical or confusingly similar to the complainant's trade-mark;

2. the domain name registrant has no legitimate rights or interests in the domain name; and

3. the domain name was registered and is being used in bad faith.

Generally, the expected turn around from filing the complaint to receiving a decision is approximately 3 months.��

²��WIPO "Record Number of Cypersquatting Cases in 2008, WIPO Proposes Paperless UDRP", March 16, 2009

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