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Trademark infringement in the domain space can take a variety of forms. Two of the most common are [[Cybersquatting|cybersquatting]] and [[Typosquatting|typosquatting]]. The history of these tactics reaches back to the earliest days of the Internet.

Trademark infringement in the domain space can take a variety of forms. Two of the most common are [[Cybersquatting|cybersquatting]] and [[Typosquatting|typosquatting]]. The history of these tactics reaches back to the earliest days of the Internet.

===Pre-Regulation: 1991-1999===

===Pre-Regulation: "Wild Wild West" and Case Law 1991-1999===

In the initial years of the world wide web, comparatively few brands saw the value of registering domains matching their existing trademarks. Early case law on the subject occasionally struggled to apply trademark infringement and dilution concepts to the domain space. In ''Planned Parenthood v. Bucci'' (March 1997), The U.S. District Court for the Southern District of New York applied a broad view of trademark principles to rule for the plaintiff.<ref name="harvardcomm">[https://cyber.harvard.edu/property00/domain/CaseLinks.html Harvard Berkman Center - Summaries of Domain Name Case Law]</ref> Bucci, a Catholic radio personality, had registered "plannedparenthood.com" and was using it to sell his book, which took a pro-life position. The court ruled that his efforts to sell his point of view were sufficiently commercial to create a "likelihood of confusion."<ref>Planned Parenthood v. Bucci - Decision via [https://cyber.harvard.edu/property00/domain/ppfa.html Harvard's Berkman Center]</ref>  

In the initial years of the world wide web, comparatively few brands saw the value of registering domains matching their existing trademarks. Cybersquatting became a commonplace term for individuals registering domain names in the names of famous brands, companies, or people. Analogies to "claiming stakes" and the lawlessness of the American frontier were also common.<ref>See eg [https://lawrepository.ualr.edu/lawreview/vol22/iss1/4/ ''The Virtual Wild Wild West''], U. Arkansas Law Review, vol. 4, 1999; <br />[https://digitalcommons.law.scu.edu/chtlj/vol17/iss1/5/ ''Get Off My URL: Congress Outlaws Cybersquatting in the Wild West of the Internet''], Santa Clara High Technology Law Journal, vol. 17, 2000;</ref><ref>The metaphor returned during the gTLD expansion, as well: [https://www.lexology.com/library/detail.aspx?g=ce7cba2e-1e3c-4c15-927f-43b3df018919 Lexology.com - "The wild west of gTLDs and trademarks"], July 22, 2014</ref>

 

Early case law on the subject occasionally struggled to apply trademark infringement and dilution concepts to the domain space. In ''Planned Parenthood v. Bucci'' (March 1997), The U.S. District Court for the Southern District of New York applied a broad view of trademark principles to rule for the plaintiff.<ref name="harvardcomm">[https://cyber.harvard.edu/property00/domain/CaseLinks.html Harvard Berkman Center - Summaries of Domain Name Case Law]</ref> Bucci, a Catholic radio personality, had registered "plannedparenthood.com" and was using it to sell his book, which took a pro-life position. The court ruled that his efforts to sell his point of view were sufficiently commercial to create a "likelihood of confusion."<ref>Planned Parenthood v. Bucci - Decision via [https://cyber.harvard.edu/property00/domain/ppfa.html Harvard's Berkman Center]</ref>  

Another case wrangling with the phenomenon of the Internet was ''Green Products Co. v. Independence Corn By-Products Co.'' (September 1997). Both companies were in the business of selling corncob by-products. Independence preemptively registered "greenproducts.com." The simple act of registration was enough for the U.S. District Court for the Northern District of Iowa to grant Green Products' summary judgment motion on its dilution claims. The court concluded that there was no harm in enforcing an immediate transfer of the domain, because if Independence prevailed at trial, the court could simply order Green Products to transfer the domain back to Independence.<ref>Green Products Co. v. Independence Corn By-Products Co. - Decision via [https://cyber.harvard.edu/property00/domain/green.html Harvard's Berkman Center]</ref>  

Another case wrangling with the phenomenon of the Internet was ''Green Products Co. v. Independence Corn By-Products Co.'' (September 1997). Both companies were in the business of selling corncob by-products. Independence preemptively registered "greenproducts.com." The simple act of registration was enough for the U.S. District Court for the Northern District of Iowa to grant Green Products' summary judgment motion on its dilution claims. The court concluded that there was no harm in enforcing an immediate transfer of the domain, because if Independence prevailed at trial, the court could simply order Green Products to transfer the domain back to Independence.<ref>Green Products Co. v. Independence Corn By-Products Co. - Decision via [https://cyber.harvard.edu/property00/domain/green.html Harvard's Berkman Center]</ref>  

===[[Anti-Cybersquatting Consumer Protection Act|ACPA]] & [[UDRP]]===

===[[Anti-Cybersquatting Consumer Protection Act|ACPA]] & [[UDRP]]===

At the end of 1999, as part of the Intellectual Property and Communications Omnibus Reform Act of 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA). The law amended the [[Lanham Act]] to explicitly forbid cybersquatting. ACPA assigns civil liability to any person who:

At the end of 1999, as part of the Intellectual Property and Communications Omnibus Reform Act of 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACCPA). The law amended the [[Lanham Act]] to explicitly forbid cybersquatting. ACPA assigns civil liability to any person who:

#has a bad faith intent to profit from [a] mark, including a personal name which is protected as a mark under this section; and

#has a bad faith intent to profit from [a] mark, including a personal name which is protected as a mark under this section; and

#registers, traffics in, or uses a domain name that—  

#registers, traffics in, or uses a domain name that—  

##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;

##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;

##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; or

##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; or

##is a trademark, word, or name protected by reason of [https://www.law.cornell.edu/uscode/text/18/706 section 706 of title 18, United States Code] [names and marks of the Red Cross], or [https://www.law.cornell.edu/uscode/text/36/220506 section 220506 of title 36, United States Code] names and marks of U.S. Olympics organizations.<ref name="accpa">The ACCPA was included in an omnibus appropriations bill, available [https://www.govinfo.gov/content/pkg/PLAW-106publ113/pdf/PLAW-106publ113.pdf here] (PDF)</ref><ref name="cornell">[https://www.law.cornell.edu/uscode/text/15/1125#d_1 HTML version] via Cornell Legal Information Institute</ref>

##is a trademark, word, or name protected by reason of [https://www.law.cornell.edu/uscode/text/18/706 section 706 of title 18, United States Code] [names and marks of the Red Cross], or [https://www.law.cornell.edu/uscode/text/36/220506 section 220506 of title 36, United States Code] names and marks of U.S. Olympics organizations.<ref name="accpa">The ACPA was included in an omnibus appropriations bill, available [https://www.govinfo.gov/content/pkg/PLAW-106publ113/pdf/PLAW-106publ113.pdf here] (PDF)</ref><ref name="cornell">[https://www.law.cornell.edu/uscode/text/15/1125#d_1 HTML version] via Cornell Legal Information Institute</ref>

ACPA codified the Ninth Circuit's decision in ''Panavision'' and made the offer to sell a domain to the mark holder sufficient to invoke liability:  

ACPA codified the Ninth Circuit's decision in ''Panavision'' and made the offer to sell a domain to the mark holder sufficient to invoke liability:  

<blockquote>As used in this paragraph, the term “traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.<ref name="cornell" /></blockquote>  

<blockquote>As used in this paragraph, the term “traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.<ref name="cornell" /></blockquote>  

ACCPA applied to all domain registrations, past, present, and future. However, statutory damages were only available to plaintiffs in cybersquatting cases where the domain was registered after the effective date of the law.<ref name="accpa" />

ACPA applied to all domain registrations, past, present, and future. However, statutory damages were only available to plaintiffs in cybersquatting cases where the domain was registered after the effective date of the law.<ref name="accpa" />

In the same timeframe, the U.S. Department of Commerce drafted the white paper that led to the creation of ICANN. The white paper also stated the Commerce Department's intention to ask [[WIPO]] to study and formulate solutions to trademark issues around domain names.<ref>[https://www.icann.org/resources/unthemed-pages/white-paper-2012-02-25-en US Dept. of Commerce - Management of Internet Names and Addresses], archived on ICANN.org]</ref> WIPO presented their study to the newly-formed ICANN in April 1999.<ref name="udrphistory">[https://www.icann.org/resources/pages/schedule-2012-02-25-en ICANN.org - Timeline for the Forumulation & Implementation of the UDRP]</ref>

In the same time frame, the U.S. Department of Commerce drafted the white paper that led to the creation of ICANN. The white paper also stated the Commerce Department's intention to ask [[WIPO]] to study and formulate solutions to trademark issues around domain names.<ref>[https://www.icann.org/resources/unthemed-pages/white-paper-2012-02-25-en US Dept. of Commerce - Management of Internet Names and Addresses], archived on ICANN.org]</ref> WIPO presented their study to the newly-formed ICANN in April 1999.<ref name="udrphistory">[https://www.icann.org/resources/pages/schedule-2012-02-25-en ICANN.org - Timeline for the Forumulation & Implementation of the UDRP]</ref> The board referred the matter to the [[DNSO]] for review and recommendations. At ICANN 3 in Santiago, Chile, August 1999, a group of registrars submitted a proposed Model Dispute Resolution Policy.<ref name="udrphistory" />The board instructed ICANN staff to formulate implementation documents, using the model policy as a starting point.<ref>[https://www.icann.org/resources/board-material/minutes-1999-08-26-en#99.81 ICANN Board Resolution 99.81 et seq]</ref> After circulation and comment on draft documents, the Uniform Dispute Resolution Policy ([[UDRP]]) was adopted by resolution on October 24, 1999.<ref>[https://www.icann.org/resources/board-material/minutes-1999-10-24-en ICANN.org - Minutes of Special Meeting], October 24, 1999.</ref> [[WIPO]] became the first approved arbiter of UDRP proceedings on November 29, 1999.<ref name="udrphistory" /> Additional dispute-resolution service providers followed: the [[National Arbitration Forum]] (NAF) in 1999;<ref>[https://www.adrforum.com/domain-dispute/udrp ADRForum.com - UDRP]</ref> Disputes.org/eResolution Consortium in 2000 (subsequently transferred to eResolution);<ref>No longer active - decision archive available at [http://www.disputes.org/index.htm Disputes.org]</ref> and the CPR Institute for Dispute Resolution in 2000.<ref>No longer active - decision archive available at [https://www.cpradr.org/resource-center/icann-decisions CPRADR.org]</ref><ref name="udrphistory" />

==References==

==References==

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