Rights Protection Mechanisms

Rights Protection Mechanisms are tools for intellectual property rights enforcement and protection in the DNS. The mechanisms deal primarily with trademark rights, whether registered under the US Patent and Trademark Office or in another forum (such as the EU Intellectual Property Office).

History of Trademark Infringement and Domain Names

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

Pre-Regulation: 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. 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."

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.

These cases were representative of an early trend of broadening trademark protections to stop "bad actors" on the cybersquatting side. As Harvard's case law summary from the era reports:

When confronted with such bad faith behavior courts have stretched existing law in order to prevent the cybersquatter from maintaining control over the domain name. Traditional trademark infringement analysis would not have covered many cybersquatting cases. Often cybersquatters register the domain name but do not post a web site under that name. Thus there can be no likelihood of confusion as required for trademark infringement. In such cases, the trademark holder would have to rely on a dilution claim. Additionally, even where a web site has been posted, it often was not commercial and thus seemingly didn't meet the "use in commerce" requirement for both infringement and dilution.

The Ninth Circuit in Panavision v. Toeppen set out a broad interpretation of "use in commerce" that has been followed by subsequent courts. In order to get at cybersquatters, the Ninth Circuit and subsequent courts have held that while mere registration does not constitute use in commerce, the offer to sell the domain name to the trademark holder is sufficient to meet this requirement.

In addition to broadly interpreting the "use in commerce" requirement to tag cybersquatters, courts have found dilution in cases where traditional dilution analysis might not have applied.

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:

1. has a bad faith intent to profit from [a] mark, including a personal name which is protected as a mark under this section; and
2. registers, traffics in, or uses a domain name that—
   1. 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;
   2. 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
   3. is a trademark, word, or name protected by reason of section 706 of title 18, United States Code [names and marks of the Red Cross], or section 220506 of title 36, United States Code [names and marks of U.S. Olympics organizations].

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:

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.

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.