Conflicts: In Court
Despite the existence of the ICANN dispute resolution policy (UDRP -- Uniform Dispute Resolution Procedure) with its arbitration procedure, many domain disputes still wind up in the courts, with all the delays and expenses this entails. The U.S. "cybersquatting" law, which can impose $100,000 statutory damages for trademark infringement by domain name registration, provides a suitable threat for lawyers to wield in their "cease-and-desist" letters.
I don't care if it's your name too... I'm more famous and I want it!
In 2007, country singer Keith Urban sued another person also named Keith Urban, a New Jersey painter and web designer, demanding that he turn over the keithurban.com domain name that he registered first, fair and square. The singer has had to settle for keithurban.net. The other Keith Urban has countersued. More info.
There's been a similar dispute between two people named Don Henley, but although the musician has been rattling sabers for years about the use of don-henley.com by a namesake, it doesn't seem to have actually led to anything being filed in court.
Pandas Body-Slam Wrestlers
People, companies, and organizations sometimes go to court with seemingly outlandish claims -- and sometimes actually win! The World Wildlife Fund, for instance, sued the World Wrestling Federation to try to gain the wwf.com domain name. This would seem to be asinine. While the two groups share the same initials, the wildlife group is nonprofit, and quite properly has its site at wwf.org. The wrestling group is for-profit, and properly had (until 2002) its site at wwf.com. This sort of co-existence, with the same second-level domain in two different top-level domains intended for two different kinds of organizations is precisely how the domain name system was always supposed to function. Why have different top level domains at all if nobody can be tolerated to have the "same" name in a different one? The World Wrestling Federation has been a domain bully themselves, winning ICANN cases against various cybersquatters with domains containing "WWF", but now they found themselves to be the ones at the receiving end.
The wildlife fund won their case in British court, and later won the appeal too (read the decision), prompting the wrestling federation to throw in the towel and change its name to WWE, using the slogan "Get the 'F' out!"
My initial reaction was that "Some WWF wrestler ought to go over there and body-slam the dumb-ass judge!" This, however, proved unfair, because there was a 1994 agreement between the two WWFs to settle an earlier lawsuit, and while this didn't mention the Internet at all (neither side was apparently foresightful enough to see how important that would get over the years), it did require the wrestling people to limit their use of the initials outside the United States -- this leads to the question of whether a Web site, hosted in the U.S. but visible worldwide, violates this, which is a non-obvious question. Within the context of this agreement, the judge's decision is understandable, if still debatable. Really, the biggest "dumb-asses" in this case were the wrestling federation for agreeing to such a restrictive contract in the first place -- if they had pushed the earlier case through to a conclusion, a sane judge would hopefully have ruled that the two groups were in such disparate fields that neither was violating the trademark of the other. But they chickened out and signed a silly and shortsighted agreement, which later came back to haunt them. At any rate, the case in question turns out to be the culmination of years of conflict between the two organizations in many countries over many issues relating to the usage of those initials (since both organizations have produced magazines and clothing with their logos, for instance, they can be in closer proximity than it would seem at first), so it's much more than a simple domain name dispute.
Incidentally, the wildlife fund didn't end up with the wwf.com domain name after all of that... the newly-renamed WWE merely asked their registrar to cancel the domain registration, throwing that name (and others they owned which contained the problematic initials, some of which they had gained from others via earlier domain disputes) up to the public, first-come, first-served. An alert speculator who noticed its availability grabbed it, and has a wrestling-related site there now. So, can anybody (the wildlife fund or the renamed wrestling federation) sue them?
Fighting Back Against the UDRP
People on the losing end of ICANN decisions can also go to court, and that's what the owner of tonsil.com did after a ridiculous decision forced them to take their tonsils out... er, their tonsil domain, and transfer it to a German company that claims ownership of this common English word. The owner of barcelona.com tried the court route to attempt to overturn the anomolous UDRP decision taking away that domain and handing it to the city of Barcelona (anomolous because almost all other cases involving geographical names have been turned down because the names are intrinsically generic), but a U.S. court ruled that the Spanish trademarks owned by the city are protectible via U.S. anti-cybersquatting law. However, this was later reversed on appeal due to the court mistakenly applying Spanish trademark law instead of U.S. law, as well as their ruling on a supposed counterclaim by Barcelona's city council that was in fact never filed. As of 2018, barcelona.com still goes to an independent site not controlled by the city, and a .barcelona top level domain now exists which is apparently controlled by the city.
On the other hand, if the trademark owner loses its ICANN challenge, it can go to court too, and that's what happened in the ereferee.com case. The ICANN panel ruled that "referee" was too generic to be protected, but the trademark holder went to court and, so far, has receieved a preliminary injunction in its favor.
A court decision was very good for the status of non-trademark-owners who have good-faith reasons to register a domain that happens to coincide with somebody else's trademark. It was the case of James Strickland, who registered strick.com as an abbreviation of his surname (and a nickname he had been known by) after finding that strickland.com was already taken. He used it for his computer consulting company. However, a company named Strick challenged the domain, first under the old InterNic policy (which caused the domain to be placed on hold for years), then under the ICANN policy (where the decision favored the domain owner), and then finally in court. The judge in the case initially seemed to favor the absolute right of trademark owners to bully their way into owning the equivalent domain, but was convinced that this right was not absolute and decided in the domain owner's favor. This decision should be a good precedent for future cases, including the opposition to the claim of trademark owners that all future TLDs need to have sunrise periods to allow trademark owners to have the absolute first claim to their names. See information on this case at strick.com and law.com. Strickland's consulting site is now at tibertech.com.
Another case where a trademark owner went straight to court instead of to the UDRP is the Unicom case. In this case, the domain owner is an individual computer consultant who has been doing business as "Unicom" since 1989 and registered the domain unicom.com in 1990, which is before the World Wide Web even existed. Though the plaintiff, also named Unicom, existed earlier than that, it didn't get around to registering a trademark to its name until 2000, a decade after the domain was registered. That didn't stop them from filing suit under an anti-cybersquatting law that wasn't passed until long after the domain owner started using the name in his bona fide business. This case is still pending.
A case regarding the BancoChile.com domain is not only attempting to overturn that specific UDRP decision (as other cases have), but is trying to have the entire ICANN dispute resolution process declared to be illegal due to its lack of due process.
A Reverse Twist...
In at least one case, somebody who lost in court attempted to use the UDRP to get back, in a reversal of the normal situation. This didn't avail the former owner of suez.net, an Egyptian living in Canada who was using the domain to present tourism information about the Egyptian city of Suez, but was sued in French court by the company that built the Suez Canal and now claims trademark rights over the name (even though the city was there before the canal). This strikes me as a highly unfair case of reverse domain hijacking, but the domain owner apparently lacked the resources to fight back when dragged into court in a foreign country, so he lost; he then filed a UDRP case to try to get the domain back, but the decision went against him on the grounds that court decisions always outrank the UDRP panels.
This page was first created 14 Mar 2001, and was last modified 21 Jul 2018.