The New Cybersquatters: The Evolution of Trademark Enforcement in the Domain Name Space

Fordham Intellectual Property, Media and Entertainment Law Fordham Intellectual Property, Media and Entertainment Law

Journal Journal

Volume 30

XXX

Number 2

Article 2

2020

The New Cybersquatters: The Evolution of Trademark The New Cybersquatters: The Evolution of Trademark

Enforcement in the Domain Name Space Enforcement in the Domain Name Space

Michael Karanicolas

Yale Law School

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Recommended Citation Recommended Citation

Michael Karanicolas,

The New Cybersquatters: The Evolution of Trademark Enforcement in the Domain

Name Space

, 30 Fordham Intell. Prop. Media & Ent. L.J. 399 (2020).

Available at: https://ir.lawnet.fordham.edu/iplj/vol30/iss2/2

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The New Cybersquatters: The Evolution of Trademark Enforcement in the Domain The New Cybersquatters: The Evolution of Trademark Enforcement in the Domain

Name Space Name Space

Cover Page Footnote Cover Page Footnote

Wikimedia Fellow, Information Society Project, Yale Law School. Sincere thanks to Kathy Kleiman,

Rebecca Tushnet, Zak Muscovitch, and Abraham Drassinower, all of whom offered very helpful feedback

in drafting this Article.

This article is available in Fordham Intellectual Property, Media and Entertainment Law Journal:

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

399

The New Cybersquatters: The Evolution

of Trademark Enforcement in the

Domain Name Space

Michael Karanicolas*

The domain name space has become a particularly contentious

area of trademark enforcement as a result of the growth of online

commerce, an intense competition for popular domain names, and

new conceptual challenges stemming from the borderless and

textual nature of the medium. In response, the Internet Corporation

for Assigned Names and Numbers (“ICANN”), a global non-profit

which oversees the domain-name space, has implemented a highly

sophisticated set of rights-protection mechanisms. This Article

examines the scope of trademark protections applied under

ICANN’s rights protection mechanisms to demonstrate that they

have evolved far beyond their traditional consumer protection

function; indeed, they have morphed into offensive brand manage-

ment tools, whose application in the global domain name space

vastly exceeds the protections that are available under domestic

legal frameworks. The Article begins by introducing ICANN and

its main trademark protection instruments, namely the Uniform

Dispute Resolution Policy, the Uniform Rapid Suspension, and the

Trademark Clearinghouse, before demonstrating the divergence

between protections under these systems and the protections under

domestic legal frameworks. The result is that trademark owners turn

to ICANN for rights and remedies that would not be available from

ordinary sovereigns, embodying a major expansion of trademark

protections. The Article concludes by outlining the contours of

Wikimedia Fellow, Information Society Project, Yale Law School. Sincere thanks to

Kathy Kleiman, Rebecca Tushnet, Zak Muscovitch, and Abraham Drassinower, all of

whom offered very helpful feedback in drafting this Article.

400 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



ongoing discussions re-examining these mechanisms, and the

challenges in curbing this maximalist view of trademark law.

NTRODUCTION ..................................................................... 401

I. BACKGROUND: ICANN AND THE DOMAIN NAME

SYSTEM ................................................................ 402

A. ICANN ............................................................ 402

1. Multi-Stakeholder Decision Making ....... 404

II. TRADEMARK LAW AND THE DOMAIN NAME

SPACE .................................................................. 406

A. The Origin and Purpose of Trademark Law .. 406

B. Dilution and Tarnishment .............................. 407

C. Trademark Law and the Domain Name

Space .............................................................. 411

III. THE ORIGINS OF CONFLICT .................................. 413

A. The Rise of Cybersquatting ............................ 413

B. Developing the Uniform Dispute Resolution

Policy ............................................................. 416

C. How the UDRP Works ................................... 418

D. The UDRP in Action ...................................... 420

IV. THE NEXT GENERATION OF RIGHTS PROTECTION

MECHANISMS ....................................................... 427

A. The gTLD Expansion ..................................... 427

B. From Cybersquatting to Typosquatting ......... 429

C. The Uniform Rapid Suspension ...................... 430

D. The Trademark Clearinghouse, Sunrise

Registrations, and Trademark Claims

Services .......................................................... 434



V. ONGOING DEBATES .............................................. 441

A. ICANN’s Rights Protection Mechanisms Working

Group ............................................................. 441



B. Private Sector Trademark Protection

Initiatives ........................................................ 442



CONCLUSION ......................................................................... 444

2020] THE NEW CYBERSQUATTERS 401



NTRODUCTION

The spread of internet access presents challenges across many

different fields of legal theory as concepts developed for an offline

world have had to be revised and adapted to deal with new digital

realities. The most difficult aspects of this revolve around the bor-

derless and international nature of the internet, which can challenge

fundamental notions of jurisdiction and sovereignty. Online speech

exists simultaneously everywhere and nowhere, and the extra-

territorial application of rules on issues such as privacy

and hate

speech

are matters of emerging debate. Trademark law was one of

the areas of regulation where these challenges first emerged, as

major brands sought to assert ownership over domain names asso-

ciated with their products. These debates had a significant impact in

shaping the modern internet governance space. Moreover, over the

past two decades, voices calling for stronger enforcement of trade-

mark rights have been profoundly successful, not only in the

establishment of specialized mechanisms to assert their interests,

but in developing an emergent area of law that has become almost

totally unrecognizable from its traditional origins in consumer

protection, and the prevention of confusion in commerce.

This Article examines the trademark protection framework that

has developed to apply to the global domain name space, and

contrasts that framework against the role and function of trademark

law in order to demonstrate that current enforcement mechanisms

have moved far beyond the traditional justification for their legal

status. The Article demonstrates that enforcement mechanisms have

become offensive brand management tools, whose application in the

See, e.g., Why and How GDPR Applies to Companies Globally, PRIVACY INT’L

(May 25, 2018), https://privacyinternational.org/feature/2207/why-and-how-gdpr-applies-

companies-globally [https://perma.cc/8EYX-2RTH].

See, e.g., Philip Oltermann, Tough New German Law Puts Tech Firms and Free

Speech in Spotlight, G

UARDIAN (Jan. 5, 2018), https://www.theguardian.com/world/2018/

jan/05/tough-new-german-law-puts-tech-firms-and-free-speech-in-spotlight

[https://perma.cc/5FT7-2FFA].

See Rights Protection Mechanisms (RPMs) & Dispute Resolutions Procedures

(DRPs), ICANN (Nov. 8, 2019), https://www.icann.org/resources/pages/rpm-drp-2017-

10-04-en [https://perma.cc/3D2B-7EDK].

See infra Parts IV, V.

402 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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global domain name space vastly exceeds the protections that are

available under domestic legal frameworks.

Part I will describe the main international body governing the

domain name space, ICANN, and will also address the multi-

stakeholder process by which ICANN makes decisions. The Article

will pay particular attention to the representation of trademark

interests in this ecosystem. Part II will then give a basic introduction

to trademark law, particularly as developed and applied in three

sample jurisdictions: Canada, the United States, and the European

Union (“EU”). Part III discusses the origins of the main trademark

protection system in the domain name space, the Uniform Dispute

Resolution Policy, before Part IV introduces the newer generation

of rights protection mechanisms, in particular the Uniform Rapid

Suspension and the Trademark Clearinghouse. The standards

of trademark protection enforced under these systems will be

contrasted with those established under domestic frameworks, in

order to demonstrate the divergence. Under the evolving policy

arbitrage, trademark owners turn to ICANN for rights and remedies

that would not be available from ordinary sovereigns, with the result

that the system favors larger and better-established entities over new

entrants. Part V will go on to discuss emerging areas of enforcement,

such as through new private-sector-led initiatives, before conclud-

ing with a discussion of what this all means for the global domain

name space, and the avenue ahead.

I. B

ACKGROUND: ICANN AND THE DOMAIN NAME SYSTEM

A. ICANN

ICANN is a non-profit corporation that oversees a number of

critical technical functions underlying the global internet, including

managing the generic top-level domain name system (“gTLD”) and

the country code top-level domain name system (“ccTLD”).

In lay

terms, ICANN coordinates the connection between the address or

name that people use to navigate to a website, such as “google.com”

Welcome to ICANN!, ICANN (Nov. 8, 2019), https://www.icann.org/resources/pages/

welcome-2012-02-25-en [https://perma.cc/M8T9-2XCS].

2020] THE NEW CYBERSQUATTERS 403

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or “yale.edu,” and its location on the global network. This global

domain name system (“DNS”) is necessary to make the internet

accessible and usable, since while computers find places on the

global network via a string of numbers, like “192.0.32.7,” domain

names create a shorthand that is easy to remember and share.

ICANN’s role is to coordinate this global system of identifiers with

the goal of ensuring “universal resolvability,” meaning that

wherever you are in the world, accessing the network with the same

query will return the same results.

ICANN was incorporated to carry out these functions in 1998,

taking over management from Network Solutions Inc., a private,

U.S.-based company.

ICANN carried out this work under a memo-

randum of understanding from the U.S. Department of Commerce.

The U.S. government’s role flowed from the fact that the internet

protocols were developed primarily by researchers in the United

States, working under grants from the Defense Advanced Research

Projects Agency and the National Science Foundation.

However,

as the internet grew and expanded, there was increasing pressure to

“internationalize” the governance of internet identifiers in order

to better insulate the process from partisan politics, as well as to

safeguard against the erection of global jurisdictional barriers to the

free flow of information.

It is worth noting that this pressure

emanated not only from the technical community, but also from

business interests and civil society groups.

As a result, between

2014 and 2016, ICANN and the National Telecommunications

and Information Administration (“NTIA”) carried out the “IANA

What Does ICANN Do?, ICANN (Nov. 25, 2019), https://www.icann.org/resources/

pages/what-2012-02-25-en [https://perma.cc/69FM-9SLT].

Id.

See MILTON L. MUELLER, RULING THE ROOT: INTERNET GOVERNANCE AND THE

TAMING OF CYBERSPACE 194–98 (2002).

See generally U.S. DEP’T OF COMMERCE, MEMORANDUM OF UNDERSTANDING

BETWEEN THE U.S. DEPARTMENT OF COMMERCE AND INTERNET CORPORATION FOR

ASSIGNED NAMES AND NUMBERS (1998), https://www.ntia.doc.gov/other-publication/

1998/memorandum-understanding-between-us-department-commerce-and-internet-

corporat [https://perma.cc/WR8N-KYVN].

See Milton L. Mueller, Detaching Internet Governance from the State: Globalizing

the IANA, 4 GEO. J. INT’L AFF. 35 (2014).

Id. at 35–36.

See id. at 37.

404 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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Stewardship Transition,” under which the agreement between

ICANN and the U.S. government was allowed to expire and this

function was delegated fully and independently to ICANN.

1. Multi-Stakeholder Decision Making

ICANN itself operates as a multi-stakeholder organization, with

multiple different layers of decision-making, led by a President

and a Board of Directors.

However, despite the organization’s

pretenses of inclusivity (including the fact that its three annual meet-

ings are open to the public)

ICANN’s processes are notoriously

difficult for outsiders to wrap their heads around.

There are a

number of reasons for this, including a heavy reliance on long and

unintuitive acronyms,

the “byzantine” structure of the organiza-

tion,

and the highly specialized and technically sophisticated

nature of the debates.

ICANN’s multi-stakeholder model includes spaces for

engagement by governments through the Governmental Advisory

Committee,

engagement by civil society through the Non-

Stewardship of IANA Functions Transitions to Global Internet Community as

Contract with U.S. Government Ends, ICANN (Oct. 1, 2016), https://www.icann.org/

news/announcement-2016-10-01-en [https://perma.cc/KG52-E8T8]. IANA stands for the

Internet Assigned Numbers Authority. See id.

See Insperity OrgPlus 2012, ICANN (Nov. 3, 2019), https://www.icann.org/en/

system/files/files/management-org-01may18-en.pdf [https://perma.cc/4TRW-Z83N].

See About, ICANN PUB. MEETINGS (Nov. 8, 2019), https://meetings.icann.org/en/

about [https://perma.cc/B2PL-ACLY].

See Annemarie Bridy, Notice and Takedown in the Domain Name System: ICANN’s

Ambivalent Drift into Online Content Regulation, 74 WASH. & LEE L. REV. 1346, 1350–51

(2017).

Acronyms are such a part of life in ICANN that the organization created a multilingual

tool to help explain them. See ICANN Acronyms and Terms, ICANN, https://www.icann.

org/icann-acronyms-and-terms/en/nav/A [https://perma.cc/85A9-YBAL].

Bridy, supra note 16, at 1350.

For example, one of ICANN’s more high-profile community-review processes, the

Security, Stability, and Resiliency Review, has a mandate to examine “how effectively

ICANN is meeting its commitment to enhance the operational stability, reliability,

resiliency, security, and global interoperability of the systems/processes (internal/external)

that affect the Internet’s unique identifiers.” Pamela Smith, SSR2 Review, ICANN (Sept.

30, 2019), https://community.icann.org/display/SSR/SSR2+Review [https://perma.cc/

J2TN-79D3].

See Governmental Advisory Committee, ICANN GOVERNMENTAL ADVISORY

COMMITTEE (Nov. 8, 2019), https://gac.icann.org/ [https://perma.cc/Z4LT-3MCY].

2020] THE NEW CYBERSQUATTERS 405

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Commercial Stakeholder Group,

engagement by internet end users

through the At-Large Advisory Committee,

and engagement by

business interests through the Commercial Stakeholders Group.

This last group includes the Intellectual Property Constituency

(“IPC”), which is a constituency specifically for advancing trade-

mark and copyright protections.

Although the IPC has been the

main driver of proposals aimed to enhance trademark protections

in the domain name space, it is also worth noting that the World

Intellectual Property Organization (“WIPO”), a United Nations

body whose purpose is to promote the protection of intellectual

property, has been heavily engaged at ICANN since its foundation.

The engagement of trademark interests generally, and WIPO in

particular, was driven by the emerging realization that, in addition

to providing a host of business opportunities, the internet could also

serve as a mechanism for intellectual property infringement.

Early

on, WIPO emphasized that the purpose of their engagement was:

not to create new rights in intellectual property, nor

to accord greater protection to intellectual property

in cyberspace than that which existed elsewhere.

Rather, [their] goal was to give proper and adequate

expression to the existing, multilaterally agreed

standards of intellectual property protection in

the context of the multi-jurisdictional medium of

the Internet.

However, as the following sections demonstrate, trademark enforce-

ment in the domain name space has grown to vastly outstrip the

See Non-Commercial Stakeholder Group, ICANN (Nov. 8, 2019), https://gnso.

icann.org/en/about/stakeholders-constituencies/ncsg [https://perma.cc/KW4Y-45X5].

See About Us, ICANN AT-LARGE, https://atlarge.icann.org/about/index

[https://perma.cc/3L22-XZ5P].

See Commercial Stakeholder Group, ICANN, https://gnso.icann.org/en/about/

stakeholders-constituencies/csg [https://perma.cc/CT4R-FM77].

See About the IPC, ICANN INTELL. PROP. CONSTITUENCY (Nov. 8, 2019),

https://www.ipconstituency.org/about-the-ipc [https://perma.cc/H5AF-HWWK].

See MUELLER, supra note 8, at 138, 166.

Final Report of the WIPO Internet Domain Name Process, WORLD INTELL. PROP.

ORG. ¶¶ 22–23 (Apr. 30, 1999), https://wipo.int/amc/en/processes/process1/report/final

report.html [https://perma.cc/8ZDZ-8KDK].

See MUELLER, supra note 8, at 231.

406 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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protections that are offered even in the world’s most trademark-

friendly jurisdictions.

II. T

RADEMARK LAW AND THE DOMAIN NAME SPACE

A. The Origin and Purpose of Trademark Law

The basic function of a trademark is to distinguish the goods of

one enterprise from those of another.

Traditional scholarship on

the purpose of trademark law, which draws heavily from law and

economics,

views them as a matter of consumer protection, insofar

as they reduce consumers’ search costs in obtaining products of a

reliable quality, while simultaneously incentivizing companies to

invest resources in developing a product of consistent quality.

In short, trademarks impose a measure of accountability upon

producers for the products they generate, allowing them to cultivate

a reputation—for good or for ill—that accurately reflects the outputs

that they have delivered. In this respect, trademarks are something

of an anomaly in intellectual property law, as the Supreme Court of

Canada noted in Mattel, Inc. v. 3894207 Canada Inc.:

Unlike the patent owner or the copyright owner, the

owner of a trade-mark is not required to provide

the public with some novel benefit in exchange for

the monopoly. . . . The trade-mark owner . . . may

simply have used a common name as its “mark” to

differentiate its wares from those of its competitors.

Its claim to monopoly rests not on conferring a

benefit on the public in the sense of patents or copy-

rights but on serving an important public interest in

assuring consumers that they are buying from the

source from whom they think they are buying and

See Trademarks, WORLD INTELL. PROP. ORG., https://www.wipo.int/trademarks/en/

[https://perma.cc/8ZDZ-8KDK]. For the sake of simplicity, this Article will use the term

“trademarks” to include service marks as well.

Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV. 621, 623

(2004).

Id.; see also William M. Landes & Richard Posner, Trademark Law: An Economic

Perspective, 30 J.L.

& ECON. 265, 270 (1987).

2020] THE NEW CYBERSQUATTERS 407

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receiving the quality which they associate with that

particular trade-mark.

Like other forms of intellectual property protection, trademark

rights are limited. In crafting the level of protection to afford to

trademark holders, policymakers must carry out a careful balancing

“between the hardships to a competitor in hampering the use of an

appropriate word and those to the owner who, having invested

money and energy to endow a word with the good will adhering

to his enterprise, would be deprived of the fruits of his efforts.”

Granting a monopoly to a single company over the use of a

particular word or symbol may give them an unfair advantage over

their competitors, particularly if it is commonly used to describe a

particular product or category of products, or if it is generic.

Providing trademark protection to generic terms also undermines a

basic function of trademark law as a result of the terms’ lack of

inherent distinctiveness.

For example, a restaurant that marketed

itself under the name “Restaurant” would have difficulty distin-

guishing itself on this basis. By contrast, the strongest protections

typically attach to fanciful words, like Exxon or Xerox.

B. Dilution and Tarnishment

In contrast to the traditional theory of trademarks as a vehicle

for consumer protection and economic efficiency, the doctrines of

dilution or tarnishment allows owners of trademarks to take action

against a much broader category of uses of their protected words

or symbols.

Unlike traditional trademark claims, actions for

dilution or tarnishment may target infringements where there is

no competition between the parties, if the use of the mark is likely

to cast it in an unflattering light, cause it to be identified with

Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 722, 788, para. 21 (Can.).

Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4, 10 (2d Cir. 1976).

WORLD INTELL. PROP. ORG., INTRODUCTION TO TRADEMARK LAW AND PRACTICE: THE

BASIC CONCEPTS 21 (2d ed. 1993), available at https://www.wipo.int/edocs/pubdocs/en/

wipo_pub_653.pdf [https://perma.cc/L7EH-CZNP].

Id.

Id. at 17.

Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV.

813, 828 (1927).

408 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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dissimilar goods, dilute its distinctive quality, or otherwise reduce

its “selling power.”

The earliest appearance of the doctrine of dilution was in 1898,

when an English court upheld a claim by the owner of the

“KODAK” trademark for cameras against the use of the same

word for the sale of bicycles.

Although the judge in that case

justified his decision by finding a “great . . . connection between the

two classes of business,”

which would lead to a likelihood of con-

fusion, the case nonetheless broke new ground insofar as it allowed

for a trademark’s protection to carry over into an entirely new

category of goods.

The judge ruled against the junior user because

allowing them to do business under the established name would

grant an improper benefit.

Approaches to trademark dilution or tarnishment vary signifi-

cantly between jurisdictions. In the EU, dilution is defined as any

instance where goods or services are marketed under a trademark

for which an identical or similar sign is used by a third party and

where the goods or services may be perceived by the public in

such a way that the senior trademark’s power of attraction is

diminished.

This does not have to be connected to inferior

products and may be found to have taken place when the goods or

services being offered by the junior user possess some quality that

is liable to have a negative impact on impressions of the mark.

For example, the Benelux Court of Justice found in favor of a com-

plainant Dutch gin company (Claeryn) against a liquid detergent

maker whose product (Klarein) was pronounced identically, on the

See id. at 818–19.

Christine Haight Farley, Why We Are Confused About the Trademark Dilution Law,

16 FORDHAM INTELL. PROP., MEDIA & ENT. L.J. 1175, 1179, 1179 n.18 (2006).

Eastman Photographic Materials Co. v. John Griffiths Cycle Corp. (1898) 15 R.P.C.

105, 110 (UK).

Farley, supra note 38, at 1179.

Eastman Photographic Materials Co., 15 R.P.C. at 112.

Case NVC-487/07, L’Oréal SA v. Bellure NV, 2009 E.C.R. I-5185, I-5203, I-5246

(Eng.).

Cour de Justice Benelux [Benelux Court of Justice] Case A 74/1, Jan. 3, 1975,

Colgate-Palmolive BV v. Koninklijke Distilleerderijen Erven Lucas Bols NV (Mar. 3,

1975) 7 I.I.C. 420, at 472 (Claeryn v. Klarein), available at http://www.courbeneluxhof.be/

arresten/FR/A/A_74_1_379.pdf [https://perma.cc/7WYY-SLKB].

2020] THE NEW CYBERSQUATTERS 409

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basis that the similarity might cause consumers drinking the alcohol

to think of liquid detergent.

In the United States, dilution is protected at the federal level

under the Federal Trademark Dilution Act of 1995

and the Trade-

mark Dilution Revision Act of 2006.

The 2006 Act was passed

to overrule a requirement, read in by the U.S. Supreme Court in

Moseley v. V Secret Catalogue, Inc., that complainants demonstrate

actual dilution of their brand, rather than merely the likelihood of

dilution.

This “judicial nullification”

is not the only example of

the chilly reception this concept received in American courts. In

Ringling Bros.-Barnum & Bailey Circus Combined Shows, Inc. v.

Utah Division of Travel Development, an early dilution case, the

trial judge opined to the attorney for the trademark holder: “boy you

must have some lobby to get a law like that passed.”

Academic

reception to dilution has been similarly frosty, with scholars

claiming that dilution “provides a remedy without a supportable

theorization of the harm,”

that the doctrine was “undermining mar-

ket efficiency and consumer welfare,”

and that it “should be found

unconstitutional under the Supreme Court’s existing commercial-

speech jurisprudence.”

Justice Thomas McCarthy, while not

rejecting the principle of dilution outright, opined that it should be

held to a very strong evidentiary standard, and only applied in

“unusual and extraordinary cases.”

In Canada, even though no statute provides a basis for a claim

of trademark dilution, section 22(1) of the Trade-marks Act does, in

Id.

Pub. L. No. 104-98, 109 Stat. 985 (1996) (codified as amended at 15 U.S.C. §§ 1125,

1127 (2006)).

Pub. L. No. 109-312, 120 Stat. 1730 (2006).

Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 419, 433 (2003).

Farley, supra note 38, at 1178.

Id. at 1177 (quoting Transcript of Oral Argument, Ringling Bros.-Barnum & Bailey

v. Utah Div. of Travel Dev., 935 F. Supp. 763 (E.D. Va. 1996)).

Id. at 1184.

Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for

Trademark Protection, 58 U. P

ITT. L. REV. 789, 866 (1997).

Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science,

86 TEX. L. REV. 507, 561 (2008).

J. Thomas McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts, 41

OUS. L. REV. 713, 747 (2004).

410 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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effect, allow for an action for tarnishment: “No person shall use a

trade-mark registered by another person in a manner that is likely to

have the effect of depreciating the value of the goodwill attaching

thereto.”

Although this provision does not require confusion, the

Supreme Court of Canada in Veuve Clicquot Ponsardin v. Boutiques

Cliquot Ltée found that some association in the mind of the

consumer between the junior user’s product or display and the senior

user’s mark is necessary.

Moreover, in that case, as well as in

the concurrently released Mattel, Inc. v. 3894207 Canada Inc.,

the Supreme Court limited the special consideration offered to

“famous” marks, with the Supreme Court quoting in Mattel, Inc. an

earlier Federal Court of Appeal decision in Pink Panther Beauty

Corp. v. United Artists Corp.:

I do not see how the fame of the mark acts as a

marketing trump card such that the other factors are

thereby obliterated. . . . Famousness alone does not

protect a trade-mark absolutely. It is merely a factor

that must be weighed in connection with all the rest

of the factors. If the fame of a name could prevent

any other use of it, the fundamental concept of a

trade-mark being granted in relation to certain wares

would be rendered meaningless.

Indeed, in Adidas AG v. Globe International Nominees Pty Ltd., the

Federal Court of Appeal held that Adidas’ fame actually worked

against it in a claim against a shoe manufacturer that branded their

wares with a two-stripe, rather than a three-stripe design, since the

iconic nature of the Adidas logo meant that consumers would be

likely to spot even this subtle difference.

Trademarks Act, R.S.C. 1985, c T-13 (Can.).

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, [2006] 1 S.C.R. 824, 827–28

(Can.).

See generally Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 722 (Can.).

Id. at 809, 810 (quoting Pink Panther Beauty Corp. v. United Artists Corp., [1998]

3 F.C. 534 (Can.)).

Adidas AG v. Globe Int’l Nominees Pty Ltd., 2015 F.C. 443 (Can.), at 20–21,

available at https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/109229/index.do [https://

perma.cc/CAG2-Q7A3].

2020] THE NEW CYBERSQUATTERS 411



C. Trademark Law and the Domain Name Space

The rise of the internet and the expansion of trademark law into

the domain name space have brought additional legal challenges,

particularly when combined with the burgeoning rules around

dilution. As noted in the previous section, traditional understandings

of trademarks were rooted in confusion, leading to their applicability

as being limited to the specific class of product that the mark applied

to, as well as the jurisdiction where it was being marketed.

For

example, no conflict arises between a company marketing Delta

brand faucets and other “Delta” companies in different industries,

such as Delta Airlines, Delta Bank, or Delta Hotels, since there

is little realistic likelihood of confusion between these brands.

Similarly, a quick search for the “Hotel California” turns up busi-

nesses in Thailand, Nepal, India, Italy and the Philippines, none of

which appear to be affiliated with one another (or, presumably, with

The Eagles).

However, while these businesses can comfortably

co-exist in the offline world, with little possibility that any might be

poaching customers from the others, in the online space, there can

only be one website located at: “HotelCalifornia.com.”

There are not, nor have there ever been, any effective

mechanisms to resolve disputes between two entities that have

competing legitimate claims to a domain name space, and as a result

the traditional doctrine of “first come, first served” is still in place.

WORLD INTELL. PROP. ORG., supra note 33, at 38.

See, e.g., DELTA FAUCET COMPANY, https://www.deltafaucet.com/ [https://perma.cc/

6TF4-DW4T]; DELTA AIR LINES, http://www.delta.com/ [https://perma.cc/29XF-6N3U];

About, D

ELTA BANK, http://en.deltabank.com.ua/ [https://perma.cc/ZAR4-XU7G];

ARRIOTT INTERNATIONAL, http://deltahotels.marriott.com/ [https://perma.cc/YU5G-

3FPT].

Many of these businesses do not have their own websites, but reviews for their

services can be found. See, e.g., Hotel California, T

RIPADVISOR, http://www.tripadvisor.ca

/Hotel_Review-g293916-d3181797-Reviews-Hotel_California-Bangkok.html

[https://perma.cc/4WFG-NLD9]; Hotel California,

NEPAL BUS. DIRECTORY,

http://www.nepalyp.com/company/42640/Hotel_California

[https://perma.cc/68TV-

3UU9]; Hotel California, TRIPADVISOR, https://www.tripadvisor.ca/ShowUserReviews-

g4053412-d10672622-r436118171-Hotel_California-Ernakulam_Kochi_Cochin_

Ernakulam_District_Kerala.html [https://perma.cc/LM9P-JK2G]; Hotel California,

TRIPADVISOR, www.tripadvisor.ca/Hotel_Review-g298461-d7185333-Reviews-Hotel_

California-Lapu_Lapu_Mactan_Island_Cebu_Island_Visayas.html [https://perma.cc/

8X37-3R54].

412 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



If Finlandia vodka was quicker to register “www.finlandia.com”

than Finlandia Cheese, there is nothing the latter can do, other than

offer to purchase it from the vodka company, or settle for a different

domain and hope that users will still be able to find them.

Complicating the matter still further is the fact that the scope of

trademark protection varies significantly across jurisdictions.

For example, Canadian and American approaches to registering

“offensive” trademarks differ significantly.

In Canada, the

Trademarks Act includes a number of explicitly prohibited classes

of registration, including marks that are “scandalous, obscene or

immoral.”

By contrast, the U.S. Supreme Court’s decision in

Iancu v. Brunetti invalidated provisions of the Lanham Act that

prohibited the registration of marks which are “immoral, deceptive,

or scandalous” on the grounds that this represents viewpoint

discrimination.

Geographic indicators are another example of where there are

wide divergences in the law.

European trademark law recognizes

the branding of items like “champagne,” which must be produced

in the eponymous region of France.

By contrast, the United States’

position is that this term has become generic, and it refuses to

enforce this mark against American producers of “champagne.”

Legitimate uses of protected marks, including fair use, fair

dealing, and parody, also differ substantially in their interpretation

across jurisdictions.

The universality of the domain name space

inevitably leads to situations where a holder of a legitimate trade-

mark in one jurisdiction will seek to enforce rights against a party

See generally Lauren Blaiwais & Miller Scott, Offensive Trademarks: The Canadian

and American Perspectives, 30 I

NTELL. PROP. J. 205 (2018).

Trademarks Act, R.S.C. 1985, c T-13, art. 9(1)(j) (Can.).

Iancu v. Brunetti, 139 S. Ct. 2294, 2301, 2302 (2019).

See generally Demetra Makris, Geographical Indicators: A Rising International

Trademark Dispute Between Europe’s Finest and Corporate America, 34 ARIZ. J. INT’L &

COMP. L. 159 (2017).

Directive 2008/95/EC, of the European Parliament and of the Council of 22 October

2008 to Approximate the Laws of the Member States Relating to Trade Marks, 2001 O.J.

(L 299), art. 15(2).

Deborah J. Kemp & Lynn M. Forsythe, Trademarks and Geographical Indications:

A Case of California Champagne, 10 CHAP. L. REV. 257, 257–59 (2007).

See generally Federico Fusco, The Trademark Fair Use Defense: A Comparative

Perspective, 7 G

LOBAL JURIST 1 (2007).

2020] THE NEW CYBERSQUATTERS 413



where these rights are not recognized, and where it is not easy

for these contrasting understandings of the law to simply coexist.

Ultimately, only one party may keep the domain name.

III. T

HE ORIGINS OF CONFLICT

A. The Rise of Cybersquatting

In the early days of the internet, a lack of awareness of the

business opportunities that were available online, combined with the

relatively cheap costs of registering a domain name, allowed some

unscrupulous and forward-thinking entrepreneurs an avenue to

profit by registering the names of famous brands before their owners

did and selling them at a steep markup. Among the most prolific of

these early “cybersquatters” was Dennis Toeppen, who registered

around 250 domain names which were similar or identical to well-

known trademarks, including deltaairlines.com, eddiebauer.com,

and yankeestadium.com.

These sites were sometimes associated

with a thinly veiled legitimate use, such as Panavision.com, which

he used to host photographs of the city of Pana, Illinois.

However,

he would also offer to sell these websites to the brand owners at a

steep markup.

Although these cases were typically resolved in

the neighborhood of $5,000 to $15,000, the market for valuable

domain names went much higher.

Wallstreet.com, which was

registered for $70 in 1994,

sold at auction for $1 million in 1999.

Some brand owners, including Panavision, refused to pay, instead

choosing to file suit on the grounds of infringement or dilution.

THE INTERNET ENCYCLOPEDIA 455 (Hossein Bidgoli ed., 2003).

Id.

Michael Berkens, WallStreet.com Is Back for Sale with Wall-Street.com & 7

Trademark: Starting Bid: $30M, D

OMAINS (Apr. 1, 2015), https://thedomains.com/2015/

04/01/wallstreet-com-is-back-for-sale-with-wall-street-com-7-trademark-starting-bid-

30m/ [https://perma.cc/E3UQ-TGWK].

Mairead Moore, Cybersquatting: Prevention Better Than Cure?, 17 INT’L J.L. & INFO.

TECH. 220, 222 (2008).

Berkens, supra note 72.

Panavision Int’l, LP v. Toeppen, 141 F.3d 1316, 1319 (9th Cir. 1998).

414 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



These cases were typically successful.

In addition to findings

of dilution, which is ultimately how Panavision v. Toeppen was

resolved,

courts in the United States were willing to find infringe-

ment based on confusion, since “an Internet user is likely to

assume that ‘.com’ after a corporation’s name will bring her to that

corporation’s home page.”

Importantly, the judge in Planned

Parenthood Federation of America Inc. v. Bucci found that Section

1114 of the Lanham Act did not require that the infringement take

place in the course of the defendant’s “commercial activity,” and

that liability could be triggered by the potential challenge to users in

finding the correct website: “Prospective users of plaintiff’s services

who mistakenly access defendant’s website may fail to continue to

search for plaintiff’s own home page, due to anger, frustration, or

the belief that plaintiff’s home page does not exist.”

Despite these cases, which scholars have pointed to as examples

of the system working as intended to correct the problem,

the

U.S. government amended the Lanham Act in 1999 to include the

Anticybersquatting Consumer Protection Act (“ACPA”),

which

prohibits “the act of registering with the bad faith intent to profit, a

domain name that is confusingly similar to a registered or unregis-

tered mark or dilutive of a famous mark,” as well as “squatting” on

a personal name. However, the ACPA also provides defenses for

defendants to assert their own fair use rights to use the protected

mark including for “identifying and parodying, criticizing, or

commenting upon the famous mark owner or the goods or services

of the famous mark owner.”

Furthermore, the ACPA includes

See McCarthy, supra note 53, at 724–25.

See Panavision, 141 F.3d at 1316.

Planned Parenthood Fed’n of Am. Inc. v. Bucci, No. 97-0629, 1997 WL 133313, at

*8 (S.D.N.Y. Mar. 24, 1997). This case is interesting in retrospect, given the U.S. Supreme

Court’s ruling in National Institute of Family and Life Advocates v. Becerra supporting the

First Amendment rights of “crisis pregnancy centers,” which deliberately masquerade as

abortion clinics to talk women out of having the procedure. 138 S. Ct. 2361, 2368 (2018).

Bucci, 1997 WL 133313, at *4.

See Jessica Litman, The DNS Wars: Trademarks and the Internet Domain Name

System, 4 J. SMALL & EMERGING BUS. L. 149, 155 (2000).

15 U.S.C. § 1125(d) (2012).

Id. § 1125(c)(3)(A)(ii).

2020] THE NEW CYBERSQUATTERS 415



a requirement for bad faith intent, which can be demonstrated

according to the following factors:

(i) the trademark or other intellectual property rights

of the person, if any, in the domain name;

(ii) the extent to which the domain name consists of

the legal name of the person or a name that is

otherwise commonly used to identify that person;

(iii) the person’s prior use, if any, of the domain name

in connection with the bona fide offering of any

goods or services;

(iv) the person’s bona fide noncommercial or fair use

of the mark in a site accessible under the domain

name;

(v) the person’s intent to divert consumers from the

mark owner’s online location to a site accessible

under the domain name that could harm the

goodwill represented by the mark, either for

commercial gain or with the intent to tarnish or

disparage the mark, by creating a likelihood of

confusion as to the source, sponsorship,

affiliation, or endorsement of the site;

(vi) the person’s offer to transfer, sell, or otherwise

assign the domain name to the mark owner or any

third party for financial gain without having

used, or having an intent to use, the domain name

in the bona fide offering of any goods or services,

or the person’s prior conduct indicating a pattern

of such conduct;

(vii) the person’s provision of material and misleading

false contact information when applying for the

registration of the domain name, the person’s

intentional failure to maintain accurate contact

information, or the person’s prior conduct

indicating a pattern of such conduct;

(viii) the person’s registration or acquisition of

multiple domain names which the person knows

are identical or confusingly similar to marks of

others that are distinctive at the time of

416 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



registration of such domain names, or dilutive of

famous marks of others that are famous at the

time of registration of such domain names,

without regard to the goods or services of the

parties; and

(ix) the extent to which the mark incorporated in the

person’s domain name registration is or is not

distinctive and famous within the meaning of

subsection (c).

B. Developing the Uniform Dispute Resolution Policy

Under Network Solutions Inc.’s early management of the DNS,

its dispute resolution policies were primarily focused on protecting

the company from liability.

When its first formal dispute resolu-

tion policy was released in 1995, it required an exact match to a

registered trademark.

Defendants could defend themselves by

showing that they had their own registered trademark, and if they

were unable to do so, they would be offered an alternative domain.

If the registrants refused this, the domain would be placed on hold,

meaning neither party would be allowed to use it.

In 1998, NTIA, an agency of the U.S. Department of Commerce

that oversaw the domain name space, began calling for trademark

enforcement policies to be improved.

However, in response to

fears that this process would lead to an imposition of U.S. trademark

law over the global internet, the NTIA committed to having the

process be led by WIPO.

Id. § 1125(d)(1)(A)(i).

Kevin Eng, Breaking Through the Looking Glass: An Analysis of Trademark Rights

in Domain Names Across Top Level Domains, 6 B.U. J. SCI. & TECH. L. 163, 184–87

(2000).

G. Peter Albert, Eminent Domain Names: The Struggle to Gain Control of the Internet

Domain Name System, 16 J.

MARSHALL J. COMPUTER & INFO. L. 781, 787 (1998).

Id. at 788.

See Improvement of Technical Management of Internet Names and Addresses,

63 Fed. Reg. 8826 (proposed Feb. 20, 1998) (to be codified at 15 C.F.R. pt. 23),

https://www.ntia.doc.gov/federal-register-notice/1998/improvement-technical-

management-internet-names-and-addresses-proposed- [http://perma.cc/R3KU-3JDD].

Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness

in the ICANN UDRP, 27 B

ROOK. J. INT’L L. 903, 916 (2002).

2020] THE NEW CYBERSQUATTERS 417



WIPO began a process of public consultation in July 1998,

issuing a final report in April 1999.

Although WIPO’s role had

been established as a way to move the process outside of American

dominance, it was criticized by more technically focused academics

and civil society voices for viewing intellectual property holders—

as opposed to technologists or individual domain name holders—as

its main constituency.

The single panelist who had been appointed

to represent a “civil liberties” position, Michael Froomkin, subse-

quently criticized the process for its lack of a proper voice for the

rights of website registrants.

He also claimed that in the process of

developing recommendations, WIPO acted “more like an advocate

than consensus builder.”

Although it was subject to some revisions by an ICANN

working group in 1999—including, most notably, the addition of a

section on the rights and legitimate interests of domain registrants—

the final WIPO report formed the core of what became the Uniform

Dispute Resolution Policy (“UDRP”).

The Board of Directors of

ICANN approved the UDRP on October 24, 1999.

The UDRP is

effectively imposed on anyone who registers a domain, since its

applicability is included within domain name registration agree-

ments as a mandatory condition of the accreditation agreement that

See generally Final Report of the WIPO Internet Domain Name Process, supra note

26.

See, e.g., Milton Mueller, ICANN and Internet Governance: Sorting Through the

Debris of ‘Self-Regulation,’ 1 J.

POL’Y, REG. & STRATEGY FOR TELECOMM. INFO. & MEDIA

497, 506 (1999); see also generally Michael Froomkin, A Commentary on WIPO’s

The Management of Internet Names and Addresses: Intellectual Property Issues, WIPO

PANEL EXPERTS (May 19, 1999), http://personal.law.miami.edu/~amf/commentary.htm

[https://perma.cc/GNB9-FZVY].

See generally Michael Froomkin, Semi-Private International Rulemaking: Lessons

Learned from the WIPO Domain Name Process, in R

EGULATING THE GLOBAL

INFORMATION SOCIETY 212 (Christopher T. Marsden ed., 2000).

Id. at 225.

See KONSTANTINOS KOMAITIS, THE CURRENT STATE OF DOMAIN NAME REGULATION

82–84 (2010).

See Rules for Uniform Domain Name Dispute Resolution Policy, ICANN (Oct. 24,

1999), http://www.icann.org/udrp/udrp-rules-24oct99.htm [http://perma.cc/KS9Z-H42J].

418 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



ICANN signs with registrars, which certifies them in their role of

selling domain names to consumers.

C. How the UDRP Works

A brand owner who wishes to proceed with a UDRP complaint

must have a trademark that is identical or confusingly similar to a

registered domain name, and must make the case for why the

respondent should be considered as having no rights or legitimate

interests in respect of the domain name, and that the domain name

has been registered and is being used in bad faith.

The UDRP

includes a non-exclusive list of circumstances for determining bad

faith, including:

(i) circumstances indicating that you [the

respondent] have registered or you have acquired

the domain name primarily for the purpose of

selling, renting, or otherwise transferring the

domain name registration to the complainant

who is the owner of the trademark or service

mark or to a competitor of that complainant, for

valuable consideration in excess of your

documented out-of-pocket costs directly related

to the domain name; or

(ii) you have registered the domain name in order to

prevent the owner of the trademark or service

mark from reflecting the mark in a corresponding

domain name, provided that you have engaged in

a pattern of such conduct; or

(iii) you have registered the domain name primarily

for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have

intentionally attempted to attract, for commercial

gain, Internet users to your web site or other

2013 Registrar Accreditation Agreement, ICANN 17 (June 27, 2013),

https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en

[http://perma.cc/2WML-PRFW].

Rules for Uniform Domain Name Dispute Resolution Policy, ICANN § 3(b)(ix) (Sept.

28, 2013), https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en.

2020] THE NEW CYBERSQUATTERS 419



on-line location, by creating a likelihood of

confusion with the complainant’s mark as to the

source, sponsorship, affiliation, or endorsement

of your web site or location or of a product or

service on your web site or location.

However, the UDRP also includes a set of non-exclusive factors

by which registrants may demonstrate their legitimate interest in the

domain name, including:

(i) before any notice to you of the dispute, your use

of, or demonstrable preparations to use, the

domain name or a name corresponding to the

domain name in connection with a bona fide

offering of goods or services; or

(ii) you (as an individual, business, or other

organization) have been commonly known by the

domain name, even if you have acquired no

trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or

fair use of the domain name, without intent

for commercial gain to misleadingly divert

consumers or to tarnish the trademark or service

mark at issue.

The UDRP processes themselves are carried out by ICANN-

accredited dispute resolution service providers (“providers”).

These providers, which assemble their own teams of arbitrators,

compete with one another for business from complainants, who bear

the costs of paying for the process, and are able to select which

provider to use.

100

Uniform Domain Name Dispute Resolution Policy, ICANN § 4(b) (Oct. 24, 1999),

https://www.icann.org/resources/pages/policy-2012-02-25-en#4b [https://perma.cc/JX3S-

9E74].

Id. § 4(c).

Id. § 4(d).

100

Id.

420 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



D. The UDRP in Action

Almost from its inception, opinions on the UDRP’s efficacy and

fairness differed dramatically. Representatives of the trademark

industry typically exhorted the system’s successes. For example,

in September 2000, Masanobu Katoh, a senior trademark lawyer

with Fujitsu Limited, a Japanese global information technology

company, and an ICANN board member, said:

I have extensive experience with both Japanese and

the U.S. court systems, as well as Alternative Dispute

Resolution Proceedings. Never, and I mean never,

have I seen a dispute resolution mechanism work

so well. In less than a year, over 1,000 arbitrations

have been initiated under the UDRP. In more than

two thirds [sic] of those cases, there already have

a disposition. These cases have been handled

quickly, inexpensively, and most important of

all, fairly. Without question, the UDRP is an

important model for Dispute Resolution in other

e-Commerce areas.

101

In a paper published in 2002, the Internet Committee of the

International Trademark Association called the UDRP process

“an efficient and effective process for resolving domain name

disputes.”

102

More recently, the current (as of September 2019)

President of ICANN’s IPC, Brian Winterfeldt, called the UDRP

system “low-cost and efficient” in comparison with traditional

litigation or arbitration.

103

101

Geist, supra note 88, at 904 n.4.

102

NED BRANTHOVER, INTA INTERNET COMM., UDRP—A SUCCESS STORY: A

REBUTTAL TO THE ANALYSIS AND CONCLUSIONS OF PROFESSOR MILTON MUELLER IN

“ROUGH JUSTICE” 1 (2002), http://www.inta.org/advocacy/documents/intaudrpsuccess

contramueller.pdf [https://perma.cc/V9UC-5PZJ].

103

Brian J. Winterfeldt & Griffin M. Barnett, Trademark Rights Protection Mechanisms

in the Domain Name System: Current Landscape and Efforts to Diminish Protection,

29 I

NTELL. PROP. & TECH. L.J. 17, 18 (2017).

2020] THE NEW CYBERSQUATTERS 421



On the other hand, academic and civil society voices were

heavily critical of the system as being unbalanced in favor of trade-

mark interests.

104

Early statistical analyses of UDRP findings

showed that the overwhelming majority of cases (around eighty

percent) were decided in favor of the complainant.

105

The UDRP’s

defenders responded by noting that since the system was designed

to target clearly abusive cases, a relatively high winning percentage

by complainants is to be expected.

106

However, far more troubling,

from a procedural fairness perspective, are accusations that the

system lends itself to forum shopping. A study of UDRP cases arbi-

trated between 1999 and November 1, 2000 found that, of the major

providers initially accredited by ICANN, WIPO and the National

Arbitration Forum (subsequently rechristened as the ADR Forum)

awarded domains to the complainants around eighty-two percent of

the time, while eResolutions awarded domains to the complainant

only sixty percent of the time.

107

Tellingly, an assessment of market

share carried out at the same time showed that, from December 1999

to October 2000, eResolutions’ market share shrunk from ten

percent of filings to just four percent.

108

eResolutions went out of

business in 2001, accusing WIPO of having created a competitive

advantage by tilting the system in favor of complainants.

109

An exacerbating factor in having a system which leaves itself

open to domain shopping is that it incentivizes providers to develop

a reputation for deciding cases in favor of complainants.

110

Michael

Geist, writing in 2001, noted that press releases from the National

Arbitration Forum took on a “distinctly pro-complainant tone,”

including titles such as “Arbitrator Delivers Internet Order for

104

See generally Milton Mueller, Rough Justice: A Statistical Assessment of ICANN’s

Uniform Dispute Resolution Policy, 17 INFO. SOC’Y 151 (2001).

105

Id. at 156.

106

BRANTHOVER, supra note 102, at 6.

107

Mueller, supra note 104, at 157.

108

Id. at 159.

109

Kieren McCarthy, eResolution Quits Domain Arbitration, REGISTER (Dec. 4,

2001, 4:31 PM), https://www.theregister.co.uk/2001/12/04/eresolution_quits_domain_

arbitration/ [https://perma.cc/94BX-6PYJ].

110

KOMAITIS, supra note 93, at 97 (citing Michael Froomkin & David Post, Letter to the

ICANN Board, ICANN

WATCH (Jan. 26, 2000), http://www.icannwatch.org/archive/post_

froomkin_udrp_letter.htm [https://perma.cc/GXJ5-VLHG]).

422 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



Fingerhut,” “May the Registrant of magiceightball.com Keep the

Domain . . . Not Likely,” “Kevin Spacey Prevails Against Usual

Suspect in Domain Name Case,” and “Skateboard Magazine

Thrashes Spanish Double.”

111

The UDRP system also faced criticism for a lack of transparency

since decisions were published but party submissions are not.

112

Without access to submissions, observers faced great difficulty in

determining whether cases were being reasonably decided. As a

result, while an overall analysis of whether or not the system has

been fair to registrants is difficult to carry out, observers were quick

to notice complaints that would have been unlikely to succeed in a

judicial proceeding but nevertheless did succeed under the UDPR.

One notable early example was the case of crew.com, which was

successfully challenged by the clothier J. Crew, despite the fact that

the word is clearly generic, and there was no evidence of any attempt

to divert users, exploit confusion, or sell the name onwards to the

brand owner, in line with the enumerated signs of bad faith.

113

However, the panel in this case pushed the onus onto the respondent,

finding that he had “failed to show demonstrable evidence of plans

to use the domain name in good faith” since they had “no specific

use in mind at the time of registration or acquisition,” and that their

registration of the domain name absent a demonstrable good faith

use was constructively held to be a bad faith use since their action

“precludes others who have a legitimate desire to use the name from

doing so.”

114

Notably, the registrant in this case was a re-seller of

domain names.

115

111

Geist, supra note 88, at 907–08 & 908 nn.22–24.

112

Orna Rabinovich-Einy, The Legitimacy Crisis and the Future of Courts, 17 CARDOZO

J. CONFLICT RESOL. 23, 54 (2015).

113

See Mueller, supra note 104, at 154.

114

J. Crew Int’l, Inc. v. crew.com, WIPO Case No. D2000-0054 (Apr. 20, 2000),

available at www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0054.html

[https://perma.cc/9WUA-6XJY].

115

Id. The WIPO decision refers to the registrant as a “speculator,” though within their

industry they are generally referred to as “domain name investors” or simply “domainers,”

and are a widely recognized part of the domain name ecosystem. Id. For more information

about this industry, see generally James Dorman, The Beginner’s Guide to Domain Name

Investing, M

EDIUM (Jan. 14, 2017), https://medium.com/@james.dorman/the-beginners-

guide-to-domain-name-investing-c7ebcec27547 [https://perma.cc/7VH2-Z55S].

2020] THE NEW CYBERSQUATTERS 423



Although one may argue, as a majority of the panel did, that the

registration of domains for the purpose of resale is bad for the

domain name industry, or for freedom of expression or commerce

online,

116

none of these interests are related to the purpose of the

UDRP as a trademark enforcement mechanism. This argument

also fails to explain why the domain, even if it was improperly

registered, should be transferred over to a company whose trade-

mark bears a vague similarity to it, as opposed to leaving it available

for registration by Crew (the maker of athletic equipment),

117

Crew (the maker of cleaning or polishing products),

118

Crew (the

award program for diesel engines),

119

Crew (the rental service for

apartments, cabins, and houseboats),

120

or Crew (the spyware

maker).

121

In effect, the panel’s interpretation of the UDRP Policy

legitimizes a new form of cybersquatting, whereby brand owners

can claim generic spaces that are vaguely similar to their protected

marks and thus make those spaces inaccessible to other actors for

legitimate uses.

While the crew.com case attracted particular scrutiny from

academics and civil society observers, it was not an isolated incident

of panelists seeking to expand the applicability of the rules beyond

their plain language interpretation, or beyond what might fall within

the boundaries of traditional trademark enforcement. There have

been other examples of generic word registrations being transferred,

where the only evidence of “bad faith” was the fact that they were

not being utilized, including for current.com,

122

jt.com,

123

116

J. Crew Int’l, Inc. v. crew.com, WIPO Case No. D2000-0054 (Apr. 20, 2000).

117

CREW, Registration No. TMA582054 (Can.).

118

CREW, Registration No. TMA139145 (Can.).

119

CREW, Registration No. TMA645144 (Can.).

120

CREW, Registration No. TMA972749 (Can.).

121

CREW, Registration No. TMA919049 (Can.).

122

Current USA, Inc. vs. Current Event, ADR Case No. FA94300 (Apr. 17, 2000),

available at http://www.adrforum.com/domaindecisions/94300.htm [https://perma.cc/

686E-A8YX].

123

Japan Tobacco Inc. v. Yoshiki Okada, WIPO Case No. D2000-0492 (July 24, 2000),

available at www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0492.html

[https://perma.cc/X5LM-J3AW].

424 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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rant.com,

124

and tonsil.com.

125

In the last case, it is worth noting that

the panel found other factors as contributing to their finding of bad

faith registration, including opaque registration information, and

the fact that the registrant had a “high degree of knowledge and

sophistication about internet domain name registration,” though

none of the factors that they list correspond to those included in

Section 4(b) of the UDRP Policy.

126

Prominent trademark attorneys

have contributed to this expansive view of what can constitute “bad

faith.” In a 2017 article, Brian Winterfeldt described the circum-

stances for establishing bad faith as including “passively holding the

domain name for an extended period of time without making any

legitimate use of the domain.”

127

One particularly egregious example of the abuse of the UDRP

is the dispute over rollerblade.net.

128

Although the word is still a

registered mark, there is a strong case to be made that it has become

genericized.

129

The registrant in this case had registered the domain

name “for [his] nephew’s birthday so he and his friends could

have a ‘neat’ email address and a website to show off their ‘roller-

blading.’”

130

He had made no attempt to sell the domain on to

the mark owner, and had no pattern of registering domain names

for resale.

131

Instead, he had been using the site to host pictures

of family members roller-skating when the company demanded

the domain:

If Rollerblade the company would have approached

me with the intent of coming to some kind of mutual

agreement I would have let them have the site in

124

Rant, LLC v. Long, WIPO Case No. D2000-0946, (Oct. 10, 2000), available at

https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0946.html

[https://perma.cc/23Q2-FCCP].

125

Süd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376, (July 3, 2000),

available at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0376.html

[https://perma.cc/DFM8-7NN4].

126

Id.

127

Winterfeldt & Barnett, supra note 103, at 18.

128

Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429, (June 25, 2000),

available at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0429.html

[https://perma.cc/72WC-KAFG].

129

See WORLD INTELL. PROP. ORG., supra note 33, at 48.

130

See Rollerblade, WIPO Case No. D2000-0429.

131

Id.

2020] THE NEW CYBERSQUATTERS 425

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exchange for an item out of their product line and a

tee-shirt for my nephew. Instead, the first communi-

cation I got from Rollerblade the company was a

threat that I was going to have to pay a bunch of

money for their legal fees to sue me for reserving the

name. I now have no intentions of relinquishing my

domain name ROLLERBLADE.NET.

132

Somewhat incredibly, the panel found this statement to be indicative

that the registrant was “determined to exploit his nuisance value . . .

to be bought off.”

133

They ordered the domain transferred, finding

that there was not “the slightest indication of a legitimate trademark

interest” from the registrant, and that the fact that the registrant had

constructive knowledge of the trademark was sufficient to find that

it had been registered in bad faith.

134

The panel’s language equating

“no legitimate trademark interest” with having “no legitimate right

or interest” is telling, as it seems to preclude any legitimate non-

brand-owner uses of the word “rollerblade.”

135

Another problematic trend has been UDRP panelists ordering

domain names transferred that are explicitly derogatory of a

registered mark. For example, in 2017, a panelist ordered the trans-

fer of the domain name “marlborosucks.com.”

136

Both the registrant

and the brand owner were located in the United States, and the

registrant cited relevant U.S. case law that dismissed infringement,

cybersquatting, and dilution actions against websites featuring

protected trademarks, which were being used to criticize those

companies’ business practices.

137

The panelist distinguished these

cases by pointing to the fact that no website had yet been set up at

the address, once again taking the position that, if a domain name

132

Id.

133

Id.

134

Id.

135

Id.

136

Philip Morris USA Inc. v. Computer Services, Inc., WIPO Case No. D2017-0847,

(June 15, 2017), available at https://www.wipo.int/amc/en/domains/search/text.jsp?case=

D2017-0847 [https://perma.cc/BP7H-STUX].

137

See id. (citing Bosley Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005); Lucas

Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); TMI, Inc. v.

Maxwell, 368 F.3d 433 (5th Cir. 2004); Cleary Bldg. Corp. v. David A. Dame, Inc., 674 F.

Supp. 2d 1257 (D. Colo. 2009)).

426 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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was in the same neighborhood as a registered mark, the burden

shifted to the registrant to demonstrate a non-infringing use.

While the majority of cases involving domains that are overtly

critical of protected marks have been resolved in favor of the brand

owner, this position has not been universal. In 2000, a panelist

refused to order the transfer of ihatebridgestone.com, ihatefire-

stone.com, and bridgestonesucks.com, after all three had been

registered by a disgruntled former employee, who had been engaged

in a dispute with the company over pension payments.

138

While a

complaint against walmartblows.com was upheld,

139

another com-

plaint against boycottwalmart.com was denied, even though the

registrant failed to mount any defense, with the panelist noting that:

[M]embers of the public wishing to find a website

associated with the Complainant [Walmart] would

not be confused as to whether the Complainant

owned or operated the website at ‘www.boycott-

walmart.com.’ It would be perfectly clear to anyone

who recognized the Complainant’s trademarks that

the disputed domain name would not resolve to a site

used by the Complainant to promote its own goods

or services.

140

In America Online, Inc. v. Johuathan Investments, Inc., in a dispute

over the domain name fucknetscape.com, the panelist stated their

position even more emphatically, finding that it was “manifestly,

on its face, a name which can have nothing whatever to do with the

Complainant. It is a name which, by its very nature, declares

138

Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190, (July 6, 2000),

available at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0190.html

[https://perma.cc/7VM6-5F2L].

139

Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811, (Aug. 29, 2006),

available at https://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0811.html

[https://perma.cc/3TAL-YXFK].

140

Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812, (Sept. 20, 2006),

available at https://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0812.html

[https://perma.cc/CMP5-UJSQ].

2020] THE NEW CYBERSQUATTERS 427



that it is hostile to Netscape,” and that the potential for confusion

was “inconceivable.”

141

Intuitively, one would assume that this sentiment should be true

for any of the “-sucks” domain names. It is beyond credibility

to suggest that even the most unsophisticated consumer would

navigate to “marlborosucks.com” in the expectation of finding the

official company page. At this point, though, we are clearly far

beyond any traditional understanding of the role of trademark, in

terms of preventing customer confusion, or allowing a producer to

distinguish their products. Indeed, we have even moved beyond

a dilution or tarnishment doctrine, where enforcement is used to

prevent unfair degrading of a mark, or attempts to unjustly freeload

off of the goodwill accumulated by a well-known brand. Instead,

brand owners are employing trademark enforcement in the domain

name space as an offensive strategy to ensure that they retain total

control over not just the word itself, but also any words or phrases

that even sound similar. With this strategy, brand owners seek to

stifle not just misuses of their mark, but also legitimate criticism of

their companies. As the next section demonstrates, these expansive

uses have become even further entrenched with the new generation

of rights protection mechanisms.

IV. THE NEXT GENERATION OF RIGHTS PROTECTION MECHANISMS

A. The gTLD Expansion

When ICANN was first created, there were seven top-level

domains available: .com (for commercial businesses), .edu (for

educational institutions), .int (for intergovernmental and treaty

organizations), .gov (for U.S. government entities), .mil (for the

U.S. Department of Defense), .org (for non-profit organizations),

and .net (for general umbrellas sites).

142

However, as early as 1995,

141

America Online, Inc. v. Johuathan Investments, Inc., WIPO Case No. D2001-0918,

(Sept. 14, 2001), available at https://www.wipo.int/amc/en/domains/decisions/html/2001/

d2001-0918.html [https://perma.cc/F524-PVC9].

142

Daniela Michele Spencer, Much Ado About Nothing: ICANN’s New GTLDs, 29

ERKELEY TECH. L.J. 865, 870 (2014). An eighth top-level domain, .arpa, was also used

for administrative purposes. Id.

428 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



the head of the Internet Assigned Numbers Authority was discussing

the creation of new gTLDs, and these proposals were revisited after

ICANN was created, with the launch of seven new gTLDs between

2001 and 2004: .biz, .info, .museum, .name, .coop, .pro, and .aero.

143

Shortly after this, ICANN began discussing the idea of opening

up the gTLD space more broadly for new proposals, effectively

allowing potential registry operators to submit applications for the

creation of as many new gTLDs as the market might support. On

the one hand, this presented an opportunity for the brand industry,

insofar as it allowed new explicitly branded top-level domains,

such as .target, .nike, and .bananarepublic.

144

However, trademark

interests at ICANN, as concentrated in the IPC, expressed vocal

opposition to a wide expansion of the gTLD system, fearing that

the new real estate would make trademark enforcement more

difficult.

145

This view was echoed by the International Trademark

Association, which maintains a close relationship with the IPC.

146

Since the UDRP was first established, it has remained an active

venue for resolving conflicts over domain names connected to trade-

marks.

147

It is easy to understand why the trademark protection

industry might be alarmed by the concept of the domain space

expanding to include a virtually unlimited number of new domains,

143

Id.

144

See Andrew Allemann, Will .Amazon Ever See the Light of Day? There’s Some

Movement, D

OMAIN NAME WIRE (Sept. 19, 2018), https://domainnamewire.com/2018/09/

19/dot-amazon-domain/ [https://perma.cc/257P-REW5]. A particularly heated argument

ensued after the retail company Amazon applied to register .amazon, a move that was

vociferously opposed by the nations of Brazil and Peru, who claimed the gTLD for

themselves, essentially pitting ICANN’s business stakeholders against its governmental

stakeholders. As of November 2018, the matter still has not been fully resolved. See id.

145

ICANN INTELL. PROP. CONSTITUENCY, THE INTELLECTUAL PROPERTY CONSTITUENCY

IMPACT STATEMENT REGARDING THE INTRODUCTION OF NEW GTLDS 1 (2007), available at

https://www.ipconstituency.org/assets/ipc-position-papers/2007/IPC%20Impact%20

Statement%20re%20new%20gTLDs.pdf [https://perma.cc/DS28-RXUJ].

146

Jacqueline D. Lipton & Mary Wong, Trademarks and Freedom of Expression in

ICANN’s New gTLD Process, 38 M

ONASH U. L. REV. 188, 197 (2012).

147

Total Number of Cases Per Year, WORLD INTELL. PROP. ORG., https://www.wipo.int/

amc/en/domains/statistics/cases.jsp [https://perma.cc/ZR25-4MVM]. There was a period

of decline from 2001–2003, though this can be explained as a result of the initial flood of

cases that were filed when the system was first established. Id.

2020] THE NEW CYBERSQUATTERS 429



as they might be faced with having to file thousands of new “defen-

sive” registrations to retain exclusivity over their marks. Of course,

it is important to note that the level of “exclusivity” to which trade-

mark owners are entitled varies enormously based on jurisdictional

and contextual factors. One of Canada’s leading cases on trademark

law, which found no infringement in a chain of “Barbie” branded

restaurants, is a good example of this.

148

Indeed, one of the selling

points of the gTLD expansion was that it might allow an opportunity

for companies that had missed out on a .com domain to find an

alternative that matched their brand. So, rather than having every

company compete over delta.com, Delta Airlines could exist at

delta.fly, Delta Hotels at delta.hotel, Delta Bank at delta.bank, etc.

B. From Cybersquatting to Typosquatting

Wariness on the part of trademark interests towards the gTLD

expansion was compounded by a shift in the dynamic that brand

owners faced in seeking to protect their image online, as traditional

cybersquatting gave way to broader challenges. Where early cyber-

squatters like Dennis Toeppen benefitted from an ignorance among

many established businesses of the commercial possibilities of the

internet, following the dot-com bubble at the end of the 1990’s,

those days were over. By explicitly including attempts to sell a do-

main to the brand owner at an inflated price as evidence of bad faith,

the UDRP significantly limited the financial viability of the business

model which Toeppen and his ilk had followed.

Instead, new challenges arose in the form of “typosquatting,”

where a slight variation of a common or famous trademark (e.g.,

“Facbook.com”) would be registered with the intention of catching

users who made a spelling or typing error in their browser.

149

These sites would often be used for clickfarming, hosting banner

advertisements and collecting revenues as a result of users who

mistakenly navigated to them and clicked on these ads, and some-

times for more overt forms of passing off, such as by imitating the

148

Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 722, 820 (Can.).

149

Jacqueline D. Lipton, Bad Faith in Cyberspace: Grounding Domain Name Theory in

Trademark, Property, and Restitution, 23 H

ARV. J.L. & TECH. 447, 474 (2010).

430 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



intended website but providing links to competing products.

150

However, more nefariously, in some instances these sites are used

to distribute malware, or support phishing, spamming, and online

fraud.

151

In comparison to traditional cybersquatting, which relied

on registering a domain that exactly matched an existing trademark,

these domains were more disposable, since they were planted on

common misspellings, of which there is a virtually endless supply.

This allows them to be set up in bulk, compounding the challenge

facing trademark holders in seeking to protect the exclusivity of

their brand.

As part of the negotiations for approving the gTLD expansion

in ICANN’s multi-stakeholder policymaking process, ICANN

instituted a set of new rights protection mechanisms that would

apply to the new top-level domains, notably including the Uniform

Rapid Suspension (“URS”) and the Trademark Clearinghouse, the

latter of which is used to support the sunrise registration period and

the trademark claims period.

152

C. The Uniform Rapid Suspension

The URS is a “rights protection mechanism” that was designed

to complement the existing UDRP by offering a streamlined “path

to relief for rights holders experiencing the most clear-cut cases of

[trademark] infringement.”

153

This is achieved by substantially

stripping down the procedure attached to the UDRP, including

quicker timelines.

154

However, rather than a transfer of the domain

over to the mark holder, as is required by the UDRP, the URS merely

150

Paul Ducklin, Typosquatting—What Happens When You Mistype a Website Name?,

AKED SECURITY, https://nakedsecurity.sophos.com/typosquatting/ [https://perma.cc/

5EHM-C5RU].

151

Id. It is unclear as to whether these activities are more prevalent in new gTLDs than

in the traditional TLDs.

152

ICANN, TRADEMARK CLEARINGHOUSE 1, § 1.2 (June 4, 2012), http://newgtlds.icann.

org/en/applicants/agb/trademark-clearinghouse-04jun12-en.pdf [https://perma.cc/9C6G-

UHQ8] [hereinafter ICANN,

TRADEMARK CLEARINGHOUSE].

153

Uniform Rapid Suspension (URS), ICANN (May 17, 2018), https://www.icann.org/

resources/pages/urs-2014-01-09-en [https://perma.cc/T8D7-XZ2W].

154

5 Things Every Domain Name Registrant (That’s You!) Should Know About ICANN’s

Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension

(URS) System, ICANN, https://www.icann.org/resources/pages/5-things-registrants-know-

udrp-urs-2019-09-25-en [https://perma.cc/7B23-GNCK].

2020] THE NEW CYBERSQUATTERS 431



allows for the domain to be suspended for the duration of its

registration term. In other words, while it is not an effective avenue

for a brand owner to target a domain that it wants to obtain for itself,

as was the case with crew.com, the URS can be useful in dealing

with “typosquatting,” where the sites are less valuable.

The URS is also substantially quicker than the UDRP, with

processes that typically only last fourteen days from filing to

determination, and typically start at less than $400,

155

as opposed

to UDRP actions, which cost at least $1,500 with WIPO, the largest

provider.

156

Like the UDRP, URS claims are adjudicated by

accredited dispute resolution service providers, of which there are

three, as of November 2018: the Asian Domain Name Dispute

Resolution Centre (“ADNDRC”), ADR Forum, and MFSD.

157

The URS standards for bad faith are largely identical to

those found in the UDRP.

158

However, the URS has broader consid-

erations for legitimate use, in recognition of the idea that it is meant

to be used only for extremely clear-cut cases.

159

It also specifically

says that trading in domain names for profit, holding a large

portfolio of domain names, and sale of traffic (such as through

click-per-view revenue) are not, in and of themselves, indicia of

bad faith.

160

Although the URS does not represent a further expansion of the

scope of trademark protection, the existence of this “streamlined”

procedure for enforcing trademark claims in the domain name space

raises additional concerns nonetheless. As discussed in the previous

section, the scope of protection offered by the UDRP goes far

155

See, e.g., Uniform Rapid Suspension (URS), ASIAN DOMAIN NAME DISP. RESOL. CTR.,

https://www.adndrc.org/urs [https://perma.cc/V9D5-HTYL] (showing the fee schedule of

the Asian Domain Name Dispute Resolution Center).

156

Schedule of Fees Under the UDRP, WORLD INTELL. PROP. ORG. (Dec. 1, 2002),

https://www.wipo.int/amc/en/domains/fees/ [https://perma.cc/FE2C-CDUJ]. It is also

worth noting that UDRP fees scale up substantially where multiple panelists or multiple

domain names are involved whereas they remain much flatter for the URS. Id.

157

Uniform Rapid Suspension (URS), supra note 153.

158

ICANN, UNIFORM RAPID SUSPENSION SYSTEM (“URS”), § 1.2.6 (Mar. 1, 2013),

http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf

[https://perma.cc/9YMK-QY89].

159

Id. § 5.8.

160

Id. § 5.9.

432 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



beyond the trademark protections available under the ACPA or

in comparable EU law, to say nothing of how it compares with trade-

mark law in countries like Canada, which follow a narrower

interpretation of tarnishment. While the URS, by demanding a

stronger standard of evidence for a finding of bad faith, is a small

step back from the version of trademark rights established under the

UDRP, it achieves this more demanding evidentiary standard by

stripping out core procedural protections.

161

Thus, while defendants

have an easier burden of proof, they have less space to operate.

162

A case review carried out by Rebecca Tushnet of Harvard

University, which was distributed to the ICANN Rights Protection

Mechanism Working Group, found that suspensions were granted

in the vast majority of cases (ninety-two percent).

163

Registrants

defending against URS claims defaulted around seventy-four

percent of the time, presenting no defense to the claim.

164

However,

supporters of the URS could offer two responses to these statistics.

Firstly, they could posit that a high rate of affirmative findings is the

natural result of a system designed to only address clear cut cases of

infringement. Secondly, they could argue that given the disposable

nature of clickfarming sites, and considering that it is relatively easy

to register a dozen new slight misspellings of well-known brands,

the disinclination of proprietors to mount efforts to defend these

claims is not surprising.

165

161

Id. §§ 1.2.6.2, 1.2.6.3, 8.2, 8.5.

162

Id. §§ 1.2.6.2, 1.2.6.3, 8.2, 8.5. The URS rules provide the registrant with only

fourteen calendar days to provide a response. Id. § 5.1. URS processes also do not allow

respondents the possibility of opting for a three-member panel, rather than a single

adjudicator. Id. § 7.1.

163

Rebecca Tushnet, 2018-05-30 Review of all Rights Protection Mechanisms (RPMs)

in All gTLDs PDP WG, ICANN (May 30, 2018), https://community.icann.org/display/

RARPMRIAGPWG/2018-05-30+Review+of+all+Rights+Protection+Mechanisms+%28

RPMs%29+in+all+gTLDs+PDP+WG [https://perma.cc/3TLG-BFHD] (follow Dropbox

URL under Step 2 of the “Proposed Agenda”; then click on the “Summary Tables” tab of

the spreadsheet; the percentage of suspensions was calculated by dividing the total

suspensions, 727, into 787, the total number of cases (833) less the withdrawn cases (46)).

164

Id. (The percentage of defaults was obtained by dividing the number of defaults, 581,

into 787, the total number of cases (833) less the withdrawn cases (46).).

165

See, e.g., E-mail from Georges Nahitchevansky to Nat Cohen, [GNSO-RPM-WG]

[gnso-rpm-wg] ‘Lack of Cause of Action’ Followup (URS Proposals #18, #19, #20),

ICANN (Oct. 12, 2018, 3:22 PM UTC), https://mm.icann.org/pipermail/gnso-rpm-wg/

2018-October/003404.html [https://perma.cc/9JNJ-4TPF].

2020] THE NEW CYBERSQUATTERS 433



A more troubling finding from Professor Tushnet’s research is

that, of 787 cases examined, adjudicators in 105 of them (thirteen

percent) provided no evidence or rationale whatsoever in their writ-

ten decision: they merely certified that the URS standard had been

met, with no further explanation.

166

Moreover, an ICANN working

group looking into the implementation of the URS discovered that

ADNDRC, one of the three certified adjudication providers, had

procedures in place which failed to fulfil the requirements spelled

out in the URS rules.

167

This Article’s scope does not extend to evaluating whether URS

procedures as applied meet an appropriate standard for procedural

fairness in stripping a registrant of their property.

168

However, in

considering the URS’ function as a quicker, cheaper, and easier

mechanism for enforcement than the UDRP, it is important to bear

in mind that the UDRP itself was designed to be a quicker, cheaper,

and easier enforcement mechanism than traditional judicial reme-

dies. Moreover, every indication from representatives of the trade-

mark industry, from INTA to the current head of the IPC at ICANN,

is that it has in fact served this function well.

169

In this context,

the continued paring down of procedural protections for website

registrants facing trademark claims is troubling. However, as the

next section indicates, a much more significant expansion in the

applicability of trademark rules to the online space occurred with

the creation of the Trademark Clearinghouse.

166

Tushnet, supra note 163.

167

Follow-up on Action Items for Providers Sub Team, ICANN (Aug. 22, 2018),

https://community.icann.org/download/attachments/93127038/Follow-up%20on%20

Action%20Items%20for%20Providers%20Sub%20Team_%2822%20Aug%202018%29.

pdf?version=3&modificationDate=1535467639000&api=v2 [https://perma.cc/5E4D-

QEDL].

168

Tucows.Com Co. v. Lojas Renner SA, 2011 ONCA 548 ¶ 66 (Can.) (ruling in the

affirmative on the question of whether domain names actually constitute “property”). There

are also differences of opinion as to this question. Id. ¶ 45. Other jurisdictions have viewed

the matter differently. Id.

169

See Winterfeldt & Barnett, supra note 103, at 18; see also BRANTHOVER, supra note

102, at 1.

434 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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D. The Trademark Clearinghouse, Sunrise Registrations, and

Trademark Claims Services

In addition to the URS, the other major change to ICANN’s

trademark enforcement mechanisms which accompanied the

expansion of the top-level domain space was the creation of the

Trademark Clearinghouse. The Trademark Clearinghouse is a

centralized repository of recognized marks to which brand owners

may submit any mark that is nationally or regionally registered, has

been validated through a court of law or other judicial proceeding,

or is protected by a statute or treaty in effect at the time the infor-

mation is submitted.

170

The Trademark Clearinghouse may also

accept any other “marks that constitute intellectual property.”

171

of November 2018, there were over 44,574 registered trademarks

that had been accepted by the Trademark Clearinghouse.

172

The main function of the Trademark Clearinghouse is to facili-

tate Sunrise registrations and the Trademark Claims service.

173

The Sunrise is a mandatory thirty-day period that all new top-level

domains are required to provide to owners of trademarks, whereby

any owner of a mark that is recorded in the Trademark Clearing-

house may pay a special fee to the registry to register a domain

matching their mark before it is opened for general sale.

174

So, for

example, before domains in the top-level domain .blog were opened

for public registrations in 2016, the company that operates the

registry, Automattic, was required to allow any company that has a

mark registered in the Trademark Clearinghouse to register the

domain corresponding to this mark in advance.

175

This ensures that

a company like Apple will not have to deal with any other party

using apple.blog to clickfarm, route to a fake Apple ID login page,

or sell knockoff Apple products. However, this system also prevents

170

ICANN, TRADEMARK CLEARINGHOUSE, supra note 152, § 3.2.

171

Id. § 3.2.4.

172

TMCH Stats November 2018, TRADEMARK CLEARINGHOUSE (Nov. 7, 2018),

http://www.trademark-clearinghouse.com/content/tmch-stats-november-2018

[https://perma.cc/KE7S-XR3R].

173

ICANN, TRADEMARK CLEARINGHOUSE, supra note 152.

174

Id. § 6.2.

175

Sunrise Period for .Blog Set to Open, WORLD INTELL. PROP. REV. (Aug. 17, 2016),

https://www.worldipreview.com/news/sunrise-period-for-blog-set-to-open-12048

[https://perma.cc/G7DQ-SF7Z].

2020] THE NEW CYBERSQUATTERS 435



any of the myriad other perfectly legitimate uses that potential

registrants might have had in mind for apple.blog, as a common

and generic word. One could imagine websites hosting recipes,

gardening tips, stories about New York, reviews of Apple products,

or any number of other perfectly legitimate uses for that domain

name. Instead, as of October 2019, apple.blog merely routes to the

company’s official Newsroom.

176

Some registries have rules which mandate that only relevant

businesses can reserve domains. For example, .pharmacy is run by

the National Association of Boards of Pharmacy, which includes

vetting procedures for their applicants.

177

However, these registries

are the exception rather than the norm. The rules that allow

trademark owners an inside track to protect domains related to their

mark make no such categorical distinction.

178

In other words, Apple

can use its status in the Trademark Clearinghouse to register

domains completely unrelated to its actual business, such as

for apple.clothing, or even apple.food. Although the company

originally registered the mark for the sale of computer products (an

arbitrary use of this common word),

179

the Trademark Clearing-

house makes no such categorical distinction, allowing the company

to expand its scope of protection into areas where the word would

be considered generic.

The Trademark Clearinghouse has also bolstered companies’

ability to use trademark enforcement as an avenue to chill legitimate

criticism. When the .SUCKS top-level domain was announced in

2015, the company running the registry, Vox Populi, realized the

176

Newsroom, APPLE, https://www.apple.com/newsroom/?cid=oas-us-domains-apple.

blog [https://perma.cc/A345-BR52] (entering apple.blog into your search engine

automatically redirects you to the Apple Newsroom).

177

For more information on how this works, see Program Eligibility and Policies, NAT’L

ASS’N BOARDS PHARMACY, https://nabp.pharmacy/programs/dotpharmacy/standards

[https://perma.cc/CZG9-5V9M]. It is also worth noting that .pharmacy has been criticized

by pharmaceutical websites based in Canada who were denied accreditation, apparently

due to their cross border sales. See Kevin Murphy, .Pharmacy TLD Faces Action After

Losing Complaint over Canadian Drug Peddler, D

OMAIN INCITE (July 16, 2018),

http://domainincite.com/23181-pharmacy-tld-faces-action-after-losing-complaint-over-

canadian-drug-peddler [https://perma.cc/7RR9-G7B6].

178

ICANN, TRADEMARK CLEARINGHOUSE, supra note 152, § 7.

179

Apple Trademark List*, APPLE, https://www.apple.com/legal/intellectual-property/

trademark/appletmlist.html [https://perma.cc/3H6N-DLLG].

436 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



temptation for brands to lock out critical uses of their domains,

and announced that it would charge a relatively steep price, USD

$2,499, for sunrise registrations. Greg Shatan, a trademark lawyer

who at the time was the head of ICANN’s IPC, complained that the

entire registry was a “shakedown scheme.”

180

ICANN responded

by requesting that the U.S. Federal Trade Commission consider

whether Vox Populi’s actions violated U.S. law.

181

In response,

while the Federal Trade Commission declined to cite any specific

violations of the law, their Chairwoman called on ICANN to

consider whether even stronger rights protection mechanisms might

be necessary to address the potential for “consumer confusion,” as

“the public may not be able to discern the real owner behind a

.SUCKS site.”

182

In Mattel, Inc. v. 3894207 Canada Inc., Canada’s Supreme

Court rejected the “moron in a hurry” test for consumer confusion,

in favor of the standard of a “casual consumer somewhat in a

hurry.”

183

However, it is difficult to believe that even a moron might

try and locate Apple’s official website by navigating to apple.sucks.

Returning to the reasoning in America Online, Inc. v. Johuathan

Investments, Inc.,

184

no reasonable person is likely to go to that

domain and, finding it filled with caustic complaints about Apple,

assume that the company was somehow endorsing the space.

Focusing on Vox Populi’s pricing is a distraction from the fact that

the entire exercise is predicated on trademark enforcement rights

180

.Sucks Dispute: IPC Backs FTC’s Policy Proposals for ICANN, TRADEMARKS &

BRANDS ONLINE (June 1, 2015), https://www.trademarksandbrandsonline.com/news/

sucks-dispute-ipc-backs-ftc-s-policy-proposals-for-icann-4387 [https://perma.cc/WCB6-

8NU6].

181

A letter was also sent to Canada’s Office for Consumer Affairs, since Vox Populi is

based in Ottawa, but the government declined to intervene. See Dean Beeby, Dot-Sucks

Domain Name Not Our Problem, Ottawa Says, C

ANADIAN BROADCASTING CORP. (Dec. 18,

2015, 5:00 AM), https://www.cbc.ca/news/politics/dot-sucks-canada-internet-website-

domain-1.3370577 [https://perma.cc/L5V5-UVF8].

182

Letter from Edith Ramirez, Chairwoman, FTC, to John O. Jeffrey, Gen. Counsel

& Sec’y, ICANN (May 27, 2015), http://pub.bna.com/eclr/FTCsucksresponse.pdf

[https://perma.cc/7TUW-CLGS].

183

Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, 803 (Can.).

184

America Online, Inc. v. Johuathan Investments, Inc., WIPO Case No. D2001-0918

(Sept. 14, 2001), available at https://www.wipo.int/amc/en/domains/decisions/html/2001/

d2001-0918.html [https://perma.cc/SQ52-ECMZ].

2020] THE NEW CYBERSQUATTERS 437



that have no basis in law. The fact that policy conversations now

start from the assumption that a trademark owner has the right to

prevent anyone else from setting up a domain declaring that their

brand “sucks” is illustrative of just how far down the rabbit hole the

debate has gone, as compared to trademark’s traditional roots in

consumer protection.

The second major function of the Trademark Clearinghouse is

to facilitate the Trademark Claims service.

185

This program, which

is also mandatory for all of the new top-level domains, provides

a sixty-day minimum period after public sales commence during

which time anyone seeking to register a mark that matches one listed

in the Trademark Clearinghouse will receive a notification that the

brand owner has asserted rights in the name.

186

If the registrant

opts to proceed, the brand owner will receive a notification of the

registration.

187

Although this service does not actually prevent

registrants other than the mark holder from obtaining a domain

name,

188

there are concerns as to whether the notifications might

pose a chilling effect on legitimate registrants.

189

These concerns are

exacerbated by the fact that the Trademark Claims service has been

augmented by the “Trademark+50” mechanism, which allows brand

owners to add up to fifty additional letter strings to each record

they have in the Trademark Clearinghouse, such as common

misspellings, which have previously been the subject of a successful

UDRP claim.

190

In other words, a person seeking to register “crew”

in any of the new top-level domains would likely find themselves

faced with a notification that a brand owner had asserted rights

in that name. Prominent members of the IPC seem to have

185

ICANN, TRADEMARK CLEARINGHOUSE, supra note 152, § 6.1.

186

Id.

187

Id.

188

Id. § 6.1.4.

189

See, e.g., Posting of Paul Keating, pau[email protected], to [email protected] (June 9,

2017, 11:34 PM), https://mm.icann.org/pipermail/gnso-rpm-wg/2017-June/002085.html

[https://perma.cc/5EJC-M8EL].

190

Trademark Clearinghouse Verification Service Now Accepting Additional Abused

Labels, ICANN (Oct. 11, 2013), https://newgtlds.icann.org/en/announcements-and-media/

announcement-11oct13-en [https://perma.cc/53XU-LZ96].

438 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



acknowledged the chilling effect on legitimate registrations, but

questioned whether or not it is “intolerable.”

191

Additionally, civil society and academics have raised two

major concerns regarding the operation of the Trademark Clearing-

house.

192

The first is that the Trademark Clearinghouse adopts a

“lowest bar” approach to registration, whereby if a mark can be

protected under any jurisdiction, and in any context, it is eligible for

inclusion globally under a universal standard of protection.

193

For example, the Trademark Clearinghouse accepts geographic

indicators that may be registered in Europe but not in the United

States.

194

However, of even greater concern is that the Trademark

Clearinghouse accepts registration of design marks with no regard

to the contextual features that are fundamental to their protected

status.

195

Although the rules for the Trademark Clearinghouse sug-

gest that only word marks are eligible, because no global metric is

available to differentiate a word mark from a design mark, Deloitte,

the company that operates the Trademark Clearinghouse, decided to

accept any submission where the words were “predominant” and

“clearly separable or distinguishable from the device element.”

196

In 2017, ICANN’s Rights Protection Mechanism Working

Group decided to test the scope of what could be registered in

the Trademark Clearinghouse by sending a list of examples of

potential marks to Deloitte to inquire as to whether they might be

accepted and how these registrations would be applied.

197

The

191

Winterfeldt & Barnett, supra note 103, at 21.

192

See Letter from Trademark Scholars to Philip Corwin, J. Scott Evans, & Kathy

Kleiman, Co-Chairs, GNSO (Mar. 10, 2017), https://www.eff.org/document/trademark-

scholars-letter-icann-gnso-rpm-working-group [https://perma.cc/PVJ5-X9VX].

193

ICANN, TRADEMARK CLEARINGHOUSE, supra note 152, § 3.2.

194

See Posting of Mary Wong, [email protected], to gnso-rpm-wg@icann.org

(Apr. 13, 2017, 2:42 PM UTC), https://mm.icann.org/pipermail/gnso-rpm-wg/2017-April/

001477.html [https://perma.cc/QX6X-GV8S].

195

What About Device/Image Marks?, TRADEMARK CLEARINGHOUSE, https://www.

trademark-clearinghouse.com/content/what-about-deviceimage-marks [https://perma.cc/

RYB6-YL57].

196

Id.

197

For the full list of examples, see Deloitte Follow Up Questions Annex, ICANN

(Mar. 4, 2017), https://community.icann.org/download/attachments/64066042/Deloitte%

20Follow%20Up%20Questions%20Annex%20-%204%20March%202017.docx?

version=1&modificationDate=1488752114000&api=v2 [https://perma.cc/SK7P-JF8R].

2020] THE NEW CYBERSQUATTERS 439



examples included “Music” by Parallel Music Entertainment,

“Cars” by Disney, “Parents” by Gruner + Jahr Printing & Publishing

Co., and “A” by Aisha’s Management & Consulting Group.

198

Deloitte confirmed that all these examples would be approved for

registration as a word mark under their standards.

199

Once a mark

has been accepted, it is protected as a word mark without reference

to any distinguishing design features, since domain names are a text-

only medium.

200

The notion of protecting “music” as a word mark, globally,

including in the field of music production, is an enormous expansion

of the scope of trademark protection that runs counter to the basic

balancing that is meant to take place between rewarding established

players and promoting fair competition. Although the four examples

listed above are hypothetical, journalists were able to uncover

a number of generic words that are registered in the Trademark

Clearinghouse as protected word marks, including: active, auto,

bank, craft, fire, hotel, internet, luxury, natural, pizza, style, texas,

and wedding.

201

These registrations, which were found through trial

and error, may be the tip of the iceberg in terms of the number

of generic or descriptive words that are currently protected. It is

impossible to find a more accurate measure of how many of the

marks currently included in the Trademark Clearinghouse are

generic or descriptive, or whether these marks have been exploited

to obtain valuable domain names that are unrelated to the brand

198

See id.

199

See Follow Up Questions for Deloitte from the GNSO’s Review of All Rights

Protection Mechanisms (RPM) Review Policy Development Process Working Group 4–5

ICANN, (Mar. 5, 2017), https://community.icann.org/download/attachments/64066042/

Deloitte%20Responses%20to%20Follow%20Up%20Questions.pdf?version=1&

modificationDate=1493341766000&api=v2 [https://perma.cc/Y2VW-6W8G].

200

ICANN, TRADEMARK CLEARINGHOUSE, supra note 152, at 7.

201

See Andrew Allemann, How Common Words Like Pizza, Money, and Shopping Ended

Up in the Trademark Clearinghouse for New TLDs, D

OMAIN NAME WIRE (Feb. 10, 2014),

https://domainnamewire.com/2014/02/10/how-common-words-like-pizza-money-and-

shopping-ended-up-in-the-trademark-clearinghouse-for-new-tlds/ [https://perma.cc/V5RZ

-LZJP].

440 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



owner’s business, due to the second major problem with the

Trademark Clearinghouse: it is entirely secret.

202

Unlike trademark registries, which are generally open and

searchable, the Trademark Clearinghouse is kept confidential,

apart from aggregate numbers that Deloitte publishes.

203

This is

ostensibly to protect the commercial sensitivity of the trademark

information which the Trademark Clearinghouse contains, despite

the fact that, as registered trademarks, all of the submissions are

already publicly available via the domestic databases where they

have been filed. The argument for secrecy is essentially that

allowing third parties to see which marks have been registered in the

Trademark Clearinghouse would grant insight into the companies’

prioritization and strategies going forward.

204

Again, this argument

seems difficult to defend, since the public availability of most

brands’ overall trademark portfolios, and the practical ability to

query whether an individual word exists in the Trademark Clearing-

house, would seem to make it relatively easy to determine which

marks a company has chosen to include. Nonetheless, the secrecy

of the database presents a major obstacle to any form of oversight

over the operation of the Trademark Clearinghouse, as well as

limiting the ability of potential new entrants to determine the amount

of open “real estate” around an online marketing avenue they

are considering.

202

See Email from Julie Hedlund, Policy Director, ICANN, to PDP Working Group,

ICANN (Oct. 23, 2019, 1:01 PM), https://mm.icann.org/pipermail/gnso-rpm-wg/2019-

October/004040.html [https://perma.cc/T5ZN-Z6XH].

203

See id.

204

See Email from J. Scott Evans, Associate Gen. Counsel, Adobe Inc., to PDP Working

Group, ICANN (Apr. 11, 2017, 9:17 PM), https://mm.icann.org/pipermail/gnso-rpm-wg/

2017-April/001418.html [https://perma.cc/P48H-Y2Q7].

2020] THE NEW CYBERSQUATTERS 441



V. O

NGOING DEBATES

A. ICANN’s Rights Protection Mechanisms Working Group

In 2016, ICANN established a Policy Development Process

Working Group to review its rights protection mechanisms, includ-

ing the URS, the UDRP, and the Trademark Clearinghouse.

205

As of

October 2019, its work remains ongoing, under the shared leader-

ship of Brian Beckham, the Head of Internet Dispute Resolution at

WIPO; Phil Corwin, Policy Counsel at Verisign (previously known

as Network Solutions Inc.); and Kathy Kleiman, co-founder of

ICANN’s Non-Commercial Users’ Constituency and a Practitioner-

in-Residence at American University’s Glushko-Samuelson Intel-

lectual Property Law Clinic.

Over the course of the working group’s discussions, the

overreaching nature of these mechanisms, and the growing gap

between trademark enforcement in the domain name space and

trademark enforcement as it exists under domestic legal frame-

works, have been subject to sustained criticism from civil society

and academic observers, as well as by domain name investors.

206

the other hand, ICANN’s IPC, together with other representatives of

the trademark industry such as the International Trademark

Association, have staunchly defended the systems as necessary to

protect against infringement.

207

Indeed, participants from the IPC

have made a number of proposals to expand enforcement even

more, including by further stripping down procedural protections

for defendants in the URS

208

and further expanding the scope of

sunrise registrations.

209

205

See generally Charter for Proposed PDP to Review All Rights Protection Mechanisms

in All gTLDs, ICANN (Mar. 15, 2016), https://gnso.icann.org/sites/default/files/filefield_

48755/rpm-charter-15mar16-en.pdf [https://perma.cc/NBF6-E9DQ].

206

See ICANN, Report of Public Comments 18–19 (Dec. 2, 2015), https://www.icann.org

/en/system/files/files/report-comments-rpm-prelim-issue-02dec15-en.pdf

[https://perma.cc/6QAY-ASFL].

207

Id. at 18.

208

See Ariel Liang, URS Proposals, ICANN (Oct. 25, 2019), https://community.

icann.org/display/RARPMRIAGPWG/URS+Proposals [https://perma.cc/N8HR-7XB6].

209

See Ariel Liang, Sunrise and Trademark Claims Proposals, ICANN (July 26, 2019),

https://community.icann.org/pages/viewpage.action?pageId=102146375#SunriseClaims

—324377862 [https://perma.cc/4AL8-BV6H].

442 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



Although ICANN’s consensus-based model of decision-making

makes it unlikely these proposals will succeed, they similarly make

it difficult for contrary reform proposals—which aim to pare back

trademark enforcement—to make any headway.

210

The custom that

the status quo prevails in the absence of consensus creates difficulty

in pushing back, even where implementation decisions have had

the effect of expanding trademark protections beyond the limits

formally agreed to through ICANN’s processes. Such has been the

case with Deloitte’s decision to begin accepting design marks into

the Trademark Clearinghouse, which, while seemingly contrary to

the rules as drafted, is difficult to overturn because of significant

opposition by the IPC against a major change.

211

B. Private Sector Trademark Protection Initiatives

In addition to ICANN’s institutional rights protection mecha-

nisms, intellectual property enforcement in the domain name space

has been further expanded by private sector initiatives. The most

notable of these is the Domain Protected Marks List (“DPML”)

that has been implemented by Donuts, the world’s largest registry,

which owns around 240 different gTLDs.

212

The DPML is a paid

service that allows trademark holders to block registration of any

domain that matches their mark, or a misspelling of the mark, or

that contains the protected mark, across all of Donuts’ domains,

preventing its use by any other party.

213

Although, in some

instances, owners of a different matching trademark that is filed in

the Trademark Clearinghouse may be able to “unblock” a domain

210

Winterfeldt & Barnett, supra note 103, at 22.

211

This is not to suggest that progress is impossible. As of October 2019, debates around

the issues discussed here remain ongoing in the Rights Protection Mechanisms Working

Group. In particular, there appear to be some signs of an emerging consensus to remove

geographic indicators from the Trademark Clearinghouse. This is likely facilitated by the

fact that many of the IPC’s active members are from the United States, and are intuitively

opposed to the automatic recognition of geographic indicators. Similarly, it seems possible

that at least some reforms will be made to address the inclusion of obvious design marks,

though there remain strong headwinds against substantial changes that might bring the

system into closer alignment with the actual scope of legal trademark protections.

212

See What We Do, DONUTS, https://donuts.domains/what-we-do/ [https://perma.cc/

SFR6-ATNM].

213

See Enhanced Brand Protection, DONUTS, https://donuts.domains/what-we-do/brand-

protection [https://perma.cc/CW3W-9VWV] (last visited Nov. 17, 2019).

2020] THE NEW CYBERSQUATTERS 443



for their own purposes, Donuts is attempting to revise its rules so

that even these will require the approval of the party that purchased

the DPML service.

214

Using ICANN’s WHOIS search tool, which flags when domains

are covered under a DPML Block, examples of generic words that

are protected under this service, such as “mini” and “discovery,”

are relatively easy to find.

215

In practical terms, the revised rules

would mean that the companies will have exclusive use over these

words across Donuts’ 240 different generic top-level domains. This

is unfortunate for the thousands of other companies that have trade-

marks that contain the words “discovery” or “mini,” and who will

now find enormous swaths of the domain name space effectively

blocked from their use. Moreover, the rules will also make it more

difficult to establish new companies using marks that are similar to

those in the list. Today’s internet might be a very different place had

the DPML service existed when Google was founded, assuming that

any of the companies with a trademark for some variant of “goggles”

had sought protection.

As a private company, one could argue that it is up to Donuts to

decide how much deference to show to trademark holders in seeking

to control any uses that relate to their protected marks. However,

there is a key difference between Donuts’ role as a registry and, say,

a magazine deciding what stories to publish. Donuts has essentially

been granted a monopoly to register uses of certain sections of the

domain name space, which is a global public resource. Donuts has

public interest responsibilities connected to how they carry out this

function, as is evidenced by the fact that, like all registries, they con-

tract with ICANN, and ICANN has the power to approve particular

terms in how the registry is governed. Yet, regardless of whether

one thinks it is within Donuts’ prerogative to offer the DPML

service, the additional expansion of trademark protection to the

point where brand owners can control virtually any and all uses of

214

See ICANN, AMENDMENT TO REGISTRY AGREEMENTS, https://www.icann.org/sites/

default/files/tlds/donuts-proposed-amend-dpml-15aug18-en.pdf [https://perma.cc/KSV5-

2H4D].

215

ICANN WHOIS Search Tool, ICANN, https://lookup.icann.org/ [https://perma.cc/

KFX2-XV4R].

444 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399



their mark, or words similar to their mark, across huge portions of

the domain name space, is a major development.

ONCLUSION

As early as 2000, academic observers of the domain name space

warned that that proposed rules to combat cybersquatting could

eventually result in a system where “ownership of a trademark gives

one the exclusive right to use the word on the Internet.”

216

Given the

established jurisprudence of the UDRP, as well as the growing role

of the Trademark Clearinghouse and the Domain Protected Marks

List, these words are proving prophetic. In retrospect, the fears of an

imposition of U.S. trademark law over the global internet fell far

short of the real threat—not that a single country’s rules would

dominate, but rather that a hybrid model would develop that

borrowed the most restrictive aspects of each framework without

adopting the inherent checks, balances, and limitations that have

evolved alongside these rules.

The days when a registrant in their basement could defiantly

extort some of the world’s biggest companies have given way to

a new kind of cybersquatting. Today, the complainants with the

sharpest elbows use ICANN’s rights protection mechanisms to

secure privileged access to valuable areas of the domain name space,

and powerful and well-resourced brand management firms use

trademarks as an offensive weapon to close off areas where critical

speech might take root. Nevertheless, one of the incredible things

about the internet is its resilience to attack and resistance to

mechanisms of control. Just as China’s web users have developed

an elaborate and growing list of euphemisms in order to evade State

censors,

217

people will always find a way to vent their spleen about

frustrating experiences with companies. Comcast’s early registra-

tion of comcast.sucks may have prevented a caustic sight from

216

Litman, supra note 80, at 164.

217

See Jeanette Si, The Chinese Language as a Weapon: How China’s Netizens Fight

Censorship, MEDIUM (July 21, 2017), https://medium.com/berkman-klein-center/the-

chinese-language-as-a-weapon-how-chinas-netizens-fight-censorship-8389516ed1a6

[https://perma.cc/YT5R-8JM4].

2020] THE NEW CYBERSQUATTERS 445



emerging on that specific domain,

218

but a quick search reveals

similar sites have been established at fuckyoucomcast.com,

comcast-sucks.com, and comcastsucksballs.blogspot.com, not to

mention at least eighteen Twitter accounts

219

and nineteen Facebook

pages

220

with titles containing some variation of that phrase. It

is ironic that, despite the enormous amounts of money, time, and

energy invested by major brands in lobbying at ICANN for

exclusivity over their names, their efforts are unlikely to ever make

a dent in the flow of angry speech directed their way.

In Kirkbi AG v. Ritvik Holdings Inc., Canada’s Supreme Court

cautioned that:

The economic value of intellectual property rights

arouses the imagination and litigiousness of rights

holders in their search for continuing protection of

what they view as their rightful property. Such a

search carries with it the risk of discarding basic and

necessary distinctions between different forms of

intellectual property and their legal and economic

functions.

221

This tendency has certainly been on display at ICANN, as trademark

enforcement has grown, completely divorced from any notions of

confusion or quality assurance. However, beyond its implications

for trademark law, the evolution of these enforcement mechanisms

into broader tools of brand and reputation control is shaping the

future of the domain name space, as well as the degree to which it

will be dominated by established commercial interests, at the

expense of non-commercial voices, or smaller rivals who may be

denied access to common or generic words in their marketing. The

careful balance between free competition and fair competition

which lies at the heart of trademark law has been lost in favor of a

218

ICANN WHOIS Search Tool, supra note 214 (search in “Domain Name Registration

Data Lookup” search bar for “comcast.sucks”).

219

Twitter Search, https://twitter.com/search?f=users&vertical=default&q=comcast%20

sucks&src=typd [https://perma.cc/6XWK-QAUS] (search for “comcast sucks”).

220

Facebook Search (login required) (search for “comcast sucks” and filter by “Pages”

at the top), https://www.facebook.com/search/pages/?q=comcast%20sucks&epa=SERP_

TAB (last visited Jan. 13, 2020).

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Kirkbi AG v. Ritvik Holdings Inc., [2005] 3 S.C.R. 302 (Can.).

446 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. [Vol. XXX:399

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maximalist interpretation of the scope of trademark protection that

goes vastly beyond what might be countenanced in any national

legal framework.

By illustrating the extent of the gap that has emerged between

the traditional function of trademark law, as a mechanism for pro-

moting fair competition, and its current manifestation as an

aggressive brand protection tool in the domain name space, this

Article presents a cautionary tale in adapting legal concepts to a

digital context and highlights the significant potential this approach

has to lose sight of the original purpose of these rules. This danger

is particularly acute in instances where significant lobbying or

business interests are at play. As the commercial sector continues

to evolve, academics and policymakers should be wary of the

expansive tendency of trademark rights and of the pressing and

constant need to ensure that sufficient space remains for innovation

and new entrants to distinguish themselves in an increasingly

crowded and aggressively policed linguistic landscape.