Online infringement and dilution
IP violations and brand dilution on the internet.
5-mark Exam Answer
The Internet has enabled new forms of trademark abuse such as cybersquatting and cyberpiracy. According to Laudon and Traver, the Anticybersquatting Consumer Protection Act (ACPA) of 1999 and ICANN's Uniform Dispute Resolution Procedure provide remedies, but the burden falls on trademark owners to be vigilant.
- 1.Cybersquatting = registering famous mark domains
- 2.Cyberpiracy = cybersquatting + traffic diversion
- 3.ACPA (1999) — federal cause of action
- 4.ICANN UDRP — faster alternative to litigation
- 5.Burden on trademark owners to be vigilant
The Internet has enabled new forms of trademark abuse. Cybersquatting is the practice of registering domain names that are identical or confusingly similar to well-known trademarks, then profiting from selling them back to the trademark owner or from advertising on the site. Cyberpiracy involves the same behavior but with the intent of diverting traffic from the legitimate site to an infringing site.
The Anticybersquatting Consumer Protection Act (ACPA) of 1999 created a federal cause of action against cybersquatting. In E. & J. Gallo Winery v. Spider Webs Ltd., the court found that registering Ernestandjuliogallo.com violated the ACPA and constituted dilution by blurring. In 2009, a court upheld the largest cybersquatting judgment to date: a $33 million verdict in favor of Verizon against OnlineNIC, which had used over 660 confusingly similar names.
ICANN handles many cybersquatting cases under its Uniform Dispute Resolution Procedure (UDRP), which provides a faster, cheaper alternative to litigation. With the expansion of generic top-level domains (gTLDs), ICANN also developed the Uniform Rapid Suspension System (URS) and the Trademark Clearinghouse as repositories and dispute mechanisms.
Other online trademark abuses include metatag abuse (embedding competitor trademarks in a site's metatags to attract search traffic) and framing (displaying other sites' content within a frame on the infringer's site). However, it is not always easy for a firm to prevent infringement: the burden is clearly on the trademark owner to be vigilant in detecting infringement, sending takedown notices immediately, and following up to ensure infringing sites are taken down.
In 2009, Verizon won a $33 million judgment against OnlineNIC for using over 660 domain names confusingly similar to Verizon's — the largest cybersquatting verdict to date, illustrating both the scale of online trademark abuse and the ACPA's role as a remedy.
Online trademark abuse (cybersquatting, cyberpiracy, metatag abuse, framing) is addressed by the ACPA, ICANN's UDRP, and the URS, but the burden of vigilance — detection and takedown — rests on trademark owners.
The exam interface follows the university paper pattern: Section A & B carry 5-mark questions; Section C carries objective questions.