Online infringement and dilution
IP violations and brand dilution on the internet.
Learning Objectives
- Define cybersquatting and cyberpiracy.
- Explain the Anticybersquatting Consumer Protection Act (ACPA).
- Describe ICANN's Uniform Dispute Resolution Procedure.
- Identify metatag abuse and other online trademark behaviors.
Explanation
Online trademark abuse includes cybersquatting (grabbing famous brand domain names) and cyberpiracy (diverting traffic to fake sites). The ACPA (1999) and ICANN's dispute procedures help, but trademark owners must 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 as cybersquatting, 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 to host anti-corporate content about the winery 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 names confusingly similar to Verizon's.
ICANN (the Internet Corporation for Assigned Names and Numbers) 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.
Key Points & Important Terms
Key Points
- •Cybersquatting = registering famous mark domain names to profit.
- •Cyberpiracy = cybersquatting + intent to divert traffic.
- •ACPA (1999) created a federal cause of action against cybersquatting.
- •Verizon v. OnlineIC: $33M judgment (largest cybersquatting verdict, 2009).
- •ICANN's UDRP provides a faster alternative to litigation.
- •Burden is on trademark owners to be vigilant — detect and takedown.
Important Terms
- Cybersquatting
- Registering domain names identical or similar to famous trademarks to profit from them.
- Cyberpiracy
- Cybersquatting with the intent of diverting traffic from a legitimate site to an infringing site.
- ACPA (1999)
- The Anticybersquatting Consumer Protection Act, creating a federal cause of action against cybersquatting.
- UDRP
- ICANN's Uniform Dispute Resolution Procedure — a faster, cheaper alternative to litigation for cybersquatting.
- Metatag abuse
- Embedding competitor trademarks in a site's metatags to attract search traffic.
- Dilution by blurring
- Weakening the connection between a famous trademark and its product through unauthorised use.