Combatting Cybersquatting: ICANN's Rights Protections Mechanisms

Protecting trademarks from infringement in the cyber marketplace has never been more important to businesses, but they and their representatives must also appreciate the difference between cybersquatting and lawful registration of domain names. There can be no cybersquatting for domain names acquired prior to the use of marks in commerce; and for owners whose marks predate domain name registration priority alone is not sufficient to prove cybersquatting. In the United States there are two major domain name-focused regimes for combatting cybersquatting: the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA), which both became effective in 1999. 

In this program, four highly experienced intellectual property attorneys will discuss the rights protection mechanisms implemented by the Internet Corporation for Assigned Names and Numbers (ICAAN) and the evidentiary demands on the parties to establish their claims either of cybersquatting or lawful registration of domain name. It is important for attorneys in this area of practice to not only be familiar with the substantive and procedural provisions of the rights protection mechanisms (principally the UDRP), but to also have a working knowledge of the jurisprudence that has developed for balancing parties' rights.

Learning Objectives:

1. Review ICANN's Rights Protection Mechanisms in the context of conflicting interests
2. Discuss conflicting interests between mark owners, small businesses, and investors, and the different perspectives of the rights protection mechanisms
3. Establish the fundamental elements of cybersquatting claims and defenses
4. Examine the differences between inherent and acquired marks, and trademark value versus semantic value
5. Lawfully buy, warehouse, resell, and monetize domain names
6. Identify the separate value of dictionary words, alone or combined, descriptive phrases, arbitrary letters, and acronyms
7. Use evidentiary demands to prove and rebut cybersquatting claims
8. Draft UDRP complaints, including the combination of Notice of Claim and motion for summary judgment
9. Analyze the emergence and development of a jurisprudence of domain names