Précis #2. Summary of three following articles: “Domain name disputes – an update”, “Julia, Jimi and cybersquatting: an update” and “Court dismisses Falwell domain name case”

Development of the Internet creates discussions about it. New domain levels were introduced in usage. It brings a big impact to owners of trademarks and developers of sites.
After creating and evolving a new divisive plan by the Internet Corporation for Assigned Names and Numbers (“ICANN”) in January 1, 2000 and the Uniform Domain Name Dispute Resolution Policy as part of it was accepted by many domain holders including Network Solutions Inc.. Anticybersquatting Consumer Protection Act (“ACPA”) quickly covered the U.S. trademark law by its own significance. Every person working with the Web professionally should know all the nuances and issues in this area.
In the beginning, these two documents were introduced to prevent further violations during the registration and utilizing of domain names. In other words, a pending site has to have evidence of upright usage or “bad faith”. It means that a particular site doesn’t have permission to place a specific kind of information regarding a specific trade name.
The existence of bad faith is considered only on known fact. Charging another company with a violation, in most cases, always has a relation between trademark holder and owner of a domain name. Everybody has to register domain names according to both main documents.
Bad faith can be found in the following cases:
-    registration of a site with trade name with purpose to make profit from putting it on sale or give the right to use it for fee;
-    creating a domain name using a particular trademark name to limit the access to this site for owner of the trademark;
-    using a site to destroy undesirable business partners;
-    publication of the content on the site purposefully hiding the real goals of this site.
Anyway, existence of bad faith is a good reason to charge the creators of domain names. The only way to prove the right of usage of this domain name is to represent the fact of following the rules of aforementioned documents.
To protect the trademark its owner has to appeal to appropriate a judicial organization under the U.S. trademark law with any evidence of plagiarism: he or she can use as a proof any received benefit of opposite part from utilizing this site name. Unfortunately, this action consists of different limitations. Also the owner of the trademark can obtain help from arbitration organizations paying for their services. They can settle the problem by cancelling or transferring the domain name to the owner of the related trademark if they will find any undesirable or illegal purposes of using this site by the domain name holder.
There are divisive components of every particular case such as success in solving the problem and amount of time and resources spent on it.
Network Solutions Inc. can suspend running the site during the time it considers the issue. This action negatively influences the domain owner’s rights because of its illegality.
Companies such as NSI decided to changes the order of registration of a domain name. Now they can’t put the site “on hold”, but still have the right to delete, relocate or make changes on the domain if the appealing side will provide a document that proves rights of the owner of the site name and permission to make appropriate changes from arbitration organization and ICANN.
The trademark owners’ responsibility is to completely secure trade names from future violations of usage of these marks. Otherwise, an owner of a trademark might lose the control under his or her trade name.
Because there are so many levels of domain names, trademark owners are going through a difficult time defending their rights that raise the problem every moment. As an option, an owner of a trade name can create domain names on all introduced domain levels to protect him- or herself.
Nowadays, the Internet acts like a big corporation with complicated rules. A security force of regular people is sitting on their shoulder. Knowing the laws will help them to avoid many problems and keep all contracts in order.
Many celebrities are dealing with the same problem. For instance, Julia Roberts and Jimi Hendrix have cases according to inappropriate usage of their own names as domain names. One of the requirements in the case of Julia Roberts was that she had to have a registered trade name in the U.S. in addition to common law trademark rights. She didn’t have any registered trademarks. The usage of her name was called a “secondary meaning”. It means that people can relate the trade name (or person name) with domain name that was given by its owner. The information of named site let people think that this trademark and site content have an undoubted relationship. The judicial organization gave to Julia Roberts an appropriate trademark right. The administrative group didn’t find any illegality of this site content, but concluded that the site was created with purpose of selling to the actress as many other domain names by the same owner. The decision was to give the domain name to Julia Roberts, but the previous owner can still find an opportunity to bring it back.
Domain name “jimihedrix.com” was created as Jimi Hendrix Fan Club. An arbitration panel found another registered domain names by this owner such as “elvispresly.com”, etc.. The site was not a real Fan Club. It was using for selling site names. It would be harder to clarify the problem if the site were run as a true Fan Club. The site was returned to the trademark holder.
UDRP and ACRA definitely helped to cover the trademarks laws.
In the case of Falwell, the court didn’t have the right to return a Web site with his own name to Falwell. Because of difference between site place and location of Gary Cohn who used to post parodies to “Jerryfalwell.com” and “Jerryfallwell.com” the court could not claim infringement of the trademark law. Falwell had appealed to UDRP, but the organization didn’t find bad faith of the sites. Falwell appealed to federal district court again.
It is evident, that in the Falwell case the court was not right. Somebody has to avoid further Cohn posts.
The decision to return domain names to Julia Roberts and Jimi Hedrix was based on the fact of bad faith of using the sites. I suppose nobody can use my name to confuse the public with purpose of getting benefits from utilizing this name.