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DOMAINNAMES 455Once you have selected a registrar, you will communi-
cate to it what second-level domain you wish to register.
In most cases, the registrar will check its records and de-
termine whether the domain name requested is already
registered or might have previously been reserved. Pre-
sumably you will have checked to see if there is a Web site
already operating at the domain name you have selected;
however, the absence of an active site is not determinative,
because it is possible for a domain name to be registered
but not in active use.
If the second-level domain name you desire has not
been previously registered, you will likely be given the
choice to register it. Upon providing contact and billing
information, and paying the registrar’s fee, of course, you
will also be asked to provide the IP addresses of a primary
and a secondary domain name server for your domain.
Although some registrars offer the option of also hosting
the domain on their own servers, you may need to have
previously arranged with an ISP to establish the technical
details necessary for operating DNS, Web, and e-mail ser-
vices for your newly chosen domain name. If you have set
up these services in advance, however, then it is possible
to have your new domain fully functional within just a
matter of minutes or hours of completing the registration
process.Internet Domain Disputes
Far and away the greatest amount of trademark-related
controversy on the Internet concerns use of domain
names. Because of both the value of trademarks them-
selves and the value of memorable domain names for
maximizing the marketing and sales power of online op-
erations, using popular trademarks as domain names has
been an important issue for businesses beginning to make
use of the Internet. Much to their consternation, how-
ever, many companies have attempted to register domain
names related to their company name or their trademarks
only to discover that someone else has already registered
those domain names.
In the course of many legal disputes over domain
names, some consensus among the courts has developed.
Most courts have applied trademark law in much the same
fashion as they would in any other trademark dispute. For
example, marks are assessed for the extent to which they
are fanciful, arbitrary, suggestive, descriptive, or generic.
Disputes have also been judged on whether there is ev-
idence of bad faith on the part of either party. In the
Oppedahl & Larson case discussed earlier, there was no
reasonable basis for the defendants to be making use of
“Oppedahl” and “Larson” other than their desire to garner
traffic attracted by someone else’s mark.
The most common method of using a trademark in
a domain name is the verbatim use of the mark in con-
junction with the TLD, such as Pepsi.com. A related form
of trademark infringement comes in dilution through the
registration of similar domains, or domains containing
misspellings or common typographical errors. Disputes
over domains such as “amazom.com” (instead of amazon.
com), gateway20000.com (instead of gateway2000.com),
and micros0ft.com (microsoft.com with the second let-
ter “o” replaced with a zero), have almost uniformlyresulted in court decisions or settlements transferring do-
main ownership to the aggrieved party. These and other
cases of infringement have resulted in a new area of law—
and even of legislation—focused on resolving trademark-
related domain name disputes.Cybersquatting
In the mid-1990s, Dennis Toeppen registered some 250 do-
main names that were either similar or identical to popu-
lar trademarks, including deltaairlines.com, eddiebauer.
com, neiman-marcus.com, northwestairlines.com, and
yankeestadium.com. In two cases considered pivotal
among domain name trademark disputes,Intermatic In-
corporated v. Toeppen(1996) andPanavision Int’l, L.P. v.
Toeppen(1996), the plaintiffs successfully forced Toeppen
to relinquish control of the domains intermatic.com and
panavision.com, respectively.
The Panavision case in particular illustrates how many
of the cybersquatting disputes play out. In 1995, Toep-
pen registered the domain name http://www.panavision.com
and created a Web site that contained photographs taken
around the city of Pana, Illinois. When contacted by
Panavision, a maker of motion picture cameras and pho-
tographic equipment, Toeppen offered to sell the domain
name for $13,000. Panavision declined and brought suit
under the Federal Trademark Dilution Act.
As discussed in an earlier section, the FTDA requires
plaintiffs to demonstrate that their mark is “famous” and
that the defendant is using a mark in commerce in a fash-
ion that could cause dilution of the mark’s distinctiveness.
Although Toeppen claimed that his use of the mark was
noncommercial, the court held that having offered the do-
main name for sale indicated that he intended that the
domain name itself be a commercial offering.
In the Intermatic case, Toeppen originally operated a
Web page at the intermatic.com address that described
a piece of software he claimed to be developing called
“Intermatic,” later replacing it with information about
Champaign–Urbana, Illinois, the community in which
Toeppen lived. The Intermatic court held that despite
these noncommercial uses, the registration of the domain
name itself was dilutive of Intermatic’s mark.Anticybersquatting Consumer
Protection Act
As the problem of cybersqatting grew throughout the
1990s, Congress responded in 1999 by enacting the An-
ticybersquatting Consumer Protection Act (ACPA), which
amended the Lanham Act to include protections specific
to Internet domain names. One change from past practice
under the Federal Trademark Dilution Act, however, was
the ACPA’s removal of the requirement that the mark be
used in commerce. This greatly expanded plaintiffs’ abil-
ity to take control over domain names that had merely
been registered but were not actually in use.
The ACPA states that cybersquatting occurs when the
person registering a domain name containing a trademark
“has a bad faith intent to profit from that mark” and “reg-
isters, traffics in, or uses” a domain name that is “identical
or confusingly similar to or dilutive of that mark.” The act