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456 TRADEMARKLAWincludes nine factors that courts may take into consider-
ation when determining the existence of bad faith intent:The trademark or other intellectual property rights of
the person, if any, in the domain name.
The extent to which the domain name consists of the
legal name of the person or a name that is otherwise
commonly used to identify that person.
The person’s prior use, if any, of the domain name in
connection with the bona fide offering of any goods or
services.
The person’s bona fide noncommercial or fair use of the
mark in a site accessible under the domain name.
The person’s intent to divert consumers from the mark
owner’s online location to a site accessible under the do-
main name that could harm the goodwill represented by
the mark, either for commercial gain or with the intent
to tarnish or disparage the mark, by creating a likelihood
of confusion as to the source, sponsorship, affiliation, or
endorsement of the site.
The person’s offer to transfer, sell, or otherwise assign
the domain name to the mark owner or any third party
for financial gain without having used, or having an in-
tent to use, the domain name in the bona fide offering
of any goods or services, or the person’s prior conduct
indicating a pattern of such conduct.
The person’s provision of material and misleading false
contact information when applying for the registration
of the domain name, the person’s intentional failure to
maintain accurate contact information, or the person’s
prior conduct indicating a pattern of such conduct.
The person’s registration or acquisition of multiple do-
main names that the person knows are identical or con-
fusingly similar to marks of others that are distinctive
at the time of registration of such domain names, or
dilutive of famous marks of others that are famous at
the time of registration of such domain names, without
regard to the goods or services of the parties.
The extent to which the mark incorporated in the per-
son’s domain name registration is or is not distinctive
and famous.The act then indicates that bad faith cannot be found
if the defendant “believed and had reasonable grounds to
believe that the use of the domain name was a fair use or
otherwise lawful.”
The recent dispute over the domain name Nissan.com
gives some insight into how courts are applying the ACPA
and other aspects of traditional trademark law analyses.
The domain name is at the center of a dispute between
Nissan Motor Co., Ltd., a popular car manufacturer, and
Nissan Computer Corporation, a small business in North
Carolina operated by Mr. Uzi Nissan.Nissan Motor Co.,
Ltd v. Nissan Computer Corp.,(2002). The court noted that
the defendant registered the domain in 1994 and has been
operating his firm under the Nissan name since 1985. Al-
though the court found that the initial registration of the
domain name was not in bad faith, the court did take issue
with several aspects of Mr. Nissan’s behavior, including his
initial response to Nissan Motors complaint: an offer tosell the domain name for several million dollars. More
recently, the court ordered Mr. Nissan to cease any com-
mercial activities involving the site when it was discov-
ered that Mr. Nissan was advertising automotive-related
products on the site, despite his business being unrelated
to automobiles (Nissan Computer Corporation Keeps Do-
main Name, 2002).
One of the innovative aspects of the ACPA is the way it
deals with jurisdictional matters. Traditionally, legal dis-
putes have always been subject to jurisdictional bound-
aries and national borders, and either the physical pres-
ence of the parties within those boundaries or evidence
of the parties’ contacts with the jurisdiction. Recognizing
that in many cases cybersquatters go to some lengths to
hide their identity or their location, the ACPA permits the
trademark owner to take action against the domain name
itself, rather than the domain owner personally. This per-
mits aggrieved parties to locate the registrar and, although
the registrar itself cannot be held liable for an infringing
domain it permitted to be registered, the domain name
can be attacked.ICANN Domain Name Dispute Process
Although the ACPA’s jurisdictional elements have simpli-
fied matters somewhat for trademark owners with do-
mains that have been registered within the United States,
the global nature of the Internet has required a less geo-
centric dispute resolution process. To that end, ICANN as
developed a Uniform Domain Name Dispute Resolution
Policy (UDRP; 2001), the provisions of which are in many
respects similar to those of ACPA.
The UDRP process relies on third-party, private dis-
pute resolution mechanisms rather than the more expen-
sive prospect of litigation in a court of law. For trademark
owners who are seeking a quicker and cheaper resolution
of domain disputes, the UDRP route has proven to be ex-
tremely popular, even though no monetary damages or
injunctions are available. Indeed, the only remedies avail-
able under the UDRP are the cancellation or transfer of
the domain name. Thus, for instance where the injury to
the trademark owner is more serious, traditional litigation
may still be necessary.
The World Intellectual Property Organization (WIPO)
has attempted to define cybersquatting and to establish
guidelines for dispute resolution. In a 1999 report on
the Management of Internet Names and Addresses, the
WIPO delegates discuss at great length the phenomenon
of registering trademarks as domain names with the in-
tent of profiting from the ownership, either by capitalizing
on traffic brought in through the confusion or by selling
the domain to the trademark owner. In the end, WIPO’s
recommendations are similar to those contained in the
ICANN UDRP and the ACPA.
The UDRP, WIPO’s recommendations, and the oper-
ations (and even the very existence) of ICANN are cur-
rently the subject of tremendous international debate.
Although the details of these arguments are too lengthy
for inclusion in this brief chapter, many Web sites (includ-
ing ICANNWatch.org and UDRPinfo.com) chronicle the
legal, technical, and political arguments over this emerg-
ing field.