Question

Cyber-squatting is an issue that can affect businesses and famous people. Read case 17.3 in your text. Identify another case dealing with cyber-squatting or a domain name dispute in the last two years. Answer the questions below.

• Compare and contrast the facts in both cases.
• How was the Anti Cyber-squatting Consumer Protection Act applied in these cases?
• Present an argument to support a person who purchased a domain name years before the name became famous. Should they be found guilty of cyber-squatting?
• Present an ethical argument for both parties in these cases.

Case:

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Facts

The New York Yankees Partnership d/b/a/ The New York Yankees Baseball Club (Yankees) is among the world’s most recognized and followed sports teams, having won more than 20 World Series Championships and more than 30 American League pennants. The Yankees own the trademark for the NEW YORK YANKEES (Reg. No. 1,073,346), which was issued to the Yankees by the U.S. Patent and Trademark Office (PTO) on September 13, 1977. Moniker Online Services, Inc. (Moniker) registered the domain name <nyyankees.com>. Moniker operates a commercial website under this domain name where it offers links to third-party commercial websites that sell tickets to Yankee baseball games and sell merchandise bearing the NEW YORK YANKEES trademark without the Yankees’ permission. The Yankees filed a complaint with the National Arbitration Forum alleging that Moniker had registered the domain in bad faith in violation of the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Dispute Resolution Policy and seeking to obtain the domain name from Moniker.

Issue

Language of the Arbitrator

Did Moniker violate the ICANN’s Uniform Domain Dispute Resolution Policy (Policy)?

Complaint has sufficiently demonstrated that Moniker’s <nyyankees.com> domain name is confusingly similar to complainant’s NEW YORK YANKEES mark. There is no evidence in the record to suggest that Moniker is commonly known by the disputed domain name. Such use by Moniker is indicative of an intent to disrupt the business of the Yankees, and constitutes registration and use of the disputed domain name in bad faith.

Decision

The arbitrator held that Moniker violated the ICANN Policy and ordered that the <nyyankees.com> domain name be transferred from Moniker to the Yankees."

Answer 1

The one liable to the owner of a trademark who, with "a bad faith intent to profit from that mark," "registers, traffics in or uses a domain name" that is either identical or confusingly similar to a "distinctive" mark or is identical, confusingly similar or dilutive of a "famous mark."

The court can "order the forfeiture or cancellation of the [offending] domain name or [its] transfer . . . to the owner of the mark.

The mark owner can also recover up to three times his actual damages and obtain injunctive relief. Actual damages include the profits the domain name registrant made from his use of the mark, as well as losses sustained by the mark holder as a result of the domain name registrant's actions, such as lost sales or harm to the mark's reputation.