Anticyber Squatting

EFRONI FINAL 6/5/2003 4:46 PM
The Anticybersquatting Consumer Protection Act and the

Uniform Dispute Resolution Policy: New Opportunities For
International Forum Shopping?
Zohar Efroni*
INTRODUCTION
A. THE PLAYGROUND
The playground (or the medium) of the discussion in this Article is the internet:
a global, borderless “network of networks” which facilitates communication and
information transfer between the millions computers connected to it.1 It has created
endless new opportunities for the citizens of cyberspace, ones that were not
possible in the old, real world. The growing importance that the internet has played
in consumers’ lives and the world-wide change in consumption habits has turned it
into a powerful tool for businesses to promote, advertise, and sell products and
services.2 To connect with consumers, businesses can offer websites that are easily
accessible from any part of the world, facilitating myriad commercial activities.
To a large extent, what makes the internet a geographically independent medium
is its communication technology, which enables any user with a computer and a
simple phone line to access information posted on internet servers, regardless of
geographical location of either the user or the server. A common way to access a
website is by giving the internet browser (or the internet search tool) a unique
numerical “address,” which sends the user to the specific website registered under
that “address.” Numerical addresses also have an alphabetical form which will lead
the user to the same website. The “alphabetical address” fed into the browser is
translated by the Domain Name System (DNS) into the numerical address,
* LL.B The Interdisciplinary Center, Herzlia, LL.M (IP) Benjamin N. Cardozo School of Law.
The author would like to thank Professor Peter K. Yu for his helpful notes on an early draft of this
Article. © Zohar Efroni 2002.
1. For a detailed description of the internet, see generally ACLU v. Reno, 929 F. Supp. 824 (E.D.
Pa. 1996), aff’d, 521 U.S. 844 (1997).
2. There are estimates of over 100 million internet users in the year 2000, a number that has been
growing rapidly. See Colby B. Springer, Comment: Master of the Domain (Name): A History of
Domain Name Litigation and the Emergence of the Cybersquatting Consumer Protection Act and the
Uniform Dispute Resolution Policy, 17 SANTA CLARA COMPUTER & HIGH TECH. L.J. 315, 324 (2001)
(referring to Marcus J. Millet, Same Game in a New Domain—Some Trademark Issues on the Internet,
198 N.J. LAW 32 (1999)).
335
336 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4
allowing the browser to identify the website in cyberspace. The “alphabetical

address” can be comprised of almost any combination of characters, making it
feasible to use one’s mark or name as the address of a website. As mentioned
above, easy access to a website may sometimes be a critical feature in the success
of a business’ internet activity. Hence, the game played in the internet playground
which is the subject of this Article is the competition between businesses and other
website operators to give their websites intuitive, easy to remember, and mark-
oriented addresses.
A computer or device that is attached to the internet is often referred to as a
“host.” In order to facilitate communications between hosts, each host has a
numerical IP (internet protocol) address. The IP address is comprised of four
groups of numbers separated by decimals. To make those numbers easy to
remember, the Domain Name System of the internet assigns alphabetical values to
those numbers, generally comprised of three elements: Top Level Domain (TLD)
such as .edu, .gov or .net, Second Level Domain (SLD) and Third Level Domain
(TLD).3 The internet is divided into several “generic” Top Level Domains (gTLD).
For example, .edu is a domain reserved for educational institutions, .gov is a
domain reserved for government entities and .net was generally reserved to
networks. Although .com is short for “commercial,” it is a catchall domain and
generally available to subscribers who have no special attributes. Each active
domain name in a given top level domain is registered with the top level server that
contains certain “hostname” and IP address information.4 For our purposes,
domain names are, in short, sets of characters designating where a domain (or a
host) is located in cyberspace.
B. THE PLAYERS
The players are mark owners5 on the one hand and “cybersquatters” on the other
hand. Trademarks6 are an important tool manufacturers and service companies use
to distinguish their products and services from those of their competitors in the
marketplace and to influence consumers’ purchasing decisions. Consumers’
decisions are sometimes based on the goodwill of the source of the goods and
services, recognized by the mark. Trademark owners often assumed that
incorporating their marks in the IP address of their websites—i.e., in the domain
names, would be an efficient way to facilitate consumer access to those sites and
thereby promote the business.7 Courts have generally agreed that domain names
3. Id. at 319-323 (explaining the TLD structure and registration procedure).

4. Id.
5. The term “mark owners” will hereinafter mean the lawful proprietors of rights in a trademark or
in a service mark.
6. Wherever the term “trademark” is mentioned hereinafter, it means to include also trade names
and service marks, unless otherwise specified.
7. This assumption of easy accessibility based on the users’ prior familiarity with certain terms
also applies to generic terms like business.com, shoes.com, or flowers.com, but a generic term generally
cannot qualify for trademark protection unless it has acquired some secondary meaning and become
distinctive. The same rule also applies to merely descriptive marks. 15 U.S.C. §1052(f) (2000).
2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 337
that mirror corporate names or marks may be valuable corporate assets because
they facilitate communication with the customers.8
Cybersquatters have also grasped the commercial value of domain names that
incorporate trademarks. Because the registration process for domain names has
been on a “first come, first served” basis, individuals who were fast enough
registered domain names before the mark owners had the opportunity to do so and
then attempted to sell them to the mark owners for profit. The individual who
perhaps contributed the most to the concept of a “cybersquatter” as defined by U.S.
courts is Dennis Toeppen. “[He] is what is commonly referred to as a cyber-
squatter . . . . [T]hese individuals attempt to profit from the Internet by reserving
and later reselling or licensing domain names back to the companies that spent
millions of dollars developing the goodwill of the trademark.”9
The quotation above is taken from Intermatic Inc. v. Toeppen, which was
rendered when cybersquatting was in its infancy. The term’s meaning has since
evolved, and now several different types of cybersquatting are recognized.
“Classic” cybersquatters register domain names based on trademarks and try to sell
them to mark owners for profit. By contrast, a second group, “cyberpirates,”
incorporate marks in their domain names to attract traffic and divert users from
their intended destination, making profits from the inadvertent “hits” on their
websites and from advertisements posted on those sites. A third group,
“typosquatters,” indulge in the activity of registering domain names that
incorporate marks in a few variations (sometimes dozens), including misspelling or
incomplete names. They count largely on typing errors and after diverting users to
their sites they typically “lock” the users in so-called “mouse traps,” causing them
to view advertisements.10 Finally, there are “pseudo-cybersquatters,” passive
registrants, who merely hold domain names without operating websites. They
conduct no online activity using the domain names and do not offer them for sale.11
For the purpose of this Article, however, all of these activities will be generally
referred to as “cybersquatting.”
C. THE PRIZE
The prize is, obviously, the exclusive right to use a desirable domain name.
Domain names are sometimes described both as the key to accessing information
on the internet and the key to a company’s ability to achieve commercial success on
the internet.12 The value of domain names that are comprised of famous marks or
8. See e.g., MTV Networks, Inc. v. Curry, 867 F. Supp. 202, 203-4 (S.D.N.Y. 1994); Panavision
Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) (stating that “[U]sing a company’s name or
trademark as a domain name is also the easiest way to locate that company’s web site”).
9. Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1233 (N. D. Ill. 1996).
10. See e.g., Shields v. Zuccarini, 254 F.3d 476, 479-80 (3d Cir. 2001).
11. See John G. White, Intellectual Property C. Trademarks 2. Domain Name b) Arbitration:
ICANN’s Uniform Domain Name Dispute Resolution Policy In Action, 16 BERKELEY TECH. L.J. 229,
230 (2001).
12. See Springer, supra note 2, at 316-7.
other attractive generic terms is sometimes measured in millions of dollars.13 In

cases where marks were involved, when cybersquatters were first to register
domain names incorporating the marks, mark owners claimed these domain names
rightfully belonged to them.
D. THE RULES
The rules controlling cybersquatting activities today are not always clear
because the big picture is still vague. The entire task of creating a comprehensive
scheme of internet governance, rulemaking, and authority is, by and large, only in
its preliminary stages. There are no easy answers to some of the most crucial and
urgent issues, such as which entity (or entities) should (or maybe, should not)
manage this ambitious task;14 however, cybersquatting rules have developed
gradually instead of waiting for a comprehensive solution of internet governance to
come. The problem was too urgent and required an immediate answer. In late
1999 two instruments were established almost simultaneously: the
Anticybersquatting Consumer Protection Act (ACPA)15, enacted by the U.S.
Congress (fully effective on November 29, 1999), and the Uniform Dispute
Resolution Policy (UDRP),16 adopted by the Internet Corporation for Assigned
Names and Numbers (ICANN) (fully effective on January 3, 2000). These new
tools, which were specifically designed to fight cybersquatting, dramatically
changed the approach to this problem. The subject of this Article is 1) the effects
of the ACPA and the UDRP on cybersquatting issues, 2) the interplay between the
ACPA and the UDRP, and 3) the new international ballgame formulated by their
creation.
The first Part discusses personal jurisdiction rules, developed in the United
States courts, related to the question of which entity is eligible to regulate internet
activity and under what circumstances it may do so. The second Part discusses
some of the problems pertinent to traditional trademark law when applied to
cybersquatting cases and its deficiency in providing an adequate solution. The
third and the fourth parts discuss the two new instruments created to solve
cybersquatting issues, namely the ACPA and the UDRP, including some of the
flaws in the UDRP that are relevant to the subsequent discussion of forum shopping
opportunities. The fifth Part discusses the “judicial review” problem for UDRP
13. See Christopher S. Lee, The Development of Arbitration in the Resolution of Internet Domain
Name Disputes, 7 RICH. J.L. & TECH. 2, 2 (2000).
14. See generally, Philip J. Weiser, Internet Governance, Standard Setting, and Self-Regulation,
28 N. KY. L. REV. 822 (2001). See also, Graeme B. Dinwoodie, (National) Trademark Laws and the
(Non-National) Domain Name System, 21 U. PA. J. INT’L ECON. L. 495, 521 (2000) (suggesting that the
rules that will control the allocation and use of domain names will inevitably reflect national,
international and supranational rules).
15. 15 U.S.C § 1129. (“Anticybersqatting Consumer Protection Act”) of the Intellectual Property
and Communication Omnibus Reform Act of 1999, PL 106-113, 113 Stat. 1501 (enacted Nov. 29,
1999).
16. ICANN, Uniform Dispute Resolution Policy (approved October 24, 1999), available at
http://www.icann.org/dndr/udrp/policy.htm (last visited May 4, 2002) [hereinafter Policy or UDRP].
decisions and some answers to those problems rendered by the U.S. appellate court
in the Sallen v. Corinthians case. Finally, the sixth Part discusses the current
construction of the ACPA, the UDRP, and cybersquatting rules by U.S. courts.
I. PERSONAL JURISDICTION IN THE DIGITAL AGE
The new global and borderless medium for communication, information

transfer, and various commercial activities challenges traditional concepts of
personal jurisdiction. Questions regarding the authority of a state to apply its
substantive law to particular individuals in particular situations (“jurisdiction to
prescribe”), the state’s authority to subject a person or a thing to the process of its
courts (“jurisdiction to adjudicate”), and the state’s authority to compel compliance
or to punish non-compliance with its law (“jurisdiction to enforce”) have acquired
new dimensions with the advent of widespread use of the internet.17 As a matter of
international law, a state is subject to limitations on its authority to exercise
jurisdiction in controversies involving foreign interests or activities.18 Thus, every
nation has the obligation to exercise moderation and restraint in invoking
jurisdiction over cases involving those interests or activities.
This Article will concentrate on the United States’ “jurisdiction to adjudicate”;
specifically when do U.S. courts have the power to subject individuals (or entities),
which have (or may have) foreign elements, to its judicial process?19 It is
important to note here that the international standard for jurisdiction is different
from the standard applicable to U.S. courts within the United States. The latter
standard is probably more lenient than the former;20 however, the U.S. domestic
standards may help us to analyze this subject, absent many international
precedents.21 U.S. courts considering whether to assert personal jurisdiction in
domestic disputes generally look at two elements: the long arm statute in the
jurisdiction at issue and the Due Process requirement of the Fourteenth
Amendment.22
Personal jurisdiction may be divided into two types: general and specific.
General jurisdiction is applicable when “systematic and continuous” contact can be
demonstrated between the local party and the foreign party in the forum state.23 In
this instance, the plaintiff does not have to show a connection between the forum-
17. See S. Wilske & T. Schiller, International Jurisdiction in Cyberspace: Which States May
Regulate the Internet?, 50 FED. COMM. L.J. 119 (1997), available at
http://www.law.indiana.edu/fclj/pubs/v50/no1/wilske.html (last visited April 22, 2002).
18. RESTATEMENT (THIRD) ON THE FOREIGN RELATIONS LAW OF THE U.S. §401 cmt. a (1987).
19. With respect to “jurisdiction to prescribe,” which substantive law should apply, see the
discussion in Part VI infra.
20. See Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102, 115 (1987) (“Great care and
reserve should be exercised when extending our notions of personal jurisdiction into the international
field”) (quoting United States v. First Nat’l City Bank, 379 U.S. 378, 404 (1965) (Harlan, J.,
dissenting)).
21. Wilske, supra note 17, at 144.
22. Kulko v. California Supreme Court, 436 U.S. 84, 91 (1978).
23. Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1122 (W.D. Pa. 1997) (citing
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984)).
related activities of the foreign party and the cause of action. In the context of
jurisdiction in cyberspace, where online activity is subject to litigation, the
“systematic and continuous” contact is often absent, however. In contrast specific
jurisdiction applies a less stringent test: the cause of action must be related to the
activity in the forum state. With respect to asserting specific jurisdiction through
internet activity, courts initially asked whether the defendant’s mere posting of a
website that is accessible from the forum state constituted entering the “stream of
commerce” in the forum state, which is a prerequisite for asserting jurisdiction in
that state. In Asahi Metal Industries Co., v. Superior Court, Justice O’Connor
(plurality opinion) concluded that a narrow interpretation of the term “stream of
commerce” was appropriate in asserting personal jurisdiction arising from internet
activity. O’Connor’s opinion stated that “deliberate availment” in the forum state
required some additional conduct by the defendant, indicating the “intent or
purpose to serve the market in the forum state”—for example, advertising.24
In order to overcome the new problems that arose from applying old tests of
personal jurisdiction in new situations, courts have created a three prong test for
asserting specific jurisdiction: plaintiff must show that (i) the defendant
purposefully availed herself of the privileges and liabilities of the jurisdictions by
conducting activities specific to the jurisdiction25 (which is a version of the
traditional “minimum contacts” test);26 (ii) the cause of action arises from those
activities;27 and (iii) asserting jurisdiction is reasonable in the circumstances.28 The
first prong of this test was the hardest to clarify in the context of online activities.
Courts were generally reluctant to extend personal jurisdiction merely because the
defendant operated a website that was accessible from the forum state, and were
inclined to follow Justice O’Connor’s opinion in Asahi.29 Consequently a “sliding
scale” developed, which basically provides that the more commercially oriented the
website is and the more it is engaged in direct commercial activities targeting the
forum state, the more susceptible the defendant is to the forum state’s jurisdiction.30
24. Asahi Metal Indus. Co., 480 U.S. at 112. However, the Supreme Court has not resolved this
issue. See id. at 117-21 (Justice Brennan, joined by J. White, J. Marshall and J. Blackmun, concurring
with the judgment but suggesting that for asserting personal jurisdiction, there is no need for an
additional element to the operation of the website.)
25. Hanson v. Denckla, 357 U.S. 235, 253 (1958). The test was later articulated in Asahi, 480 U.S.
at 112.
26. The “minimum contacts” test was first enunciated in Int’l Shoe Co. v. Washington, 326 U.S.
310, 316 (1945).
27. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985).
28. The role of reasonableness as a balancing factor is explained in Burger King Corp., 471 U.S.
at 477. See also Cybersell, Inc. v. Cybersell, Inc., 130 F.3d. 414, 416 (9th Cir. 1997) (quoting Ballard v.
Savage, 65 F.3d 1495, 1498 (9th Cir. 1995)).
29. See e.g., Cybersell, Inc., 130 F.3d at 418; Bensusan Rest. Corp. v. King, 937 F. Supp. 295, 301
(S.D.N.Y. 1996), aff’d, 126 F.3d 25 (2d Cir. 1997).
30. Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. 1997) (stating
that “our review of the available cases and materials reveals that the likelihood that personal jurisdiction
can be constitutionally exercised is directly proportionate to the nature and quality of commercial
activity that an entity conducts over the Internet. This sliding scale is consistent with well developed
personal jurisdiction principles” (footnotes omitted)).
The two ends of the “sliding scale” proved relatively easy to identify. On the one
end, a merely passive website generally would not establish personal jurisdiction.31
On the other, if the defendant was ‘doing business’ through the website with
individuals in the forum state, courts were generally willing to exercise
jurisdiction.32 The difficult cases lay in the middle of the range, where the website
was interactive, but still did not amount to clearly ‘doing business’ with the forum
state online. Some courts demanded interactivity and “something more” than mere
interactivity in order to establish jurisdiction.33 Other courts chose to extend their
reach after examining the totality of contacts of defendant with the forum state,
with and without regard to her internet activities.34
Recently, courts have started using an additional tool to expand personal
jurisdiction in internet-related activities: the “effect doctrine.” This traditional
doctrine of tort law gained new ramifications in the context of cyberspace. The
three basic components of the doctrine, which grants the forum state jurisdiction
over a foreign actor, are: (i) an intentional action, (ii) which is expressly aimed
towards the forum state’s jurisdiction, (iii) causing harm that occurred in that
jurisdiction when that actor knew it might occur.35 Examples of this test’s
application can be found mostly in internet-based defamation cases36 and in pre-
ACPA cybersquatting cases,37 where it was difficult to prove “purposeful
availment” by the defendant.
Undoubtedly, the increase in activities (commercial and otherwise) on the
internet has introduced new and difficult questions for U.S. courts trying to decide
personal jurisdiction issues. The tests applied and the results that followed differed
from case to case depending, inter alia, on the specific long arm statute involved
and the specific court’s interpretation of the concepts of “purposeful availment”
and “interactive online activity” sufficient for exercising personal jurisdiction.38 It
can be argued, however, that internet activities have generally expanded the borders
of traditional doctrines, stretching the forum state’s jurisdictional reach. This trend
may also influence U.S. courts in their dealings with international online disputes.
For example, in the Yahoo! case, which involved French defendants, the District
31. The classic example is the Bensusan case, where the website contained only general
informative text about the Blue Note jazz club in Missouri. Bensusan Rest. Corp., 937 F. Supp. at 297.
32. See e.g., CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1265-6 (6th Cir. 1996) (court asserted
jurisdiction over a Texas defendant, whose contacts with the forum state of selling software occurred
almost exclusively through computer transmissions to CompuServe’s system in Ohio).
33. See e.g., Millennium Enter., Inc. v. Millennium Music, LP, 33 F. Supp. 2d 907, 923-4 (D. Or.
1999) (requirements of a “deliberate action” in the forum state).
34. Blumenthal v. Drudge, 992 F. Supp. 44, 56-7 (D.D.C. 1998).
35. See Calder v. Jones, 465 U.S. 783 (1984) (establishing an “effect test” for intentional action
aimed at the forum state).
36. See e.g., Bochan v. La Fontaine, 68 F. Supp. 2d 692, 702 (E.D. Va. 1999) (“[U]nder these
circumstances, because the predominant “effects” of the La Fontaines’ and Harris’s conduct [Defendants
from Texas and New Mexico in a defamation case that occurred through their on-line activities] are in
Virginia, these defendants could reasonably foresee being haled into court in this jurisdiction.”).
37. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1321-22 (9th Cir. 1998).
38. Presently, there is no ruling by the Supreme Court that uniforms the different approaches of
several Circuits regarding questions of personal jurisdiction. See Springer, supra note 2, at 334.
Court of the Northern District of California stretched the “effect doctrine” to

extremes. The court decided to exercise personal jurisdiction over the French
defendants, making the possibility of enforcing a French court’s warrant in the
United States against a U.S. company equivalent to tortious “wrongful” conduct for
the purpose of applying the “effect doctrine.”39 This interpretation enabled the
court to apply the “effect doctrine” against the defendants by considering the
possibility of enforcing a foreign judgment as a potential intentional tort. The
reasoning of the court for this stretch was that such an attempt to enforce the
French order might “deprive a United States resident of its constitutional rights”
guaranteed by the First Amendment.40
The French defendants in the aforementioned case might have been able to
avoid personal jurisdiction in the United States had the “purposeful availment” test
been applied. One could further infer that once a foreign judgment is entered
against an American party, which arguably abridges the American party’s
constitutional rights, the foreign party is automatically subject to jurisdiction.
American jurisprudence in cases involving foreign actors in disputes arising out
of internet activities is still in its early stages of development. Nevertheless, it
appears that the digital era’s challenges to U.S. law and its courts also have the
potential to extend personal jurisdiction in cases involving international suits.
II. PRE-ACPA AND UDRP ATTEMPTS TO HIT CYBERSQUATTERS:

THE BASIC TENSION BETWEEN DOMAIN NAMES AND
TRADEMARKS
Many commentators and courts have identified the tension between domain
names and trademarks, and in the last few years this tension generated legal battles
between registrants and mark owners. The major clashes, briefly summarized in
this Article, occurred mainly because traditional trademark law was not designed to
solve cybersquatting problems. First and foremost, the reasons for the tension were
the new features of the domain names involved, namely, uniqueness and global
reach.
When the use of marks incorporated in domain names increased through the
1990s as a tool of the mark owners to promote their commercial activities, the
tension between trademark law and the domain name system surfaced and
intensified. There are two parts to this problem. There is similarity between marks
and domain names as potential identifiers with the capacity to distinguish between
sources of goods and services; and the nature and purpose of trademarks and
domain names is conceptually different. While trademarks are primarily meant to
distinguish between sources of goods or services in order to prevent confusion
among consumers, the domain name system was merely meant to coordinate
between easy-to-remember strings of letters and hard-to-memorize strings of
39. Yahoo! Inc. v. La Ligue Contre le Racisme et L’Antisemitisme, 145 F. Supp. 2d 1168, 1174-75
(N.D. Cal. 2001).
40. Id.
numbers. At the outset, domain names were not meant to function as trademarks;
they were only meant to serve as a system of addresses to locations in
cyberspace—namely, to web pages.41
Some of the fundamental differences between trademarks and domain names
demonstrate this point. Trademark law is meant chiefly to prevent consumer
confusion; therefore, identical or similar marks may coexist for different classes of
good and services under the assumption that there is no danger of confusion.
Moreover, because trademark law is territorial,42 a mark may be protected only in
the geographic location where it distinguishes its goods or services. Thus,
trademark law can tolerate identical or similar marks in different territories even
within the same classes of goods and services. Domain names, by contrast, are
both unique and global in nature. Only one entity in the world can own the right to
use a specific domain name that can be accessed globally.
When mark holders started to realize the commercial power and value of
incorporating their marks in domain names, it was sometimes too late. The domain
name registration system was not interested in trademark rights and supplied
registrations to whoever was willing to pay the appropriate fee on a “first come,
first served” basis. Some of those “early bird” registrants did not have any rights in
the marks. When this phenomenon amounted to wholesale registrations of domain
names by cybersquatters who held the domain names for ransom, mark owners
decided to fight back. In the early days of cybersquatting in the U.S., the most
effective legal tools for this battle were the traditional trademark and dilution laws,
namely the Trademark Act of 1946 (“Lanham Act”) and the relatively new Federal
Trademark Dilution Act (“FTDA”).43
Section 32(1) of the Lanham Act protects registered mark owners against the use
of their trademark where there is a likelihood of confusion as to the source of the
goods and services.44 This protection was sometimes hard to implement in cases of
cybersquatting because classic cybersquatters never tried to confuse consumers as
to the source of any goods or services. Often, the cybersquatter never posted
anything on the website because the intention was eventually to sell the domain
name for profit to the mark holder. Section 43(a) of the Lanham Act protects mark
owners (including non-registered marks) against false advertising and confusion as
to the source, sponsorship and affiliation of goods and services.45 In these cases,
the hallmarks of trademark protection are in the concepts of “likelihood of
confusion” and “use in commerce.”46
41. See A. Endeshaw, The Threat of Domain Names to the Trademark System, 3 J. WORLD
INTELL. PROP. 323, 323 (2000). (“The initial purpose of domain names was to assign a unique address to
a computer connected to a network.”).
42. Marks normally can have legal effect only in the specific territory they are registered for, or, in
cases of non-registered marks, where they established themselves. Id. at 324.
43. Federal Trademark Dilution Act, Pub. L. No. 104-98, 109 Stat. 985 (1996) (codified as
amended at 15 U.S.C. § 1125(c) (2000)).
44. 15 U.S.C. § 1114(1).
45. 15 U.S.C. § 1125(a).
46. See A. Chalikian, Notes and Comments: Cybersquatting, 3 J. LEGAL ADVOC. & PRAC. 106,
107 (2001).
Due to the problems caused by using traditional trademark concepts to prevent

cybersquatting, the more popular tool was the FTDA, which provides injunctive
protection against dilution of the distinctive quality of famous marks.47 Dilution
may occur either as a result of “blurring” or as a result of “tarnishment” of the
famous mark.48 The benefit for mark owners under the FTDA is that they do not
have to prove likelihood of consumer confusion in dilution claims;49 however, the
“use in commerce” requirement remains intact.50
In applying traditional trademark law tests or trademark dilution principles in
cybersquatting cases, the first question to answer was whether the incorporation of
the mark in a domain name constituted unlawful trademark infringement or
dilution.51 In analyzing this issue, the courts tried to consolidate trademark and
dilution concepts in domain name disputes, recognizing the dual purpose of domain
names in the contemporary world of commerce:
The domain name serves a dual purpose. It marks the location of the site within
cyberspace, much like a postal address in the real world, but it may also indicate to
users some information as to the content of the site, and, in instances of well-known
trade names or trademarks, may provide information as to the origin of the contents of
the site.52
The conflation of purposes in incorporating trademarks in domain names,

creating frustration in consumers unsuccessfully seeking the website of the well-
known mark in cyberspace, may cause dilution.53 In the Toeppen-Panavision case,
the Ninth Circuit noted this problem, stating that: “a significant purpose of the
domain name is to identify the entity that owns the web site.”54 As a result, domain
name registrations using the famous mark by someone other than the mark owner
may “[d]iminish[] the capacity of the [infringed] marks to identify and distinguish
47. 15 U.S.C. § 1114(c).

48. The concept of dilution by blurring was applied in Intermatic Inc. v. Toeppen, 947 F. Supp.
1227, 1238 (N. D. Ill. 1996).
49. Indeed, one of the explicit goals of the FTDA was to help fight cybersquatters. As Senator
Leahy phrased it: “It is my hope that this antidilution statute can help stem the use of deceptive Internet
addresses taken by those who are choosing marks that are associated with the products and reputations
of others.” 141 CONG. REC. S19, 312 (Dec. 29, 1995) (statement of Sen. Leahy (D-Vt)).
50. The statute reads:
[T]he owner of a famous mark shall be entitled . . . to an injunction against another person’s
commercial use in commerce of a mark or trade name, if such use begins after the mark has
become famous and causes dilution of the distinctive quality of the mark, and to obtain such
other relief as is provided in this subsection.
15 U.S.C. § 1125(c)(1) (emphasis added).
51. McCarthy answered the preliminary question, whether a domain name can qualify as a
protectable trade or service mark, with an affirmative “Yes.” Regarding the second prong of the
problem, whether a domain name based on a mark may infringe on a preexisting mark, he makes no
such conclusive determination. See J. Thomas McCarthy, Trademarks, Cybersquatters and Domain
Names, 10 DEPAUL-LCA J. ART & ENT. L. & Pol’y 231, 241-3 (2000).
52. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 n.8 (9th Cir. 1998).
53. Id. at 1327.
54. Id.
[the infringed party’s] goods and services on the internet.”55

The second problem to be addressed was the “commercial use” requirement. In
Avery Dennison Corp.v. Sumpton, the Ninth Circuit held that the mere registration
of a domain name is not, in and of itself, a “commercial use” for the purposes of
dilution.56 Nevertheless, the same circuit also found a way to use the FTDA in
difficult cases. For example, in one case, when a cybersquatter only used its
allegedly diluting domain name to post on his website views of the landscape of
Pana, Illinois, the court stated that business activity can be demonstrated if the
cybersquatter tries to “profit by the resale or licensing of these domain names . . . to
the entities who conduct business under these names.”57 In other words, the court
concluded that when your business is to trade in domain names with the
corresponding mark owners for commercial gain, you may be subject to injunction
under the FTDA.
U.S. courts have stretched trademark law, and especially the FTDA, “like a
rubber band” to strike down cybersquatters.58 Thus, even before the enactment of
the ACPA, cybersquatters were successfully defeated in court. Some problems
remained unresolved, however, such as cybersquatting activities that did not fall
within the protection against dilution by “blurring” or “tarnishing” a famous
mark.59 In addition, the FTDA protects only famous marks; non-famous marks are
left outside of its scope.60 This does not address cases where the domain registrant
sought to profit from the “non-mark” value of the domain name, such as in the case
of surnames.61 Finally, the problem of “commercial use” was not entirely solved
by the caselaw. For example, it left a gap for sophisticated cybersquatters who did
not show any attempt to sell the domain name to the mark holders, but made no
other commercial use of it themselves. Given the trouble and expense of launching
long, expensive, and complex litigation against the cybersquatters some mark
owners simply preferred to “pay off the ransom” instead of having the issue finally
55. Id. at 1326. This kind of dilution developed by the court was sometimes called “dilution by
elimination.” See R. Abramson, Internet Domain Name Litigation, 1999, 558 PLI/PAT 7, 20 (1999).
56. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 880 (9th Cir. 1999).
57. Panavision, 141 F.3d at 1325 (quoting Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1230
(N.D. Ill. 1996).).
58. McCarthy, supra note 51, at 247.
59. Even given the judicial activism approach that courts were willing to take against
cybersquatters, the question remained how much further should courts go with that approach facing
more and more sophisticated activities.
60. Some commentators expressed the concern that courts, out of their desire to help mark owners
in their war against cybersquatting, will artificially extend beyond recognition the concept and
interpretation of “famousness.” See e.g., M. B. Landau, Problems Arising Out of the Use of
“WWW.TRADEMARK.COM”: The Application of Principles of Trademark Law to Internet Domain
Name Disputes, 13 GA. ST. U. L. REV. 455, 478-80 (1997). One commentator suggested that the district
court in Intermatic v. Toeppen, regarding the expansion of the “commercial use” requirement, “went
beyond even the most elastic interpretation of the class of goods that the mark will have been registered
for . . . and the broadest allowance for the plausible boundary of the specific (famous) mark.” Endeshaw,
supra note 41, at 337.
61. See e.g., Avery Dennison Corp., 189 F.3d at 868, where the Ninth Circuit did not consider as
typical cybersquatting the wholesale trade in domain names which were .net surnames, offered for sale
for their name value and not because of the trademark meaning.
resolved in court.
III. THE BIRTH OF THE ACPA
The trademark community’s cry for new legislation to fight cybersquatting was
heard in Washington. Legislators were convinced that cybersquatting activities
constituted a serious threat to American consumers, businesses, and e-commerce in
general. They were also convinced that a new mechanism was needed to counter
this threat.62 The U.S. Senate concluded that the uncertainty as to the application
of trademark law, inconsistent judicial decisions, and the high legal cost required to
stop cybersquatters needed to be remedied.63 There was no consensus on how to
formulate this new law, however. Throughout the legislative process, the White
House objected to the proposed new legislation. In a visionary moment, after the
anti-cybersquatting bill was passed in the House of Representatives, White House
spokesman Joe Lockhart stated, “We believe that fundamentally we’d be walking
down the wrong road if we legislated a cybersquatting law and then the 200 or so
Internet countries around the world started legislating their own rules and laws.”64
Given the global nature of the internet, the administration favored a more
international approach to stop cybersquatting.65 Criticism of the proposed
legislation also came from civil libertarians who were concerned that statutory
limitation on domain names would serve as a tool to suppress free speech on the
internet.66
The final result of Congress’s efforts was the Anti-Cybersquatting Consumer
Protection Act (ACPA). The ACPA basically outlawed the act of registering,
trafficking in or using a domain name that is identical or confusingly similar to a
mark or dilutive of a famous mark (with bad faith intent to profit).67 The elements
of this new federal tort are: (i) the existence of a protected mark (registered or not,
including a personal name), (ii) which, without regard to goods and services a
corresponding domain name was registered, trafficked or used, (iii) with a bad faith
intent to profit from that activity.68
Hence, the ACPA protects distinctive marks against registration of domain
names that are identical or confusingly similar. It also protects famous marks
62. “This legislation will combat a new form of high tech fraud that is causing confusion and
inconveniences for consumers . . . and posting an enormous threat to a century of pre-Internet American
business efforts.” Statement of Sen. Spencer Abraham on the proposed ACPA, available at
http://www.juramail.de/news/internet/cybersqs.html. (last visited Feb. 10, 2003).
63. Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 492 (2d Cir. 2000) (citing H.R.
Rep. No. 106-412 at 6, S. Rep. No. 106-140 at 7).
64. The Industry Standard, White House Still Opposes Anti-Cybersquatting Bill (Oct. 27, 1999),
available at http://www.thestandard.com/article/0,1902,7243,00.html (last visited April 24, 2002).
65. Id.
66. See Aaron L. Melville, Legal Update: New Cybersquatting Law Brings Mixed Reactions from
Trademark Owners, 6 B.U. J. SCI. & TECH. L. 13 (2000) (generally describing the objections to the
ACPA).
67. 15 U.S.C. § 1125(d)(1)(A) (2000).
68. Id.
against dilution.69 Perhaps the most important element of the ACPA limits its
application to bad faith intent, in lieu of the traditional and more rigid restriction of
“use in commerce.” The ACPA also provided a non-exclusive list of nine
circumstances that may indicate such bad faith intent.70
Another important element of the ACPA was the establishment of in rem
jurisdiction in cases of cybersquatting. This provision in the Act allowed mark
holders to bring civil action against the domain name itself in the district where the
domain name was registered.71 Specifically, in rem action can be brought when the
mark owner cannot establish in personam jurisdiction, or is not able to find the
registrant through appropriately diligent efforts to locate him or her.72 This
provision was meant to be an answer to cases like Porsche Cars North America,
Inc. v. Porsch.com.73 In general, courts have narrowed the examination for ACPA
liability to three basic questions: (i) is the mark distinctive or famous; (ii) is the
domain name in question identical or confusingly similar to the mark; and (iii) was
there a bad faith intent to profit. Once these three elements are established, liability
is generally imposed.74 Some other interesting features of the ACPA are its
retroactive effects on registrations made before its enactment (not applicable to
money damages), the injunctive and monetary remedies available to mark owners
against cybersquatters, and the stipulation of statutory damages.
Mark owners could be satisfied with the new ACPA, and the new legislation has
been heavily used in federal courts throughout the United States.75 On the other
hand, critiques of the new law have persistently asserted that, although added as an
amendment to the Trademark Act, the ACPA strayed too far from the fundamentals
of trademark law. The argument is that the abandonment of two of the most basic
concepts—protection only with regard the same class of goods or services for non-
famous marks and the “use in commerce” prerequisite—established an excessive
protection for marks in cyberspace.76 The opposition has argued that the ACPA
increased the potential for Reversed Domain Name Hijacking (RDNH)77 and
speech suppression by marks owners. For this discussion, however, the key point
is that the enactment of ACPA was a clear unilateral solution on the part of the
69. 15 U.S.C. § 1125(d)(1)(A)(ii).

70. 15 U.S.C. § 1125(d)(1)(B).
71. 15 U.S.C. § 1125(d)(2).
72. 15 U.S.C. § 1125(d)(2)(A)(ii).
73. 51 F. Supp. 2d 707 (E.D. Va. 1999) (court dismisses the complaint after refusing to exercise in
rem jurisdiction under the FTDA when plaintiff discovers 128 registrations of domain names allegedly
infringing on his mark).
74. See e.g., Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001).
75. Less than three years after entering into effect, numerous district courts and at least six circuits
have decided on cases involving the ACPA. See e.g., N. Light Tech., Inc., v. N. Lights Club, 326 F.3d
237 (1st Cir. 2001); Sporty’s Farm LLC v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000); Shields
v. Zuccarini, 254 F.3d 476; Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir.
2001); E. & J. Gallo Winery v. Spider Webs, Ltd., 286 F.3d 270 (5th Cir. 2002); Bar-Meir v. N. Am.
Die Casting Ass’n, 2002 U.S. App. LEXIS 446 (8th Cir. 2002).
76. See, e.g., Chalikian, supra note 46, at 114-15.
77. See infra note 83.
United States to a problem that has many international implications.78
IV. WHAT CONGRESS CAN DO, ICANN CAN DO BETTER: THE UDRP
A. BRIEF OVERVIEW
In the early, more innocent days of the internet, administration of the DNS was
run by the National Science Foundation (NSF). In 1991, the NSF contracted
Network Solutions, Inc. (NSI) and gave it a monopoly over the administration and
registration of domain names, including the generic Top Level Domain Names
(gTLD) such as .com, .org and .net.79 NSI, in turn, formulated a dispute resolution
policy, which was changed and modified from time to time.80 NSI’s management
of the DNS and its handling of disputes received extensive criticism—especially
for providing an easy way for challengers to suspend registrations until a resolution
was reached (by litigation or agreement) and for providing only a poor defense for
registrants against unjustified challenges.81 The result was that the NSI policy
facilitated what has become known as “reverse domain name hijacking” (RDNH).82
The deficiencies in NSI’s function as sole domain name registrar encouraged the
National Telecommunication and Information Administration (NTIA) of the
Department of Commerce to issue a policy report or “White Paper”83 and
subsequently transferred, in 1999, the management of the gTLD registration system
to a not-for-profit organization, the Internet Corporation of Assigned Names and
Numbers (ICANN).84 In the White Paper, NTIA requested that the World
Intellectual Property Organization (WIPO) conduct a comprehensive study as to
78. Endeshaw, supra note 41, at 342 (Pointing out that it appears impossible for national courts
(and legislators) to sort out problems of this kind independently of each other. Instead, she suggests
considering the possibility of a treaty-based structure.).
79. Registration management of the country code Top Level Domain names (ccTLD), such as .fr
for France and .ca for Canada, was given to the different countries to run according to their own rules
and regulations.
80. For a more detailed description of NSI dispute resolution policy and a critique thereof, see K.
Blackman, The Uniform Domain Name Dispute Resolution Policy: A Cheaper Way to Hijack Domain
Names and Suppress Critics, 15 HARV. J.L. & TECH. 211, 221-2 (2001).
81. See e.g., Christopher P. Rains, A Domain By Any Other Name: Forging International
Solutions for the Governance of Internet Domain Names, 14 EMORY INT’L L. REV. 355, 379-88 (2000)
(providing a detailed description of the NSI policies and the critique it evoked).
82. Generally, RDNH occurs when aggressive mark owners, by ways of intimidating the
registrants and by abusing administrative procedures, take over domain names unjustifiably. UDRP
Rules, infra note 94 ¶1, defines RDNH as “using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.”
83. Management of Internet Names and Addresses, Statement of Policy, 63 Fed. Reg. 31, 741,
31,746 (June 10, 1998) (“White Paper”), available at http://www.ntia.doc.gov/ntiahome/domainname/
6_5_98dns.htm (last visited April 26, 2002). The White Paper followed a preliminary policy statement
known as the “Green Paper”: Improvement of Technical management of Internet Names and Addresses,
63 Fed. Reg. 8825, 8827 (1998).
84. For a comprehensive background on the creation of ICANN, see A. Michael Froomkin, Wrong
Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 DUKE L.J. 17, 50-
93 (2000).
domain names and trademark issues.85

WIPO submitted the result of its efforts to ICANN in April 1999.86 The WIPO
Final Report recommended the creation of a mandatory dispute resolution
procedure to combat cybersquatting;87 however, it agreed with the White Paper that
a minimally invasive approach should be taken, which would limit the scope of this
procedure to clear cases of bad faith and abusive registration of domain names
violating trademark rights.88 The WIPO Final Report also strongly recommended
that the administrative procedure be quick, efficient, cost-effective, and
conducted—to large extent—online.89 The recommended remedies available for
mark owners according to the proposed procedure were limited to cancellation or
transfer of the domain name registration and the allocation of the costs of the
procedure to the losing party (not including attorney’s fees).90 The Domain Name
Supporting Organization (DNSO), a subgroup of ICANN, revised the WIPO Final
Report, but did not alter it in any meaningful way.91 It urged ICANN to adopt a
mandatory, uniform dispute resolution policy, which would be applied only in
cases of abusive or bad faith registration of domain names, without foreclosing the
parties from turning to litigation. Ultimately, ICANN adopted the DNSO
recommendation,92 drafted a policy based on WIPO’s Final Report, and the
Uniform Dispute Resolution Policy (“UDRP”, or “Policy”) was launched. It
became effective on January 3, 2000,93 about one month after the ACPA became
law in the United States.
The UDRP and its accompanying Rules94 are incorporated by reference in all
registration agreements between registrants of gTLD and registrars approved by
ICANN. These documents set forth a mandatory mechanism to be employed in
circumstances falling within the scope of the Policy.95 The result is that the most
85. White Paper, supra note 83, at 31,754.

86. WIPO, Final Report of the WIPO Internet Domain Name Process, “The Management of
Internet Names and Addressed: Intellectual Property Issues” (April 30, 1999) [hereinafter WIPO Final
Report], available at http://wipo2.wipo.int/process1/report/finalreport.html (last visited April 26, 2002).
87. Id. at ¶¶ 129-244.
88. Id. at ¶¶ 170-177 (description and definitions of what activities may constitute abusive
registration).
89. Id.
90. Id. at ¶¶ 182-187.
91. For a detailed comparative analysis between WIPO Final Paper proposals and the version
ultimately included in the UDRP, see A. Michael Froomkin, ICANN’s “Uniform Dispute Resolution
Policy”—Causes and (Partial) Cures, 67 BROOK. L. REV 605, 639-655 (2002).
92. See Blackman supra note 80, at 224-28 (describing the process of the adoption of the WIPO
Final Report by ICANN and citing for the relevant documents).
93. For timeline of implementation of the Policy, see Timeline for the Formulation and
Implementation of the Uniform Domain-Name Dispute-Resolution Policy, Feb. 5, 2002, at
http://www.icann.org/udrp/udrp-schedule.htm. (last visited Feb. 5, 2003).
94. Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter Rules], Oct. 24,
1999, at http://www.icann.org/dndr/udrp/uniform-rules.htm (page updated Feb. 5, 2002).
95. See, e.g., Verisign’s standard registration agreement providing: “If you registered a domain
name through us, you agree to be bound by our current domain name dispute policy that is incorporated
herein [UDRP] and made a part of this Agreement by reference.” Schedule A §5 of Verisign Service
Agreement Additional Terms Applicable to Registrants of Domain Names, at
commercially attractive gTLD registrations (.com, .org, .net) were subject to the
Policy96 and registrants who lost under UDRP process are contractually bound to
transfer their domain name to the complainant, or to cancel their registration.
The definition of cybersquatting under the Policy has three basic elements: (i)
the domain name is identical or confusingly similar to a mark in which the
complainant has rights; (ii) the registrant had no legitimate interests in respect of
the domain name; and (iii) the domain name has been registered and used in bad
faith.97 The Policy also supplies a non-exclusive list of circumstances indicating
registration and use in bad faith,98 and a non-exclusive list of affirmative defenses
showing legitimate interests in the domain name.99 The UDRP was explicitly not
meant to grant relief in any case of domain name dispute where both parties had
rights in the mark, but only in clear cybersquatting cases as defined therein.100
When both parties can demonstrate legitimate interests in the mark, it is a matter
for a court of “competent jurisdiction” to decide who will have rights in the
domain name.101
The process of instituting a claim under the UDRP is relatively simple.102 The
complainant may choose one of the forums (or service providers) accredited by
ICANN and submit the complaint to the provider in hard copy and in electronic
form.103 Following a selection of one or three member panels,104 the complainant
then has to prove the existence of the three elements test of the Policy in order to
establish a valid claim. The registrant then has twenty days to respond.105 If the
http://www.netsol.com/en_US/legal/static-service-agreement.jhtml (last visited February 5, 2003).

96. Some countries have adopted the Policy as mandatory procedure to govern disputes arising
from ccTLD registrations administrated under their authority.
97. UDRP, supra note 16, §4(a).
98. Id. §4(b) (giving four examples of bad faith uses).
99. Id. §4(c) (giving three examples of affirmative defenses).
100. See David E. Sorkin, Judicial Review of ICANN Domain Name Dispute Decisions, 18 SANTA
CLARA COMPUTER & HIGH TECH. L.J. 35, 46 (2001) (the UDRP, at least theoretically, was intended to
cover only a narrow range of disputes in domain names).
101. UDRP, supra note 16, §4(k). There is no definition of the term “competent jurisdiction” in
either the Policy or in the Rules. There is a definition for “Mutual Jurisdiction” in §1 of the Rules,
stating that “Mutual Jurisdiction” is either “(a) the principal office of the registrar or . . . (b) the domain
name registrant address shown in the registrar’s Whois database.” Rules, supra note 94, at §1. The
complainant is committed under Rule 3(b)(xiii) to submit to at least one of the two options of “Mutual
Jurisdiction” for future challenge of the UDRP decision regarding the domain name in dispute in court.
Interestingly, there is no perfect overlap between “competent jurisdiction” and “Mutual Jurisdiction.” A
court of “competent jurisdiction” probably may be any court able to assert jurisdiction over the dispute
and/or the parties. If the losing registrant brings an action in court within the 10 day period stipulated in
§4(k) of the Policy, the most reasonable reading of the of Policy’s text suggests that the registrar is
committed to stay the cancellation or transfer of the domain name only upon a showing of commencing a
lawsuit in a court of “Mutual Jurisdiction.”
102. See generally, Lee, supra note 13, (describing the various service providers and the process
of its function). See also White, supra note 11, at 234-36 (describing the process of the UDRP from
filing of the complaint until decision is rendered).
103. A list of the certified service providers can be found at:
http://www.icann.org/dndr/udrp/approved-providers.htm.
104. Rules, supra note 94, at ¶3(b)(iv).
105. The countdown of the 20 days starts to run from the “date of commencement.” Id. ¶5(a).
panel finds for the complainant, it is authorized to order the domain name to be
canceled or transferred to the complainant.
B. CRITIQUE OF THE UDRP
The UDRP has been a huge success, at least if success is measured by the
number of cases resolved since its implementation.106 Nevertheless, commentators,
experts and registrants have persistently criticized the UDRP. The criticisms may
be divided to four categories:107
1. The Question of Legitimacy
The UDRP functions as a de facto internationally binding and compulsory legal

instrument drafted by a U.S. not-for-profit private organization, namely, ICANN.
“The UDRP derives its force from ICANN’s de facto control of . . . critical Internet
resource[s].”108 Anyone who wishes to register a gTLD visible at large on the
internet must contract with one of ICANN’s accredited registrars. ICANN’s power
to control allows it to demand that registrars incorporate the UDRP in all
registration contacts. In Professor Froomkin’s view, the UDRP to some extent
“privatized and internationalized trademark law.”109 The argument is that this
pattern of rule-making has an extraterritorial affect that may be at odds with
traditional concepts of international law and raises disturbing questions regarding
U.S. Constitutional and antitrust law.110
2. Problems of Substantive Law
As mentioned above, the Policy was meant to deal only with clear cases of
This date is defined as “the date on which the Provider completes its responsibilities under Paragraph
2(a) in connection with forwarding the Complaint to the Respondent.” Id. ¶4(c). In Rule 2(a) the
provider is required “to employ reasonably available means calculated to achieve actual notice to
Respondent.” Id. This Rule further delineates proper means for noticing the registrant on the complaint
(such as postal mail, electronic mail or facsimile) but there is not requirement of actual notice for the
purpose of the 20 days counting. Hence, registrant may theoretically discover the existence of the
complaint only at the stage of implementation of the decision of the panel transferring of canceling the
registration.
106. According to ICANN’s website, until April 26, 2002 no less than 4,681 cases were resolved
with decisions rendered by the panels covering more then 8,000 domain names. See Summary of Status
of Proceedings, at http://www.icann.org/udrp/proceedings-stat.htm (last visited February 5, 2003).
107. Any overlap between the discussion of the categories and the classification here is only for
the purpose of convenient description of different aspects of the critique.
108. Froomkin, supra note 91, at 609.
109. Id. See also Michael Froomkin, supra note 84 (critiquing the formation and the use of
ICANN as means to avoid proper public rulemaking); Jonathan Weinberg, ICANN and the Problem of
Legitimacy, 50 DUKE L.J. 187 (2000).
110. See generally, A. Michael Froomkin & Mark Lemley, ICANN and Anti-Trust (2001)
(unpublished manuscript), available at http://personal.law.miami.edu/~froomkin/articles/icann-
antitrust.pdf (describing economic-competitive aspects of ICANN function and its relationship with the
Federal Government).
abusive registration; therefore, it should have been carefully designed and tailored
to address only a narrow class of cases that did not involve competing rights in
marks or novel theories of dilution. In reality, however, this had not been the case.
For example, section 4(c) of the Policy lists three examples of affirmative defenses
for registrants. The third defense reads: “You are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial gain
to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.”111 One commentator has noted that this defense confuses various trademark
doctrines, throwing dilution, non-commercial fair use, and consumer diversion into
the same pot, in “a weird mix of incompatible concepts.”112 More to the point,
UDRP was not given authority to deal with dilution questions. Another serious
problem has been identified in the Policy’s ambiguity regarding the applicable law
to be applied by the panels in their determination on issues of “rights and legitimate
interest.” In the WIPO Final Report there are indications that the applicable law
should be determined by the panel according to traditional choice of law concepts
(domiciliary of the parties, place of registration, etc.).113 The language of the
Policy, however, is silent on this critical point, and the Rules somewhat
ambiguously stipulate that “[a] Panel shall decide a complaint . . . in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”114 (emphasis added). Another serious, substantive problem of the
UDRP is the lack of effective deterrent against RDNH.115
3. Severe Procedural Flaws and the Concept of Fairness
The UDRP’s fast and relatively inexpensive process comes at the price of a
substantial reduction in the registrants’ legal rights. There are many examples of
serious procedural deficiencies that tilt the process in favor of complainant, but
only a few will be mentioned here.116 First, the complainant largely controls
selection of the panel. The registrant has no say in which provider will decide the
case. If the registrant elects a three-member panel,117 the registrant may choose
only one panelist from the pool available in the provider’s list. This element of
absolute control by the complainant in choosing the provider, together with the
111. UDRP, supra note 16, §4(c)(iii).

112. Froomkin, supra note 91, at 647-49. In addition, unlike the Lanham Act, there is no
prerequisite of proving fame to invoke tarnishment claims. See Sorkin, supra note 100, at 49.
113. WIPO Final Report, supra note 86, ¶176. See also Froomkin, supra note 91, at 632 (arguing
that any other interpretation would render the UDRP a massive forum shopping institution).
114. Rules, supra note 94, at ¶15(a). See also Blackman, supra note 80, at 225 (asserting that “In
facilitating reverse domain name hijacking, the Uniform Policy allows panels to reach issues properly
left to courts.”).
115. See Blackman, supra note 80, at 233-34 (referring to Froomkin, noting that there is no
punishment upon finding of an attempt to reverse hijack domain names. The only “penalty” for RDNH
is that a decision reporting a bad faith complaint must be published. Rules, supra note 94, at ¶16(b)).
116. See Froomkin, supra note 91, at 654-668 (discussing at length some of the procedural
issues).
117. Pursuant to the respondent’s option to choose a three members panel. Rules, supra note 94, at
5(b)(iv).
provider’s relative control of its pool of panelists and the assignment of cases to
them, raises concerns about providers becoming biased in favor of complainants (a
concern which has been affirmed by recent studies which are discussed in the
section on implementation problems).
Second, the timeline for a registrant to respond to a complaint commenced
against her is extremely short. While the complainant has all the time needed to
prepare the complaint, collect documents, hire an attorney, and conduct all the
necessary legal and factual research, the Rules give the respondent only twenty
days for a comparable undertaking.118 Furthermore, there is no requirement of
actual notice regarding the commencement of the administrative proceeding, and
the computation of the twenty days starts from “date of commencement.”119
Consequently, if the registrant relocated and changed her e-mail address, she might
not realize that she has to respond until long after the clock has started running.120
Third, and perhaps most crucial, is the asymmetric access to “judicial review” of
the UDRP decisions. As explicitly stipulated in the Policy’s language, the UDRP is
meant to be a non-binding process allowing the losing party to commence court
litigation before or after the UDRP process.121 The losing complainant again has
all the time necessary for filing a lawsuit challenging the UDRP decision without
having her position compromised.122 By contrast, the losing registrant has only
twenty days to respond if she does not want to lose the domain name almost
immediately after the UDRP process is concluded. In addition, the implementation
of a holding against the registrant will be halted by the registrar only with evidence
of court proceedings in a court of “Mutual Jurisdiction,” while the losing
complainant may bring a lawsuit wherever she wishes and wherever she assumes
jurisdiction could be established.123 This creates an even graver element in the
“judicial review” problem—the “subject matter” problem. Even though the UDRP
tolerates parties challenging its decisions in courts, that tolerance does not, in and
of itself, create a legal cause of action in court. A losing complainant can always
invoke trademark rights in court. On the other hand, a losing registrant might have
difficulty demonstrating an acceptable cause of action against the mark owner.124
118. Rules, supra note 94, at ¶5(a).

119. See infra note 105. See also Froomkin, supra note 91, at 672 n.197.
120. It appears that the fact that the respondent does not necessarily have to be identified, notified,
or to submit a response before the UDRP panel can decide on the complaint, creates some sort of an “in
rem jurisdiction” against the domain name itself. The effect is similar to §1125(d)(2) added by ACPA to
the U.S. law (but with some notable differences). The Rules facilitate the transfer or cancellation of the
domain name without the involvement of the registrant in the proceeding (sometimes called “default
cases”).
121. UDRP, supra note 16, §4(k).
122. Under the possible restriction of the statute of limitation and laches.
123. In the commercial context, the cancellation or the transfer of a domain name that extensively
serves the business may cause serious damages and losses to the registrant. On the other hand, for the
losing complainant there will be no change the business operation as a result of the UDRP decision, so
she may delay the court action for a time most suitable for her.
124. The “cause of action” problem is further discussed in Part V infra.
4. Problems in Implementing the UDRP
Because of the special procedural structure of the UDRP—where the

complainant has absolute discretion in choosing the provider that administrates the
dispute—there is a concern of bias in favor of the complainants. The provider is
funded by the fees it collects from the complainants in a single panelist decision, or
fees that are evenly split between the parties in a three-panelist process.125 The
complainant has the power to decide which provider will collect the fees,
consequently, there is an incentive for the providers to favor complainants and to
produce attractive decisions for mark owners.
Some researchers have argued that this procedural flaw has created the
anticipated result. In a study concluded approximately one year after the URDP
started operation, Dr. Milton Mueller suggested that the UDRP facilitates forum
shopping that biases the results of the UDRP decisions.126 He found WIPO
arbitration panels and the National Arbitration Foundation (NAF) panels the most
“complainant-friendly providers,” while eResolution was described as “the most
defendant friendly” provider.127 Although eResolution’s fees were cheaper than
some of its competitors,128 its market share in the term of the study decreased,
while the market share of WIPO substantially increased.129 These findings suggest
that these two providers are not supplying an identical service.
Mueller found that almost eighty percent of the all cases filed under the UDRP
were decided in favor of complainants.130 More recently, Professor Giest released
his own study updating data he had previously published131—examining 4,332
UDRP resolutions released as of February 18, 2002.132 Giest asserted that the
updated data provides “compelling evidence that forum shopping and suspect case
allocation concerns continue to taint the fairness of the ICANN UDRP.”133
125. Rules, supra note 94, at ¶19(a).

126. Milton Meuller, Rough Justice, An Analysis of ICANN’s Uniform Dispute Resolution Policy
(v2.1), at http://www.acm.org/usacm/IG/roughjustice.pdf (last visited February 20, 2003).
127. Interestingly, eResolution, which was considered by Mueller as the least complainant-
friendly provider recently went out of business (in December 2001). This fact may render the allegation
of forum shopping between providers even more persuasive (although there could be alternative
explanations to this unfortunate result). See Michael Geist, Fundamentally Fair.com? An Update on
Bias Allegations and the ICANN UDRP, pp. 4-5, at http://www.udrpinfo.com/resc/fairupdt.pdf (last
visited February 7, 2003).
128. eResolution then charged $750 for a complaint involving one or two domain names. Meuller,
Rough Justice, supra note 126.
129. WIPO’s market share, charging $1,000 for a complaint involving 1-5 domain names,
increased from 48% of all filed complaints to 66% in the final month of the study. Id.
130. Mueller, supra note 125.
131. The first study found indication of forum shopping between providers. See Michael Giest,
Fair.com?: An Examination of the Allegation of Systematic Unfairness in the ICANN UDRP (August
2001), at http://www.udrpinfo.com/resc/fair.pdf.
132. Giest, supra note 127.
133. Id. The data showed that in single member panels complainant won in 83% of the cases and
58% of the cases decided by three member panels. It was also demonstrated that the market share for
“complainant friendly” providers remained high, while market share for “respondent friendly” providers
remained low.
Although some have tried to challenge of Mueller and Giest’s conclusions thus far
no one has produced alternative data.134
Second, an inconsistent pattern of decisions by UDRP panels has been
identified. Some decisions were described as misinterpreting the Policy, exceeding
the authority granted to it,135 and others as completely ignoring it.136 The
millertime.com case is a striking example of panelists making up their own law.137
The Millers, an American family, started operating a family website by registering
the domain name millertime.com in 1995. On the website they mostly posted
family pictures and stories about them and their activities. The American beer
giant, Miller Brewing Company, demanded this domain name arguing that
“MILLER TIME” was a famous mark belonging to the company. Miller Brewing
filed a complaint under the UDRP and a sole panelist of NAF decided to transfer
the domain name to the beer company.138 In its decision the panelist held, inter
alia, that (i) “[t]he ACPA has no application to this case [because] [t]he jurisdiction
to make a decision with respect to the disputed domain name is found in the
UDRP”;139 (ii) that respondent had no rights or legitimate interests in the disputed
domain name, even though it was their family name, because “there is no evidence
whatsoever that [r]espondent is or has ever been commonly known by the domain
name”;140 (iii) and that there was no doubt that “[r]espondent used the domain
name specifically so that it would attract to its site Internet traffic intended for
Complainant, thereby permitting Respondent to benefit from the goodwill
associated with Complainant’s mark.”141 Such a disturbing result, which leaves
134. The International Trademark Association (INTA) has recently released two responses, one to
Mueller’s study (UDRP-A Success Story: A Rebuttal to the Analysis and Conclusions of Professor
Milton Meuller in “Rough Justice” (May 6, 2002)), at http://www.inta.org/downloads/tap_udrp_
1paper2002.pdf, and one to Giest’s Study (The UDRP By All Accounts Works Efficiently: Rebuttal to the
Analysis and Conclusions of Professor Michael Giest In “Fair.Com?” and in “Fundamentally
Fair.com” (May 6, 2002)), at http://www.inta.org/downloads/tap_udrp_2paper2002.pdf). These
responses fiercely attack the studies’ conclusions, mostly relying on methodological reasons and mere
supportive manifestations in favor of the UDRP. Nevertheless, both responses failed to rebut or to
provide plausible alternative explanation to the striking statistical data.
135. See e.g., Blackman supra note 80, at 245-55 (suggesting that panel’s pattern to use
tarnishment doctrines to transfer domain names in the so-called COMPANYSUCKS.COM and similar
cases should be beyond the power of the panels and should be resolved in courts instead).
136. Froomkin, supra note 91, at 666.
137. Miller Brewing Company v. Miller Family, NAF Case FA104177 (Apr. 15, 2002), available
at http://www.arbforum.com/domains/decisions/104177.htm.
138. The Millers later attempted to bring the case to federal court to challenge the UDRP holding,
while swirling an intensive public campaign regarding this dispute. It appears, however, that the parties
ultimately reached an out-of-court settlement, under which the domain was transferred to Miller
Brewing. See http:/www.udrplaw.net/UDRPappeals3.htm (last visited February 22, 2003).
139. Miller Brewing, supra note 137. In essence, the panelist is saying that the applicable national
law of the parties, i.e., U.S. law, does not really matter here. Furthermore, another novel term was
added to the UDRP lexicon: “UDRP jurisdiction.”
140. Id. Here, even §4(c)(ii) of the Policy, supra note 16, could not save the Millers (the “Pokey”
defense providing an affirmative defense for registrants who were “commonly known by the domain
name”).
141. This conclusion was reached even though the Millers posted a disclaimer at the top of their
homepage and provided a link to Miller Brewing. In the opinion of the panelist “Internet users visiting
virtually no defense to a registrant who happens to have a name and registration

such as “Miller,” may also be a result of the lack of appellate authority that could
consolidate “UDRP common law”—although the legitimacy of such a “common
law” is more than questionable.142
In any event, it is hard to disagree that the UDRP is an improvement over the
former NSI policies. It has also proved itself to be much cheaper, faster and
effective than court litigation143 and a large part of the proceeding is commenced
online without the need to travel. Nevertheless, even strong advocates for the
UDRP agree that in its current form, it is still “far from perfect.”144
V. THE “JUDICIAL REVIEW” AND CAUSE OF ACTION PROBLEM
A. INTRODUCTION TO “JUDICIAL REVIEW”
According to a recent statistical study, registrants lose in approximately eighty-

three percent of the cases with a single member panel and in fifty-eight percent of
the cases decided by three panelists (the data also includes default cases where the
registrant failed to respond to the complaint).145 There is no dispute that the
absolute number of losing registrants is significantly higher than the number of
losing complainants.146 Hence, registrants are most likely to seek reversal of the
UDRP decisions. The only way to do so is to go to court,147 and the sooner the
better. Registrants now face at least three serious and interrelated issues: first, the
question of jurisdiction; second, the question of subject matter; third, the question
of remedies.
Regarding the question of jurisdiction, we may find hints of a possible answer in
the Policy itself, with its reference to “a court of competent jurisdiction.”148 There
Respondent’s web site and seeing the link to Complainant’s site, may well conclude there is an
affiliation between Respondent and Complainant.” Id.
142. Sorkin, supra note 100, at 44, suggesting that “the UDRP has in effect give rise to a new
system of international common law, with panelists increasingly citing to, and relying upon, previous
UDRP decisions” (references omitted). Sorkin also cites to many commentators arguing that UDRP
panelists have stretched the Policy far beyond its intended scope. Id.
143. See White, supra note 11, at 231 (noting that the cornerstone of the UDRP is the streamlined
administrative proceeding designed to resolve cybersquatting cases).
144. M. Scott Donahey, Fundamentally Fair, But Far From Perfect (2001), at
http://www.dnso.org/clubpublic/nc-udrp/arc00/doc00002.doc.
145. Giest, supra note 127, at 6.
146. Most recent estimates are around a 75-80% losing rate for registrants. White concluded that
approximately 80% of the decisions rendered by UDRP panels until January 2001 favored complainants.
White, supra note 11, at 236.
147. There is nothing in the Policy or in the Rules which renders the panels’ decision binding
against future commencement of UDRP proceedings regarding the same dispute. The non-binding
nature of the process may facilitate the filing of second and third complaint concerning the same domain
name. For the sake of the argument we assume that the persuasive force of the first decision will
minimize the chances of success in a subsequent proceeding.
148. “The mandatory administrative proceeding requirements . . . shall not prevent either you or
the complainant from submitting the dispute to a court of competent jurisdiction for independent
is, however, no definition or explanation of the term in the Policy or in the Rules.
The WIPO Final Report was not very clear about this issue, leaving the definition
of what could be a competent jurisdiction rather open.149 The definition of “Mutual
Jurisdiction” in the Policy does not limit the losing registrant from going anywhere
else where she might establish standing and where personal jurisdiction over the
potential defendant can be obtained.150
Another important consideration for the registrant who is contemplating where
to sue is whether the court she chooses will have “jurisdiction to enforce” its
decision on the registrar—especially in cases where the court’s personal
jurisdiction on the mark owner is questionable and the losing registrant seeks a
declaratory judgment or injunctive relief against the registrar.151 For example, a
French losing registrant suing a Russian mark owner and a U.S. registrar in a
French court for a domain name registered with the U.S. registrar would want to be
sure that even if the French court refused to assert jurisdiction over the Russian, (on
contractual grounds, for instance), that the French order will be enforceable against
the U.S. registrar if she wins. Such “jurisdiction to enforce” is of great importance
in at least in two cases: (i) when the registrar refuses to acknowledge the French
order for the purposes of paragraph 3(b) of the Policy (cancellation or transfer
pursuant to an order from a court of “competent jurisdiction”), and (ii) when
registrar fails to follow paragraph 4(k) (suspending the implementation of the
panel’s decision if a timely action was commenced in a court of “Mutual
resolution before such mandatory administrative proceeding is commenced or after such proceeding is
concluded.” UDRP, supra note 16, ¶4(k) (emphasis added).
149. Nevertheless, regarding the jurisdiction to be “recognized” by the proposed administrative
process, the Final Report reads: “In the WIPO Interim Report, it was recommended that the domain
name applicant should be required, in the domain name registration agreement, to submit, without
prejudice to other potentially applicable jurisdictions, to the jurisdiction of (i) the country of domicile of
the applicant, and (ii) the country where the registration authority was located.” WIPO Final Report,
supra note 86, ¶144. Finally, ICANN created the concept of “Mutual Jurisdiction” which was almost
identical to WIPO suggestion, but changes the location of the “registration authority” to location of the
“registrar.” Id.
150. Reading the plain language of the Policy, I think that there should be at least one practical
difference between “Mutual Jurisdiction” and “competent jurisdiction”. Hence, the meaning of
“competent jurisdiction” in the Policy is important for the purpose of ¶3(b) of the UDRP, supra note 16,
(unilateral changes in registration done by the registrar), but not for the second part of ¶4(k) of the
Policy (discussing suspension of implementation of panel’s decision). See supra note 101. But see
Froomkin, supra note 91, at 684: “If Bob [registrant] loses the domain name transfer is stayed for 10
business days. In that two week period if Bob files a complaint in the “Mutual Jurisdiction,” or any
other court of competent jurisdiction, then the transfer is halted without the need for Bob to seek an
injunction.” (footnote omitted) (emphasis added).
151. Under the Policy, if the registrant is quick enough to commence a lawsuit before the ten day
period terminates, the registrar is then committed to halt the implementation of the panel’s decision until
one out of three things happen: (i) evidence of resolution is presented (probably a settlement agreement
between the parties); (ii) the lawsuit is dismissed or withdrawn; or (iii) there is an order from “such
court” dismissing the registrant’s lawsuit or ordering the registrant not to continue using the domain
name. UDRP, supra note 16, ¶4(k). One interpretation may suggest that the registrant is bound only by
order from court of “Mutual Jurisdiction.” The more serious problem is, however, what happens if the
domain name was already transferred and the registrar is located in a jurisdiction other than the
jurisdiction of the court reversing the panel’s decision.
Jurisdiction”). If the French litigant is not sure about the power of the French
court, she might prefer to sue in a U.S. court.
The answer to the jurisdiction question is, however, connected to considerations
about the question of subject matter when the registrant is contemplating which
cause of action to sue under. Common sense would say that the losing registrant
would want to bring an action in a court that will recognize it according to the
controlling subject matter jurisdiction rules. As noted above, the fact that the
Policy allows the losing party to bring the dispute before a court at any stage152
does not automatically provide that the court will accept the case for adjudication
and be willing to hear his claims.153 Suppose that the threshold problem of
asserting personal jurisdiction over the mark holder is solved and consequently the
case is not dismissed, then the registrant has to find a plausible cause of action
arising from the dispute over the domain name. Recall that, by definition, the
registrant probably does not have any trademark rights in the domain name,154 so
his cause of action cannot be based on traditional trademark law.155 Professor
Froomkin described how difficult it would be for the losing registrant, suing under
U.S. law, to demonstrate a plausible cause of action in a U.S. court under
arbitration law, under contract law, or under tort law.156
The third problem facing the losing registrant is what remedies to seek in court.
At the point that the implementation of the panel’s decision is halted, it seems that
a declaratory judgment asserting her legitimate rights in the domain name—
assuming that this judgment would be respected by the registrar—could be an
effective redress. An interesting lesson can be learned from an English case which,
albeit decided before the establishment on the UDRP, can show how risky it might
be to seek declaratory judgment against a foreign registrar.157 The plaintiff was a
U.K. company in the computer service business, and defendant was the famous
American company using the mark “PRINCE” (also registered in the United
Kingdom) in connection with tennis rackets, squash rackets, sporting items, and
clothing. Plaintiff had registered with NSI the domain name “prince.com” in 1995.
After receiving a cease and desist letter from defendant claiming trademark
infringement and dilution of a famous mark, plaintiff brought an action in the
United Kingdom under the “unjustifiable threat” cause of action,158 seeking, inter
152. See e.g., BroadBridge Media, L.L.C. v. Hypercd.com, 106 F. Supp. 2d 505, 508-09
(S.D.N.Y. 2000) (concluding that a plaintiff that has filed an ICANN administrative proceeding may,
before, during, and after filing such a proceeding, bring an action in federal court).
153. See e.g., Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 24-9 (1st Cir. 2001)
(“Since the UDRP cannot confer federal jurisdiction where none exists, the remaining question is
whether Congress has, in fact, provided a cause of action to override UDRP decisions.”).
154. Unless the panel has blatantly acceded its authority and decided on a case when both parties
can show trademark rights in the domain name.
155. The subject matter analysis here is based on the law of the United States, assuming that the
fundamentals of the relevant legal doctrines are similar in most legal systems. In addition, a very large
portion of all gTLD domain name registrations have a U.S. element. See also, Froomkin, supra note 91,
at note 212.
156. Froomkin, supra note 91, at 678-83.
157. Prince PLC v. Prince Sports Group, Inc., [1998] F.S.R 21 (Ch. 1997).
158. A cause of action recognized in the United Kingdom under section 21 of the 1994 Trade
alia, a declaration that the registration and use of the domain name was not
infringing on any U.K. registered trademark.159 Although the court finally
concluded that the cease and desist letter constituted an “unjustifiable threat” under
the relevant statute,160 it refused to issue a declaratory statement concerning the
substantive rights in the mark. The court concluded that such relief exceeded the
limited scope of the English cause of action under section 21.161 By separating the
issues of whether a declaratory judgment was justified under the relevant local
cause of action (and granting the requested judgment) from the material question of
substantive competing rights in the mark (and refusing to enter judgment for the
plaintiff), the court significantly limited the scope of the declaratory judgment
available under section 21, and frustrated the plaintiff’s chief objective bringing the
lawsuit.162 One commentator noted that “the Court’s resort to technicalities and
avoidance of the real issues was hence conveniently cloaked.”163 Similarly, under
U.S. federal law, declaratory judgment relief is relatively limited and will be
granted only under certain circumstances. For example, the “case of actual
controversy” requirement of the Declaratory Judgment Act164 could impair the
registrant’s case in federal court when she does not have trademark rights—or any
other protected rights—in the mark.
B. THE (POSSIBLE) SOLUTION: SALLEN V. CORINTHIANS
In August 1998, Sallen, a U.S. resident, registered the domain name

corinthians.com with NSI. The famous Brazilian soccer team, Corinthiao
(Portuguese for “Corinthians”), which had, inter alia, Brazilian trademark rights in
the mark “CORINTHIAO”, filed and won a complaint under the UDRP.165 Sallen
Marks Act. Trade Marks Act, 1994, c. 26, § 21 (Eng.). [hereinafter English Trademark Act].
159. The motion for that declaration was probably intended to satisfy INS’s awkward policy, in
effect at the time of litigation, which demanded that the registrant, in cases of mark holders challenging
the registration, bring necessary evidence of its rights in the domain name. Otherwise, the domain name
was to be “put on hold.” Prince PLC, [1998] F.S.R at 25 (court describing the relevant NSI policy).
160. The relevant provisions of section 21 protect against unjustifiable threats by defendant
bringing trademark infringement proceedings against plaintiff in activities concerning registered marks.
The statute further affords the plaintiff declaratory relief by stating that the threats of defendant were
unjustifiable. English Trademark Act, supra note 158.
161. Prince PLC, [1998] F.S.R at 40-42.
162. The Court explained: “I find it very hard to believe that any US court, or indeed NSI, would
conclude that any relief granted to the plaintiff against the defendant under [section] 21 by this court was
based on anything other than the fact that the principal letter [cease-and-desist letter], on its true
construction, constituted an unjustified threat of proceedings against the plaintiff on the ground that the
use of the word ‘PRINCE’ by the plaintiff constituted a breach of the defendant’s UK-registered
trademark. I take the opportunity of emphasizing that anything I decide in this judgment, and any order
made as a result of this judgment, goes, and indeed can go, no further than that.” Id. at 39.
163. Endeshaw, supra note 41, at 333.
164. “In a case of actual controversy within its jurisdiction . . . any court of the United States,
upon the filing of an appropriate pleading, may declare the rights and other legal relations of any
interested party seeking such declaration, whether or not further relief is or could be sought. Any such
declaration shall have the force and effect of a final judgment or decree and shall be reviewable as
such.” 28 U.S.C. §2201(a) (emphasis added).
165. Corinthians Licenciamentos LTDA v. David Sallen, et al., WIPO Case No. D2000-0461
did not give up, and within ten days filed a federal lawsuit in the United States,
seeking a declaratory judgment that his registration for the domain name did not
violate the ACPA.166 Sallen based his action on a provision in the ACPA, which
provides:
A domain name registrant whose domain name has been suspended, disabled, or
transferred under a policy described under clause (ii)(II) [for our purposes, the UDRP]
may, upon notice to the mark owner, file a civil action to establish that the registration
or use of the domain name by such registrant is not unlawful under this Act. The court
may grant injunctive relief to the domain name registrant, including the reactivation of
the domain name or transfer of the domain name to the domain name registrant.167
At some point, for the purpose of intercepting the motion for declaratory
judgment, defendants disclaimed any intention to bring further ACPA claims
against Sallen. The defendant then moved to dismiss Sallen’s complaint, arguing
that the district court lacked subject matter jurisdiction168 because Sallen had
requested a declaration of his rights under the ACPA and defendant had no intent to
sue Sallen under the that act.169
Consequently, the district court ruled that there was no “real controversy”
between the parties and thus a declaratory judgment could not be obtained for lack
of subject matter jurisdiction.170 Following this line of interpretation, it appeared
that under certain circumstances, the UDRP decisions are indeed binding in the
United States despite the explicit intention of its framers.
As a result of the district court’s decision, the domain name was transferred and
Sallen appealed to the First Circuit. The appellate court reversed the decision of
the district court, stating that section 1114(2)(D)(v) incorporated in the ACPA
created a cause of action for losing registrants in a UDRP proceeding.171 The court
concluded:
Although CL [defendant] has stated that it has no intent to sue Sallen under the ACPA
for his past actions related to corinthians.com, there is indeed a controversy between
Sallen and CL: Sallen asserts that he has rights to corinthians.com and CL asserts that
it has mutually exclusive rights to the same domain name. Since the dismissal of
Sallen’s complaint, the corinthians.com domain name has been transferred to CL and
is now being used to promote the Corinthians soccer team. Sallen asserts that the
(July 17, 2000), available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0461.html (last

visited February 7, 2003).
166. Sallen v. Corinthians Licenciamentos LTDA, No. 00-CV-11555, 2000 U.S. Dist. LEXIS
19976 (D. Mass. Dec. 19, 2000).
167. 15 U.S.C. §1114(2)(D)(v) (2000) (emphasis added).
168. FED. R. CIV. P. 12(b)(1).
169. Interestingly, there is no indication in the Sallen district court’s opinion that defendants
moved to dismiss also for a lack of personal jurisdiction, and thus, this matter was not discussed.
170. “Based on the representations made by Defendant, . . . that it ‘has no intent to sue Plaintiff
under the ACPA for his past activities in connection with corinthians.com’ the Motion to Dismiss is
GRANTED. . . . Jurisdiction under 28 U.S.C. § 2201 is proper only if there exists an actual controversy
between the parties. . . . Absent the threat of suit there is no controversy and jurisdiction is lacking.”
Sallen, No. 00-CV-11555, 2000 U.S. Dist. LEXIS 19976, at *1-2 (D. Mass. Dec. 19, 2000)
171. Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 24-9 (1st Cir. 2001).
domain name belongs to him.172
The court’s decision rebutted the defendants’, Article III argument that there
was “no case or controversy.” Nevertheless, at the time when the appellate
decision was given, the motion for declaratory judgment was no longer appropriate
(the domain name was no longer in Sallen’s possession); however, the appellate
court offered a potential solution for future litigants, suggesting in a footnote that
had Sallen been given the opportunity to amend his complaint he then could have
properly sought an injunction.173 This note in the appellate decision indicates that a
motion for an injunction may be an option for registrants who have lost their
registration pursuant to UDRP decisions and perhaps also against registrars.174
Defendants also argued that the term “mark owner” in section 1114(2)(D)(ii)(II)
refers only to marks registered with the U.S. Patent and Trademark Office (PTO),
so registrant protection could not apply to their mark, which was registered in
Brazil. The appellate court correctly rejected this argument based on the language
and definitions in the law. It added that, if only U.S. registered marks were subject
to a registrant cause of action under section 1114(2)(D)(ii)(II), it would lead to an
absurd result: registrants could defend themselves under ACPA if they are using
(or maybe cybersquatting) U.S. registered marks, while non-registered mark
owners winning in the UDRP could not be challenged under the ACPA.175 This
could not have been the intention of Congress in enacting the ACPA, but it is
interesting to observe the change in emphasis and nuance here. Recall that the
ACPA was originally enacted primarily to protect U.S. marks.176 Here, the court
seems to use the same kind of rationale to protect alleged U.S. cybersquatters.
Moreover, the principal protection for registrants under the ACPA resides in the
burden on mark owners to prove “bad intent to profit” while section
1114(2)(D)(ii)(II) is located in the part of the ACPA granting limited liability to
registration authorities.
172. Id. at 25.

173. “Sallen’s initiation of these proceedings in the district court stayed the WIPO panel’s order to
transfer the domain name to CL [defendant] . . . . After the district court dismissed Sallen’s suit,
however, the domain name was transferred to CL, possibly wrongfully in light of the pendency of this
appeal. If the complaint were reinstated, the logic of Sallen’s position is that Sallen would seek leave to
amend his complaint to request an injunction returning the domain name.” Id. at 16 n.1.
174. The immunity granted by the ACPA to registrars against an injunction is not absolute. See 15
U.S.C. §1114(2)(D)(i)(II) (2000).
175. Sallen, 273 F.3d at 26.
176. See supra notes 49 and 62.
VI. CORINTHIANS, BARCELONA AND THE POSSIBILITY OF

INTERNATIONAL FORUM SHOPPING
A. WHY WOULD A FOREIGN LOSING REGISTRANT WANT TO SUE

IN THE UNITED STATES?
The Sallen appellate decision makes sense insofar as it fits the logic behind the
UDRP as a non-binding administrative process. It helps U.S. courts avoid the
embarrassing and undesirable result of a lack of subject matter jurisdiction over
cases coming from the UDRP panels. Assuming that other circuit courts will
follow the same line of interpretation, the U.S. federal courts may be an attractive
forum for registrants who lose in the UDRP process. Many uncertainties regarding
the “judicial review” of the UDRP process in the U.S. federal system have been
resolved. Unlike most other jurisdictions, losing registrants have an explicit cause
of action to vindicate in the federal court. Consequently, they do not have to guess
whether the court will be willing to hear their complaint. The question of the
proper judicial relief in the federal courts has also been clarified. The ACPA
specifically allows the courts to grant injunctive relief in favor of a losing
registrant, and a motion for a declaratory judgment will not be dismissed on its face
for lack of subject matter jurisdiction. Furthermore, the only registry that controls
the legacy root servers is subject to federal courts’ orders,177 as are a large number
of the registrars and many mark owners who are U.S. individuals or companies.178
There is also an argument that losing foreign registrants will try to direct court
challenges over UDRP decisions to a U.S. forum, regardless of the nature of the
dispute and the trademark right involved. They have only to convince the federal
court to recognize their standing as plaintiffs and assert personal jurisdiction in case
the mark owner challenges it.179
Getting a court to assert personal jurisdiction over may not be difficult. A
sophisticated registrant merely needs to register the domain name with a registrar
having a principal office in the United States (preferably, a U.S. company), supply
that registrar with a U.S. address, and ensure that this address will show up in the
registrar’s Whois database.180 In this way, the “Mutual Jurisdiction” (to which
complainant submits in the complaint) becomes one jurisdiction. As a result, the
177. Today, the registry is Verisign, the successor of NSI, holding an exclusive designation form
ICANN. See Froomkin, supra note 91, at 615-618 (providing explanation on the legacy root directory
and its function).
178. Under the Rules, supra note 94, at ¶3(b), the registrar agrees in the registration contract that
it will cancel, transfer or otherwise make changes to a domain name registration, inter alia, upon receipt
of an order from a court of “competent jurisdiction.”
179. The more difficult aspect of this strategy for the losing registrant is to eventually show that
she is not a “cybersquatter” in the meaning of the ACPA, and that there are good chances that her
complaints will not be dismissed immediately and without substantive discussion on the merits.
180. If the registrant failed to do this at the time of registration, it is not too late. She may still
change her address as shown in the Whois database after she gets the first cease-and-desist letter from
the mark owner and before a UDRP proceeding is commenced.
complainant may be estopped from objecting to it in court because in her complaint

she agreed to litigate in that “Mutual Jurisdiction.”181 As a practical matter,
registrars currently do not conduct an investigation whether the registrants really
operate from the address they provide. Even if registrars change their policy and
start to confirm addresses, it would not be very hard to convince the registrar that
the registrant has some connection to the provided U.S. address (putting aside the
enormous practical difficulties in implementing such a policy and the extensive
costs involved).182
With respect to the first prong, namely, how a foreign losing registrant can
obtain standing as plaintiff in a federal court, consider the dispute over
barcelona.com. This series of cases demonstrates how easy it may be for a foreign
losing registrant to challenge a UDRP decision in a U.S. federal court, suing a
foreign mark owner who holds its trademark rights under a foreign law system.
The UDRP proceeding in that case involved the registration with NSI of the
domain name barcelona.com by Mr. Joan Nagueras in the name of his wife, Ms.
Concepcio Riera, both Spanish residents, in February 1996.183 In February 1997
their website was launched, providing tourists information about the city of
Barcelona, an e-mail service, a chat room, advertising and links to other internet
websites. In May 2000, the domain name registration was transferred to a
Delaware company, barcelona.com, Inc., wholly owned by the Spanish couple.
The company filed a trademark application to the U.S. PTO in June 15, 2000.
Complainant was the Barcelona City Council of Barcelona, Spain, the owner of
approximately one thousand registrations of the mark “BARCELONA” and of
numerous variations of it with the Spanish trademark office under various
international classes. Complainant filed a complaint and won the UDRP
proceeding and the mark was ordered transferred.184 Barcelona.com Inc. brought
181. Rule ¶3(d)(xiii) (any complaint under the UDRP must state that the complainant will submit
to the jurisdiction of the court of at least one of the two specified mutual jurisdictions, regarding court
proceedings arising from the cancellation or transfer of the domain name in dispute). But see Philip R.
McNeil v. Stanley Works, No. 00-16557, 2002 U.S. App. LEXIS 6762 at *3 (9th Cir. Apr. 10, 2002)
(Ninth Circuit doubts in dicta whether the submission of the complainant in a UDRP complaint to a
“Mutual Jurisdiction” is enforceable).
182. Registrars can arguably impose contractual limitations on registrants who supply false
registration details. Now, assume that complainant files (and by this subjects herself to the court of
“Mutual Jurisdiction”) and wins a UDRP case. The registrant consequently brings a lawsuit in the
jurisdiction that she contemplated in advance. It seems hard to see how the complainant now vindicates
the third party’s (registrar’s) contractual rights to her benefit. I believe that the conceptual problem of
“Mutual Jurisdiction” deserves a more fundamental solution. A “real” address, after all, is not so hard to
create.
183. Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Arbitration and
Mediation Administrative Center Panel, Case No. D2000-0505 (Aug. 2000), available at
http://arbiter.wipo.int/domains/decisions/word/2000/d2000-0505.html.
184. Id. As a side matter, the UDRP result in this case is one of the most striking examples of a
UDRP panelist ignoring the Policy and making up his own rules. Respondent naturally objected to the
allegation of “no legitimate interests” in the domain name. The single panelist did not reject
respondent’s contention of legitimate interests on its face, but ruled that “such right of interest is and
will be always subject to the lack of disputes with parties having better rights or more legitimate
interests as in this case.” Id. (emphasis added). This newly invented rule directly conflicts with the
the case to the Eastern District of Virginia before the execution of the transfer,
seeking a declaratory judgment and asserting that the registration of the domain
name was not unlawful.185 The district court clarified some facts that are relevant
for our further discussion. In February 1999, Nagueras started negotiating with the
City Council of Barcelona about selling the domain name barcelona.com, and later,
in October 1999, he incorporated Barcelona.com, Inc. in the United States. The
negotiation went through March and April 2000 where Nagueras offered the City
Council to engage in his business plan.186 The negotiations did not ripen into any
agreement, and consequently, the City Council demanded the transfer of the
domain name to its possession. “Following this demand, Riera [the wife]
transferred the domain name barcelona.com to plaintiff corporation and changed
the Spanish address in the domain name record to a U.S. address.”187 The district
court further pointed out, that Barcelona.com, Inc. had a mailing address in New
York but did not use any office space there, had no telephone number there, had no
employees, paid no salaries, and owned no separate bank accounts.
The district court’s legal analysis was less systematic and coherent than its
detailed factual description. First, it concluded that under Spanish law, the
dominant word in a combination of words consisting of a trademark must be given
decisive relevance, here, “BARCELONA.”188 The court further delved into
Spanish trademark law concluding that under that law, the City Council was the
only one that could lawfully register or authorize registration of marks including
the term “BARCELONA.” Under Spanish law, only the first to properly register a
trademark is entitled to legally use that mark. Thus, under these circumstances and
in light of the numerous registrations it had obtained, only the City Council had
trademark rights in the term “BARCELONA” under Spanish law and plaintiff
failed to bring evidence to the contrary.189 The court also noted the suspicious
course of events that led to the incorporation of the plaintiff corporation and the
way it obtained the domain name, concluding that this, together with other
considerations, demonstrated “bad faith intent to profit.” Therefore, use of the
mark cannot be declared “not unlawful.”190 Later, the court determined that even
non-U.S. marks are protected under the ACPA, and after conducting a disorganized
analysis of the elements of the ACPA cause of action, the court concluded that
plaintiff violated the ACPA. Hence, the court, confusing UDRP principles with
ACPA principles,191 asserting trademark rights under Spanish law but protecting it
language of the Policy stating that the complainant must show that respondent has “no rights or
legitimate interests in respect of the domain name.” UDRP, supra note 16, at §4(a)(ii). An assertion of
“better rights” as a justification for transferring the domain name clearly exceeded the panel’s authority.
185. Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, 189 F. Supp. 2d. 367
(E.D. Va. 2002).
186. Id. at 369.
187. Id. at 370. The demand letter was sent by the City Council in May 2000. The registration
transfer of the domain name to the corporation occurred only a week later. Id.
188. Id. at 372.
189. Id.
190. Id. at 373.
191. Id. at 376 (“This Court is of the opinion that the WIPO panel’s decision was correct on the
against cybersquatting under the ACPA, finally decided to dismiss the

complaint.192
B. ANALYSIS OF THE “BARCELONA.COM” CASE
A few things can be learned from the barcelona.com case, even though it is only
a district court’s holding, now pending on appeal before the Fourth Circuit.193
First, we can see how a losing registrant under the UDRP can avoid the problem of
asserting personal jurisdiction in the United States over foreign mark holders by
having registered her domain name with a U.S. registrant and having a U.S. address
in the registrar’s Whois database.194 Second, this case illustrates how easily a
foreign losing registrant may establish standing in a U.S. court as a plaintiff. Third,
and most importantly, the barcelona.com holding directs attention to the possibility
that the ACPA will be construed by U.S. courts not only as a cybersquatting
standard applied to protect U.S. trademarks under U.S. trademark law, but also as a
standard protecting foreign marks under the ACPA, a U.S. law.195 This
interpretation, together with the possible preference of foreign losing registrants to
litigate in the United States, may render the ACPA a kind of an extraterritorial
cybersquatting standard that affords protection to any recognized mark under any
legal system. For example, according to U.S. trademark law, geographically
descriptive marks are generally not protected unless a distinctive secondary
meaning has been acquired.196 Nevertheless, the District Court in the
barcelona.com case applied ACPA standards to determine whether a mark that was
unregistered and arguably unprotected under U.S. law had been the victim of
cybersquatting. Finally, it could be inferred that in similar cases involving foreign
merits. Thus, the Court finds that the Plaintiff’s request for a declaratory judgment ruling that the
registration of the domain name barcelona.com was not unlawful should be denied.”).
192. Id.
193. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, No. 02-1396 (4th Cir.
filed Apr. 16, 2002). Oral arguments on appeal took place on Feb. 28, 2003. See
http://www.udrplaw.net/ExclusiveNews18.htm (last visited April 6, 2003).
194. There is no trace of the issue of personal jurisdiction of the district court over the City
Council of Barcelona in the published decision—although it might have been an argument for the
defendant. The reason for not challenging personal jurisdiction over defendant may be defendant’s
assumption that plaintiff has “locked” her in to the U.S. jurisdiction using the UDRP Rules. According
to these Rules, defendant here had only one option for international “Mutual Jurisdiction.” However,
according to a recent Circuit Court decision, defendant in a similar situation could still argue forum non
conveniens and prevail. See Philip R. McNeil v. Stanley Works, No. 00-16557, 2002 U.S. App. LEXIS
6762 at *3 (9th Cir. Apr. 10, 2002) (affirming the district court’s dismissal of a complaint, in which the
district court accepted defendant’s [a mark owner’s] contention of forum non conveniens, after
defendant filed and won a UDRP proceeding in which defendant subjected himself to the jurisdiction of
the district court in California. Accordingly, despite defendant’s submission to the U.S. jurisdiction the
proper forum was held to be in Canada).
195. Under 15 U.S.C. §1114(2)(D)(v), the losing registrant may reverse the UDRP decision by
proving that the registration or use of the domain name was “not unlawful under this charter.” Id.
(emphasis added). Hence, a foreign registrant seeking to enjoy the protection of this section must also
not fall into the Act’s definitions of “cybersquatting,” which are, theoretically, broader than the UDRP
definitions.
196. 15 U.S.C. §1052(e)(2) (2000).
marks and parties, the ACPA may be used not only to serve interests of the foreign
registrant, but also as a sword in the hands of mark owners, who could invoke it for
cross-claims of statutory damages.197
To balance the analysis, we must ask why foreign registrants might pause before
turning to a U.S. court, even though it might be available and advantageous for
their purposes. First, litigation in the federal courts is expensive. Second, they will
have to use the services of U.S. counsel to file the federal complaint. Third, they
must act quickly to prevent transfer of their domain name.198 Fourth, and perhaps
most significantly, they will have to meet the ACPA standards for legitimate use of
someone else’s mark incorporated in their domain name, which are (at least
theoretically) narrower than the UDRP’s standards.199 In addition, the losing
registrants might be susceptible to counter claims under ACPA for damages. In
any event, this is not to say that losing registrants will always seek a U.S. forum to
defy the UDRP, but only to suggest that the current structure sometimes allows
them to pick and choose a U.S. forum when it is most suitable to their needs—even
when this forum is not the most appropriate one according to traditional principles
of international law.
C. THE GENERAL PICTURE
Until this point, the discussion has concentrated on losing registrants who might
abuse the current structure of legal rules to divert disputes to U.S. courts, regardless
of the connection of those disputes to the jurisdiction. But registrants do not
always lose in the UDRP. Sometimes they win their cases, and the mark owners
are the ones who want to go to court. Mark owners, however, do not have to worry
so much about their cause of action, because they hold some kind of trademark
rights in the mark incorporated in the disputed domain name. It is not unreasonable
to assume that mark owners will generally prefer to bring ACPA actions in the
United States, the only country that has thus far enacted a designated anti-
cybersquatting statute affording broad and effective protection to marks in this
context. If the court’s analysis in the barcelona.com case is correct U.S. forums
may become attractive not only for losing U.S. mark owners, but also to foreign
ones. As of the time of writing, a total of fifty-one UDRP cases were challenged in
197. 15 U.S.C. §1117(d) (2000). A party found liable under ACPA may incur statutory damage
payments of up to $100,000 per domain name.
198. However, the barcelona.com case demonstrates that a well-prepared registrant can do all
three. Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, 189 F. Supp. 2d. 367 (E.D. Va.
2002).
199. For example, ACPA describes cybersquatting as the registration, traffic or use of the domain
name in bad faith. 15 U.S.C. §1125(d)(1)(A)(ii) (2000). On the other hand, the Policy requires for this
purpose registration and use in bad faith in tandem. Another example is that ACPA is applicable also
for personal names that are protected as marks. Id. at § 1125(d)(1)(A). However, the Policy supplies an
affirmative defense (“Pokey defense”) for individuals who are commonly known by the domain name.
UDRP, supra note 16, at ¶4(c)(ii). But see Miller Brewing Co. v. Miller Family, supra note 137; WIPO
Arbitration and Mediation Center Administrative Panel, Case No. D2000-0505 (Aug. 2000), at
http://arbiter.wipo.int/domains/decisions/word/2000/d2000-0505.doc.
courts, and forty-eight of these were brought before U.S. courts.200 This is not to
say that the only problems are forum shopping opportunities and the attractiveness
of U.S. law. Many of those cases were litigated before the current situation
developed, and there may be a variety of other plausible explanations why, in more
than ninety-four percent of the challenged cases, plaintiffs decided to bring their
actions in the United States.
There are good reasons to believe that the lack of direct foreign legislation
concerning cybersquatting will change soon. One UDRP case may demonstrate the
absurdities that can occur under the present structure. The domain name in dispute
was Telekomaustria.com, the complainant in the WIPO, UDRP proceeding was the
large Austrian telephony and communications company; the respondent was
apparently operating a telecommunication business in Austria and in the United
States.201 Respondent, instead of filing a formal response under paragraph 5 of the
Rules to the WIPO Arbitration and Mediation Center, rejected the jurisdiction of
the UDRP process served on him and filed a lawsuit against the U.S. Department of
Commerce, which is delegated the power to control and manage the domain name
registration system to ICANN.202 In this lawsuit, filed in a U.S. federal court in
Texas, respondent challenged the Policy and the policy-making role of ICANN on,
inter alia, U.S. constitutional law grounds.203 Respondent also requested that the
WIPO Arbitration Center stay the proceeding against her while the federal lawsuit
was pending. Not surprisingly, this tactic did not impress the sole WIPO panelist
ordering the transfer of the domain name to complainant. The panelist’s
interpretation of the Policy and the Rules indicated that a court proceeding
regarding the domain name in dispute filed solely against the Department of
200. The other three cases were litigated in: (i) India (challenging Maruti Udyog Limited v.
Maruti Software Private Limited, WIPO Arbitration and Mediation Administrative Center Panel, Case
No. D2000-1038 (Nov. 2000), available at http://arbiter.wipo.int/domains/decisions/html); (ii) France
and Korea (Societe Nationale de Television FRANCE 2 v. Segwon Kim, WIPO Arbitration and
Mediation Administrative Center Panel, Case D2001-1300 (Jan. 2002) available at
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1300.html; and Societe Nationale de
Television FRANCE 3 v. Segwon Kim, WIPO Arbitration and Mediation Administrative Center Panel,
Case D2001-1322 (Jan. 2002), available at http://arbiter.wipo.int/domains/decisions/pdf/2001/d2001-
1322.pdf. The UDRP complaint was obviously dismissed. The case was first litigated in France and
defendant obtained an injunction in a Korean court preventing the transfer of the disputed domain names
pursuant to the French order. The losing party in the Korean case strangely tried to “challenge” the
court’s injunction in the UDRP.); (iii) Canada and the United States (challenging Easthaven, Ltd. v.
Nutrisystem.com.,[2001] 55 O.R.3d 334, where concurring proceedings were submitted both in the
United States and Canadian courts regarding the same UDRP decision; the Canadian court dismissed for
lack of personal jurisdiction). See The Uniform Domain Name Dispute Resolution Policy Legal
Information Site: The UDRP-Court Challenge Database, available at
http://www.udrplaw.net/UDRPappeals.htm (last visited Jan. 30, 2003).
201. Telekom Austria AG v. William L. Stanley, WIPO Arbitration and Mediation
Administrative Center Panel, Case No. D2002-0171 (Apr. 2002), available at http://arbiter.wipo.int/
domains/decisions/html/2002/d2002-0171.html (last visited February 4, 2003).
202. William L. Stanley v. U.S. Department of Commerce, No. 02-CA-192 (W.D. Tex. filed Mar.
21, 2002).
203. Id. According to the UDRPLaw.net website, the case in the federal court was later dismissed
without prejudice. See http://www.udrplaw.net/UDRPappeals2.htm (last visited February 23, 2003).
Commerce did not suspend or terminate the administrative proceeding.204 The

UDRP decision suggested that an ACPA action directly against the complainant
could have had such an effect.205
The United States is apparently the only country so far to enact a broad and
effective anti-cybersquatting statute such as the ACPA, which also includes a cause
of action for losing registrants. Other courts in other countries have also been
fighting the same cybersquatting problems, however, and the need for new
legislation is ripening.206 One commentator has noted that “the implications of
imposing a single’s nation law on all internet-faring nations go largely unnoticed
among U.S. policy makers. The frustration felt by foreign plaintiffs—and indeed
foreign courts—is very real, however.”207 These foreign courts have probably been
doing what U.S. courts did before the enactment of ACPA-stretching their
trademark and unfair competition law (or some other domestic law principles) to
combat cases of infringement or dilution of marks in domain names.208 It appears
that it is only a matter of time until other jurisdictions, such as the European Union,
will have their own anti-cybersquatting laws,209 perhaps with their own cause of
action for losing registrants under an administrative policy like the UDRP.210 In a
situation of conflicting cybersquatting laws in the international fora, the incentives
and possibilities for forum shopping may increase and intensify.
204. Telekom Austria AG v. William L. Stanley, WIPO Arbitration and Mediation

Administrative Center Panel, Case No. D2002-0171 (Apr. 2002), available at http://arbiter.wipo.int/
domains/decisions/html/2002/d2002-0171.html (last visited February 4, 2003).
205. Id. The panelist, however, did not address the possible difficulty of the respondent filing an
ACPA action against complainant before he actually lost in the UDRP proceeding. As mentioned above,
§ 1114(2)(D)(v) is apparently applicable only for registrant who has already lost in the administrative
procedure.
206. See Rains, supra note 81, at 369 (noting that U.S. courts are by no means alone in their
struggle to deal with domain name disputes).
207. Id. at 371.
208. For example, the United Kingdom Court of Appeal, in a clear case of cybersquatting,
(defined as registering marks like “MARKS & SPENCER”, “BT”, “VIRGIN ENTERPRISES” or
“LADBROKE” as domain names in an attempt to sell it to the mark owners for profit), invoked, inter
alia, the doctrine of “passing off” and “a threat to sell a name which was inherently deceptive to a
person not connected or associated with the goodwill attaching to the name . . .” British
Telecommunication, PLC v. One in a Million, Ltd and Others, [1999] 1 W,L.R. 903, 923. In another
jurisdiction, The district court of the District of Tel-Aviv, Israel, dealing with a domain name dispute,
invoked a civil tort under § 4 of the Commercial Wrongs Law (1999), asserting that the registration of a
domain name incorporating a mark, when registrant is a business having no rights in the mark,
constitutes the imposition of an unlawful burden on the access to the other business (i.e., of the mark
holder’s), which is a civil tort under the Act. C.A. (T.A) No. 1627/01, M. S. Magnetics, Ltd. v. Discopy
(Israel), (June 3, 2001) (copy on file with the author).
209. See e.g., Rains, supra note 81, at 377 (noting that “a number of European critics have voiced
concerns, including allegations that the U.S. assumes it has the right to direct the fate of the already
established bodies holding de facto control over Internet infrastructure.”).
210. If and when conflicting cybersquatting laws and rules of different countries will be involved
in disputes litigated in the U.S., the assumption is that U.S. courts will have to implement some sort of a
comity analysis that could have a mitigating effect on the forum shopping hypothesis. See Societe
Nationale Industrielle Aerospatriale v. United States District Court for the Southern District of Iowa,
482 U.S. 522, 544 (1987) (Supreme Court delineating the factors relevant to any comity analysis, which
become relevant when foreign countries’ interests are involved in U.S. litigation).
VII. CONCLUSION
While the appeal on the barcelona.com case is pending before the Fourth
Circuit,211 the time is ripe to reflect on the appropriate scope and international
ramifications of American anti-cybersquatting legislation and its interpretation.
The current situation in which the U.S. Government—to large extent—controls the
internet and the DNS, and delegates its power to a private corporation that
formulates quasi-law with international implications, is disturbing for many
countries. The possibility that U.S. courts will also monopolize judicial review on
gTLD disputes that come from the UDRP system, using U.S. national legislation to
fix the problem of cybersquatting, will not reduce these concerns. This article has
focused on some of the problems in the UDRP and the ACPA that enable the battle
against cybersquatting to proceed in an undesirable manner. Furthermore, the
concern over forum shopping in “judicial review” of UDRP decisions and the
inconsistencies between national cybersquatting laws may grow and intensify if
and when other countries enact their own “ACPA-like” legislation or otherwise
adjust their laws to prevent cybersquatting. As many commentators have noted, the
UDRP needs to be fixed quickly. In addition, the ACPA should be carefully
construed so that it does not protect foreign marks. The optimal approach is to
reach an international treaty between governments taking uniform steps to prevent
cybersquatting. Until that happens, this aspect of the internet and domain name
disputes will be challenging both for cyberspace citizens and for rule makers.
211. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, No. 02-1396 (4th Cir.
filed Apr. 16, 2002). Oral arguments on appeal took place on Feb. 28, 2003. See
http://www.udrplaw.net/ExclusiveNews18.htm (last visited April 6, 2003).

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EFRONI FINAL 6/5/2003 4:46 PM

The Anticybersquatting Consumer Protection Act and the

336 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

allowing the browser to identify the website in cyberspace. The “alphabetical

3. Id. at 319-323 (explaining the TLD structure and registration procedure).

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 337

338 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

other attractive generic terms is sometimes measured in millions of dollars.13 In

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 339

I. PERSONAL JURISDICTION IN THE DIGITAL AGE

The new global and borderless medium for communication, information

340 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 341

342 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

Court of the Northern District of California stretched the “effect doctrine” to

II. PRE-ACPA AND UDRP ATTEMPTS TO HIT CYBERSQUATTERS:

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 343

344 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

Due to the problems caused by using traditional trademark concepts to prevent

The conflation of purposes in incorporating trademarks in domain names,

47. 15 U.S.C. § 1114(c).

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 345

[the infringed party’s] goods and services on the internet.”55

346 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

III. THE BIRTH OF THE ACPA

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 347

69. 15 U.S.C. § 1125(d)(1)(A)(ii).

348 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

United States to a problem that has many international implications.78

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 349

domain names and trademark issues.85

85. White Paper, supra note 83, at 31,754.

350 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

http://www.netsol.com/en_US/legal/static-service-agreement.jhtml (last visited February 5, 2003).

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 351

B. CRITIQUE OF THE UDRP

1. The Question of Legitimacy

The UDRP functions as a de facto internationally binding and compulsory legal

2. Problems of Substantive Law

352 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

3. Severe Procedural Flaws and the Concept of Fairness

111. UDRP, supra note 16, §4(c)(iii).

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 353

118. Rules, supra note 94, at ¶5(a).

354 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

4. Problems in Implementing the UDRP

Because of the special procedural structure of the UDRP—where the

125. Rules, supra note 94, at ¶19(a).

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 355

356 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

virtually no defense to a registrant who happens to have a name and registration

V. THE “JUDICIAL REVIEW” AND CAUSE OF ACTION PROBLEM

A. INTRODUCTION TO “JUDICIAL REVIEW”

According to a recent statistical study, registrants lose in approximately eighty-

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 357

358 COLUMBIA JOURNAL OF LAW & THE ARTS [26:3/4

2003] THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT 359