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In Response to CADNA: Cybersquatting is Not Criminal But a Civil Matter

Michael Collins

On Wednesday, November 5 The Coalition Against Domain Name Abuse (CADNA) released a statement that implied that cybersquatting is a criminal activity. CADNA said in its release "CADNA has been working diligently to further international and national policies that combat the practice of cybersquatting… As brands continue to learn about the prevalence and practice of online criminal activities..." While, Internet Commerce Association (ICA) vigorously opposes cybersquatting, it is important to note that cybersquatting is a civil matter, not a criminal one.

There is a good reason that cybersquatting is a civil matter and not a crime. It involves a dispute between two parties about intellectual property, a protected mark. Trademark protection does not provide exclusive use of a mark in every class of commerce. Protection is even limited by geographic region in some cases. Therefore, there are many opportunities for dispute about who has rights to a mark in any given use. There are many famous marks that have multiple uses and multiple owners. This is how Olympic can be used for the famous international athletic competition that the world enjoys and also for Olympic Airlines, Olympic Arms and Olympic Paint. In fact, Olympic Paint owns Olympic.com and it is not a cybersquatter against other legitimate users of the Olympic mark. Trademark owners are already provided with two highly effective methods for dealing with the trademark abuse known as cybersquatting — the Uniform Domain-Name
Dispute-Resolution Policy
(UDRP) administered by the Internet Corporation for Assigned Names and Numbers (ICANN), and national laws such as the U.S. Anti-Cybersquatting Consumer Protection Act (ACPA). Both these avenues balance the rights of trademark owners against the legitimate interests and considerable investments of domain name investors and developers.

Under the UDRP it is the responsibility of trademark owners to create and enforce their marks against alleged infringement by identical or confusingly similar domain names. The same legal principle is the law in many jurisdictions; for example, in the U.S. this requirement was recently affirmed in prominent trademark litigation in which eBay prevailed against the luxury brand Tiffany. Disputes about trademark infringement, including disputes about domain names, should be resolved by civil courts without involving law enforcement. It would not be an appropriate use of government resources for law enforcement to expend its scarce resources in disputes about intellectual property unless a domain name is being used to directly facilitate a related criminal enterprise. It would not make sense for someone from the Olympic Committee to call the police if they find a picture at Olympic.com that includes a child in a soccer uniform.

Cybersquatting is a problem that negatively impacts many businesses. Trademark owners, advertisers and domain name investors and developers alike are hurt by this abusive practice and many domain service providers employ notice and takedown complaint programs to assist trademark owners in protecting their rights. The Internet Commerce Association has adopted a Code of Conduct that prohibits intentional trademark infringement, has supported actions now being undertaken by ICANN to end abusive domain name "tasting" that facilitates cybersquatting, and will continue to support policy and legislation that effectively curbs cybersquatting and protects the rights of domain name investors and developers. However, we should all be careful to not overextend law enforcement by suggesting that it should be involved in resolving trademark disputes.

By Michael Collins, Consultant
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