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53-489: For example, in Panavision Int'l L.P. v. Toeppen , 141 F.3d 1316 (9th Cir. 1998), Dennis Toeppen registered the domain name Panavision.com. Panavision, the trademark owner, learned that Toeppen had registered its trademark when it attempted to register the trademark "Panavision" as a domain name. Toeppen was using the domain panavision.com to display photographs of Pana , Illinois, and, when asked to cease, he offered to sell

106-554: A domain name registrant who: A trademark is famous if the owner can prove that the mark "is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner". "Trafficking" in the context of domain names includes, but is not limited to "sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration". The ACPA also requires that

159-542: A domain name, but only when the domain name is registered for profitable resale. The Ninth Circuit Court of Appeals caused a stir in 2013 when it held, in Petroliam Nasional Berhad (Petronas) v. GoDaddy.com , 737 F.3d 546 (9th Cir. 2013), petition for cert. denied 135 S.Ct. 55 (2014), that there is no cause of action for contributory cybersquatting, i.e. secondary liability under the ACPA. It so held notwithstanding

212-405: A dropped domain immediately after it is deleted by the registry. If the domain is caught by a confederation of registrars attempting to fulfill a domain backorder, then whichever domain registrar caught the domain will register it to the entity who backordered the domain. If the newly reregistered domain is captured by a company that has no customers who backordered it, the domain may be auctioned to

265-558: A generic term, "Grocery Outlet" and the domain name "groceryoutlet.com". The decision contains the key sentence "Generic terms receive no protection in US trademark law when they are used to label the goods and services that they describe." Cybersquatting was first used as a legal term in March 1998 by a U.S. District Court in California in the case of Avery Dennison vs Sumpton . An early definition of

318-492: A legal action, typically a UDRP case to transfer or cancel the domain unless the registrant is in the same jurisdiction as the affected intellectual property rights owner. In this case, local law may be sufficient as the action may be considered as common law tort of passing off . The primary market for domain name speculation covers newly registered domain names that have not been registered before. Such domain names are often linked to news and current events. The launch of

371-452: A local agent or company to enable people to register domains in such TLDs exist and have been used. Domain name speculation has evolved with the expansion of the domain name system. Domain names were registered primarily for business purposes. In the 1990s, much of the ccTLD landscape had yet to appear, and the growing public awareness of the COM TLD was gathering momentum owing to the growth of

424-473: A new TLD encourages primary market speculation as domainers rush to register generic terms and also phrases that make a pun on the TLD name ( domain hack ). Other more organised domainers or domain name speculators register trademarks in advance of the launch of new TLDs specifically in order to register these short, memorable and potentially high value domains in the sunrise period of new gTLD launches. The Sunrise period

477-954: A novel approach not subject to regulation as a public utility. By 1985, Toeppen had captured approximately 50% of Greyhound's ridership. Toeppen also started Allerton Charter Coach, Inc., a charter bus company with three buses and four vans as of 2014. It operated as a subcontractor for Suburban Express. Suburban Express and Allerton Charter Coach stopped operating in May 2019. Said Toeppen, "I stopped enjoying this business around 2001, and I think it's beginning to show." In 1995, Toeppen registered about 200 internet domain names including some which were similar to well known companies and popular trademarks. Some of them included panavision.com ( Panavision ), deltaairlines.com ( Delta Air Lines ), neiman-marcus.com ( Neiman Marcus ), eddiebauer.com ( Eddie Bauer ) and yankeestadium.com ( New York Yankees ). Some of these companies, like Delta Air Lines, paid Toeppen to acquire

530-426: A number of front companies as registrars. VeriSign , in the case of TLDs COM and NET , allows each registrar a slice of the resources that may be used to register dropped domains. VeriSign drops domains in a random order, giving registrars only a vague idea of the particular drop time of a particular domain. Sometimes a group of drop registrars often work in confederation to increase their possibility of registering

583-404: A procedure of notifying the respondent, receiving a reply from the respondent, appointing an adjudication panel and awaiting a decision. The process can take two months or more and all costs (typically more than $ 1,000 even for a single domain) are borne by the complainant, while the infringing party stands to lose nothing except the registration fee (usually under $ 10) for the original domain and

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636-419: A situation where domains were being registered purely for their type-in traffic . Many of exact phrases that people were searching for in search engines were being registered for the sole purpose of serving PPC advertising. The COM TLD grew from 23,662,001 registered domains 1 January 2003 to 80,759,835 registered domains as of 1 January 2009. While part of that increase in the number of registered domain names

689-716: A term that was first used by a court in 1998. In November 1999, after the Panavision case had ended, and while Intermatic Inc. v. Toeppen was still pending, the United States gave trademark holders a cause of action against registrants of domain names containing trademarks, in the Anticybersquatting Consumer Protection Act . By 2023, Toeppen's domain sales from the initial domain registrations totaled more than USD 2 Million. Domaining Domain name speculation , popular as domain investing , domain flipping or domaining in professional jargon,

742-518: Is an example of what happens when speculative activity overtakes "ordinary" domain registrations. A combination of an inept registry ( EURid ) and excessive speculation by businesses exploiting a poorly structured regulatory framework meant that, according to EURid 's own statistics at the end of 2006, over 50% of the registrations could be considered at best speculative and at worst domain name warehousing . Specialist and repurposed ccTLDs have also seen elements of domain name speculation. One of

795-515: Is due to the increase in ecommerce and business conducted online, some of the increase is due to the ease of generating revenue from PPC and type-in traffic . Domain tasting , a practice by which millions of domains would be registered for a limited period (the five-day Add Grace Period during which a domain could be deleted without the registrar effectively having to pay a registration fee to ICANN) and only those generating sufficient revenue from PPC advertising would be retained, also served to increase

848-443: Is the business of registering a domain name and parking it or placing pay-per-click ads on it. Domainers rely on type-in traffic , which is when Internet surfers type in the domain name rather than using a search engine . Domainers can make a lot of money by buying and selling domain names. Some domainers relied on domain tasting , which involves placing pay-per-click ads on the domain for five days (or less) to determine whether

901-939: Is the focus of most domain speculation activity as it is the largest TLD. Domain speculation occurs in other TLDs as well, such as NET and to a lesser extent in ORG , INFO , and BIZ . Of the Generic top-level domains , INFO is the most popular by registration volume compared to BIZ gTLD due to the low cost of initial registration and the recognizability of INFO as being an abbreviation of information . Domain name speculation also occurs in country code top-level domains (ccTLDs) such as .uk , .de and .us . The German TLD consists of over 12 million domains. The UK's domain has over 7.7 million domains registered according to Nominet's domain registration statistics webpage, mainly in its commercial sub-domain co.uk . These TLDs are mature markets where good domain names may command high prices. The EU ccTLD

954-538: Is the practice of identifying and registering or acquiring generic Internet domain names as an investment with the intent of selling them later for a profit. The main targets of domain name speculation are generic words which can be valuable for type-in traffic and for the dominant position they would have in any field due to their descriptive nature. Hence generic words and phrases such as poker , insurance , travel , creditcards , loan and others are attractive targets of domain speculation in any top-level domain ,

1007-411: Is to create a more level playing field for those interested in developing websites. The .mobi premium generic words and phrases list is a good example of the domain names that are at the heart of most early-market domain name speculation. Domain name speculators, sometimes known as domainers or domain investors , also register domain names based on seemingly generic phrases such as propertyforsale in

1060-697: Is when intellectual property rights owners (trademark owners etc.) can register their trademark in the new gTLD in advance of the gTLD being opened for general registrations. In the last three years the main new TLDs launched were .eu ccTLD, .mobi TLD and .asia sTLD . All of these had landrush periods of varying success. The secondary market for domain names covers previously registered domain names that have not been renewed by registrants or are available for resale. Sometimes these dropped domain names can be more valuable due to their having had high-profile websites associated with them. They will have links from other websites and could still have users searching for

1113-462: The Dot-com bubble . This inevitably attracted the attention of those who saw potential value in domain names, and by this time many of the most valuable generic domain names, such as sex.com and business.com , had been registered. No clear legal position existed to distinguish domain name speculation and cybersquatting. Due to the open nature of most TLDs, anyone could register a domain name. This led to

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1166-449: The URL of the site they wish to visit. Generic terms, such as the term "salt" when used in connection with sodium chloride, are not capable of serving the essential trademark function of distinguishing a product or service. This means that generic terms are generally not afforded any legal protection. The Canned Foods, Inc. v. Ult Search Inc. decision specifically deals with a case involving

1219-975: The University of Illinois at Urbana–Champaign , majoring in electrical engineering. He later changed his major to business, and graduated with a BS in Finance in 1987. Thereafter, he attended the University of Illinois at Urbana–Champaign, where he earned a BS in Economics, Northwestern University , where he earned an MS in Transportation, and University of Chicago , where he earned an MBA, and Parkland College , where he earned an AS in Construction Management. In 1983, Toeppen founded Suburban Express to provide transportation from University of Illinois to Chicago Suburbs. Toeppen attacked monopolist Greyhound Lines using

1272-619: The ACPA, a trademark owner can choose to pursue an administrative proceeding under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP allows a trademark owner to challenge domain name registrations in expedited administrative proceedings. A UDRP proceeding can be faster and cheaper for trademark owners than an ACPA lawsuit. Also, UDRP outcomes tend to be pro-plaintiff because many UDRP arbitrators are trademark lawyers. However, some trademark owners prefer to bring ACPA claims because they offer more remedies than

1325-465: The ads will make more than the annual cost of the domain. If the domain is dropped within the five-day grace period, no fee is incurred. An industry has grown up out of this business with domainers taking part in these mass registrations. This practice was largely eliminated by 2009, when ICANN began raising fees to registrars with excessive domain tasting. In Verizon California, Inc. v. Navigation Catalyst Systems , 568 F. Supp. 2d 1088 (C.D. Cal. 2008),

1378-402: The best examples is that of the .tv ccTLD which has found the fact that TV is an abbreviation for the word television to be rather lucrative. The .mobi TLD is a good example of a specialist TLD in that it is specifically targeted at mobile phones and similar mobile technology. The operators of .mobi, mTLD, have reserved some of the premium generic words which will be auctioned off. The intent

1431-431: The cancellation or transfer of the domain name (the only remedies available under UDRP proceedings) and a court ruling can lead to a final resolution of the matter. Also, a suit under the ACPA may deter future cybersquatters more effectively than a UDRP proceeding. While the ACPA contemplated the purchase of domain names for resale to trademark owners, it did not contemplate the more modern practice of domaining . Domaining

1484-468: The confusingly similar domain names with a bad faith intent to profit. Dennis Toeppen Dennis Toeppen (born 1964) is an American entrepreneur and owner of bus company Suburban Express. He was a party to two cases of first impression relating to domain name registration. Dennis Eric Toeppen grew up in Mount Prospect, Illinois . He graduated from Prospect High School in 1982 and enrolled at

1537-608: The court found Defendant had a bona fide noncommercial use of the mark, therefore, the ACPA claim failed. "Defendant's motive for registering the disputed domain names was to express his customer dissatisfaction through the medium of the Internet." The domain name registrar or registry or other domain name authority is not liable for injunctive or monetary relief except in the case of bad faith or reckless disregard. While § 1125 protects trademark owners, 15 U.S.C. § 1129 protects any living person from having their personal name included in

1590-419: The court found that the first two prongs of Mayflower's ACPA claim were easily met because (1) their registered trademark was distinctive and (2) Defendant's "mayflowervanline.com" was confusingly similar to Plaintiff's Mayflower trademark. However, when the court was examining the third prong of Plaintiff's ACPA claim, whether Defendant registered its domain name with the bad faith intent to profit from Plaintiff,

1643-415: The cybersquatter. For a UDRP action to succeed one of the things that the complainant has to establish is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Legitimate domain name speculation tends to steer clear of trademarks and concentrate on generic words and phrases as domains based on trademarks can be subject of UDRP actions by

Anticybersquatting Consumer Protection Act - Misplaced Pages Continue

1696-543: The development of the Uniform Domain-Name Dispute-Resolution Policy in 1999. A common accusation against domain name speculation is that it is cybersquatting. Cybersquatting is defined as registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The key element in this definition is that the intellectual property rights of another's trademark are infringed by

1749-405: The domain be transferred to Intermatic but ruled Intermatic had not proven willful trademark infringement or unfair competition. Both the Panavision and Intermatic cases were matters of first impression for the U.S. Courts in dealing with trademarks and domain registrations. The practice of registering trademarked words as domains for sale to trademark holders became known as " cybersquatting ",

1802-458: The domain name to Panavision for $ 13,000. After Panavision refused to buy the domain name from Toeppen, he registered its other trademark, Panaflex, as a domain name. The Court held that the FTDA could be violated without the traditional tarnishing or blurring the courts had required. Rulings like this extended the FTDA substantially. Under the ACPA, a trademark owner may bring a cause of action against

1855-444: The domain names from him. In 1996, Panavision , a camera manufacturing company, sued Toeppen for trademark infringement instead of paying him $ 13,000 for the domain. In 1998, the court ruled that Toeppen had to relinquish the domain name to Panavision. In a similar case brought in 1996, Intermatic Inc., a timer manufacturing company, sued Toeppen rather than pay him $ 5,000 for the domain name intermatic.com. The court ruled that

1908-505: The domainer lost under the ACPA. One of the defendants, Basic Fusion, Inc. argued that they were not cybersquatters, but as an Internet registrar accredited by ICANN they could register domain names on behalf of its customers and it specialized in "bulk registration". Navigation Catalyst Systems , another defendant and a customer of Basic Fusion, used their "proprietary automated tool" to find domain names that were not already registered and then registered them using Basic Fusion. Navigation used

1961-690: The extensive body of case law permitting such liability where a registrar is shown to have acted outside the normal ministerial bounds of domain registration. It also relied on Central Bank of Denver v. First Interstate Bank of Denver and premised on the Circuit Court's determination that the ACPA is not part of the Lanham Act and therefore not included in the rule permitting secondary liability for trademark infringement enunciated in Inwood Labs v. Ives Labs , 456 U.S. 844 (1982). The ACPA also provides that

2014-404: The five days following the registration (the "advertisement grace period") to put advertisements on the websites making money from the advertisements even when they dropped the domain name registration before the five-day window closed. Plaintiff Verizon argued that defendants "registered" 1,392 domain names that were confusingly similar to plaintiff's trademarks. The Court found that defendants used

2067-412: The highest bidder by the registrar who captured it or an auction intermediary. The time between a drop and a capture is often measured in seconds or fractions thereof. Some registrars do not allow domains to drop in the normal fashion, instead introducing an intermediary (e.g., Snapnames and Namejet) that auction the domain prior to their deletion. If nobody buys the domain at auction, it will pass through

2120-489: The hope that these domain names could be sold later to businesses. Some (but not all) domain name investors will try to stay away from domain names containing trademarks as this could be considered cybersquatting . Some country code TLDs or sponsored TLDs will have what is referred to as an eligibility or nexus requirement to limit registration to specific geographical or national regions. However this does not deter domain name speculation as various options such as using

2173-478: The lack of short and memorable domains in this and other mature TLDs. One of the main problems concerning trademarks and domain names in unrestricted TLDs and gTLDs is that of trademarks in general: the rights of the trademark owner have to be asserted in order to protect the trademark. The trademark owner has to take legal action, typically a UDRP , to defend the trademark after the potentially infringing domain has been registered. The UDRP action has to follow

Anticybersquatting Consumer Protection Act - Misplaced Pages Continue

2226-499: The mark be distinctive or famous at the time of registration. In determining whether the domain name registrant has a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute: The ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment , which includes gripe sites . In Mayflower Transit, L.L.C. v. Prince , 314 F. Supp. 2d 362 (D.N.J 2004),

2279-432: The most popular of which is .com . The speculative characteristics of domain names may be linked to news reports or current events. However, the effective period during which such opportunities exist may be limited. Quick turnaround in the resale of domains is often called domain flipping . Domain flipping may also involve the process of buying a valuable domain name and building a related website around it, all this with

2332-420: The normal deletion process. Cybersquatting has a clear legal definition, but this definition tends to be lost when people open a webpage with only pay per click ('PPC') advertising. It is often assumed that such a domain is "cybersquatted", especially when the person is searching for the domain in order to register it. The ease with which PPC revenue could be derived from parked domains effectively created

2385-532: The number of domains registered. This practice involved domain name registrars being created purely for the purpose of domain tasting. The situation became so bad in 2007 that ICANN was forced to take action. In June 2008 ICANN added a provision to its Fiscal Year 2009 budget to limit the number of domains that a registrar could delete using the Add Grace Period before having to pay the ICANN fee. The effect of this

2438-424: The objective of selling the domain and newly built website to an interested party. Sometimes, domain name speculation involves finding domain names early in a market, particularly when a new top-level domain is launched, registering them and waiting until the market grows to sell them. Domains such as voice.com, sex.com , and fund.com have sold for millions of US dollars. The COM top-level domain (or 'TLD')

2491-692: The practice was given in Intermatic Inc. v. Toeppen , 947 F. Supp. 1227 (N.D. Ill. 1996). The definition was "These 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." As domain name speculation has evolved alongside the domain name system, the most memorable and shortest domains tend to be amongst those registered first in any TLD. For old TLDs like COM (introduced in 1985), these domains will be long gone and people registering their first domains are often frustrated at

2544-410: The registrar of the infringing name incurs no penalty at all. The global and unrestricted nature of TLDs and gTLDs effectively means that anyone in any country can register a domain name in them regardless of whether they have any intellectual property rights in that name. With country code TLDs the jurisdiction is more clearly defined. The affected intellectual property rights owner would have to take

2597-459: The trademark owner can file an in rem action against the domain name in the judicial district where the domain name registrar, domain name registry, or other domain name authority registered or assigned the domain name is located if: This provision is rarely used, however, because many trademark owners can achieve the same results through a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding. Instead of suing in federal court under

2650-471: The trademark owners. As the number of registered domain names has increased, the number of UDRP cases has also increased. Trademark and service mark owners now use brand protection services that monitor TLDs for newly registered domains that potentially infringe on their trademarks. This is due in part to typosquatting , a form of cybersquatting where variations of the spelling of a brand's domain will be registered in an attempt to profit from users mistyping

2703-413: The websites because of these links. Others can be valuable because of the generic nature of the domain name or the length of the domain name, with two and three character names being the most sought after. The business of registering the domain names as they are deleted by the registries is known as drop catching . It is a highly competitive business. The main operators in this business typically set up

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2756-668: Was approximately 14.91 million. The single page websites include under-construction, brochure-ware and parked pages in addition to online advertising revenue generating ( PPC ) parked pages. The latest statistics for domain name usage quoted in the Verisign Domain Brief for June 2009 states that of the 92 million COM and NET domain names, 24% of these domains have one page websites, 64% have multipage websites and 12% have no associated websites. In purely numerical terms, those single page websites would account for approximately 22 million COM and NET websites. The survey quoted in

2809-473: Was to massively curtail the number of domains deleted in .com and .net during the Add Grace Period. From June 2008 to April 2009, AGP deletions fell by 99.7%. The March 2006 Verisign Domain Brief stated that out of approximately 57.37 million COM and NET websites spidered, 26% were single page websites, 60% were multipage websites and 14% had no associated websites. Numerically, the number of single page websites

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