Q & A: Jeffrey Gitche

The lawyer who prosecuted and won the first case under ICANN's Uniform Domain Name Dispute Resolution Policy recently spoke with IGN about the brief history of cybersquatting. His name is Jeffrey Gitchel and he's an associate at the Pittsburgh office of Kirkpatrick & Lockhart LLP, where he specializes in trademark and copyright litigation. Much of his work has been in the realm of the Internet and with disputes involving cybersquatting and domain names.

During the course of the conversation, Gitchel covered a number of topics including the definition of cybersquatting and practical advice for people embroiled in a domain name dispute. In this first installment of IGN's new weekly Q & A, Gitchel explains the governing bodies and laws that are applicable to this particular facet of the Internet.

IGN: What is cybersquatting?

Jeffrey Gitchel: In a simplistic or general form, cybersquatting is the registration of another party's trademark, or a confusingly similar variation of their trademark, as a domain name, with the intent to profit from that mark.

IGN: How did the anti-cybersquatting legislation in the United States and international domain name dispute resolution process come into being?

JG: Cybersquatting was recognized to be a problem by the trademark community, but trademark law wasn't well designed to address it as it stood. The law that courts had stretched and bent in order to address cybersquatting only protected famous marks. And it really wasn't designed to address the issues that were coming up in cybersquatting. The Internet had created a new form of trademark infringement, and trademark law had tried to adapt to it but hadn't done a terribly good job. What happened was that trademark holders were faced with the potential for a long suit, or at least a risky suit, in terms of getting something done, which gave the cybersquatter a lot of leverage to say, "Well you could pay your lawyers a $100,000 to pursue me or pay me $10,000 and be done with it." And the new policy and the law were designed to make it easier for the trademark holder and to conform trademark law to the world as it had come to be.

IGN: And by that you mean the anti-cybersquatting law in the U.S.?

JG: Exactly, that's correct.

IGN: What about the involvement of ICANN?

JG: ICANN created the Uniform Domain Name Dispute Resolution Policy, which is known as the UDRP.

IGN: How did ICANN get its authority?

JG: It's the Internet Corporation for Assigned Names and Numbers--that's what ICANN stands for. ICANN is a non-profit corporation that's in charge of certain aspects of Internet domain name management--most aspects of domain name management. ICANN was created in response to a 1998 white paper issued by the U.S. Department of Commerce.

The history of the Internet is that it was originally developed back in the late 1960s by the U.S. Department of Defense to be a highly redundant communication network that could withstand a devastating attack on the country--potentially a nuclear attack. Eventually the commercial aspects began to predominate. It began to be realized that the Internet had a lot more commercial potential than defense potential, and the U.S. Department of Commerce became the governing body. They took over control and they ultimately entered a contract with one company, basically, to run the domain name parts of the Internet, which is a large portion of the Internet issues. And it was about an eight-year contract, if I remember correctly.

And when that contract came up it was right around 1998-1999. They decided that what they wanted to do was to create competition, so they needed an organization to do that as well as to set policies. They recommended creating a non-profit corporation, and that's what ICANN is. It's designed to develop these issues not based on one company's concerns, but based on public input and public interest.

IGN: If you think you have a cybersquatting claim, why would you choose to use the anti-cybersquatting law as opposed to the UDRP? What is the difference?

JG: The differences between the two are that the UDRP is designed to be very quick and very cheap. Generally decisions come down in about three months. Filing the complaint costs $1,500 plus whatever attorney time you have in developing the complaint. Normally a UDRP case is decided on the complaint and the answer, and that's it. There's no hearing, there's no meeting with the judge, no cross filing of papers, no discovery. Complaint, answer, decision. And you get the decision usually in about three months.

The only remedies that you can get under the UDRP are transfer of the domain name or cancellation of the registration. Under the ACPA, the U.S. anti-cybersquatting law, you can bring suit and seek a preliminary injunction. If successful, you can seek profits and damages. If you can prove that you've been damaged, you can get [damages], and you can get profits, if they have any. Usually those kinds of damages are going to be rather minimal. The ACPA also provides for statutory damages of up to $100,000 without any proof of actual damage. So it has some real teeth.

. . . If you think that you've got someone who is particularly egregious and may have the resources, that's a situation where you would want to go under the ACPA. In addition, if they're engaged in other types of wrongdoing, separate from cybersquatting--if they're actually infringing your mark or they've harmed you in other ways--that's another case where you may want to be in the courts as opposed to private arbitration. But if your main interest is getting the domain name quickly and cheaply, the UDRP may be the best option.

And really you have to take a look at each case on its own, consult with an attorney and make a decision based on business interest and legal analysis.

IGN: Under the UDRP, do you get to choose which conflict resolution service is used?

JG: There are four different arbitration providers. There are some general rules that govern all of them, and then they also create their own supplemental rules. You do have the right to choose whichever one you want of the four.

They charge slightly different fees and they have slightly different rules in terms of the additional filings. My experience has been that they also have slightly different qualities in terms of what they look for in their arbitrators. For example, WIPO (the World Intellectual Property Organization) tends to look for arbitrators that have a very strong background in intellectual property law. Another one, the National Arbitration Forum, has a lot of former judges, so they look for someone with a lot more of a legal and dispute resolution orientation. eResolution is a third, and they are less sympathetic to the trademark holder community; they look for people who have a less trademark or IP-holder centric view of things. And the one that entered most recently is the CPR Institute for Dispute Resolution. They're another well-established arbitration provider.

IGN: Do you have to have a lawyer to resolve a cybersquatting case?

JG: You don't, but I think it's helpful in terms of understanding what issues are involved. There are times when someone may have a domain name that looks bad, but there may not be a cybersquatting issue. For example, someone may have registered the mark Windows.com, and Microsoft could be very upset about that. But if what they're doing is they're actually selling windows over the Internet, there likely is not a cybersquatting issue there. Being able to spot issues like that can be helpful in terms of handling the negotiation in a way that is going to be most beneficial to the client. That's to say if they're really interested in getting the domain name, calling someone a cybersquatter when they're not is not a good first introduction for the parties.

And so at least in terms of analyzing the strategy, an attorney can be useful. Of course in going forward even under the UDRP you can do it by yourself, but attorneys are accustomed to drafting these kinds of things. They're going to have their own ways of doing it that may be more familiar to the reader; the readers are all going to be lawyers and they're all going to have their own sense of what things should look like. That said, there's nothing that requires an attorney to be involved.

Part 2