Q & A: Jeffrey Gitchel, Part 2

In this week's Q & A, IGN continues its discussion about cybersquatting with Jeffery Gitchel, the lawyer who prosecuted and won the first case under the Uniform Domain Name Dispute Resolution Policy (UDRP). The policy is set by the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit group in charge of most aspects of domain name management.

Gitchel is a lawyer in the Pittsburgh office of Kirkpatrick & Lockhart LLP, and he specializes in trademark and copyright litigation. This week he explains the difference between the UDRP and the United States' Anti-Cybersquatting Protection Act (APCA) as well as what issues in cybersquatting are on the horizon.

IGN: What if you try to use the UDRP because you think you have a cybersquatting claim and you don't get the resolution you want, can you go back and use the ACPA?

Jeffery Gitchel: Yes. The UDRP is private arbitration that is nonbinding. It's not subject to the U.S. Federal Arbitration Act, meaning it's not binding on the district court. The district court is free to reconsider the case on its own.

That said, losing at the UDRP is something you don't want to do because it digs the other side's heels in, and really it speaks to why I think attorney involvement can be useful. The UDRP isn't necessarily designed for all cases; it's designed for relatively clear cases. What you want to do is set up a situation where you're the winner, and being able to perform that analysis well is something that an attorney familiar with the law can be helpful in doing.

IGN: Can you briefly explain the in rem (Latin for "against a thing") provision of the ACPA?

JG: Sure. The situation that it is designed to deal with is a situation where you're not able to obtain jurisdiction over a cybersquatter because they're located in another country, or they've given false registration and you just can't find them. You literally just don't know who they are. In those situations you would potentially be stuck with no remedy, short of trying to find this person in some country or trying to hunt them down.

What the in rem provision allows is for you to bring suit against the domain name itself. In those situations you can't obtain the statutory damages or any other damages, you can only obtain transfer of the domain name or cancellation of the registration. So in that way it ends up with similar remedies to the UDRP.

IGN: Does the UDRP have an in rem provision?

JG: The ACPA has both a provision to sue a party, and to sue in rem against the domain name. The UDRP, because it's an online procedure that basically binds the person who registered the domain name, whoever that may be, to the proceeding, doesn't have the need for an in rem provision.

There aren't the same due process concerns under the UDRP, because it's a private, contractual relationship, so you don't need to have service of process on the person when you sue them under the UDRP. That's why the in rem provisions are necessary.

IGN: Do you have to be an American to sue under the ACPA?

JG: No.

IGN: How would you go about doing that if you were, say, a resident of England?

JG: If you were a resident of England who had a mark that had rights in the United States, all you would need is to show that you had rights in the United States that were being violated by the cybersquatter.

IGN: Such as what kind of rights?

JG: If you're an English company but you're selling goods in the United States, that's enough.

IGN: What do you think are the current issues regarding cybersquatting?

JG: I would say that a couple of issues are arising. One is still typo piracy. It's typo piracy now that is the big issue for corporations, and it' s also a place where it forces companies to start making decisions. There's just so many different variations of names that people can go out and try to get, so one issue facing a company is trying to come up with a policy for deciding when it is going to police its mark against a person who has registered a domain name. It's a decision that has to be made based on trademark principles and business practicalities.

Another issue is just recognizing that not every time someone has a similar domain name is cybersquatting going on. There was a case in which Ty Beanie Babies brought suit against Ty.com, the owner of which was a man whose son was named Ty. In those situations you have to recognize what the relative rights are. That's another situation where if you write to a guy and say, "You know, we know you've got Ty.com, and we looked at it, saw that your son's name is Ty, and we think that's great, but we'd like to buy the domain name from you." I think he'd be much more favorably inclined to sell it to you for $1,000 or $2,000. If you pursue them, take them to court and make them pay attorney's fees, and then you try and buy it from them, they're going to want their attorney's fees paid for. Even just placing that threat is going to put them in a more defensive mode, a more adversarial mode. It's a business decision.

In addition, there are new top-level domains coming into existence. A top-level domain is like .com, .net or .org. There are new ones coming in line; the first that are scheduled to be released and available in September are .biz for businesses, which is supposed to be like .com except that they really plan to enforce the commercial aspect only, and .info, which is generic in the sense of what .com has become - available for any purpose. And so you're going to have further issues really regarding business issues - what are we going to protect, what are the trademarks that are important, how far are we going to go. And those are going to be business decisions that I'm sure will be facing companies within the next year.

Part 1