By: Kevin J. Heller
The e-commerce explosion of the late 20th Century has created a rush on Internet domain names. More domain names are being registered, and there are more registrars to do it than ever before. In fact, the Internet may be running out of space. In the most popular top level domain, <.com>, it seems that almost every recognizable word has been claimed. Whereas trademark law permits multiple parties to use the same mark for different classes of goods and services; the current organization of the Internet permits only one use of a domain name, regardless of the goods or services offered. That is, although two or more businesses can own the trademark “Acme,” only one business can operate on the Internet with the domain name “acme.com.” Such a limitation conflicts with trademark principles and hinders the use the Internet by businesses.
Proposed solutions to this problem run from creating a directory system to adding new top-level domains. In both cases, however, the rights of trademark owners are at stake. A trademark is a valuable business asset, so a typical owner is not likely to want to share that name with others. Although additional new top-level domains may solve the space problem, it would only increase trademark owners’ current costs in policing their marks. While a company like “acme” might benefit from additional top level domains in which to register, Microsoft would be required to register its mark in all of the new domains for the purpose of preventing registration of their trademark by a cybersquatter.
A cybersquatter is a person who registers “well-known brand names as Internet domain names in order to extract payment from the rightful owners of the marks, who find their trademarks “locked up” and are forced to pay for the right to engage in electronic commerce under their own brand name.” Prior to the privatization of the Internet in 1999, trademark owners faced with such a situation relied on traditional trademark infringement or dilution provisions. Additionally, Network Solutions, Inc. (“NSI”) had set up a dispute policy for handling domain name complaints. However, this policy consisted mainly of putting the domain name on hold until the parties settled their dispute, either independently or through litigation.
As a result of the uncertainty and complexity caused by NSI’s policy and as a “means to resolv[e] many of the policy issues raised by the [domain name system (“DNS”)], the [U.S.] government decided  to privatize the management of Internet names and addresses.” This privatization led to the creation of an international body, the Internet Corporation for Assigned Names and Numbers (“ICANN”), “to facilitate the coordination and management of [the Internet’s] technical managerial and policy development tasks.” In October 1999, ICANN, working in conjunction with the international community – with the World Intellectual Property Organization – drafted and adopted the Uniform Domain Name Dispute Resolution Policy (“UDRP”) for resolving domain name disputes.
Then, on November 29, 1999, the U.S. Government enacted the Anticybersquatting Consumer Protection Act (“ACPA”). However, unlike the UDRP, several provisions of the ACPA were intended to strike fear into the hearts of cybersquatters and small business owners alike. This act equipped lawyers and corporations with a powerful weapon in battling domain name cybersquatting. Trademark owners now had two mechanisms for resolving such disputes.
This article will examine how the UDRP and the ACPA are implemented to enjoin the use of trademarks and service marks as Internet domain names in the United States and throughout the world. Part I of this paper provides background information regarding ICANN and its role in Internet domain name governance and an analysis of the UDRP. Part II will discuss the background of the ACPA, how it has expanded prior trademark law, and how it is currently applied. Finally, Part III will discuss the pros and cons of the UDRP and the ACPA, with regard to jurisdictional issues and the five distinct fact situations which raise trademark issues involving the Internet domain name system (“DNS”). Recommendations and strategies for both cybersquatters and trademark owners will also be suggested in order for them to use these mechanisms to their own advantage.
I. DISPUTE RESOLUTION UNDER ICANN
On July 1, 1997, President William Jefferson Clinton “directed the Secretary of Commerce to privatize the management of the domain name system in a manner that increases competition and facilitates international participation in its management.” In the spirit of participation, the National Telecommunications and Information Administration published a Green Paper requesting public comment on such issues as DNS management, privatization and facilitation of global participation. The National Telecommunications and Information Administration then issued a White Paper which reported the comments submitted in response to the Green Paper proposals and better “reflected the established norms and customs of the Internet.” This Paper indicated that there was clear support for the creation of a new private sector not-for-profit corporation to manage the DNS. Its main task would be to facilitate Internet coordination and management, and it would be committed to the following four principles of Internet Governance: 1) the stable transfer of management functions so as not to disrupt current operations; 2) decentralized management so as to foster innovation and optimize competition; 3) governance which should reflect the same type of governance that has characterized development of the Internet to date; and 4) representation of the global and diverse interests of the Internet community.
The White Paper also reported on the use of trademarks as domain names. It found that commentators “favored creation of an on-line dispute resolution mechanism to provide inexpensive and efficient alternatives to litigation for resolving disputes between trademark owners and domain name registrants.” However, the international community protested the idea of having jurisdiction bound up with registration. Nevertheless, the U.S. Government’s position was that with the support of the World Intellectual Property Organization (“WIPO”), a balance could be struck between the rights of trademark holders and those non-trademark holders in the Internet community.
Upon this request by the U.S. Government and with the approval of its member states, WIPO undertook the responsibility of preparing a report that would make recommendations on how to manage the domain name system with these competing interests in mind. On April 30, 1999, WIPO published its “Final Report of the WIPO Internet Domain Name Process.” The “Final Report” discovered that as a result of a number of special characteristics particular to domain disputes (i.e., the global presence of a domain name, urgency of resolution, the economic disparity between registering a domain name and economic damage that could result, and the expenses incurred by trademark holders in policing their marks with regard to domain names), an expeditious and inexpensive dispute resolution procedure should be developed. The “Final Report” then recommends that ICANN develop a mandatory uniform administrative dispute-resolution procedure.
Prior to WIPO’s “Final Report,” the United States government had already designated ICANN to serve as the global consensus entity to which the U.S. government would transfer the responsibility of coordinating the four key functions for the Internet. These four key functions are: 1) Internet protocol address space allocation;2) protocol parameter assignment; 3) domain name system management; and 4) root server system management functions. On November 5, 1998 the United States Department of Commerce entered into the “Memorandum of Understanding” with ICANN, under which management of the DNS was to be transferred to ICANN. Subsequently, a transitional period would ensure that ICANN and the Department of Commerce would work jointly to carry out the formerly enumerated DNS management functions.
The DNS is important because it “controls the way in which each component of the Internet identifies and communicates with one another” by translating domain names into “Internet Protocol addresses that have been assigned to specific computers.” Simply put, domain names are substituted for Internet Protocol addresses, such as “22.214.171.124”, since they are “easy-to-remember, human-friendly names like .” As a result, “Internet domain names are of great importance, since… domain names can often be guessed [a] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.” Consequently, [w]hen a trademark is used as a domain name without the trademark owner’s consent, consumers may be misled about the source of the product or service offered… [f]or cyberspace as an effective commercial market, businesses must have confidence that their trademarks can be protected… [but] management of the Internet must [also] respond to the needs of the Internet community as a whole, and not trademark owners exclusively.
It is against this backdrop that the UDRP was drafted.
B. Dispute Resolution Policy and Rules
ICANN adopted and approved the UDRP and Rules for Uniform Domain Name Dispute Resolution (“Rules”) on October 24, 1999. The main purposes of the UDRP are to prevent the use of registered trademarks as domain names by anyone other than the designated trademark owner and to prohibit cybersquatting. Additionally, the UDRP took a major step forward over the former NSI policy, by extending protection to non-identical trademarks.
Under the UDRP, jurisdiction is contractual. The UDRP is incorporated into every domain name Registration Agreement. By registering a domain name with any accredited registrar, if any third party alleges cybersquatting, respondent subjects himself to the UDRP’s mandatory administrative procedure which is in procedural compliance with the Rules. The proceeding is then conducted before an administrative panel provided by the dispute resolution service provider. The sole evidence provided to the panel by the parties are the complaint and response. However, the Panel in its sole discretion may request any additional documentation or conduct an in-person hearing in an exceptional case.
It is important to note that complainants have not exhausted their remedies by first seeking this procedure, since principles of res judicata do not apply and complainants are free to commence action in court if the outcome is unfavorable. However, this option is also open to respondent, who can avoid implementation of a transfer or cancellation of the domain name by commencing a lawsuit against the complainant within ten business days following such a decision. Despite the fact that the UDRP decision is not binding in the above instances, a transfer or cancellation will occur if respondent fails to commence a lawsuit within the ten day period.
Another possible disadvantage for complainant is that in order to file for a mandatory administrative procedure under the UDRP, the complainant must submit, upon resolution, “to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.” Therefore, upon a favorable outcome for complainant, respondent could file suit against complainant in the courts of any country where the respondent is located.
Once the mandatory administrative proceeding has been initiated, the burden is on the complainant to show that (i) the registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect to the domain name; and (iii) the respondent’s domain name has been registered and is being used in bad faith. If the panel ultimately concludes that the complainant has met her burden and the registrant has not shown a contrary legitimate interest, then the registrar “will cancel, transfer or otherwise make changes to the domain name registrations.”
The panelist(s) must first determine if the domain name registered by respondent is identical or confusingly similar to a (trade or service) mark in which the complainant has rights. Normally, the complaint will provide proof of registration in order to evidence their legitimate trademark rights. However, in Tourism and Corporate Automation Ltd. v. TSI Ltd. the panelist found “that thirteen years of continuous use of the term shows that the complainant does in fact have interests or rights in the name ‘TourPlan’,” where complainant did not provide any trademark registrations in the disputed domain name. In determining whether the mark is identical or confusingly similar, panelists will ignore the , <.com>, and apostrophes and simply compare the marks as they would in any other trademark case.
Next, the panelist(s) must determine whether the respondent has any rights or legitimate interests in the registered domainname. The UDRP states that
[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) 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.
In a recent case, the company claimed (and the court found) that a legitimate ownership interest in the domain name existed where the respondent’s business model was to arbitrage domain names. Normally, however, respondent will need to show longstanding use the existence of trademark registration to prove a legitimate interest.
Finally, the panelist(s) must find that the domain name was registered and used in bad faith. Paragraph 4(b) of the UDRP provides a non-exclusive list of circumstances under which bad faith registration and usage will be presumed. The first situation is where respondent has attempted to arbitrage the mark (i.e. offer it for sale to the complainant). The second is initial interest confusion. The third is where the domain name has been registered to disrupt the services of a competitor.
Bad faith can be evidenced by use where the respondent has intentionally attempted to attract Internet users by creating a likelihood of confusion for commercial gain to their website. In theTelstra decision the panel held that mere registration, i.e., inactivity, could amount to use where a famous mark was involved and respondent did not provide accurate contact information. The list does not specifically mention warehousing, but the Telstra panel determined that the nonexclusive list of factors provided by the UDRP could encompass it.
II. ANTICYBERSQUATTING CONSUMER PROTECTION ACT
In 1995, when Congress enacted the Federal Trademark Dilution Act (“FTDA”) cybersquatting cases were not even a blip on the judicial radar. Aware of the shortcomings of the FTDA and traditional infringement actions in the resolution of cybersquatting claims, Congress amended the Lanham Act to include the Anticybersquatting Consumer Protection Act on November 29, 1999. This bill was enacted under heavy pressure from the movie industry because celebrity names were being registered by cybersquatters and then offered for sale to the celebrity at amounts much higher than the cost to register with NSI (USD $70 per year). Members of Congress, worried about similar types of problems concerning their own names, were quick to enact this legislation. However, the enactment was prior to ICANN even being afforded the opportunity to test the UDRP.
With the enactment of the ACPA, Congress extended protection to trademark holders that reached beyond the protection provided by a traditional infringement action or by the FTDA. Traditional trademark infringement actions require not only that the mark be distinctive and that it be used in commerce, but also that there is a likelihood of confusion with the holder’s mark. Alternatively, the FTDA gave to the holders of famous and distinctive trademarks even greater protection than they would receive under the more traditional infringement claim, since proof of likelihood of confusion was no longer required. This protection amounted to a property right in gross for holders of famous trademarks.
In Nabisco v. PF Brands, Judge Leval stated that the FTDA establishes
five necessary elements to a claim of dilution: (1) the senior mark must be famous;(2) it must be distinctive; (3) the junior use must be a commercial use in commerce; (4) it must begin after the senior mark has become famous; and (5) it must cause dilution of the distinctive quality of the senior mark.
In contrast, under the ACPA it is not necessary that the registrant’s use be commercial, nor that the mark be both famous and distinctive. It must merely be either distinctive or famous, while extending protection to non-trademarked personal names.
Under the ACPA, a court must first determine if the Act applies to the case at hand, and must then undertake an element-by-element analysis of the statute. The ACPA, §1125(d), establishes three necessary elements that justify protection of plaintiff’s trademark: (1) that the defendant registered a confusingly similar domain name if the mark is famous or a likelihood of confusion if the mark is merely distinctive; (2) that plaintiff’s mark is either distinctive or famous; and (3) that the defendant acted within the statutory definition of a “bad faith intent to profit.”
In order to extend trademark protection to the Internet, Congress first sought to make actionable any registration where bad faith intent to profit was present. To do this, Congress eliminated the commercial use requirement, since in many instances it hindered recovery of domain names. In Panavision Int’l, L.P. v. Toeppen, the defendant argued “that his use of Panavision’s trademarks simply as his domain names [could not] constitute a commercial use under [FTDA]” and case law supported his argument. Under FTDA case law, mere registration is insufficient to constitute commercial use. In Toeppen, the 9th Circuit ultimately held that defendant’s registration constituted commercial use because he attempted to traffic the Panavision.com domain name to Panavision: “Toeppen’s commercial use was his attempt to sell the trademarks themselves.”
Congress followed the 9th Circuit’s lead when it enacted the ACPA, making mere registration actionable only where bad faith is also present. However, in order to cast a broader net over cybersquatting, Congress also expanded the definition of bad faith beyond that of an offer to sell or arbitrage trademarks; § 1125(d)(1)(B)(i) sets out a list of nine non-exclusive factors for determining bad faith. This was in part due to an
increasingly common cybersquatting practice known as “warehousing”, in which a cybersquatter registers multiple domain names—sometimes hundreds, even thousands—that mirror the trademarks of others. By sitting on these marks and not making the first move to offer to sell them to the mark owner, these cybersquatters have been largely successful in evading the case law developed under the Federal Trademark Dilution Act.
By eliminating the commercial use requirement and by defining bad faith, it was clear that Congress intended that the ACPA apply to cybersquatting cases. However, in doing so, Congress was also regulating the noncommercial use of trademarks, in other words, trademarks for their non-trademark value.
Next, by requiring that the mark be distinctive or famous, Congress, under the ACPA, was again extending trademark protection beyond that of the protection available under either the FTDA or the traditional infringement claims. In Nabisco v. PF Brands, Judge Leval framed the issue as follows:
[F]ame and distinctiveness are altogether different considerations. A mark can be famous without being at all distinctive, as in the cases of American Airlines, American Tobacco Company, British Airways, Federated Department Stores, Allied Stores or the First National Bank of whatever. At the same time a mark can be highly distinctive, meaning arbitrary and fanciful, and yet be completely unknown.
Thus in order to avoid this application to famous marks, Congress, in enacting the ACPA, dropped the dual requirement that the mark be both famous and distinctive.
Finally, the ACPA eases the jurisdictional burden by adding an in rem provision in which the complainant is afforded injunctive relief. Congress provided an in rem provision which allows the owner of the mark to seek forfeiture or cancellation of the domain name. The trademark owner must show that she was either “not able to obtain in personam jurisdiction,” or after exercising due diligence was not able to find such person. This in turn, subjects the alleged cybersquatter to jurisdiction in a “judicial district in which the domain name registrar, domain name registry, or other domain authority that registered or assigned the domain name” is located. Congress felt that this provision was necessary in order to alleviate a “significant problem [where] cybersquatters register domain names under aliases or otherwise provide false information in their registration applications in order to avoid identification and service of process by the mark owner.” However, Congress also limited relief to an injunction ordering the forfeiture, cancellation, or transfer of the domain name – statutory damages cannot be awarded.
In order to invoke the in rem provision of the ACPA, a complaint is required to plead that personal jurisdiction was unattainable. A due process analysis as to whether in rem or personal jurisdiction is appropriate will probably also be required. While the UDRP can be performed completely electronically, the ACPA will require the parties to travel to the situs of the registration. This will be difficult if the domain name is registered in a distant locale such as with Melbourne IT, an Australian Registry, or if the cybersquatters actually reside there.
In this situation, unless complainant is seeking statutory damages, the UDRP is preferable. InQuokka Sports v. Cup Int’l Ltd.,  the court engages in a lengthy discussion to determine if the defendants, also located in Australia, meet the requirements of personal jurisdiction under the California long arm statute. Although there is no case on point, it is unlikely that a complainant could invoke the in rem component of the ACPA extraterritoriality, where that registrar is outside the jurisdiction of the United States. Under the UDRP the panelist must determine whether the respondent has agreed to the terms of the Registration Agreement, which is provided by the registrar.
Ultimately, the UDRP and the ACPA affect how five types of domain name disputes, normally arising under trademark law, are to be decided. These five types of disputes are: 1) cybersquatting; 2) typo-squatting; 3) competing legitimate users; 4) reverse domain name hijacking; and 5) those situations where neither party has trademark rights to a famous or distinctive mark. A major concern for every trademark owner will be determining which of the two policies provides better protection under the circumstances. To determine how the major provisions of these two mechanisms for resolving domain name conflicts differ in their application to the five disputes, in light of the relevant case law, it is necessary to evaluate which is more appropriate with regard to the particular dispute.
In the first type of dispute, where a clear case of cybersquatting exists, both the ACPA and the UDRP are helpful. However, the ACPA is better for cases that require discovery that have complicated facts. Additionally, the ACPA is better utilized where clients “need an immediate injunction or if they ha[ve] a real shot at compensatory damages.” In certain cases, where the trademark holder needs immediate relief, a preliminary injunction would halt the cybersquatter from using the domain name as a website. The trademark holder can then proceed by initiating an ICANN proceeding or a litigation.
If, however, the trademark holder can easily show bad faith registration on the part of the registrant, then the ICANN process is preferable. UDRP disputes are generally resolved within 60 days and are more efficient than going to court. They cost approximately $2,000 to $3,000 compared to a minimum cost of about $10,000 to $15,000 for resolving “even the simplest of cases in federal civil court, which can take years to resolve.”
The second type of dispute is a variation of cybersquatting that is known as typo-squatting. It is similar to tarnishment, a traditional dilution action, where a registrant uses a mark similar to the trademark holder’s which “presents a danger that consumers will form unfavorable associations with the mark.” Because the registrant is not looking to sell the domain name, typo-squatting generally occurs when a registrant uses the trademark or a misspelled variation of the trademark to transport the unsuspecting web-surfer to either a competing website or pornographic website, or to interfere with the business of competitors by denying them access to their domain names.
In these cases, it is not necessary for plaintiffs to proceed to trial, since they are not looking to recover the domain name, but rather to cancel the typo-squatter’s registration. The advantage of the ACPA over the UDRP is the availability of a temporary restraining order or an injunction that moves the mark quickly out of the hands of the alleged cybersquatter. The temporary restraining order or injunction is necessary since the UDRP no longer puts domain names on hold during the pendancy of the proceeding.
C. Competing Legitimate Use
In the third type of domain name dispute, two legitimate users (non-related goods and services) are competing for use of the same domain name. In this case the creation of a “legal rule to govern domain names is far more complicated than one might imagine from the cybersquatter cases alone.” Both the UDRP at Paragraph 4(c) and the ACPA 1125 (d)(1)(B)(i) allow registrants to show that their rights to the mark are legitimate; therefore it is unlikely that either participant could succeed on a claim. Where the registrant’s use of the domain name is legitimate, as it is here, the majority of these cases have been decided on a first come, first served basis. Thus, the first party to register keeps the domain name.
D. Reverse Domain-Name Hijacking
Domain name hijacking, the fourth type of dispute, is a variation of legitimate use disputes. Reverse domain name hijacking is defined as “using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In this type of domain name dispute, a rights holder will allege that the registrant is infringing on his use of the mark – when the registrant has equal rights to the mark – in order to claim the mark for himself.
Although the legislative history of the ACPA suggests that the amendment is “to extend only to cases where the plaintiff can demonstrate that the defendant registered, trafficked in, or used the offending domain name with bad-faith intent to profit,” the ACPA can be used in two ways to hijack domain names.
First, it is more likely than not that a simple cease and desist letter, indicating the maximum award of $100,000 under the ACPA, will suffice to allow large commercial enterprises to reverse domain name hijack from innocent registrants. These registrants would be more fearful of the immense costs of litigation and risk of statutory damages than the satisfaction or reward in owning the domain name.
A second way is by use of the preliminary injunction, even where the case may not be successful on the merits. In the case of etoys v. Etoy, etoys, the now bankrupt toy seller, was a subsequent user of the confusingly similar trademark, yet sought to prohibit Etoy’s, an artist group, use of etoy as a domain name. “On Nov. 29,  a Los Angeles Superior Court judge issued a preliminary injunction against etoy, threatening the artists with fines of as much as $10,000 a day unless they stopped using the www.etoy.com address.”
The UDRP, on the other hand, has added Paragraph 4(c), which allows registrants to show that their rights to the mark are legitimate if a complainant asserts otherwise (without being subject to a preliminary injunction or statutory damages). This is a major alteration of the Model Domain Name Dispute Resolution Policy for Voluntary Adoption by Registrars and previous NSI Policy, since a major criticism of these policies was their pro-corporation bias.
ICANN’s UDRP is more in line with recent U.S. decisions favoring noncommercial registrants, whereas previous policies placed a greater burden on the innocent and legitimate competing rights holders in cases of reverse domain name hijacking. The absence of such a provision, i.e., allowing registrants to show that they have legitimate rights to the mark, would have been problematic.This is so the cost of the UDRP proceeding is minimal for the complainant to allege cybersquatting, but thereafter requires the registrant to litigate the case in civil court to regain the disputed domain name – which might not be as affordable for most non-commercial users.
Finally, in choosing the UDRP proceeding over the ACPA, some complainants may need to consider who is registering the disputed domain name. An interesting note to the WWF case is that the World Wrestling Federation “acknowledged that it could have proceeded to litigation under [ACPA], but elected not to … [because it] sought to protect [its] intellectual property interests while preserving the relationship [with] its fans at a minimal cost to all concerned.”
E. Lacking Trademark Rights
In the fifth type of domain name dispute, neither party has rights to the trademark, because it is either generic or descriptive and thus lacks contestability. While the UDRP proceeding is available to anyone with trademark rights, the ACPA does not purport to resolve such conflicts. Any type of policy-making in this area may be even more difficult on an international scale, where the definitions of fame may vary.
In the end, the UDRP and ACPA will alleviate disputes in the clearest cases of cybersquatting, typo-squatting, and reverse domain name hijacking. However, increasingly more complicated are those cases which involve the rights of noncommercial and legitimate competing rights holders. Since neither the UDRP nor the ACPA is particularly helpful here, the courts will either have to apply well-established trademark law or alternatively, a modification of existing practices with regard to registration in the restricted top-level domains will have to be developed.
As e-commerce continues to proliferate, trademark holders will require greater protection. However, the extension of ever-greater protection must be carefully balanced with the rights of individual citizens in securing space on the web. Also, as the law changes and further clamps down on established practices, the ingenuity of the cybersquatter and/or entrepreneur will evolve to circumvent these laws. The new wave of cybersquatters is already registering generic and multi-lingual domain names to resell at substantial sums.
Rather than waiting for lawmakers to attempt to keep pace, trademark holders should rely on their attorneys to give them prospective advice when forming a corporation, so as to minimize conflict. For example, an attorney working with a start-up corporation should advise management that before selecting a name and incorporating, they will need to perform a trademark search not only in the PTO registry, but also on the Internet, in each of the gTLD’s, with multilingual characters (if operating in foreign markets), along with a host of other requirements. This will be necessary for avoiding disputes with and/or making substantial payments to co-existing legitimate rights domain name holders. Ultimately, it will be up to the vigilant trademark lawyer to institute preventative care, in order to stem the tide of infringement and dilution spawned by the ever more clever cybersquatter.
 The Internet, short for interconnected networks, is a vast system of interconnected computers and computer networks. Seegenerally Reno v. ACLU, 521 U.S. 844, 849-53 (1997); See also 47 U.S.C. 230(f)(1) (2000) (definition) (“The term ‘Internet’ means the international computer network of both Federal and non-Federal interoperable packet switched networks.”).
 Thecybersquattershandbook.com is an example of a domain name.
 The total number of domain names registered worldwide is 35,036,815. Statistics are from Netnames Ltd., at http://www.netnames.com (last updated March 24, 2001). The approximate weekly volume of new registrations is 21,000. A current list of ICANN accredited registrars can be found at http://www.icann.org/registrars/accreditation-qualified-list.html.
 See The Internet Is Running Out of Addresses, The Economist, Mar. 04, 2000, (The Internet) [hereinafter Running Out].
 There are at present, seven generic top level domain names (“gTLDs”), three of which are open: .com, .net and .org. The other four gTLDs are restricted to use by international organizations: .edu, which is restricted to use by four-year, degree-granting colleges and universities; .gov, which is restricted to use by agencies of the federal government of the United States of America; and. mil, which is restricted to use by the military of the United States ofAmerica. Final Report of the WIPO Internet Domain Name Process, Chapter 1 Par. 6, Publication No. 92-805-0779-6 (April 30, 1999), at http://wipo2.wipo.int/process1/report/finalreport.html [hereinafter Final Report]. The three open gTLDs have lost the value once assigned to them, i.e., for uses by commercial entities, networks and non-profit organization since NSI allowed people to register in any of the three gTLDs without regard to criteria.
 Panavision v. Toeppen, 945 F. Supp. 1296, 1302 (C.D. Cal. 1996).
 Todd W. Krieger, Internet Domain Names and Trademarks: Strategies for Protecting Brand Names in Cyberspace, 32 Suffolk U. L. Rev. 47 (1998). “For example, with a telephone directory type system, a consumer looking for United Airline’s domain name could type in “United,” find an alphabetical listing, and link to United’s site.” Id. at 67. See e.g., http://www.disc.com; http://www.lloyds.io. Another example is RealNames who “markets a technology for using common words instead of URLs to navigate the Web,” which could cause the “current domain-name system of URLs [to] become invisible to surfers, buried beneath a more user-friendly layer of common name addresses. When someone types a keyword or phrase into the browser address field of Internet Explorer, the request is routed through a RealNames server database and then directly to the URL linked to that keyword.” RealNames’ Mission: Simple Words to Surf the Web The Industry Standard, May 3, 2000. Subsequently on March 12, 2001 RealNames “announced the activation of [its] Keyword Registries in 244 countries, mirroring the reach of the Domain Name System (DNS)” at http://web.realnames.com/Virtual.asp?page=Eng_Corporate_PressRelease_031201.
 ICANN has just approved seven new TLD’s for registration of domain names. See ICANN New TLD Program, at http://www.icann.org/tlds/.
 See Krieger, supra note 8, at 67 n. 138.
 See Running Out, supra note 4.
 S.REP. NO. 106-140 (1999) [hereinafter ACPA Leg. Hist.].
 This means privatized in the sense that the Internet will no longer be managed and funded by the US government, but instead by a non-profit corporation vested with the authority to govern and manage the Internet. See ICANN Fact Sheet http://www.icann.org/general/fact-sheet.htm [hereinafter Fact Sheet].
 These provisions included, a) likelihood of confusion under the Lanham Act of 1946, 15 U.S.C. 114(1), b) dilution under the Federal Trademark Dilution Act of 1995, 15 U.S.C. 1125(c), and c) unfair competition under the Lanham Act, 15 U.S.C. 1125(a).
 At one time nearly all Internet domain names were administered by NSI, who in 1993 was awarded a five-year exclusive contract from the National Science Foundation to register domain names after Congress, in 1992, requested that the National Science Foundation “outsource domain name management to the private sector.” Harvard Law Review, Development: V. The Domain Name System: A Case Study of the Significance of Norms to Internet Governance, 112 Harv. L. Rev. 1657, 1662 (1999) [hereinafter Harvard Law Review, Development]. NSI now has “more than 12 million paid registrations…and [has] one of the largest business subscriber bases on the Internet.” Seehttp://www.saic.com/about/companies/verisign.html.
 See Network Solutions, Inc., NSI (Nov. 23, 1995), no longer available at ftp://rs.internic.net/policy/internic/internic-domain-4.txt. NSI also allowed claimants to submit to arbitration. Additionally, a “very telling change in this revision was the excision of the work “resolution” from the title of the policy: 1. The policy name does not include the word ‘Resolution’, as the policy relates to Domain Name disputes, not the resolution of them.” Kenneth Sutherlin Dueker, Note, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, 9 Harv J. L. & Tech. 483, fn. 116 (1996) [hereinafter Dueker, Cyberspace].
 See Domain Names (last updated Mar. 5, 2000) http://eon.law.harvard.edu/property/domain/main.html.
 See test at fn. 50-51.
 Sharie Mendrey, Internet Corporation for Assigned Names and Numbers (ICANN) (paper produced Dec. 10, 1998) http://cyber.law.harvard.edu/property/domain/icann2.html. See infra, Part 1. A for a discussion on how the Internet was privatized.
 ICANN “is the non-profit corporation that was formed to assume responsibility for the IP address space allocation, protocol parameter assignment, domain name system management, and root server system management functions previously performed under U.S. Government contract by IANA and other entities.” ICANN, About ICANN, at http://www.icann.org/general/abouticann.htm.
 See Fact Sheet.
 Uniform Domain Name Dispute Resolution Policy http://www.icann.org/udrp/udrp-policy-24oct99/htm [hereinafter UDRP]. See , Part I. B for a detailed discussion of ICANN’s UDRP and accompanying Rules, which help to explain the UDRP.
 The Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. 1125(d), 1127 [hereinafter ACPA].
 See Part III for a discussion of the differences between the ACPA and the UDRP.
 However, the ACPA may violate due process, first amendment rights, and conflict of laws principles.See e.g., PG Media, Inc. v. Network Solutions, Inc., 51 F. Supp. 2d 389, 407-08 (S.D.N.Y. 1999) aff’d by Name. Space, Inc. v. Network Solutions, Inc., infra note 44, (adopting an analogy between Internet alphanumeric addresses and telephone number mnemonics such as 1-800-FLOWERS, the district court held that domain names did not constitute expressive speech, so were therefore not entitled to constitutional protection).
 ICANN, Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute-Resolution Policy, at http://www.icann.org/udrp/udrp-schedule.htm. This timeline identifies the major events that led to the implementation of the UDRP, as the mechanism for resolving Internet domain name disputes.
 Management of Internet Names and Addresses, 63 Fed. Reg. 31741, 31741 (1998), infra note 32, also available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm. This was done as part of the administration’s Framework for Global Electronic Commerce, which called for the privatization of the Internet in order to promote and expand global electronic commerce. See also A.M. Rutkowski,Internet DNS Historical Timeline (last updated Sept. 20, 1997) http://www.wia.org/dns-law/pub/timeline.html for a historical timeline of the Internet domain name system.
 A Proposal to Improve the Technical Management of Internet Names and Addresses, 63 FR 8826 (1998) [hereinafter Management of Internet Names and Addresses].
 Management of Internet Names and Addresses.
 Harvard Law Review, Development, supra note 16, at 1667.
 Management of Internet Names and Addresses at 31744-31745.
 See id at 31749.
 See id at 31746.
 See id at 31746. It seems that President Clinton, in his Framework for Global Electronic Commerce,promoted the use of alternative dispute resolution to avoid problems concerning the international application so as to facilitate global electronic commerce. See Framework for Global Electronic Commerce, http://www.ecommerce.gov/framewrk.htm (1997). NSI in its 1995 Domain Dispute Resolution Policy Statement, at Sec. 5., stated that “NSI will obey any order issued by an arbitrator…” One of the earliest domain name disputes, which occurred between Kaplan and the Princeton Review, resorted to arbitration. See note 82.
 But see UDRP, at Par. 1: “this Uniform Domain Name Dispute Resolution Policy … is incorporated by reference into your [domain name] Registration Agreement.” Regardless of the protest, it is obviously more agreeable to allow for jurisdiction over the domain name through an alternative dispute resolution procedure than to be subject to personal jurisdiction and to be required to submit to the laws of a national court based on where the root server or your registrar may be located.
 WIPO “is an international organization dedicated to promoting the use and protection of works of the human spirit…. WIPO is one of the 16 specialized agencies of the United Nations system of organizations. It administers 21 international treaties dealing with different aspects of intellectual property protection. The Organization counts 175 nations as member states…. As a Specialized Agency of the United Nations whose mandate is to promote the protection of intellectual property worldwide, WIPO administers some 21 treaties in the field of intellectual property.” About WIPO (last visited Mar. 25, 2001).
 Management of Internet Names and Addresses at 31746.
 See Final Report, supra note 5, at Executive Summary.
 Id. at Chapter 3, Par. 133.
 Id. at Executive Summary.
 See Fact Sheet, supra note 14. These functions were all once performed under U.S. Government contract by the Internet Assigned Numbers Authority and other entities. Id. Prior to this designation, ICANN incorporated as a non-profit public benefit corporation under the laws of the state of California. Specifically, ICANN has stated that it “shall operate for the benefit of the Internet community as a whole, carrying out its activities in conformity with relevant principles of international law and applicable international conventions and … through open and transparent processes that enable competition and open entry in Internet-related
markets.” Articles of Incorporation of Internet Corporation for Assigned Names and Numbers Par. 4 (As Revised November 21, 1998) http://www.icann.org/general/articles.htm.
”An IP address is a string of four sets of numbers, separated by periods, such as “126.96.36.199,” and every host or computer on the Internet is assigned such a numerical IP address.” Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 2000 U.S. App. LEXIS 770*3 (citing Management of Internet Names and Addresses at 31741). “Computers on the Internet use IP addresses to route traffic and establish connections among themselves.” ICANN Glossary of Terms and Abbreviationshttp://www.ICANN.org/general/glossary.htm [hereinafter Glossary of Terms].
”The Internet protocol suite…contains many technical parameters, including protocol numbers, port numbers, autonomous system numbers, management information base object identifiers and others. The common use of these protocols by the Internet community requires that the particular values used in these fields be assigned uniquely.” Management of Internet Names and Addresses at 31741.
 “The domain name space is constructed as a hierarchy. It is divided into top level domains, with each top level domain then divided into second level domains, and so on.” Id.
 “The root server system…contains authoritative databases listing all TLDs… Universal name consistency on the Internet cannot be guaranteed without a set of authoritative and consistent roots. Without such consistency, messages could not be routed with any certainty to the intended addresses.”Id. Additionally, the root-zone file directs an “address query to the proper TLD zone file…[this] directs the address query to SLD zone files, which contain listings of all SLDs and corresponding IP numbers under the TLD… [this] direct[s] the query to lower level[s] of the DNS, until the address query is fully resolved.” Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 577 (2nd Cir. 2000). “NSI currently maintains the master root-zone server, and was the sole registrar for new domain names under the .com, .org, .net, .edu, and .gov.” Id. at *6-7. “NSI has performed these functions since 1993, pursuant to Cooperative Agreement No. NCR-9218742, awarded by NSF…pursuant to the National Science Foundation Act, 42 U.S.C. 1861 et seq., and the Federal Grant and Cooperative Agreement Act, 31 U.S.C. 6301 et seq.” Id.
 Memorandum of Understanding Between the U.S. Department of Commerce and Internet Corporation for Assigned Names and Numbers (1998) [hereinafter The Memorandum]. The DOC’s authority to vest this power over the DNS is derived from:
(1) 15 U.S.C. 1525, the DOC’s Joint Project Authority, which provides that the DOC may enter into joint projects with nonprofit, research, or public organizations on matters of mutual interest, the cost of which is equitably apportioned; (2) 15 U.S.C. 1512, the DOC’s authority to foster, promote, and develop foreign and domestic commerce; (3) 47 U.S.C. 902, which specifically authorizes the National Telecommunications and Information Administration (NTIA) to coordinate the telecommunications activities of the Executive Branch and assist in the formulation of policies and standards for those activities including, but not limited to, considerations of interoperability, privacy, security, spectrum use, and emergency readiness; (4) Presidential Memorandum on Electronic Commerce, 33 Weekly Comp. Presidential Documents 1006 (July 1, 1997), which directs the Secretary of Commerce to transition DNS management to the private sector; and (5) Statement of Policy, Management of Internet Names and Addresses. Id.
In order to grant authority to ICANN, the DOC also entered into a Memorandum of Agreement with the National Science Foundation (“NSF”) on September 8, 1998, pursuant to which NSF transferred responsibility for administering its Cooperative Agreement with NSI to the Commerce Department. SeeName.Space, 202 F.3d at 579. See also PGMedia, Inc. v. Network Solutions, Inc., 51 F. Supp. 2d 389 (S.D.N.Y. 1999) (finding that defendant government foundation, National Science Foundation, had authority to enter into cooperative agreement with NSI to perform the functions necessary to maintain the DNS).
 The Memorandum, supra note 48. This transition was scheduled to be completed by September of 2000. See Fact Sheet, supra note 14. Through an additional series of agreements, signed on November 10, 1999 by NSI, the DOC and ICANN, NSI recognized ICANN and NSI and the policies established by ICANN in accordance with the terms of that agreement.” Approved Agreement among ICANN, the U.S. Department of Commerce, and Network Solutions, Inc. (Nov. 10, 1999) <http://www.ICANN.org/nsi/nsi-agreements.htm>. These agreements are the NSI/ICANN Registry Agreement, Revised Registrar Accreditation Agreement (between ICANN and registrars), ICANN/NSI Registrar Transition Agreement (between ICANN and NSI regarding transition from legacy registration business), Revised Registrar License and Agreement (between NSI and registrars), and Amendment 19 to the DOC/NSI Cooperative Agreement, Amendment 1 to the DOC/ICANN Memorandum of Understanding. Fact Sheet on Tentative Agreements among ICANN, the U.S. Department of Commerce, and Network Solutions, Inc. (Posted September 28, 1999) <http://www.icann.org/nsi/factsheet.htm [hereinafter Tentative Agreements].
 Name.Space, 202 F.3d at 576.
 ICANN Glossary of Terms and Abbreviations, supra note 44.
 Hearst v. Goldberger, 1997 U.S. Dist. LEXIS 2065 *7-8 (S.D.N.Y. 1997).
 Management of Internet Names and Addresses, at 31746.
 Rules for Uniform Domain Name Dispute Resolution Policy (posted October 24, 1999) http://www.icann.org/udrp/udrp-rules-24oct99.htm [hereinafter Rules]. The UDRP is followed and adopted by all registrars and governs the relationship between it and its customers, whereas the Rules are followed by all dispute-resolution service providers in carrying out the administrative dispute resolution procedure under the UDRP.
 See Implementation Schedule for Uniform Domain Name Dispute Resolution Policyhttp://www.icann.org/udrp/udrp-schedule.htm [hereinafter Implementation Schedule]. December 1, 1999 was the first day complaints could be submitted to dispute resolution providers for disputes involving domain names sponsored by most registrars, not including America Online, the NameIT Corp., or Network Solutions. Id. January 3, 2000 was the first day for submission of complaints for disputes involving domain names sponsored by America Online, the NameIT Corp., and Network Solutions. Id. Both the UDRP and the Rules reflect the principle recommendations of both WIPO, see , supra note 5, and a group of registrars, including NSI, see Model Domain Name Dispute Resolution Policy for Voluntary Adoption by Registrars (posted August 20, 1999) <http://www.icann.org/santiago/registrar-dispute-policy.htm> (this policy was signed and agreed to by 13 registrars and WIPO).
 See The Internet Corporation for Assigned Names and Numbers Frequently Asked Questions, at http://www.icann.org/general/faq1.htm [hereinafter FAQ]. See infra Part III for a more detailed discussion of cybersquatting.
 See Network Solutions’ Domain Name Dispute Policy (last modified February 25, 1998) http://www.jmls.edu/cyber/docs/dnpol3.html. However, an argument, by “some groups in the ICANN community, particularly those representing noncommercial organizations and individual domain-name holders, voiced concerns that some aspects of the [recommended] policy would have unintended consequences or did not adequately meet their concerns regarding individual and non-commercial uses, free speech, rights to court review, and reverse domain name hijacking. In response, ICANN’s Board determined that some clarifications and revisions should be made to address these concerns.” SeeFAQ, supra note 57.
 This extends protection to cover cases of typo-squatting. See further discussion provided infra.
 See UDRP at Par. 1. “You further acknowledge and agree that your registration of a domain name is subject to suspension, cancellation, or transfer by any ICANN adopted policy.” Registration Agreement from Register.com, at http://www.register.com/.
 See UDRP at Par. 4(a).
 Approved Providers for Uniform Domain Name Dispute Resolution Policy (last modified Oct. 17, 2000) http://www.icann.org/udrp/approved-providers.htm. At present, there are four approved providers: Disputes.org/eResolution Consortium, The National Arbitration Forum, CPR Institute for Dispute Resolution, and WIPO.
 See Rules, supra note 55 at Par. 3, Par. 5. However, a response is not required for a determination.See id. at Par. 5(e).
 See id. at Par. 12.
 See id. at Par. 13.
 UDRP supra note 23 at Par. (4)(k). “The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.” Id. See Weber-Stephen Prods. Co. v. Armitage Hardware & Bld…, 2000 U.S. Dist. LEXIS 6335 (N.D. Ill. 2000) (court granted defendant’s motion determining that the administrative proceeding was non-binding , staying the case because neither governing policy nor rules dictated the weight given to the panel’s decision, and a WIPO e-mail stated that the court may give appropriate weight to the decision).
See also Restatement (Second) of Judgments, Section 83(3), which states:
An adjudicative determination of a claim by an administrative tribunal (in the U.S.) does not preclude re-litigation in another tribunal of the same or a related claim based on the same transaction if the scheme of remedies permits assertion of the second claim notwithstanding the adjudication of the first claim.
Additionally, the UDRP is silent as to whether, once an action has been brought in a civil court an UDRP action can be maintained. Assuming that the court action has not been fully litigated, there should be no bar to bringing a UDRP procedure. But see Cello Holdings v. Storey, 89 F. Supp. 2d 464 (S.D.N.Y. 2000) (March 30, 2000) (subsequently dismissed with prejudice; defendant retained domain name) and Cello Holdings v. Storey, Case No. AF-0506 (eResolution Panel Decision December 21, 2000) (ordering domain name to complainant; NSI transferred name despite Respondent filing a declaratory judgment under UDRP Par. (4)(k)).
Finally, for a list of cases where a party has taken court action after a UDRP decision has been made see http://www.udrplaw.net.
 UDRP, supra note 23, at Par. (4)(k).
If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days … after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation … that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure…. If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. Id.
 Rules, supra note 55, at Par. (3)(xiii). See also Rules at Par. (1) (Mutual Jurisdiction is defined as “a court jurisdiction at the location of either (a) the principal office of the Registrar or (b) the domain name holder’s address.”).
 UDRP supra note 23 at Par. 4(c).
 See id. at Par. 4(a).
 See infra Part IV for circumstances where the requirements of UDRP Par. 4(a) will be met.
 UDRP at Par. 3(c), 4(i). In the first eight domain name disputes resolved under the UDRP, the domain name was “transferred to the company or person who filed the complaint against the alleged [cyber]squatter.” Jeri Clausing, Hundreds of Net Disputes in International Mediation, N.Y. Times (Feb. 24, 2000) [hereinafter Clausing, Hundreds].
 UDRP supra note 23 at Par. 4(a)(i). This does not require a showing that the mark is either famous or distinctive.
 Tourism and Corporate Automation Ltd. v. TSI Ltd., Case No. AF-0096 (eResolution Panel Decision March 16, 2000) <http://wwweresolution.ca/services/dnd/decisions/0096.htm>.
 See generally Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc. Case No. D2000-0012, Par. 5a (WIPO 2000) (“The absence of an apostrophe plus Stella D’oro’s averment of only “virtually” identity do not detract [that respondent’s domain name is identical to Stella D’oro’s trademark].”)
 UDRP supra note 23 at Par. 4(a)(ii).
 See General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum) (finding that the domain name craftwork.com is comprised of generic or descriptive terms and therefore did not transfer the domain name). Prime Domains alleges that it is in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties, and developing web sites using those domain names for clients.” Id.
 UDRP, supra note 23 at Par. 4(a)(iii), 4(b)(i).
 Id. at Par. 4(b)(i) (“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”). See World Wrestling Federation Entertaining v. Bosman, Case No. D99-0001, at Par. 6 (WIPO Arbitration and Mediation Center Administrative Panel Decision 2000) [hereinafter WWF Entertainment].
 UDRP supra note 23 at Par. 4(b)(ii) (“you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct”). See generally Brookfield Communications v. West Coast Entertainment, 174 F. 3d 1036, 1062 (9th Cir. 1999) (“Nevertheless, West Coast’s use of “moviebuff.com” in metatags will still result in what is known as initial interest confusion. Web surfers looking for Brookfield’s “MovieBuff” products who are taken by a search engine to “westcoastvideo.com” will find a database similar enough to “MovieBuff” such that a sizeable number of consumers who were originally looking for Brookfield’s product will simply decide to utilize West Coast’s offerings instead.”).
 UDRP, supra note 23 at Par. 4(b)(iii) (“you have registered the domain name primarily for the purpose of disrupting the business of a competitor”). See generally Danielle W. Swartz, The Limitations of Trademark Law in Addressing Domain Name Disputes, 45 UCLA L. Rev. 1487, 1495 fn. 29 (1998) citing Dueker, Cyberspace,supra note 17, at 502 (citing a dispute where Princeton Review registered their chief competitor Kaplan’s trademarks as a domain name and set up a website where visitors were told that they had reached Princeton Review and were invited to add to a list of complaints about Kaplan’s services). However, Princeton Review could probably have registered kaplansucks.com for an internet gripe site because this would not interfere with free speech rights. See Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998) (refusing to enjoin the phrase “ballysucks” in a gripe site page).
 One decision the panelists must make is what factors will be considered in determining likelihood of confusion under Par. 4(b)(iv). E.g., Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (listing factors for likelihood of confusion test).
 UDRP supra note 23 at Par. 4(b)(iv) (by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location).
 See text accompanying fn. 115.
 See UDRP supra note 23 at Par. 4(b).
 The Federal Trademark Dilution Act of 1995, 15 U.S.C. 1125(c) [hereinafter FTDA]. In 1995, the Lanham Act, infra note 89, was amended to protect trademark holders from dilution. Dilution is the blurring or tarnishment of the distinctive value of a trademark, without proof of a likelihood of confusion.
 In fact, there are only two cases in the LEXIS database that even discuss Internet domain names pre-1996. See MTV Networks v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1994) (dispute over defendant former “VJs” alleged permissive use of plaintiff’s trademark name in developing an Internet domain site); Sun Microsystems’s v. Sunriver Corp. U.S. Dist. LEXIS 19012 (N.D. Cal. 1995) (granting relief enjoining use of a similar mark on web pages, links, and Internet domain names). But see Dueker, Cyberspace, at fn. 17 citing Copyright Protection on the Internet: Hearings on H.R. 2441 Before the Subcomm. On Courts and Intellectual Property of the House Comm. On the Judiciary, 104th Cong., 1st Sesss (1996) (statement of Catherine Simmons-Gill for the Int’l Trademark Ass’n) (quoting Senator Leahy (D-VT): “According to one United States Senator, the Act may ‘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..'”)
 The Lanham Act of 1946, 15 U.S.C. §§ 1051-72, 1091-96, 1111-1127. The Lanham Act is federal trademark law, codified in 1946 to provide for the registration of trademarks and to provide remedies for infringement of those marks, which requires proof that there is a likelihood of confusion between plaintiff and defendant’s marks.
 ACPA, supra note 24.
 See Jerry Clausing, Bill on Domain Name Speculation Passes House, N.Y. Times, Nov. 10, 1999 (Cybertimes) [hereinafter Clausing, Bill on Domain Name]. See also Jeri Clausing, Internet Makes an Easy Target for Lobbyists and Lawmakers, N.Y. Times, Nov. 22, 1999.
 See ACPA Leg. Hist. (Mrs. Bono speaking) (“The main sponsor of [this bill] has explained that his good name was spoofed by a political website recently.”). See also Clausing, Bill on Domain Name,supra note 91.
 ICANN officials declined to comment, but felt the enactment would upset the careful attempt it made to create uniform, international rules for the Internet. Clausing, Bill on Domain Name Speculation Passes House. Also, it seems that The White House “opposed the cybersquatting legislation, saying it preferred to see rules governing such disputes set by…ICANN.” Id. Congress, however, outmaneuvered The White House, and forced the President into signing the cyberpiracy law by having attached it to a bull, Intellectual Property and Communications Omnibus Reform Act of 1999, which was attached by reference to the Omnibus Budget Act, “which ha[d] a number of important consumer protection [provisions] favored by the White House.” Id.
 See Lanham Act of 1946, 15 U.S.C. 1125(a).
 “Whereas traditional trademark law sought primarily to protect consumers, dilution laws place more emphasis on protecting the investment of the trademark owners.” Panavision, 945 F. Supp. at 1301.
 Thus, what Congress has done in granting protection absent likelihood of confusion is to protect a trademark as a trademark, absent the traditional requirement that it be connected to a particular product: “famous marks protected even in the absence of consumer confusion are [becoming] the rule rather than the exception. The result…is to grant a “trademark in gross”—one unconnected to a particular product—to a wide variety of owners.” Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1699 (1999) (citing Howard J. Shire, Dilution Versus Deception—Are State Antidilution Laws an Appropriate Alternative to the Law of Infringement? 77 Trademark Rep. 273, 296 (1987) and Kenneth L. Port, The “Unnatural” Expansion of Trademark Rights: Is a Federal Dilution Statute Necessary?, 18 Seton Hall Legis. J. 433, 447-49 (1994)) [hereinafter Lemley].
Congress, however, was not without cause. The Allied Maintenance court stated that the need for state dilution law was to remedy the “cancer-like growth if dissimilar products or services feed upon the established reputation of a mark.” See Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y. 2d 538, 544, 369 N.E. 2d 1162, 399 N.Y.S. 2d 628 (1977).
 191 F. 3d 208, 215 (2d. Cir. 1999).
 Under FTDA (1)(A)-(H) (1998) determining whether or not a mark is famous requires a consideration of a non-exclusive list of eight factors: (A) the degree of inherent or acquired distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C) the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading area in which the mark is used; (E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties; and (H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
However, marking this determination becomes more difficult on an international scale. See generallyJane C. Ginsburg, Jessica Litman, Mary L. Kevlin, Trademark and Unfair Competition Law, Cases and Materials, 305-06 (2d. ed. Supp. 1999).
 FTDA (1)(A)-(H).
 Note that the ‘commercial use requirement is a separate determination than the ‘in commerce’ requirement although the ‘in commerce’ requirement should be easily met. Support for this can be found in the Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1239-40 (N.D.Il. 1996): Toeppen also argues that he has not violated the Act because his use of the “intermatic.com” domain name was not ‘in commerce’. This argument misses the mark because “Internet communications transmit instantaneously on a worldwide basis there is little question that the ‘in commerce’ requirement would be met in a typical Internet message, be it trademark infringement or false advertising.” 1 GILSON, TRADEMARK PROTECTION AND PRACTICE, 5.11, p. 5-234 (1996). The U.S. Supreme Court has held that the ‘in commerce’ requirement should be construed liberally because the Lanham Act “confers broad jurisdictional powers upon the courts of the United States.” Steele v. Bulova Watch Co., 344 U.S. 280, 293 (1952). Therefore the Court finds that use of the Internet is sufficient to meet the ‘in commerce’ requirement of the Act. Id. See also FTDA (4)(A)-(B) (under the FTDA a mark that is not a commercial use or is a fair use is not actionable). However, the question has been posed whether the court should be required to treat “commercial use in commerce” as a unitary concept, therefore requiring arbitrage of the mark in commerce, which would require more than mere intent.
Also, the ‘in commerce’ requirement cannot be eliminated, since any and all trademark legislation has been enacted under the Commerce Clause power. To read out the ‘in commerce’ requirement would be to render the statute unconstitutional.
In 1870 Congress passed the first federal act providing for trademark registration. The Act provided for the registration of trademarks generally without regard to whether or not they were used in interstate or foreign commerce. However, the Act of 1870 was short-lived, for in 1879 the Supreme Court held that Act unconstitutional on the ground that Congress’ power to regulate trademarks was limited to an exercise of the commerce power. This ruling stands today, for unlike patents and copyrights, there is no specific Constitutional language giving Congress power to regulate trademarks. 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 5:3 (4TH ed.) (1999) (additional citations omitted).
An argument can still be made, however, that the act is unconstitutional. Since 15 U.S.C. 1127 defines commerce as “all commerce which may lawfully be regulated by Congress” and the registration of domain names is regulated by ICANN and not by Congress, is it therefore not in commerce?
 See FTDA.
 15 U.S.C. 1125(d)(1)(A) states that “[a]ny person who, with bad-faith to profit from the goodwill of a trademark or service mark of another, registers, traffics, or uses a domain name.” (emphasis added).
 1125(d)(1)(A)(ii)(I), (II).
 See 1125(d)(1)(A)(i) (“A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section.”).
 Id. Application of nine non-exclusive factors listed under 1125(d)(1)(B)(i) utilized to determine bad faith intent of registrant.
 See infra, note 146.
 141 F.3d 1316, 1324 (9th Cir. 1998).
 See Panavision International, L.P. v. Toeppen, 945 F. Supp. at 1303 (“Registration of a trademark as a domain name without more, is not a commercial use of the trademark and therefore is not within the prohibitions of the Act.”); Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc. 989 F. Supp. 1276 (C.D. Cal. 1997) (the mere registration of a domain name does not constitute a commercial use); Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal. 1997) (NSI’s acceptance of a domain name for registration is not a commercial use within the meaning of the Trademark Dilution Act).
 Panavision Int’l, L.P. v. Toeppen, 141 F.3d at 1325.
 1125(d)(1)(A)(i). See also ACPA Leg. Hist: “This bill doesn’t suggest that the mere registration of multiple domain names is an indication of bad faith, but allows a court to weigh the fact that a person hasregistered multiple domain names… as part of its consideration of whether the requisite bad-faith intent exists.” (emphasis added).
 See Panavision, 945 F. Supp. at 1325. See also Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 880 (9th Cir. 1999). “Courts have phrased this requirement in various ways. In a classic “cybersquatter” case, one court referenced the defendants “intention to arbitrage” the registration which included the plaintiff’s trademark. Another court… noted that the defendant “traded on the value of the marks as marks.” Id. (citations omitted).
 1125(d)(1)(B)(i) lists nine non-exclusive factors to “assist courts in determining when a defense has acted with bad faith intent to profit. [The court is] not limited to considering just the listed factors…The factors are, instead, expressly described as indicia that “may” be considered along with other facts.” Sporty’s Farm v. Sportsman’s Market., 2000 U.S. App. LEXIS 1246, *22 (2d. Cir. 2000); ACPA (B)(i):
(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person’s bona fide noncommercial fair use of the mark in a site accessible under the domain name; (V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person’s offer to transfer, sell or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name, (VII) the person’s prior conduct indicating a pattern of such conduct; (VIII) the person’s provision of material and misleading false contact information when applying for the registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43.
 ACPA Leg. Hist: English, under paragraph (1)(B)(viii), a court may consider the domain name registrant’s acquisition of multiple domain names that are identical to, confusingly similar to, or dilutive of others’ marks. Codified at ACPA (1)(B)(viii).
 See Avery Dennison Corp. v. Sumpton, 189 F.3d at 880. “Commercial use under the Federal Trademark Dilution Act requires the defendant to be using the trademark as a trademark, capitalizing on its trademark status. In our Panavision decision, we considered the defendant’s “attempt to sell the trademarks themselves.” 141 F.3d at 1325 [rather, defendants, here] use words that happen to be trademarks for their non-trademark value. The district court erred in holding that [defendants’] use of Avery.net and Dennison.net constituted commercial use under the Federal Trademark Dilution Act.” Id.In Jews for Jesus v. Brodsky, 993 F. Supp. 282, 307 (D.N.J. 1998), the court held that “[t]he non-commercial use of a domain name that impedes a trademark owner’s use of that domain name does not constitute dilution” because such use is [specifically] excluded from [the FTDA].”
It has also been asserted that the “exception for non-commercial use of a famous mark is intended to prevent courts form enjoining constitutionally protected speech.” Jews for Jesus v. Brodsky, 993 F. Supp. at 307 (quoting Panavision, 945 F. Supp. at 1303). This question, however, extends beyond the scope of this paper.
 A traditional infringement claim under 1125(a) while not requiring plaintiff’s mark to be famous, requires her to meet the higher likelihood of confusion standard. Whereas, the FTDA, doing away with the likelihood of confusion standard, requires that the trademark be both famous and distinctive, seeFTDA, the ACPA requires only that the mark be identical or confusingly similar if the mark is distinctive or dilutive. See 1125(d)(1)(A)(ii)(I), (II). See e.g. Sporty’s Farm v. Sportsman’s Mkt., 2000 U.S. App. LEXIS 1246, *21 n.11 (noting that “confusingly similar” is a different standard from the “likelihood of confusion” standard for trademark infringement adopted by the Second Circuit in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d. Cir. 1961). The trial court rejected plaintiff’s infringement claim based on the likelihood, but sustained the dilution action as the mark was famous. The appellate court would not say that the mark was famous and thus relied on the mark as distinctive and a showing of likelihood in order to sustain the action under the ACPA. Id. at 11.
 Nabisco v. PF Brands, 191 F.3d 208 at 227-28.
 See 15 U.S.C. 1125(d)(1)(A)(ii)(I), (II).
 1125(d)(2)(A). Congress may have explicitly provided for in rem proceedings in light of Porsche Cars N.Am., Inc. v. Porsche.Com, 51 F. Supp. 2d 707 (E.D. Va. 1999), which held that the language of the FTDA does not permit in rem actions against alleged cybersquatters.
 15 U.S.C. 1125(d)(2)(A)(ii)(I).
 1125(d)(2)(C) (“In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which (i) the domain name register, registry, or other domain name authority that registered or assigned the domain name is located; or (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.”). See Caesars World, Inc. v. Caesars-Palace, 2000 U.S. Dist. LEXIS 2671, *7 (E.D. Va. 2000) (holding that even if a domain name is no more than data, Congress can make data property and assign its place of registration as its situs).
 ACPA Leg. Hist., supra note 116. However, the UDRP effectuates this contractually by requiring all domain name registrants to submit, as a condition to registering the domain name, to a mandatory administrative procedure in cases of alleged cybersquatting. UDRP Par. 1.
 15 U.S.C. 1125(d)(2)(D)(i). As a major disincentive to continued cybersquatting, Congress added a statutory damages provision, limited to 1125(d)(1) violations. Instead of actual damages and profits, an award of statutory damages in the “amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just” can be awarded. 15 U.S.C. 1117(d). This may have been done in part to avoid any claims of Due Process violations by respondents. See Caesars World, Inc. v. Caesars-Palace, at *5-6 (holding that due to the limited relief afforded by the ACPA for in rem proceedings, no due process violation occurs here as to defendants personally).
 See Caesars World, Inc. v. Caesars-Palace, 2000 U.S. Dist. LEXIS 2671.
 1999 U.S. Dist. LEXIS 21000 at *10-25, (N.D. Ca. 1999).
 See WWF Entertainment, supra note 80, at Par. 4.
 Attributed to Robert D. Gilbert, Cybersquatters Beware: There Are Two New Ways to Get You,N.Y.L.J., T5 (Jan. 24, 2000). A good example of this is a consolidated case currently pending under the UDRP where the alleged typo-squatter registered variations of Wallstreetjournal.com such a Wallsreetjournal.com; Wallsteetjournal.com; Wallstreetjournal.com.
 These five issues are similar to those identified in Rebecca W. Gole, Note, Playing the Name Game: A Glimpse at the Future of the Internet Domain Name System, 51 Fed. Comm. L.J. 403, 410-413. However what she identifies as ‘variation on cybersquatting’ will be identified herein as ‘typo-squatting.’
 While much attention has been paid to the ACPA, the main purpose of this paper was to shed light on the ICANN process. It seems obvious that by the sheer number of cases that have been filed for arbitration with ICANN, that this process is favorable to the ACPA. “Last year, WIPO ruled on 1,000 disputed names, finding for the complainant in 817 cases.” Manuel, “Domain-Name Grab,” infra note 161.See also Summary of Status of Proceedings (March 29, 2001), athttp://www.icann.org/udrp/proceedings-stat.htm (2,495 total proceedings to date with only 488 being decided for respondent).
 For cases of cybersquatting, the court is better for cases with complicated facts.” A. Michael Froomkin, a University of Miami law professor who helped draft the proposal on which the Uniform Dispute Resolution Policy is based, and who is a director of the WIPO dispute-resolution centers, one of the three dispute-resolution centers approved by ICANN to mediate domain name disputes. Jeri Clausing, Hundreds, supra note 73 (quoting A. Michael Froomkin). Also, in Telaxis Communications Corp. v. William E. Minkle, Case No. D2000-0005, the arbitrator recommended that a court should make a fair use determination: “[t]his dispute involves the competing rights and legitimate interests of two parties in the domain names Telaxis.com and Telaxis.net. Given the nature of this dispute it is properly solved by mediation or arbitration before the Center or by litigation in a forum of competent jurisdiction.” Again in Adaptive D2000-0006, the panel could not conclude “that Respondent has no ‘rights or legitimate interests’ in the domain as is required under the UDRP. While Respondent does not own MILITEC as a trademark, questions remain as to whether Complainant legally acquiesced in Respondent’s registration and use of the domain, at least initially, or whether Respondent’s use is a normative fair use. Acquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts.”
 Id. quoting Froomkin.
 FTDA, supra note 87.
 See also Avery Dennison v. Sumpton, 189 F.3d at 881 (citing Hasbro, Inc. v. Internet Ent. Group, Ltd., 40 U.S.P.Q.2d 1479, 1480, 1996 WL 84853 (W.D. Wash. 1996)); 3 J. Thomas McCarthy, Trademarks and Unfair Competition 24:104 (4th ed. 1998).
 The UDRP eliminates the hold provision of previous NSI policies assumedly for two reasons: 1) a commercial web site can suffer serious economic harm if it is unfairly shut down, and 2) “the limitation of the scope of the administrative procedure [mainly] to cases of abusive registration makes this unnecessary.” See Final Report, supra note 5, at Par. 189.
 Lemley, supra note 96, at 1703, n.84.
 UDRP, supra note 23.
 Additionally, WIPO in its “Final Report” recommended “that the scope of the administrative procedure be limited to cases of bad faith, abusive registration of domain names that violate trademark rights.” Final Report, supra note 5, at Executive Summary Par. v. Therefore, it would not be a proper use of the UDRP in these circumstances..
 See e.g., Network Solutions, Inc. v. Clue Computing, 946 F. Supp. 858, 859-60 (D. Colo. 1996) (involving concurrent use of the word “Clue”); See e.g., Prince Plc. V. Prince Sports Group Inc,  F.S.R. 21. “[T]wo or more legitimate claimants dispute the right to use a domain name, because both have rights to use the mark in the real world.” Id. See also Western Hay. v. Forestar, Case no FA 0001000093466 (National Arbitration Forum 2000) (respondent’s use of domain name Westernhay.com as discussion site on the “merits of hay grown in the west” does not violate any trademark rights of claimant where term is generic and claimant lacks any certification from the USPTO).
 Rules Par. 1. See Deutsche Welle v. DiamondWare Limited, Case No. D 2000-1202 (WIPO 2001), at http://arbiter.wipo.int/domains/decisions/html/d2000-1202.html (panel declared “that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding” where German broadcast company Deutsche Welle, brought a false claim against U.S. software developer DiamondWare over the domain name “dw.com.” Id.
 ACPA Leg. Hist., supra note 116. “The amendment does not extend to innocent registrants who are unaware or aware but register for another reason than bad faith intent.” Id.
 15 U.S.C. 1117(d): In a case involving a violation of section 43(d)(1), the plaintiff may elect…to recover…an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
 “The seven original eToy members joined forces in 1994 and started their site in 1995; eToys was not founded until the following year and did not go online until 1997.” Matthew Mirapaul, eToys Drops Lawsuit Against Artist Group, Jan. 25, 2000.
 Id. However, because of an online campaign against eToys by the internet community, eToys ended up dropping its suit and reimbursing eToy $40,000 in legal fees. Id.
 ICANN Model Domain Name Dispute Resolution Policy for Voluntary Adoption by Registrars(posted August 20, 1999) .
 See Network Solutions’ Domain Name Dispute Policy (last modified 2/25/98) ,http://www.jmls.edu/cyber/docs/dnpol3.html.
 Generally, NSI would simply put the domain name on hold whenever a corporation holding trademark rights, not necessarily in the domain name at issue, complained that their rights were being violated by that registrant’s use of the domain name.
 Lemley, supra note 96, at 1702, n.85. “In cases that were not litigated to judgment, the corporation that owns the trademarks for the television characters Pokey and Gumby sought to take “pokey.org” away from a 12-year-old boy whose nickname was Pokey, and Archie Comic Publications sought to prevent a family from naming a Web site “veronica.org” after their newborn daughter. 108 Yale L.J. 1687 citing Karen Kaplan, Archie Comics Drops Its Claim to Veronica.org. L.A. Times, Jan. 20 1999, atC1. But see Giacalone v. Network Solutions, Inc., 1996 WL 887734 (N.D. Cal. 1996) (holding that Giacolone’s registration of his son Ty’s name as “ty.com” was non-infringing because it was not a commercial use).”Id. Note, however, that the ACPA has dropped the commercial use requirement.
 “The complainant pays the costs, which start at $750 and the three centers certified to hear the cases have 45 days to issue their decisions.” Jeri Clausing, Hundreds, supra note 73.
 WWF Entertainment, supra note 80. As it turns out respondent also felt the ICANN process was fair commenting that, “[a]lthough unhappy about having to give up the name he paid USD $60 for, he was glad he had not been forced to hire a lawyer to fight a lawsuit from the [complainant], whom he said had threatened to sue him for up to $100,000 in damages [under the ACPA].” Clausing, First Dispute.
 See generally Avery Dennison v. Sumpton, 189 F.3d 868, see also Nabisco v. PF Brands, 191 F.3d 208.
 UDRP Par. 4(a)(i).
 1125(d)(1)(A)(ii)(I), (II).
 See generally Final Report, supra note 5 at Chapter 4 Par. 249-262 (citing Art. 16.2 of the TRIPS Agreement and Art. 6bis of the Paris Convention).
 See e.g., Clint Boulton “Domains Present Business Opportunities” InternetNews.com, March 17, 2000, at (stating that HitDomains.com, a domain name auction site, parlayed WallStreet.com for more than $1 million and boasts an average domain name price of $1.6 million).
 See e.g., Gren Manuel, “Domain-Name Grab by ‘Cybersquatters’ Is Setting Off Big Turf War With Firms,”
The Wall Street Journal, February 23, 2001 (cybersquatters can now register internet addresses in Chinese-language characters). See also Sankyo Co. Ltd. v. Zhu Jiajun, Case No. D2000-1791 (WIPO 2001), at  The generic domain name Business.com recently sold for $7.5 million dollars.
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