Page 352 - Law and the Media

The Law in the United States of America
In 1997, the Washington Post and other news services sued a web site called TotalNews for
infringement of their trademarks and breach of copyright in respect of the frames used by
TotalNews to deep link to pages in their web sites. TotalNews carried no original content of its
own. The case settled on the basis that TotalNews would no longer use frames but would
instead link to the web sites of the plaintiffs, although TotalNews could not claim any endorse-
ment by or affiliation with the plaintiffs (Washington Post Company v TotalNews (1997)).

Domain names

Civil proceedings
The Anticybersquatting Consumer Protection Act 1999 protects domain names under the
laws of trademarks and passing off. It provides a civil remedy against any person who
registers or uses a domain name that is identical to or confusingly similar to the trademark
of another person, with the intent to profit from the goodwill of that person. Under this Act
the court may order the forfeiture or cancellation of the domain name or transfer it to the
owner of the trademark, and award damages to the plaintiff.

Claims can also be brought under the Federal Trademark Dilution Act 1995. In the case of
Panavision International v Toeppen (1998), the Court of Appeals upheld an order under
that Act that the defendant transfer the domain names panavision.com and panaflex.com to
the plaintiff, the owners of registered trademarks in Panavision and Panaflex, the well-
known camera and photographic equipment. At trial, the court heard that the defendant did
not use the web sites to provide any service. The panavision.com web site displayed an
aerial view of a town in Illinois called Pana and the panaflex.com web site contained only
the word ‘hello’. The Court of Appeals took into account the fact that the defendant had
registered hundreds of domain names using the well known trademarks of other companies
and had stated his intention of selling or licensing the domain names to the true
owners.

ICANN registration and dispute resolution
Several web companies and registries offer domain name registration services. However, the
so-called ‘top level’ domain names such as .com, .net and .org can only be registered by
registrars accredited by the Internet Corporation for Assigned Names and Numbers
(ICANN), a United States non-profit organization that works with WIPO.

If a dispute arises in relation to a domain name that has been registered by an ICANN
accredited registrar, an application can be issued for an adjudication under ICANN’s
Uniform Administrative Dispute Resolution Policy (UDRP). Under the UDRP, the
dissatisfied party must obtain a court order in civil proceedings for a ruling as to which party
is entitled to the domain name registration. Once the ruling has been obtained, the ICANN
accredited registrar will implement it.

If the dispute arises from a registration that is alleged to have been made abusively, such as
‘cybersquatting’, the UDRP provides an expedited administrative procedure that allows the
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