Business Identity Theft under the UDRP and the ACPA: Is bad faith always bad for business advertising?

• Author: Bukola Faturoti
• Position: Senior Lecturer. The author is gratefully thankful to Prof. Ken Mackinnon
• Pages: 1-12

JICLT

Journal of International Commercial Law and Technology

Vol. 10, No.1 (2015)

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Business Identity Theft under the UDRP and the ACPA:

Is bad faith always bad for business advertising?

Bukola Faturoti*

Abstract: Websites have provided a very strong platform for businesses to reach

their customers. They surpass the regular billboards by providing portals through which

transactions are conducted without any physical contacts between a seller and a buyer. This

usefulness underscores the importance of d omain names through which websites are

navigated. Cybersquatters have in bad faith targeted or hijacked domain names of famous

and reputable businesses exploiting the goodwill of these names and misleading customers

and other internet users. This paper explores th e construction of bad faith under both the

Uniform Dispute Resolution Policy and the US Anticybersquatting Consumer Protection

Act. The paper argues that, despite some inconsistencies, “bad faith” elements have b een

broadly interpreted to embrace various activities of cybersquatters. It cautions that an

overzealous application of the instruments may stifle freedom of speech.

1. Introduction

Since the commercialization of the internet, websites have assumed the role of billboards as a medium

through which commercial ventures, from large to small scale, use in signposting their products, contacts,

as well as their standard operating procedures, to the general public. In comparison however, a website is

a more powerful marketing tool than the traditional billboard. Whilst traditional billboards merely provide

basic information about businesses, are stationary, the websites do provide ‘on-the-spot’ transactional and

communication facilities such as mailing tools, links to specific information, and other flexibilities,

websites provide a wider range of flexibilities as transactions can be initiated, facilitated, and completed

using its tools without physical contacts between the seller and the buyer. Private i ndividuals have also

used websites t o promote their images and disseminate autobiographical information. The gateway to

companies or individuals’ websites is a unique “Universal Resource Locator” (URL). A “URL” identifies

the physical location of a website in the internet’s infrastructure. A core element of a URL is a domain

name. Domain names consist of the words and characters that websites owners designate for their

registered internet addresses.

Domain names are corporate assets. Businesses do n ot string random words to generate their

URLs. Some business owners use business names or certain combinations of words which are already

known to their customers.

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In other words, businesses, institutions, and individuals use domain names to

identify themselves since they are easy to remember and create and easily attract consumers to their

website. Markedly, domain names have the semblance of trade mar ks in real world. However, there is a

fundamental difference. While a trademark identifies the source of goods in commerce, a domain name

does not generally appear on goods as an indication of source.

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While domain name of a business carries the goodwill of the business, it is susceptible to theft, and

this means theft of the companies identity or goodwill. Theft of goodwill can occur whereby a person

exploits the goodwill of another by deceiving or confusing unsuspecting internet users into believing that

the business c oncerned actually belong to him. The unauthorised exploitation of famous and distinctive

domain names is regarded as bad faith in trademark and c ybersquatting disputes. Both the Uniform

Dispute Resolution Policy (UDRP) and the US Anti-cybersquatting Consumer Protection Act (ACPA)

*Senior Lecturer. The author is gratefully thankful to Prof. Ken Mackinnon, Dr. Olasupo Owoeye, Ernest Enobun

and Dolapo Tade for their comments and invaluable feedbacks. Any other errors remain mine.

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Frederick M. Abbott ‘On the Duality of Internet Domain Names: Propertization And Its Discontents” (2013) 3 NYU

J. Intell. Prop. & Ent. L. 1- 52.

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WIPO, “The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO

Internet Domain Name Process” WIPO Pub. No.439 at paras. 163-77.