UIC Review of Intellectual Property Law


Jordan A. Arnot


It has always been a considerable task to police something as vast at the Internet for trademark violations and abuse. As the Internet develops with the ongoing launch of hundreds of new generic Top-Level Domains, so does the host of enforcement options available to those seeking to protect the value of trademarks and other intellectual property. This article outlines seven criteria to consider when selecting a remedy, or combination of remedies. The traditional cease and desist letter is still a viable and effective option, and so, of course, is litigation. These tools were greatly enhanced in 1999 when the Internet Corporation for Assigned Names and Numbers (ICANN) established the Uniform Domain Name Dispute Resolution Policy (UDRP), an arbitration process that can re-assign domain names to trademark holders. The Anticybersquatting Consumer Protection Act (ACPA) is the only tool with potential for damages as well as temporary restraining orders and domain transfer. The most recent tools for the gTLD era include Uniform Rapid Suspension (URS) and Trademark Post Delegation Dispute Resolution Procedure (PDDRP). The URS is a complement to the UDRP process, and it gives trademark owners the ability to temporarily suspend disputed domains. PDDRP, on the other hand, is a mechanism to pursue registries acting in bad faith. Weighing just seven criteria can help identify the best method available to redress trademark infringement on the Internet.