Student Questions This page will be used to post selected questions that I receive from students during the study and exam period and my answers to those questions.  The questions will be posted anonymously and may be edited so that they are of general interest to the class.  After the list of current questions, you will find questions from prior years.

Current Questions:

None

Questions From Prior Years

Question:

One of the defenses to a UDRP complaint is that you are using the domain name for a bona fide offering of goods or services - 4(c)(i). I don't understand how it makes sense for this to be a defense. If the domain name were being used in connection with offering goods/services, wouldn't that weigh on the side of the complainant, not the respondent? Could you clarify?

Answer:

The part of the UDRP that describes the defenses (4(c)) states as follows:

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any 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.

Under (4)(c)(i), the use must be before the respondent received notice of the complaint and it must be a bona fide offering of goods and services. It is a way of showing that the person who registered the name is making a legitimate use of the name (as compared to just holding it so that it is unavailable to the complainant). This provision has to be understood together with the definition of bad faith in 4(b). Under that provision, the UDRP provides that one of the methods of showing bad faith is to show "(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." Therefore the bona fide offer of goods and services in 4(c)(i) does not include selling something that you are trying to pass off as the goods of the trademark holder by confusing the consumer as to their source. By contrast, if you are legitimately using the name for a site in which you sell goods that won't be confused with the goods of the trademark holder, that is an indication that you are using the name for legitimate purposes. The UDRP, in general, does not take away the right to use a name if a legitimate use is being made of that name or if the respondent has a legitimate claim to the name. Such cases, where there is a legitimate dispute about who should have the right to use the name, are left to the courts. A very large number of UDRP cases are ones in which the respondent defaults and does not try and defend the registration of the name.

Even if a respondent can show a bona fide offering of goods or services, that alone is no guarantee the complainant will lose. The UDRP says "Any 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)." Therefore, the Panel will look at all the evidence to decide if the person who registered the domain name has a right or interest in the name. 


Question: 

What is the sliding scale in the Zippo case?

Answer:

The sliding scale is a scale of interactivity ranging from passive (no interactivity) to slightly interactive (an e-mail link to contact the site or something on that order) to very interactive. It's called a sliding scale, but you could also think of it as a continuum. At  one end of the continuum are purely passive sites (increasingly rare on the web). Under the Zippo approach, such sites are generally not considered to create jurisdiction in a place where the site can be accessed even if the cause of action arises out of the content of the website (as required for specific jurisdiction). On the far other end of the continuum are sites that are very interactive and allow a visitor to conduct business on the site such as the purchase of merchandise. If the cause of action arises out of the purchase of such merchandise courts applying the Zippo analysis would find jurisdiction in the forum (the place where the plaintiff resides and from which the plaintiff bought merchandise on defendant's website). In the middle of the continuum are somewhat interactive sites that allow for communication between visitors to the website and the operator of the site. While some courts have adopted the Zippo analysis others have criticized it or limited its use to certain kinds of cases. They have pointed out that in Zippo there were significant contacts with the forum (subscribers in Pennsylvania for example) beyond the website. They also point out that interactivity is not the key to jurisdiction in all cases. In cases of intentional torts, they focus on the content of the site and whether it either targets the forum or is expressly aimed at the forum. Thus, in a defamation case these courts would focus on whether the defendant knew the plaintiff resided in the forum, whether the defamatory content was aimed at the plaintiff in the forum, and whether the plaintiff would suffer the most significant injury in the forum rather than whether the site was interactive.

Question:  Of the various approaches to personal jurisdiction based on online activities, which represent persuasive authority?

Answer:  The approaches we read about, including Zippo's level of interactivity approach, the targeting approach, and the similar express aiming approach all purport to be applications of the Supreme Court minimum contacts cases including Burger King and Calder. Since the Supreme Court has never specifically applied any of the aspects of its minimum contacts case law to the internet, lower courts are free to decide how to apply that general doctrine to the specific context of the internet.  Different jurisdictions, including the various federal circuits, are free to interpret those cases differently until the Supreme Court resolves the conflict by ruling on the issue. In answering an exam question, you are free to use any and all of the alternative approaches seen in the cases we read.