Kramer Levin Represents artistdirect.com in Successful Domain Name Arbitration

On December 18, 2000, Kramer Levin client ARTISTdirect, Inc. prevailed in its bid to recover the infringing domain name, artistsdirect.com, from a competitor. The action was brought under the alternative dispute resolution procedure promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN). Kramer Levin attorneys Randy Lipsitz, Kevin Moss, and Jason Vogel represented ARTISTdirect in the proceeding. This victory comes in Kramer Levin’s first experience with ICANN. 

ICANN is a non-profit corporation established by the U.S. government in 1998 for the purpose of operating the technical infrastructure of the Internet. Among the responsibilities of ICANN is administration of the Domain Name System (DNS) which maps every Internet domain name to the proper computer server. Managing the DNS includes resolving intellectual property disputes that arise when an Interest domain name conflicts with another's trademark. This problem has been greatly exacerbated by the existence of "cybersquatters" who intentionally register others' trademarks as domain names for the purpose of reselling the domain names to the trademark owners at a substantial profit. To provide a quick and relatively inexpensive means for resolving such disputes, ICANN established an arbitration procedure known as the Uniform Domain Name Dispute Resolution Policy (UDRP). 

To prevail in a UDRP proceeding, the Complainant must establish not only that the domain name is confusingly similar to its trademark, but also that it was registered and used in bad faith. Among the factors that show bad faith registration and use of a domain name are efforts to sell the domain name at a profit, and efforts to disrupt the business of a competitor.

In ARTISTdirect, Inc. v. OldGlory.com, the three member arbitration panel found that the domain name at issue, artistsdirect.com, is confusingly similar to the client's registered trademark, ARTISTDIRECT. It also held that the registration of this domain name by ARTISTdirect's direct competitor, OldGlory.com, and OldGlory.com's subsequent express refusal to transfer the domain name for less than $50,000.00 constituted bad faith. Accordingly, the panel ordered that the domain name be transferred to ARTISTdirect forthwith.

In addition to Randy Lipsitz, Kevin Moss, and Jason Vogel, assistance was provided by Richard Moss and John Garces.