Higher Education’s Brands in Cyberspace

Jacob H. Rooksby, Defining Domain: Higher Education’s Battles for Cyberspace, 80 Brooklyn L. Rev. __ (forthcoming, 2015), available at SSRN.

Professor Rooksby studies the way in which higher education institutions manage their brands online by enforcing their trademarks through domain name disputes. His article sits at the intersection of two lines of scholarly discourse. The first is literature about trademark law in cyberspace and the way that it has been privatized.1  ICANN’s Uniform Domain Name Dispute Resolution policy (UDRP) is the source of law for the majority of domain name-based trademark disputes, and platforms such as eBay and Google have incorporated their private trademark laws into their Terms of Use. The second is the “Internet governance” literature about the role of the domain name system and ICANN in cyberspace and the way in which ICANN is and is not a private government.2

Because UDRP disputes are resolved through online proceedings that are formally non-binding and non-precedential, scholars in the United States tend to leave these decisions in the shadows, focusing attention instead on the work of the federal courts. Taking a different tack, Professor Rooksby set out to find out how frequently U.S institutions of higher education initiated UDRP proceedings and why, with a particular emphasis on whether their enforcement strategies aligned with the free speech values upon which the modern academy is founded.

He found that from 2000 to 2013, 100 U.S. institutions initiated at least one UDRP proceeding. Some were repeat players, so a total of 233 complaints were filed concerning 373 domain names. These institutions were more than 90% successful in obtaining awards of transfer or cancellation (P. 36). Baylor turns out to have been far and away the most active consumer of UDRP proceedings, having initiated 62. The University of Texas system comes in second at 19, and then a handful of schools, including my employer, have initiated between 5 and 7 proceedings. Eighty-seven percent of the 100 schools have filed only one UDRP complaint.

While many of these proceedings involve domain names designed to confuse, such as [school name].biz, Baylor also pursued actions against ihatebaylor.com and baylorsucks.com, both of which resolved to parked pages at the time the actions were brought. Using these examples and others, Professor Rooksby highlights the tension between these enforcement decisions and the university’s responsibility to encourage critical discourse. He sets forth a useful set of guidelines that he proposes should guide university counsel’s decisions, or oversight of decisions, to initiate UDRP proceedings in the future.

There’s the seed of a different line of inquiry in the article that I hope Professor Rooksby or other trademark scholars pursue. Under what circumstances does a top-level domain name become a certification mark? The .edu top-level domain (“TLD”) is “governed” differently than many of the other generic TLDs. Its registry, EDUCAUSE, has a policy that limits registration rights to accredited institutions of higher education. Initially, these were only four-year institutions, but now community colleges and a range of other schools also are eligible. EDUCAUSE has not been that vigilant in enforcing this policy, and a number of .edu second-level domains were registered to non-academic registrants who successfully confused consumers. Are these cases of confusion actionable against only the registrant, or may the registry of a restricted top-level domain also be held liable under the Lanham Act?

As Professor Rooksby notes, the top-level name space is expanding dramatically. Even with so-called sunrise policies aimed at allowing for preemptive registrations by trademark owners, most observers expect the number of run-of-the-mine trademark disputes to increase. More interesting, however, is that many of these registries are likely to “govern” their respective domains with restrictive policies for the purpose of making the top-level domain name either a source identifier or a representation about at least one attribute of the second level domain name registrant. The experience with the .edu domain will be instructive about the certification mark and shared liability issues that may well follow.

  1. See, e.g., Laurence R. Helfer, International Dispute Settlement at the Trademark-Domain Name Interface, 29 Pepperdine L. Rev. 87 (2001). []
  2. See, e.g., A. Michael Froomkin, Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 Duke L. J. 17 (2000). []
Cite as: Michael W. Carroll, Higher Education’s Brands in Cyberspace, JOTWELL (May 20, 2015) (reviewing Jacob H. Rooksby, Defining Domain: Higher Education’s Battles for Cyberspace, 80 Brooklyn L. Rev. __ (forthcoming, 2015), available at SSRN), http://ip.jotwell.com/higher-educations-brands-in-cyberspace/.