Princeton Review, Inc. ("Princeton Review"), a test preparation service, obtained the domain name "kaplan.com," which contains the trademark of its commercial rival, Stanley H. Kaplan Educational Centers, Ltd. ("Kaplan"). In what is believed to be the first ruling on this issue, unanimous three person arbitration panel required Princeton Review to relinquish the "kaplan.com" domain name to Kaplan.
The first key fact is that the panel had to assume that Internet addresses can in fact act as trademarks. This is not surprising given the true nature of Internet addresses. Although the name "addresses" conjures up the post office addresses of real-world places, this is only part of the purpose of Internet addresses.
As summarized in the statements of the McDonald's pirate himself: "Domain names are to the Internet what addresses are to the Postal Service. They're more than that, really, since your domain name can tell the online world something about who you are. Domain names are kind of like postal addresses, vanity license plates and billboards, all rolled into one digital enchilada.â
The second key fact about the "kaplan.com" case confirms the ability of domain names to serve as trademarks. To quote the McDonald's pirate again: "If you logged into kaplan.com, you could read a Q&A comparing the programs offered by [Princeton Review and Kaplan]. Which one do you think came out looking better?" Internet users, unaware that Princeton Review was the real owner of this address, would no doubt think that Kaplan was the owner of this address and the source of the information located there.
In short, Princeton Review's registration of the domain name "kaplan.com" very likely not only produced confusion among Internet users over the source of the information located at this address, but real damage to Kaplan's goodwill.
The third important fact is that the President of the Princeton Review, John Katzman, admitted they had registered the domain name "kaplan.com" "in part just to irritate [Kaplan] . . . Clearly, we've done that." This "unclean hands" aspect of the "kaplan.com" case may be applicable to many other "domain grabbing" cases likely to arise from the current gold rush of cybersquatting and name jacking. Assuming that this factor played a role in the panel's decision, they most likely followed traditional trademark law regarding bad intent. Under traditional trademark law, intent to adopt a mark to derive a benefit from the reputation of another is one of several factors in evaluating whether the infringing use is likely to cause confusion in the market.