Version1

Recently, the commercialization of the Internet has dramatically increased the importance and economic value of domain names. The sets of alphanumeric characters denoting Internet addresses have become a major source of cash, controversy, and caselaw. Catchy “dot-com” phrases are splashed across billboards, buses, and Superbowl advertisements. Companies and individuals struggle over the more attractive and memorable of the names, resorting to the courts, alternative dispute resolution mechanisms, and the private market to settle their disputes. This past year, eCompanies reportedly paid $7.5 million for the domain name “business.com.” The Compaq Computer Corporation paid more than $3.3 million for rights to “Altavista.com.”

Trademark law has proven to be an awkward device for resolving conflicts over domain names. Accordingly, during the past two years, various jurisdictions have been experimenting with new legal systems for addressing such conflicts. The most important such regime is the Uniform Domain Name Dispute Resolution Policy (UDRP), which provides a quick and relatively inexpensive procedure to settle matters through arbitration. The UDRP allows a party to file a complaint with a pre-approved dispute resolution service provider to assert rights to another party’s registered domain name if the name corresponds to the complainant's existing trademark or service mark. Another tool now available to U.S. trademark holders is the Anticybersquatting Consumer Protection Act, which allows trademark holders to file suit against parties who allegedly “register, traffic in, or use” domain names identical or confusingly similar to their marks.

"Generic" terms generally are not protected under trademark law due to their commonness and the public interest in preserving their utility in multiple contexts. Although a generic term may be incorporated into a trademark with another word or phrase, the term itself is normally considered to be part of the public domain. Some recent cyberlaw decisions, however, have held that a generic term that is a subset of a trademark might be protected intellectual property.

The UDRP case, J. Crew Int’l v. crew.com, exemplifies some of the conflicting arguments in the debate over generic domain names. For several years, "J. Crew," the popular apparel retailer, has operated a website under the domain name, "JCrew.com." In 1998, the respondent registered “crew.com,” set up a website, and included a link to "JCrew.com." An employee of J. Crew asked the respondent to place a J. Crew banner ad accompanying the link and promised to pay respondent a commission for sales made using that link. The respondent did place the banner ad, but J. Crew ultimately defaulted on its offer to pay a commission. J. Crew’s attorney approached the respondent’s attorney about selling the domain name, and the respondent’s attorney replied that the respondent had “spent over six figures for domain names” and “would not be interested in a nominal sum.” In addition to registering “crew.com,” the respondent had registered or acquired more than 50 domain names consisting of trademarks or other generic words that others might want to buy or use.

The three-member panel of arbitrators split in its decision, debating whether constructive notice of a federally registered trademark is sufficient to bar registration of an associated domain name when the word itself is generic. The majority concluded that the respondent’s acquisition of “crew.com” constituted an "abusive registration" within the meaning of the UDRP and that, given the respondent’s speculative behavior and awareness of the trademark, the domain name should be transferred to the complainant.

The lone dissenter strongly criticized the majority’s opinion: “The majority seems to assume that a trademark owner has some sort of God-given right to use the trademark to the exclusion of others.” He warned, “This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross.”

In another recent UDRP proceeding, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, the domain names “walmartcanadasucks.com,” “wal-martcanadasucks.com,” “walmartuksucks.com,” “walmartpuertorico.com,” and “walmartpuertoricosucks.com” were transferred to Wal-Mart, the large retail department store chain. The panel determined that the respondent’s offer to sell his domain names to the corporation was an indication of bad faith. The registrant contended that the use of the suffix “sucks” clearly indicated to customers and Internet users that the retail chain did not operate the websites in question, and thus that the domain names were not confusingly similar to the complainant's trademark. The arbitrators responded that the domain name would divert customers, despite users’ recognition that the site was not sponsored by the retail chain: “‘[I]t is likely (given the relative ease by which websites can be entered) that such users will choose to visit the sites, if only to satisfy their curiosity. Respondent will have accomplished his objective of diverting potential customers of Complainant to his websites by the use of domain names that are similar to Complainant’s trademark.”

The Canadian registrant defended his sites as “freedom of expression forums of complaint against Wal-Mart.” The “walmartcanadasucks.com” and “walmartuksucks.com” web pages each declared, “This is a freedom of information site set up for dissatisfied Walmart Canada [or UK, respectively] customers.” Visitors were encouraged to “Spill Your Guts” with a “horror story relating to your dealings with Wal-Mart Canada [or UK, respectively].” The panel dismissed the free speech argument: “The evidence on the record of this proceeding makes clear that Respondent registered the names for bad faith commercial purposes – that is, to threaten Complainant’s business and demand payment as a ‘domain name consultant’ while publicly purporting to engage in ‘free speech’ critique of Complainant.”

The argument that the use of “sucks” in conjunction with critical domain names is a protected form of free speech may have greater potential under the American Anticybersquatting Consumer Protection Act. In Lucent Technologies v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D.Va., 2000), Lucent Technologies brought an in rem action against “lucentsucks.com,” a site displaying pornographic photographs and promoting pornographic services. Although the case was ultimately dismissed for unrelated reasons, the court noted that the defendant provided a persuasive argument that “the average consumer would not confuse lucentsucks.com with a website sponsored by plaintiff” and reasoned that “a successful showing that lucentsucks.com is effectively parody and/or a cite [sic] for critical commentary would seriously undermine the requisite elements for the causes of action at issue in this case.”

The Domain Name System, or DNS, is a hierarchical identification scheme designed to ensure that each Internet address is globally unique and corresponds to a distinct numeric value. The system resolves a domain name, such as “www.cnn.com,” into a unique "IP address" -- a numerical name containing four blocks of up to three digits each, such as 198.41.0.52, which points to a single location on the Internet. The DNS was designed primarily as a mnemonic device to help people remember the “addresses” of Web pages more easily.

The DNS hierarchy is structured into separate domains, each controlled by a different administrative entity. When an individual types a domain name into a browser, the request is first directed to the DNS server, usually operated by an Internet Service Provider, which then finds the databases for each sub-domain from right to left. For example, if the URL (Uniform Resource Locator) is <http://www.cnn.com>, the DNS server will first locate the server for “.com,” which is the Top Level Domain (TLD), then for “.cnn,” the Second Level Domain, and finally for “www.” The DNS server ultimately locates the corresponding page and sends the message back to the originating computer. Only one set of records designates the protocols and services associated with every DNS name.

Currently there are 7 generic domains (gTLDs) administered by different entities. The U.S. government controls registration in the domains “.gov” and “.mil,” while registration in “.edu” is restricted to colleges and universities. The private Virginia-based corporation Network Solutions, Inc. (NSI) operates registries for “.com,” “.org,” and “.net.” Until June of 1999, NSI enjoyed a monopoly over registrations in these TLDs. Now, however, about 90 registrars are accredited to compete for the registration of domain names. As discussed below, seven new gTLDs will be implemented later this year (see New TLDs).

Approximately 250 country-code TLDs (ccTLDs) are operated by local administrators in each country. The ccTLDs appear as two-letter character strings at the suffix of a domain name, such as .it for Italy, .uk for the United Kingdom, and .us for the United States. Some countries, such as Italy, restrict registration to local entities. Others, such as Tuvalu, owner of the popular .tv domain, have invited foreign registration of domain names. In April 2000, a startup company in California paid Tuvalu $50 million for the rights to auction off .tv domains for the next 10 years. (See “Want A ‘TV’ Domain Name? No Problem Atoll,” by Paul McDougall, Information Week Online, Apr. 14, 2000). Although ccTLDs are not required to adhere to the UDRP, some have voluntarily chosen to do so.

Prior to the adoption of the Anticybersquatting Consumer Protection Act, U.S. courts relied on the Lanham Act to settle disputes between domain-name registrants and trademark owners. The Lanham Act provides a trademark owners three potential causes of action:

In October 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was formed as a non-profit body to assume management of the technical functions of the Internet, previously handled by the U.S. government or its contractors and volunteers. ICANN is responsible for the coordination of the Domain Name System, the assignment of protocol parameters, the allocation of Internet Protocol address space, and management of the root server system. For additional information concerning the establishment of ICANN, click here.

ICANN formally adopted the Uniform Domain Name Dispute Resolution Policy in October 1999. Remedies under the UDRP are limited to the cancellation and/or transfer of the domain name; no monetary damages are available. As of March 2001, more than 3,000 UDRP proceedings had been initiated. Of the 2,341 decided cases, nearly 80 percent resulted in a transfer of the name to the trademark owner. A statistical summary of the UDRP proceedings is available on the ICANN website.

The UDRP provides several criteria to determine whether the complainant or registrant will prevail in an administrative proceeding. To obtain rights to a domain name, the complainant must prove (see §4.a):

“Bad faith” registration and use of a name may be found if the domain name was purchased for the purpose of (see §4.b):

Domain name holders may invoke any of the following defenses to establish their rights or legitimate interests in a name (see §4.c):

The UDRP’s efficiency and cost effectiveness entail trade-offs. Administrative panels generally prohibit in-person hearings, including teleconferences, video conferences, and web conferences. The process includes no testimony, cross-examination, briefing, or argument. Each party is permitted to request additional documents, but is given no power of discovery. Several aspects of the policy create ambiguity for parties and panelists alike. Concepts such as “fair use” and “free speech” are afforded different protections through national trademark laws, and the UDRP employs a vague choice-of-law standard, thus allowing each panelist to decide which nation's principles to apply. (For example, in Tourism and Corporate Automation Ltd. v. TSI Ltd., a U.S. panelist decided to apply U.S. trademark law to a conflict between parties from New Zealand and Australia, explaining that he was “reasonably familiar with U.S. trademark law.”)

ICANN delegates responsibility for the resolution of domain name disputes to independent, presumably impartial service providers. To date, ICANN has accredited four service providers – CPR Institute for Dispute Resolution, eResolution, the National Arbitration Forum, and the World Intellectual Property Organization. (See ICANN’s information concerning the approval process for dispute-resolution service providers for a description of its criteria in evaluating a candidate.) Some critics contend that the UDRP is biased in favor of trademark holders, because it allows complainants to choose the provider. As trademark owners are the complainants who pay the fee, providers have an economic incentive to favor trademark holders. In “Rough Justice: An Analysis of ICANN's Uniform Dispute Resolution Policy,” Milton Mueller, Director of the Convergence Center at Syracuse University’s School of Information Studies, provides empirical support for this criticism. (Mueller also evaluates 121 cases of trademark-based challenges to domain name registrations and concludes that 88% of the cases would not constitute trademark infringement under traditional trademark law.)

The U.S. Congress passed the Anticybersquatting Consumer Protection Act in November 1999. The Act amends the Federal Trademark Act of 1946 (the Lanham Act) to enable a trademark holder to file suit against a domain-name registrant who has allegedly misappropriated his name or a name that is identical or confusingly similar to his mark. An "in rem" provision allows a trademark owner to attack a domain name registered by a nonnational over whom the trademark owner could not obtain personal jurisdiction. The remedies in such "In-rem" actions are limited to the forfeiture, cancellation, or transfer of the domain name. Remedies for all other claims include injunctive relief (such as cancellation or transfer of the domain name) and monetary damages. The plaintiff may request statutory damages of $1,000 to $100,000 per domain name instead of actual damages.

The Act lists several factors to determine whether a domain name has been registered in bad faith, including (see 15 U.S.C. § 1125(d)(1)(B)(i)):

The Act does not specify the relative significance of each factor in evaluating the legitimacy of a domain name registration. The context of the statute seems to imply, however, that the first four factors would indicate an absence of bad faith, while the next four would be evidence of bad faith. The final factor might be used either to support or undermine a showing of bad faith, depending upon the circumstances.

International and Comparative Perspectives

The trademark systems of the various nations in the world are gradually becoming increasingly similar. One source of this convergence is a set of international agreements -- such as the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) -- which require member countries to conform to certain standards when creating and administering their trademark laws. Nevertheless, trademark law continues to vary to some extent by country. This variability creates complications when trademark law is brought to bear on domain names. For example, in Prince plc v. Prince Sports Group Inc. (1997), the plaintiff, a U.S. sporting goods manufacturer, sued the defendant, a British information technology company, for its use of the domain name “prince.com.” A court in the United Kingdom ruled that the “first-come, first-served” approach to domain name registration should prevail, provided that the registration does not create a likelihood of consumer confusion. (See “Legal Action On Domain Name Collapses” by Douglas Hayward (TechWeb, Oct. 22, 1997).) In Amadeus Marketing S.A. v. Logica s.r.l. (1997), an Italian court ruled that a trademark holder does not have automatic rights to a domain name; rather the mark owner must show that the domain name registration creates a likelihood of confusion or damage to his activities.

The regulations employed in administering the many national domain-name registries also vary substantially. Hong Kong allows parties to refer disputes to the Hong Kong Information Center, which puts domain names on “hold” until resolution of the cases unless the registrant can show that it had trademark protection in the associated term effective at the time of registration. China similarly charges an administrative group with resolution of domain name conflicts. If a complainant produces evidence of a trademark and challenges a registrant, the domain name will be placed on hold for 30 days and subsequently be terminated if the registrant cannot provide evidence of trademark rights to the term. Finland imposes a limit of one domain name registration per company, and Norway allows companies to register only their official trade name (e.g., “Ford”) not product names (e.g., “Taurus” or “Explorer”). Brazil adopted a resolution in 1998 prohibiting the registration of names that conflict with well-known and reputed trademarks. To expand available namespace, Brazil has created sub-groups of Top Level Domains, distinguishing various categories for companies, individuals, and professionals.

The crowded “.com” domain may get some breathing room with the implementation of a new slate of Top Level Domains (TLDs) later this year. In November 2000, the ICANN Board of Directors selected 7 of nearly 50 proposals for new generic Top Level Domains - “.aero,” “.biz,” “.coop,” “.info,” “.museum,” “.name,” and “.pro” – as a supplement to the existing “.com,” “.org,” and “.net” TLDs.

New questions of trademark and intellectual property rights will arise as each TLD administrator devises a set of rules to regulate the registration and retention of domain names under its registry. All of the TLD operators have agreed to implement the UDRP, yet each has proposed its own nuances for dispute resolution. Some operators plan to adopt the “sunrise” mechanism, which would allow trademark holders to register corresponding domain names during a specified period before the TLD is opened to the public. Others plan to institute a “watch service” to allow trademark holders, upon payment of a fee, to be notified immediately of any attempts to register associated domain names. Six of the new TLDs will restrict registration to parties that comply with their specific mandates. The forthcoming domains are listed below.

For additional information, see ICANN’s report on the status of the negotiation of its agreements with the sponsors and operators of the new TLDs. Background material includes an evaluation report on new gTLDs applications and a collection of correspondence on intellectual property rights and new TLDs.

Public interest groups wrote a letter to the Department of Commerce urging the Department to hold hearings on the new gTLDs and allow public commentary before approving ICANN’s recommendations. They contended that ICANN has moved far too slowly in the introduction of new gTLDs and underscored the importance of implementing a multitude of new gTLDs. They warned that “as long as there is an artificial scarcity of gTLDs, the competition for the most descriptive names will increase and the discord will grow.” The letter explained, “More gTLDs will allow Internet speakers to use recognizable channels with less fear of treading on the intellectual property rights of others.” In February 2001, the U.S. House of Representatives and Senate held hearings to examine ICANN’s selection of the 7 new gTLDs. (See “Senate Won’t Let ICANN Off the Hook” by Kathleen Murphy (Internet World, Feb. 15, 2001).) For a criticism of the sunrise proposal and other trademark protections in the new gTLDs, see “ICANN Tips Scales for Trademark Owners” by Kathleen Murphy (Internet World, Feb. 28, 2001).

A large body of caselaw has emerged as trademark owners and domain name holders have sought review under the UDRP and the Anticybersquatting Consumer Protection Act. All UDRP decisions, absent exceptional circumstances, are posted on a publicly accessible website, yet readers are at the mercy of the opinion writer, since all evidence is confidential. A sample of the recent cases is set forth below.

World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (worldwrestlingfederation.com)- In this first case decided under the UDRP, Michael Bosman registered the domain name with a registrar based in Australia and attempted to sell the name to the World Wrestling Foundation three days later for $1,000. The panelist concluded that the respondent’s offer to sell the domain name to the complainant for a price considerably in excess of out-of-pocket costs directly associated with the domain name constituted bad faith use.

General Machine Products Company, Inc. v. Prime Domains, National Arbitration Forum File FA0001000092531 (craftwork.com)- The complainant owned trademark “craftwork,” and the respondent had previously acquired hundreds of domain names with common words. When the complainant realized that the respondent had registered the domain name “craftwork.com,” he contacted the respondent about selling the domain name. Disappointed by the registrant’s offer, the trademark owner filed a complaint under the UDRP. The panel decided in favor of the respondent, noting that it was the complainant who approached the respondent about selling the domain name and that the term “craftwork” is in widespread use in a descriptive sense.

Traditions Ltd. v Noname.com, National Arbitration Forum 0004000094388 (traditions.com)- A Minnesota corporation in the furniture industry that operated retail stores in the state and had customers and vendors throughout the United States began using the name “Traditions” in connection with its business in 1987 and registered the trademark “Tradition Classic Home Furnishings” in 1995. The respondent was not maintaining a website at “traditions.com,” nor did he have plans to use the name “traditions.” He had registered and owned 50 domain names, which were not all “generic.” The panel ruled against the respondent, noting his acquisition of a large number of domain names with the intent to resell them for profit.

Hewlett-Packard Company v. Homepage Organisation, National Arbitration Forum FA0004000094446 (hp.org)- The complainant Hewlett-Packard had registered numerous proprietary marks in connection with its computer products and was the owner of “hp.com” and “hp.net.” In December 1996, the respondent registered the domain name “hp.org,” which was placed on “hold” by Network Solutions in August 1998 until March 2000. The site was not functional when the complaint was filed on April 12, 2000. The panel transferred the domain name, declaring that the complainant had trademark rights to the abbreviation.

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (telstra.org)- The complainant, Telstra Corporation Limited, the largest company on the Australian stock exchange, challenged Nuclear Marshmallows, an unregistered business name of an unidentifiable business entity with an Australian address, for its registration of “telstra.org”. The respondent’s domain name did not resolve to a Web site or other online presence, and the respondent could not be reached through its contact information. The panel concluded that the respondent’s passive holding of the domain name constituted bad faith, noting the prevalence of the trademark, the respondent’s deliberate concealment of contact information, and the respondent’s failure to provide evidence of any good faith intentions.

Loblaws, Inc. v. Yogeninternational, eresolution AF-0164 (presidentschoicesocks.com)- The panel determined that inactive use of the domain name was insufficient evidence of “bad faith.” The complainant, Loblaws Inc., was a large retail store chain in Canada that marketed numerous products under the brand “President’s Choice” since 1984. The panel noted that the domain name may have been registered in bad faith, given the complainant’s extensive use of the mark in Ontario, Canada, where both the complainant and respondent were situated. Nevertheless, the panel stated, the URL pointed to a standard “under construction” page, thus showing “no evidence that the Respondent has used the domain name for any purpose whatsoever.” The panel ruled in favor of the respondent, asserting that a complainant must show both bad faith registration and use of a domain name.

Süd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 (tonsil.com)- A German chemical products firm had trademark rights to the word “tonsil” and filed a complaint against the American registrant of “tonsil.com,” claiming that “tonsil” is “an invented word that has no meaning or significance other than to identify and distinguish its products from those of its competitors.” The panelist transferred the domain name to the German company.

Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (rollerblade.net)- The complainant was the owner of the trademark “rollerblade” and was in the business of manufacturing and selling in-line skates. The respondent used the website to display pictures of his family rollerskating. He contended that he registered the domain name “for my nephew’s birthday so he and his friends could have a ‘neat’ email address and a website to show off their ‘rollerblading’ pictures.” The panelist transferred the domain name to the complainant, noting that the domain name was identical to the trademark.

Gordon Sumner, p/k/a Sting v Michael Urvan, WIPO Case No. D2000-0596 (sting.com)- The registrant, nicknamed Sting, registered the domain name in 1995 and used it for a gaming site. Gordon Matthew Sumner, the lead singer of The Police and popularly known as Sting, sought to transfer of the domain name, arguing that the name had “become synonymous in the minds of the public with [him] and his activities in the music industry.” The panelist declined to transfer the name, noting that “sting” is a generic word.

Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, WIPO Case No. D2000-0461 (corinthians.com)- An American registrant used the domain name “corinthians.com” for a website containing biblical quotations from the book of Corinthians. When the registrant offered to sell the domain name to a Brazilian soccer team named Sport Club Corinthians Paulista, the team filed a cybersquatting complaint. The registrant contended that he had made a legitimate noncommercial and fair use of the name by placing scripture on the site as a bona fide service to the religious public. The panelist relied on a Brazilian law providing trademark protection to athletic entities and transferred the domain name to the complainant.

Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (bridgestone-firestone.net)- The tire manufacturer Bridgestone-Firestone challenged a former Bridgestone employee’s registration of the domain name “bridgestone-firestone.net,” which the respondent used as a consumer-employee forum. The web page included a section entitled “What BFS doesn't want you to know.” The panel upheld the respondent’s right to maintain the website to post criticism of the corporations.

Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505 (Barcelona.com)- A U.S. citizen registered “barcelona.com” and maintained a website with news and tourism information related to Barcelona. The City Government of Barcelona filed a complaint under the UDRP, and the panelist transferred the domain name, declaring that the U.S. registrant “is definitely taking advantage of the normal confusion of the public which by using a Barcelona route in Internet would normally expect to reach some official body or representative of the city of Barcelona itself.”

Pueblo International, Inc. v. Pueblo On-Line, National Arbitration Forum FA0007000095250 (pueblo.org)- The complainant, a large supermarket chain, sought transfer of the domain name from the respondent, who used the site to provide a tour guide of Pueblo, Colorado. The panelist permitted the respondent to retain the name, explaining that registration in the “.org” domain distinguished the site from the trademark name and constituted a non-commercial, fair use. The opinion declared, “The top-level domain ‘org’ customarily is in usage by non-profit or ‘miscellaneous’ entities and not by a supermarket chain such as Complainant’s.”

Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000)- The plaintiff Sportsman’s Market, which had been using the trademark “Sporty’s” in reference to its aviation products catalogue since the 1960s, prevailed in a suit against the defendant Omega, a Christmas tree Internet company. In 1994-95, Omega created a subsidiary called Pilot’s Depot and Sporty’s Farm and registered the domain name “sportys.com.” The court granted Sportsman’s Market the domain name, concluding that the defendant had registered the name to prevent the plaintiff from using it.

Mattel Inc. v. Internet Dimensions Inc. and Benjamin Schiff, 55 U.S.P.Q.2d 1620 (S.D.N.Y. 2000)- Mattel, the manufacturer of Barbie dolls, sued the defendant, who hosted a subscription-based pornographic site at “barbiesplayen.com.” The judge declared in his opinion that the defendants were trying to profit from the “favorable public image of the Barbie doll.” “The Barbie dolls, with their long blond hair and anatomically improbable dimensions are ostensibly intended to portray wholesomeness to young girls,” wrote the judge. “The ‘models’ on the barbiesplaypen.com site, although many have long hair and anatomically improbable dimensions, can in no way be described as engaging in ‘wholesome’ activities.”

Northern Light Technology, Inc, v. Northern Lights Club, Jeffrey K. Burgar and 641271 Alberta Ltd, 236 F.3d 57 (1st Cir. 2001)- In January 2001, the First Circuit Court of Appeals upheld the lower court ruling for the plaintiff. The plaintiff registered the domain name “northernlight.com” in September 1996 and began using the corresponding website as a search engine in August 1997. The Canadian defendants registered “northernlights.com” in October 1996 and offered vanity web-based e-mail accounts under the domain name “northernlights.com” that users could access through other sites such as “flairmail.com.” No actual website resolved to “northernlights.com.” After a USA Today article in March 1999 about search engines erroneously referred to the plaintiff’s website as “northernlights.com,” the plaintiffs entered into unsuccessful negotiations with the defendants for sale of the domain name. Subsequently, the defendants ran an active website from “northernlights.com” that featured a search engine for limited words and phrases and links to other members of the “Northern Lights Community,” including a link to the plaintiff.

Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (C.A.4 Va., 2001)- The Fourth Circuit of Appeals upheld the lower court’s decision transferring the domain name “vw.net” to the American branch of the German manufacturer. The defendant, a small Internet service provider, had registered the domain name in 1996. The lower court ruled in favor of the auto manufacturer, noting the Internet service provider had attempted to sell the domain name to Volskwagen. See “Volkswagen Wins Cybersquatting Case - Again” by Steven Bonisteel (Newsbytes, Jan. 23, 2001) and “Judge Sides with Volkswagen in Net Name Lawsuit,” describing the lower court’s decision, by Patricia Jacobus (CNET News.com, Mar. 22, 2000).

People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F.Supp.2d 915 (E.D.Va., 2000)- The animal rights group People for the Ethical Treatment of Animals filed suit against the domain name holder, who registered “peta.org” in 1995 for a parody site entitled “People Eating Tasty Animals.” The court transferred the domain name to the plaintiff, rejecting the defendant’s claim that the parody site constituted protected free speech under the First Amendment. See “Court Orders Owner of PETA Parody Site to Relinquish Address” by Sonja Barisic (The Boston Globe, June 20, 2000).

Morrison & Foerster v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000)- The defendant registered domain names using variations of the law firm Morrison & Foerster’s name (“morrisonandfoerster.com,” “morrisonfoerster.com,” “morrisonforester.com,” and “morrisonandforester.com”) and used the sites for criticism and parody. The court denied the defendant’s argument that his sites were protected under the First Amendment and ruled in favor of the plaintiff.

Harrods Ltd. v. Sixty Internet Domain Names, 110 F.Supp.2d 420 (E.D.Va., 2000)- The court dismissed the case. The plaintiffs, which operate the Harrods Department Store in London, filed an in rem suit against the defendant HBAL (a foreign corporation with its principal place of business in Buenos Aires), which had registered a variety of domain names containing the word Harrods. The District Judge held that the in-rem provision of the ACPA, like its other provisions, required a demonstration of "bad faith" and "was not designed to combat domain name registrants utterly ignorant of certain existing trademarks, or those registrants with a good faith reason to believe that they have the right to register certain domain names.”

1. What are the benefits and shortcomings of the UDRP and Anticybersquatting Consumer Protection Act? Would you advise a client to file a claim under the UDRP or the Act? Do you think a trademark holder or domain name registrant has a relative advantage in either one?

2. Do you think the in rem provisions of the Act are fair? Should different countries be able to implement their own in rem policies and make them binding on foreign parties? What is an effective alternative?

3. Do you think the UDRP is skewed in favor of trademark holders? Would you suggest a different means of determining which provider should handle a case?

4. Do you think the “sunrise” mechanism and “watch service” are fair supplements to the UDRP for the new gTLDs? Is it fair for trademark holders to have privileged initial access to domain names? How many variations of a domain name should trademark holders be permitted to preregister? Does the “watch service” seem to be an effective mechanism for curbing so-called cybersquatting? What are some of the dangers of such a service? Is it fair to limit the service only to parties who pay a fee?

5. Do you think the introduction of new gTLDs will be beneficial or problematic to domain name dispute resolution? Do you believe there is currently an artificial scarcity of namespace? Do you think that adding 7 new gTLDs will be adequate, inadequate, or excessive?

6. How should the UDRP address issues of precedent? Should panelists be forbidden to rely upon the rulings from previous cases due to the opacity of the rulings, or do holdings merit stare decisis?

7. Do you think the UDRP and Act provide adequate protections for fair use and free speech? How can the UDRP handle such concepts when trademark and free speech laws vary considerably among countries?

8. How should the UDRP and Act approach conflicts regarding generic terms? When a generic term constitutes part of a trademark, should the trademark owner have a cause of action to challenge the domain name registration?

10. Should trademark law ever have been applied to domain names? Should domain name registration purely be assigned on a “first-come, first served” basis with no mechanism for challenge?

The Domain Name Handbook website is a comprehensive source of information on domain name disputes and their resolutions. This site includes analyses and text of decisions under both the UDRP and Anticybersquatting Consumer Protection Act, news reports, essays and commentary, and information on meetings by organizations such as ICANN and WIPO.

The Phillips Nizer website provides summaries of domain name cases. To view these summaries, select “Internet Library” and choose “Domain Name/Path.”

Domain Name Law Reports contains information on domain name disputes and their resolutions under the UDRP.

UDRP Search Engine, provided by the University of Massachusetts Center for Information Technology
and Dispute Resolution

The Bylaws describe the structure of power within ICANN, outlining the mandate of the Board, Supporting Organizations, committees, and officers.

ICANNWatch provides a forum for commentary and criticism of ICANN. Numerous essays and letters are posted at the site.

In 1998, the U.S. Department of Commerce asked the World Intellectual Property Organization (WIPO) to conduct a report proposing recommendations and guidelines for resolution of domain name conflicts. WIPO submitted its final report in April 1999, and the report became a focal point for development of the UDRP within ICANN.

WIPO continues to actively participate in the domain dispute resolution process. It was the first provider approved by ICANN to arbitrate in UDRP proceedings. In July 2000, WIPO commenced the Second WIPO Internet Domain Name Process to address the protection of recognized identifiers other than trademarks, such as geographical indications and names of celebrities. WIPO also initiated a ccTLD program in August 2000 to address the resolution of domain name conflicts at the ccTLD level.

The UDRP replaced the dispute resolution policy administered by Network Solutions, Inc. (NSI). Formerly, NSI, which was the sole registrar until mid-1999, would place domain names on hold until the parties resolved their conflict through either settlement or litigation. The registrar reserved the right to modify the domain dispute policy at any time and to revoke, suspend, or transfer or otherwise modify any registration at its own discretion at any time. The policy provided that NSI would transfer a domain name to a trademark holder who could prove that the trademark was registered before the domain name was obtained.

Several shortcomings were apparent in implementation of the policy. The policy unfairly disrupted the business or expressions of a website owner by placing a domain name on hold upon receipt of a complaint, before investigating into any allegations. Moreover, the policy only allowed trademark holders whose identical mark had been registered to issue a complaint.

A party interested in registering a domain name in a gTLD may do so through any ICANN-accredited gTLD registrar. Certain registrars will register domain names in particular ccTLDs as well.

InterNic WHOIS allows users to see whether a domain name has been registered and the identity of a registrant.

CheckDomain allows a party to see whether a domain name has been registered in many ccTLDs as well as gTLDs.

By Dori Kornfeld and William Fisher

last updated: June 24, 2001