Domain Names and Trademarks

Table of Contents

Introduction
Case Studies
Required Readings
Assignment
Discussion Questions
Special Events
Additional Resources

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  Last Updated March 5, 2000
Introduction

When the Internet was in its infancy, domain names (such as <harvard.edu>) were created to serve as useful mnemonic means of locating specific computers on the Internet.  With the globalization and commercialization of the Internet, domain names have taken on a new significance as business identifiers.  Domain names are now highly visible in "real space" as well -  showing up on television commercials, billboards, magazine ads, and even the sides of buses.  In these new guises, they sometimes conflict with trademarks and other traditional business identifiers.  Two factors exacerbate this conflict.  First, domain names are global and must be unique - a particular string of letters can link to only one site - while trademarks may overlap in different industries or different geographical locations.  Second, it is common practice for many Internet users to guess at domain names.  Thus domain names based on intuition become valuable corporate assets.

The rapid growth of the Internet and the use of web sites has generated a rapidly growing set of disputes between firms asserting traditional trademark entitlements and the registrants of identical or confusingly similar domain names.  Typically, the trademark owner demands that the domain-name registrant cease using the name and/or relinquish it to the trademark owner.  Disputes of this sort have been progressing through the litigation system since 1994.  While much of the case law is fact specific, at least one general conclusion is possible.  If a court finds that a domain name registrant was acting in bad faith, the court will find a means of preventing the domain name holder from continuing the use of the domain name, whether traditional trademark analysis seems to apply or needs to be stretched.  This is true of courts around the world.  In the absence of a finding of bad faith, the response of a court is much less predictable.

Prior to November, 1999, domain name disputes in the United States were decided by courts under three primary theories of trademark law.  The first claim is traditional trademark infringement, which requires that the allegedly infringing use cause a likelihood of consumer confusion (Lanham Act S.32(1) - 15 USC S.1114(1)).  The second cause of action -- and one that is often the most successful in the context of domain names -- is the assertion that a domain name "dilutes" the value of a trademark.  (Lanham Act S.43(c) - 15 USC S. 1125(c)).  Finally, unfair competition (Lanham Act S.43(a) - 15 USC S. 1125(a)), a claim similar to trademark infringement, may be used in cases where the trademark is not federally registered.  For clarification or additional information, see the Trademark primer materials.  In November 1999, Congress added a new cause of action to the Lanham Act (15 USC S.1125(d)) ["Anti-cybersquatting Consumer Protection Act"] expressly designed to prevent cybersquatting.  This new legislation is likely to change significantly the way domain name disputes are handled and litigated.

Until recently, there was no adequate alternative to the court system for handling domain name complaints.  While NSI, the domain name registrar, ostensibly had a "dispute resolution policy,"  NSI in fact did not provide a means for the resolution of such controversies.  Instead, when alerted of a claim against a domain name, NSI would simply put the name on hold until the parties resolved the dispute independently or through litigation.  In order to provide an alternative to the court system, ICANN - the organization responsible for domain name management - recently implemented a uniform dispute resolution procedure (UDRP) that will govern certain domain name disputes.  Effective January 3, 2000, trademark holders can invoke the UDRP as an alternative to litigation in domain name disputes where the registrant has acted in "bad faith."

Thus the means for resolving domain name disputes moving forward has changed significantly.  It will be interesting to see how these two new mechanisms - the anti-cybersquatting legislation and the UDRP - alter the landscape of domain name disputes.
 
 

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Case Study 1:  HealthNet.org vs. Healthnet.com

A small non-profit humanitarian organization named SatelLife has been using the domain name HealthNet.org since 1993.  The organization provides health and medical information to the developing world through a complex electronic network that serves people who don't have access to the World Wide Web.  Its partner sites are referred to as HealthNets - thus the reason for the domain name.   According to SatelLife, its service provides a lifeline to doctors in rural locations overseas.  It has invested over a decade in building its reputation as an unbiased source of health information and feel that this reputation is tied to the "healthnet" name.  For example, in its annual report the UN refers to the organization as HealthNet not SatelLife.   The organization also issues a weekly publication called "HealthNetNews".

SatelLife was recently contacted by a large California HMO named Health Net, which claims to have trademarked the Health Net name in 1981.  The HMO sent SatelLife a cease-and-desist letter, demanding that it stop using the HealthNet.org domain name immediately.  Days before the name was to be put on hold (under the NSI procedure described above), SatelLife filed an action in federal court, seeking to preserve its right to the domain name.  Health Networks claims that if SatelLife had done a trademark search when it first started using the name HealthNet for its e-mail network, SatelLife would have discovered that the name had already been registered as a trademark by the HMO in 1981.  A domain name search in 1993, however, when SatelLife registered its name would not have brought up "Healthnet.com" [Note the difference from "Healthnet.org"] since Health Networks did not register the former name until 1996.

According to a spokesperson at SatelLife, "[f]or a financially challenged non-profit to be compelled to change its identification is a possible death sentence. In any case it will foster confusion and may deny health professionals in the most impoverished countries of the world vital information they have come to depend on. We work in an entirely different domain than the HMO; we neither interfere with the clientele of the Healthnet HMO in California, nor dilute their message or affect their identity."   They anticipate that changing their domain name could cost approximately $1 million in addition to the intangible costs attributable to the confusion it would cause those who rely on their system.
 
 

Case Study 2:  eToy.com vs. eToys.com

This dispute has caught the attention of the media and has been dubbed a battle between "Corporate America" and a small group of international artists.  In September, 1999, eToys -- a U.S.-based online toy store, operating under the name <eToys.com> -- filed suit against a small artist site using the domain name <etoy.com>.  Etoy.com is operated by a group of European artists, who have used the site since 1995 to present their anti-corporate art projects.  In November, 1999, a Los Angeles court granted eToys a preliminary injunction, thus shutting down the etoy.com site. While the preliminary injunction required the shut down of the web site only, NSI also put the domain name on hold, thereby blocking email service to etoy.com.

According to free-speech proponents, this is a clear case of a large company misapplying the law.  The group of artists at etoy.com is not competing in a similar industry with eToys and even registered their domain name years before eToys registered its in 1997.  They argue that giving up their domain name would bring an end to their artistic project.  On the other hand, eToys claims that etoy.com is sufficiently similar to its own name that it constitutes trademark infringement.  Etoys claims that customers mistakenly log on to the etoy.com web site and what they find there is pornographic, profane and confusing.

The dispute was settled on January 25, 2000, with the art group emerging victorious.  EToys initially requested some control over the content of the etoy site as part of their proposal to drop the suit.  Etoy rejected this proposal and eToys eventually settled without it.  EToys reimbursed the art group for up to $40,000 in legal fees and other expenses the group incurred during the dispute. As part of the settlement, both organizations agreed to drop their suits against each other.  For detailed information on this dispute see the Domain Name Handbook Dispute Diaries.
 
 

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Required Readings
Note:  Unless otherwise identified, all the links in this section represent required reading.
Please follow these links before proceeding with the rest of the module.

  1. Domain Name Management and the Uniform Dispute Resolution Policy
  2. U.S. Case Law and Federal Causes of Action
  3. Alternatives to Domain Names
  4. Introduction of new gTLDs
  5. Country Code Top Level Domains
  6. International Case Law


Domain Name Management and the Uniform Dispute Resolution Policy (UDRP)

To understand how domain name disputes are handled today, it is important to have a basic understanding of the management of the domain name system.  Until 1998, the domain name system was administered by the US government via contracts with the Internet Assigned Numbers Authority (IANA) and Network Solutions, Inc. (NSI).   IANA administered the Internet address system through Jon Postel, who had volunteered to keep a master list of machine numbers and their correlating mnemonic names over 30 years ago.  NSI registered domain names for the top level domains of ".com," ".org," and ".net."  With the increasing globalization and commercialization of the Internet, it was clear that the US should no longer retain control over the domain name system (DNS).  The US government decided that it would be best to privatize the management of Internet names and addresses.  As a result, responsibility for the domain name system has been transferred (with some controversy) to the Internet Corporation for Assigned Names and Numbers (ICANN).  The contract between the US government and ICANN puts in place a two-year transition process, during which ICANN is supposed to demonstrate its ability to manage domain names safely.

One of the tasks assigned to ICANN was opening up domain-name registration to competition.  Competition began via a testbed in April 1999, and domain names in ".com" ".org," and ".net" can now be registered through a variety of registrars (optional).  Although these registrars are located in many countries, ICANN -- as the organization responsible for implementing policies related to gTLDs --  maintains authority over them.   Competition among registrars has raised an important issue for parties involved in the transfer of domain names -- whether it be by settlement, court order, purchase or otherwise.   In order to complete a transfer process, Network Solutions claims that it has to delete the registration information of the former domain name owner for five days before loading in the new owner's name.  During this period, it is possible that other parties will try to register the domain name in question.  If they register the name through NSI, NSI can delete their registration and start the five day waiting period again.  However, in at least one case another party registered the domain name in question through a competing registrar during the limbo period.  Since NSI does not control names registered through competing registrars, NSI claims that it cannot now delete the erroneous registration.

Another important part of ICANN's role was to develop and implement a uniform dispute resolution policy (UDRP) (required) as an alternative to the litigation system for resolving domain name disputes.
 
 

U.S. Case Law and Federal Causes of Action

A significant amount of case law (required) has developed in the area of domain name disputes.  While courts have generally found against "bad faith" registrants in domain names cases, trademark holders and celebrities felt that U.S. trademark law did not adequately address their needs and thus successfully lobbied the U.S. Congress to adopt anti-cybersquatting legislation. This new legislation (required), enacted on November 29, 1999, targets the same behavior as is covered in the UDRP - bad faith registration of domain names.  It also goes several steps further, protecting untrademarked personal names and supplying an in rem right of action.  The legislation does not limit remedies to transfer or cancellation of the domain name, but provides for civil remedies ranging from $1,000 to $100,000 per name.  Critics of the legislation argue that the UDRP should have been given a chance before such legislation was adopted.  It is unclear whether the UDRP would have been sufficient to protect the rights of trademark holders, but given the availability of the new legislation, the full force of the UDRP may never be tested.  Additionally, some fear that other countries will retaliate by enacting similar legislation thus subjecting domain name registrants to such laws in multiple jurisdictions.
 
 

Alternatives to Domain Names

While the UDRP and the anti-cybersquatting legislation may resolve some domain name disputes, they do not address the issue of legitimate competing claims.  Additionally, resolution via the UDRP and the new legislation is still costly and time consuming (even if the UDRP is less costly and less time consuming than litigation) and thus alternatives (required) that would eliminate the problem of domain name disputes are desirable.
 
 

Introduction of new gTLDs

Because of the increased adoption of the World Wide Web, some commentators suggest that new gTLDs should be introduced to allow broader use of names.  Examples of such proposed gTLDs include ".firm", ".bus", or ".shop".  The introduction of new gTLDs raises two interrelated questions.  First, should trademark issues have an impact on the decision to introduce new gTLDs?  Second, what will be the trademark implications of additional gTLDs - will it help or hurt the situation?

The ICANN board has asked the Domain Name Supporting Organization (DNSO) to evaluate these issues and develop recommendations regarding the introduction of new gTLDs.  Seven proposals for the introduction of new gTLDs have been submitted to Working Group C of ICANN's Domain Name Supporting Organization.  As can be expected, different interest groups have lined up to support different proposals.  According to an article in BNA Patent, Trademark and Copyright Daily, academics and those who represent the Internet community support Position Paper B.  This proposal recommends the addition of 500 new gTLDs within three years.  The trademark community, however is backing Position Paper C - a "go slow" proposal.  The proposal argues that new gTLDs should not be added until appropriate safeguards are in place.  These safeguards include improved domain registration procedures, speedy and effective uniform dispute resolution procedures and adoption of a system of famous and well-known trademarks across all gTLDs.  While a uniform dispute resolution procedure has been implemented, backers of Position Paper C indicate that it is too soon to assess the success of the UDRP.  As to famous names, it is unclear whether the DNSO will be able to create consensus over what qualifies as a famous trademark, let alone determine what protections famous marks should be granted in a system with additional gTLDs.  Once the safeguards are in place, this proposal suggests that new gTLDs could be introduced, but in a slow and controlled manner as part of a testbed.  After the testbed phase, an evaluation period would ensue before introduction of any additional gTLDs.

This issue will be discussed as part of  ICANN's Cairo board meeting (March 7-10).  After this meeting, the proposals will be considered by the Domain Names Supporting Organization.  A proposal to add new gTLDs must receive approval of two-thirds of the DNSO before the ICANN board of directors may consider it.  If the DNSO can make a decision by the following ICANN board meeting (August, 2000) then the board could adopt the proposal for addition of new gTLDs at its annual meeting in November.
 

Country Code Top Level Domains (ccTLDs)

Although they are not as well known as gTLDs, there are many country code Top Level Domains ("ccTLDs").   The registry of each ccTLD sets its own policies for domain name registration and dispute resolution.  Such policies vary significantly across ccTLDs.  Although ccTLDs were originally envisioned as being limited to domestic use, the registration policies of various ccTLDs have evolved differently.  Some restrict themselves to local entities (Italy, Korea, Japan) but over 80 of the 250 ccTLDs allow any organization or person to register a name.  In these open ccTLDs, registration is generally open to anyone on a first-come first-served basis.  Thus, domain names can be registered in ".to" (Tonga), ".tm" (Turkmenistan), ".as" (American Samoa), and others (optional). Some ccTLD registries prohibit registration of product names or trademarks (Norway).  Some enforce the meaning of second level domains within the ccTLD - limiting the .co.TLD to companies, for example.

To date, ICANN has avoided confrontation over authority of the ccTLD registries to adopt dispute resolution policies.  Therefore registrants in ccTLDs are not bound by the UDRP.  This means that while a uniform dispute resolution policy can be adopted for gTLDs, it may never be applied to all ccTLDs.  Historically, however, many ccTLD registries implemented the dispute resolution procedures adopted initially by NSI and thus may implement the new uniform dispute resolution policy if it appears to work in the gTLDs.

Generally, ccTLDs are run by local administrators in each country.  Originally, these administrators were experienced local technical personnel (usually academic) appointed by IANA.  However, in some countries, often small or remote areas, control over the ccTLD has been handed over to unrelated for-profit entities.  Guidelines for delegating control over a ccTLD originally required that a registrant have an administrative partner within the country or territory that owned the suffix.  Additionally, the designated authority was to have a duty to serve the community.  Many of the entities that have been given control of ccTLDs, however, have not been serving the community.  Indeed, their ties to their communities have been remote or nonexistent.  As the popularity and commercial value of domain registrations has increased, national governments are beginning to assert independent control over their ccTLD registries.  One recent example includes .pn, the ccTLD for Pitcairn Island.(optional).   Some expect that a dispute over control of .as -- the ccTLD for American Samoa -- will provide the next big showdown in this area.  Apparently, .as was handed over to the Governor's insiders to market at a profit in Denmark ("as" in Denmark is similar to "inc." in the U.S.).  It is alleged that American Samoa, a cash strapped territory, has not been reaping any of the benefits from the profits made by the insiders.
 
 

International Case Law

Courts in many countries outside the United States have applied their own trademark laws to enjoin misuse of domain names in both local ccTLDs and in the .com domain.  Although there is a trend against cybersquatting, the cases are fact specific and the legal holdings vary by jurisdiction.  Courts in the United Kingdom, Germany, Canada and New Zealand have granted relief to trademark owners in cybersquatting cases -- sometimes without a requirement of use or even intent.   A Belgian court, however, determined that cybersquatting was merely taking advantage of a business opportunity.   Registration of famous marks outside of the cybersquatting context has been struck down as infringement in France, Germany, Israel, and Italy.   See Foreign Domain Name Disputes (optional) by Diane Cabell for a discussion of international domain names cases prior to November 1998.   Summaries of more recent international cases can be found in the Perkins Coie Internet Case Digest (optional).
 
 

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Assignment

Initial Assignment:  Choose one of the case studies or another domain name dispute that you know about and analyze how the dispute would be resolved under the UDRP and the new legislation.  Then compare your estimated outcomes with the resolution that might have occurred before these two new mechanisms were introduced.

Response Assignment:  Assess the outcomes determined in the essay that you received.  Do you agree that these are the outcomes that would occur?  Either way, indicate whether you support these outcomes or whether you think a different result would be preferable.  If you support a different outcome, what changes would be necessary to achieve the outcome you prefer?

If you are a member of group A, you should submit your assignment answer at the time and in the manner specified on the home page for your section.           CLE  | Section A1  |  Section A2  |  Section A3  |  Section A4  |  Section A5  |  Section A6  |  Section A7  | Section A8

If you are a member of group B, you are not required to submit an answer to the assignment but should feel free to discuss the issue in the Plenary Conference.
 
 

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Discussion Questions
Questions to think about and discuss in the Plenary conference.

1.  Some commentators suggest that if a domain name owner were obliged to use the domain registered, then cybersquatting might be minimized.  Do you agree?  How would you define "use" in such cases?

2.  Should organizations be able to register as many domain names as they would like?   Procter & Gamble has registered an inordinate number of domain names for very general words.  Some of them are not in use (e.g., www.cough.com), but others (e.g., www.badbreath.com) lead to a general P&G portal site.  Should they be allowed to register all of these domain names?  Would a use requirement successfully deter such registrations?  If not, what would you suggest as an alternative deterrent?

3.  How should privacy concerns of domain name registrants be handled?  Registrants are currently required to provide accurate contact information which is publicly available through each registrar's "Whois" database.  What implications might this requirement have on freedom of expression of political or dissenting views?  Should there be a right of anonymity if the speaker has not inflicted any harm?  If so, how would you protect the information contained in the database?  Would allowing a domain name owner to register through an agent solve the problem?

4.  The effort to curb cybersquatting assumes that it is inappropriate simply to allow a general allocation of domain names to any party.  Perhaps instead, the allocation of domain names should have followed traditional economic theory -- allocate the names quickly without regard to who gets them.  Do you think such a system could work?  What if random allocation were instituted, but there were a limit on the price allowed for resale?

5.  The anti-cybersquatting legislation seems to broaden the application of trademark infringement in the context of domain name disputes.  Is this expansion justified?

6.  Do you think that the UDRP is a good solution to the cybersquatting problem?  Was the new American legislation necessary?  Does the new legislation fill in any holes that the UDRP should have addressed?

7.  Do you think the new legislation will cause legitimate domain name registrants to relinquish their name more easily or do you think it gives them a structure of support that they didn't previously have?

8.  Should the uniform dispute resolution procedure be reserved only for cases of alleged cybersquatting, or should such a procedure be available for other cases of possible trademark infringement?

9.  What types of proposals would you suggest for solving legitimate domain name conflicts?  Should these cases simply be treated on a first-come, first-served basis?  Should organizations with competing claims share the basic domain which would lead to a common page from which users could select the company they are looking for (such as Disc.com or Scrabble.com)?

10.  Do you think that differentiating between the TLDs would help to solve some of the trademark/domain name conflicts?  Should there be some TLDs where trademarks are held sacred, while there are others where anyone can register any name.  Do the expectations of the consumers play a role in determining whether there is a trademark conflict?  Should they?

11.  Do you think an exclusionary provision for famous marks is justified?  How would you structure such exclusion? Would you make any exceptions for specified types of non-infringing use?  What would happen when an existing mark becomes famous.  Would domain name holders have to relinquish their existing names?
 
 

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Special Event I

Professor Michael Froomkin, a leading expert on domain name disputes, will  respond to some questions from participants in the IP in Cyberspace series.  Professor Froomkin has been actively involved in the formulation of rules for domain name disputes.  You can view his comments on an early incarnation of the dispute resolution policy.

If you have a question for Professor Froomkin, please email your question to IP@eon.law.harvard.edu by Friday, March 10th.  To avoid overburdening Professor Froomkin, we will select a limited number of questions to which he will respond.  The questions and his responses will be posted in the Plenary Discussion.
 
 

Special Event II

ICANN is holding its Public Forum and Board of Directors meeting this week in Cairo.  Several segments of these meetings will touch upon issues relevant to the interaction between domain names and trademarks.  You can link to these segments via the webcast provided by the Berkman Center.   (This page doesn't yet have a link to the webcast.  The link will be made available once the meetings are in progress.)  You can preregister prior to the meetings.  For remote participants, preregistration assures that you receive all pertinent announcements, including reminders when each webcast starts and when archives are posted.  Archives of the webcast should be available at the end of each day.

The meeting schedule is already available, but may be subject to change.  While you are welcome to participate in any aspect of the ICANN meetings, you may find the following segments most relevant to the topic of domain names and trademarks:

Additionally, the Domain Names Supporting Organization will be holding constituency meetings during this period.  Archives for DNSO meetings may not be availalble until the end of the week. Note that all times listed are times for Cairo, Egypt.  Cairo is seven hours ahead of Eastern Standard Time and two hours ahead of Greenwich Mean Time.  Use the Timezone Converter to calculate the difference from your time zone.
 
 

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Additional Resources


  1. General Trademark/Domain Names Resources
  2. Lanham Act - U.S. Trademark Law
  3. ICANN
  4. Uniform Dispute Resolution Policy
  5. World Intellectual Property Organization
  6. Old NSI Dispute Resolution Policy
  7. Jurisdiction
  8. Privacy and Anonymity Concerns
  9. Country Code Top Level Domain Registration Policies
  10. Registering Domain Names as Trademarks in the US
  11. Registering a Domain Name
  12. Conducting Domain Name Searches


General Trademark/Domain Name Resource

The Domain Name Handbook Web Page  is a great source of information on domain name issues.  This site includes news updates, listings of disputes, links to legal proceedings, and information on meetings by organizations such as ICANN and WIPO.

Summaries of cases related to domain names are maintained and updated at the Perkins Coie Internet Case Digest site.  The Phillips Nizer Web Site also maintains summaries of domain names cases.  To view these summaries, select "Internet Library" and choose "Domain Name/Path."

For a useful introductory article, see Rights and Remedies for Three Common Trademark-Domain Name Disputes: 1) Domain Name vs. Trademark, 2) Shared Trademarks and 3) Domain Name Hijacking,  by William A. Tanenbaum, 505 PLI/Pat 253, January, 1998.
 
 

Lanham Act - U.S. Trademark Law

One internet site containing the Lanham Act is maintained by the Legal Information Institute at Cornell Law School.    You can link to the full act or go directly to the sections on likelihood of confusion (Section 1114), dilution (Section 1125(c)), or unfair competition (Section 1125(a)).  The Cornell version has not yet been updated to reflect the anti-cybersquatting legislation.

For additional information, clarification, or interpretation of trademark law, use the Primer materials (doctrinal summaries) in our library.

For the legislative history of the new anti-cybersquatting legislation you must look at the legislative history of the prior bill H.R.3018 and not S.1908 (the bill actually enacted).  The legislative history is available in the Congressional Record via the Thomas web site.

To see the legislative history of the Federal Trademark Dilution Act of 1995, go to the Thomas web page.  In the right hand column of the home page you will find an item entitled "Committee Reports."  Select the link under this for the 104th Congress (this is the Congress that passed the Act).  In the page that appears, you can search either by bill number (H.R. 1295) or by Report Number (H. Rept. 104-374).  Searching by Report number will take you directly to the Report by the House Judiciary Committee  - this report includes the text of the law as well as a statement regarding the purpose of the law.
 
 

Internet Corporation For Assigned Names and Numbers (ICANN)

The transfer of management power to ICANN was, and remains today, quite controversial.  To initiate the process of privatization, the National Telecommunications and Information Administration (NTIA) of the United States Department of Commerce (DOC) issued a  White Paper that called upon the Internet industry to create the new non-profit entity to manage the DNS.  The end result is the contract between the U.S. government and ICANN authorizing the transfer of DNS management to the newly formed company.  The New York Times followed the process quite closely and published a number of useful articles.  To get a complete list of articles from the New York Times, conduct a search on their web page using the search term "ICANN."  Most of the articles summarize the process, so you should be able to get an adequate picture by reading one or two of them.

Additionally, the following paper provides a general description of ICANN, the formation process and ICANN's responsibilities.

The Internet Society maintains a page on "The White Paper and Domain Name Systems Information and Press Releases" that will keep you up-to-date on ICANN meetings, processes and decisions.

ICANN provides the status of accreditation for new registrars who will enter into competition with NSI.  A list of accredited registrars is also available.

ICANN's Domain Name Supporting Organization (DNSO) is working on issues such as introducing new gTLDs.  Working Group C's position papers regarding introduction of new gTLDs.  Public comments on the position papers.
 
 

Uniform Dispute Resolution Policy

General ICANN page with UDRP resources


 

World Intellectual Property Organization (WIPO)

WIPO was the first Provider approved by ICANN to resolve domain name disputes under the UDRP.

As a part of the transition of DNS management from the US government to ICANN, the government asked WIPO  to develop recommendations and guidelines for trademark/domain name disputes.  WIPO issued its final report  with recommendations in April, 1999.  The report was used in conjunction with comments received from the public and suggestions by the gTLD registrars to form the UDRP that has been adopted by ICANN.

The WIPO report received extensive criticism in several areas.  For an introduction to the issues, see Professor A. Michael Froomkin's Quick Guide to Major Flaws in the WIPO Domain Name Proposal or this article by Jeri Clausing (a free subscription is required to view the article) in the cyber-New York Times.   For an excellent and detailed critical analysis of the interim report, see Professor Froomkin's full analysis in A Critique of WIPO's RFC3.

Additional comments Submitted to WIPO regarding RFC3 (Interim Report)


 

Old NSI Dispute Resolution Policy

Before the introduction of registrar competition and the development of the UDRP, trademark holders often started with NSI in an effort to resolve a domain name dispute.   As conflicts began to arise between trademarks and domain names, NSI developed its previous dispute resolution policy in an attempt to address these conflicts.  If the holder of a nationally-registered trademark found that an identical term had been registered by another party, it could send proof of trademark registration to NSI.  NSI would then put the domain name on hold unless the domain name holder could show that it had a valid nationally-registered trademark or that it filed suit in court.  If a domain name was put on hold, users would not be able to access the web site using the domain name.  The NSI policy did not provide specific remedies, other than merely putting the domain name at issue on hold and off-limits by any party until the dispute was resolved.  In actual practice, and under the policy's discretionary termination clause, NSI would entertain a request by the mark owner to transfer or cancel the domain registration if the domain holder failed to respond.

The policy was ineffectual in many ways and thus led to the uncertainty and complexity of domain name disputes.  The policy was overbroad in that it allowed a trademark owner to put a domain name on hold if they have a trademark registration even if they could not prevail in a trademark infringement or dilution claim.  It was also underinclusive.  In order to invoke the policy, the mark had to be identical to the second level domain.  Under trademark law, use of a similar name can constitute infringement if there is likelihood of confusion.  The name need not be identical. So there were cases where there was infringement but the holder of the trademark couldn't use the policy to put the name on hold.

For a critique of the policy see, Analysis and Suggestions Regarding NSI Domain Name Trademark Dispute Resolution Policy, by Carl Oppedahl.
 
 

Jurisdiction

The Jurisdiction Module at the conclusion of the Lecture and Discussion Series will provide in depth information on relevant jurisdiction issues.
 
 

Privacy and Anonymity Concerns

There is a tension between the need to allow some parties anonymity in order to protect their right to free speech and the need for trademark holders to be able to contact domain name owners in case of dispute.  In testimony before Congress, ICANN indicated that the registrar accreditation policy requires that accurate contact information be publicly available.  The registrar agreements require registrars to provide a Whois service with free, public, query-based access to up-to-date information.  The database is to contain the following elements:  name of SLD, expiration date of registration, name and postal address of the SLD holder, name, postal address, email address and voice phone number for technical contact, same for administrative contact.   There do not appear to be any provisions for agents to act as contacts for privacy purposes.

A Senate bill (S. 854) included a provision that would require registrars to allow domain name holders to opt out of providing contact details.  Although introduced in the Senate in April, 1999, there has been no further legislative action on this bill.   Congress did address contact information in the cybersquatting legislation, however, where it provided that intentional provision of misleading contact information is an element of bad faith.

As yet there seem to be no court cases specifically addressing the issue.  In Columbia Insurance Company v. Seescandy.com, however, the court recognizes the benefit of protecting the privacy of innocent parties.  The court states that people who have committed no wrong should be able to participate online without fear of those who might wish to harass or embarrass them.  Here the unidentified defendant had registered seescandy.com to sell competing chocolates, but had provided incomplete and inaccurate contact information.  The court held that where a plaintiff can show that the defendant has done wrong, the plaintiff has the right to conduct discovery to uncover the identity of the party causing harm.
 
 

Country Code Top Level Domain Registration Policies

A fairly comprehensive, although possibly outdated, source of information on the registration policies of various ccTLDs is available.  The International Trademark Association publication "Trademark Law and the Internet;  Issues, Case Law & Practice Tips" (not available on the internet) is also a good source of information on registration and dispute resolution policies of various ccTLDs.
 
 

Registering Domain Names as Trademarks in the US

The US Patent and Trademark office has issued guidelines for registering domain names as trademarks.  In Examination Guide No. 2-99, the USPTO indicated that domain names will be treated much like 800 numbers in applications for trademark status.  The gTLD as well as the beginning of the URL (http:// or www) will be treated as prefixes rather than source identifications.  Thus, the gTLD will be treated much like "Inc." is treated for "real space" trademarks.  For example, terms which cannot be registered under existing trademark law because they are generic terms would not gain registrable status by adding the gTLD.  Thus hats.com would not be registrable for a site that sells hats.

Whether a domain name will be considered a trademark will depend largely on who is making the ultimate determination.  It is possible that in the Sixth Circuit a domain name owner would be required to prove that it is used in a capacity beyond mere addressing.   Other courts, however, have indicated that domain names almost always represent more than a mere communications tool and that these names have significant corporate value.   Under this conception, it would be easier to demonstrate that the domain name acts as more than a mere web site address.   A domain name does not merit trademark protection until it is used in a public manner that creates an association by the public with the mark's owner.  A domain name can be registered as a trademark if it is used as a trademark, but not if it is used merely as an address.   Similarly, web sites that serve only as advertisement for a company's products will not merit trademark status.  Use of the domain name or mark in a banner prominently displayed on the web page, however,  may be sufficient use of the mark.
 
 

Registering A Domain Name

A party can register a domain name in a gTLD through any ICANN accredited gTLD registrars through ICANN's web page.  Some gTLD registrars will also register names in certain ccTLDs.  Smaller companies often register domain names through their ISPs and the ISP will then host it on their server. Some ISPs use form contracts that vest ownership of the domain name in the ISP if the ISP obtains the registration.  Companies should check for such language in the ISP contract to prevent any future disputes about ownership.

Approximately 80 ccTLDs accept registrations from entities outside the country.   Within this group, some limit entities to one domain name per organization.  To determine whether your desired domain name is available in a ccTLD, you may use a service that will register names for you such as netnameusa.com.  For a fee, this service will register a domain name in all open ccTLDs. There are some services, such as checkdomain.com, that allow you to check availability in ccTLDs for free.  Unfortunately, however, you have to check each ccTLD individually to see if your domain is available.
 
 

Conducting Domain Name Searches

Before choosing a domain name, and possibly before choosing a trademark or product name if one has not already been selected, an organization should conduct a worldwide domain name search to determine if there are any existing conflicts.  There are several services that will conduct a comprehensive search.
 


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Copyright Policy
Module prepared by Sharie Mendrey under the supervision of Professor William W. Fisher III.
Last Updated March 5, 2000
 
 




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