When the Internet was in its infancy, domain names (like <harvard.edu>) were created to serve as useful mnemonic means of locating computers on the Internet.  With the globalization and commercialization of the Internet, domain names have taken on a new significance as business identifiers, they no longer act only as a means of locating particular computers.  They are rapidly making their way into "real space," cropping up on television commercials, billboards, magazine ads, and even the sides of buses.  As such, they are now coming into conflict with business identifiers such as trademarks that exist in "real space."    Two factors exacerbate this conflict.  First, domain names must be unique - one string of words 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.

These unique characteristics raise questions about how disputes between domain name owners and trademark owners should be resolved.  Three theories of trademark law are most often used to decide these disputes.  The first theory is traditional trademark infringement which requires that the infringing use cause a likelihood of confusion (Lanham Act S.1114).  The second claim, and one that is often the most successful in the context of domain names, is dilution (Lanham Act S.1125(c)).  The third claim, unfair competition (Lanham Act S.1125(a)), is similar to traditional trademark infringement but applies to unregistered marks.  For clarification or additional information, see the Trademark primer materials.

In an effort to protect trademark owners, US courts sometimes stretch to meet the formal requirements of trademark law.  While it may seem just to find infringement in some of these cases, this sets dangerous precedent for trademark law.  Will the expanded interpretations be used to extend trademark protection within real space as well?  If these interpretations are confined to the Internet, is such a distinction justified?  When thinking about the rights of trademark owners in this area, keep in mind the main policy basis for such rights:  the orderly functioning of the market through avoidance of confusion and deception.  Unlike other forms of Intellectual Property, trademark law is not designed as a reward to the owner of the right or as an incentive to create the intellectual property in the first place.  See the Theories of Intellectual Property orientation materials for additional information.

Many claim that the domain name registration process has exacerbated the conflicts between domain names and trademarks.  There is currently only one company, NSI, that registers domain names in the general Top Level Domains ("gTLDs" include .com, .org, .net, etc.). NSI registers the names on a first-come, first-served basis.  Thus, anyone can register a domain name as long as it has not been registered by someone else before them. This policy led to the practice of cybersquatting - registering a domain name of a famous trademark hoping that the owner would eventually buy the domain name in order to use it as a link to his or her web site.  As the conflicts between trademarks and domain names increased, NSI created a dispute resolution policy to deal with trademark conflicts.  Although they are on their fifth version of the policy, it remains controversial and ineffective in a number of ways.

The Internet Corporation for Assigned Names and Numbers (ICANN), the entity that will soon be responsible for management and administration of the domain name system, will be introducing competition into the registration of domain names for gTLDs.  Part of ICANN's role will be to determine the dispute resolution policies that the registration authorities will have to put in place.  In order to do this, the US government (which is transitioning authority to ICANN) has asked the World Intellectual Property Organization (WIPO) to develop recommendations and guidelines in this area.  WIPO issued its interim report in December, 1998 and will be issuing its final report in late March or early April, 1999.

Although they are not as well known in the general community as gTLDs, there are many country code Top Level Domains ("ccTLDs") that are open to registration by anyone on a first-come first-served basis as well.  Thus, domain names can be registered in .to (Tonga), .tm (Turkmenistan), .as (American Samoa), and others.  WIPO has recommended that these open ccTLDs adhere to the same registration and dispute resolution policies as gTLDs.

In addition to the key issues of trademark infringement and dispute resolution, there are many other interesting issues raised by domain names.  One of the critical issues is personal jurisdiction.  As you know from the earlier module on ISP liability for Copyright Infringement, a court cannot decide a case unless it has jurisdiction over the parties involved.  As with ISP liability, NSI - the company that registers domain names - is an easy target in trademark disputes.  Thus many trademark holders have sued NSI in an attempt to resolve domain name disputes.  So far, these suits have not been successful.

Without registry liability (i.e. the ability to successfully sue NSI) it is critical that trademark owners be able to contact the owner of a potentially infringing domain name.  A comprehensive contact system, however, raises concerns about the privacy of domain name owners.  Issues of free expression are also raised in many cases where domain name owners claim that their web site involves political commentary or parody and are therefore protected uses.  If domain name owners' contact information is available via a comprehensive contact system, freedom of expression may be compromised.

Because of the commercialization and increased use of the World Wide Web, many suggest that new gTLDs should be introduced to allow broader use of names.  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?  Additionally, there is a possibility that gTLDs could themselves provide a partial solution to trademark disputes if the gTLDs are differentiated to allow for different levels of trademark protection within different gTLDs.

While much of the focus has been on the second-level domain - that part of the domain name that comes immediately before the TLD such as .com or .org - the owner of a domain name is not restricted by registration procedures in his use of third-level domains.  Thus the owner of a non infringing second-level domain <widget.com> can attach any third level domain to that address:  mcdonalds.widget.com, sears.widget.com.  Should such use constitute trademark infringement?

Finally, there is some question as to whether trademark/domain name disputes will be eradicated by keyword systems that are developing as an alternative means of locating web sites without using a domain name.  Keyword systems allow the user to enter into the system the name of the company they are looking for. Then, depending on the system, it will either direct the user to the page it believes the user is seeking or will return a page with links to various pages the user can choose from.

Smith, Jones & Johnson
One Post Office Square
Boston, MA 02109

Dear _____:

Thanks so much for agreeing to look into our domain name fiasco. As promised, I am setting forth in this letter additional details about the problem we talked about on the phone, along with some of the general background information you asked for. The letter we received from NSI says that we have approximately 30 days before they take action. Please let me know if you need any more information.

As you know, my partner and I started our company, Cambridge Computer Consultants, back in 1993. We basically provide small and medium-sized businesses with purchasing advice concerning computer equipment, network equipment, software, and services. We have traditionally distributed the advice through a monthly newsletter. We currently have around 10 employees.

In 1995, we registered the Internet domain name "smartbuyer.com." Since then, we have been moving more and more of our content onto the web. We now have various forums in which buyers can share their thoughts. In addition, we are beginning to enter into deals with vendors of computer equipment and services, whereby they can make their products and services available on-line.  The site has been moderately successful, thus far. We have been spending increasing amounts of time and money developing and promoting the site.

Unfortunately, as it turns out, we never bothered to register "smartbuyer" as a trademark.

Last December (December 1997), we received a letter from a company called Smart Software, Inc., based in Seattle, Wa. The letter stated that they sell a popular software package called SmartBuyer, which apparently helps individuals make major purchases, such as cars, homes, etc. The letter also indicated that they have a federally registered trademark in "smartbuyer."  Evidently, they want to create a separate web page to support their software package. In the letter, they demanded that we transfer the domain name to them. I wrote back indicating that we had no intention of doing so. Having not heard from them for a while, I thought that was the end of it.

Then, just a few days ago, I received a letter from Network Solutions, Inc., the company we registered the domain name with.  The letter says that they were contacted by Smart Software, and that they were going to shut down our smartbuyer.com domain within 30 days.  Apparently the NSI policy indicates that if a registered trademark owner presents proof of their trademark to NSI, then NSI will put the domain name in question on hold after 30 days.  Once the domain name is on hold, no one can use it - not the domain name owner or the trademark owner - until the dispute is resolved.  Obviously, this would be a disaster for our business. We have spent so much time and effort promoting the smartbuyer.com site, and it is just beginning to take off. Changing domain names at this time would be a blow to our business.

Please let me know what our options are.  Additionally, I understand that there may be a new administrative dispute resolution procedure available soon.   Would we be able to use this new dispute resolution mechanism once it is introduced?  How might it affect the outcome of our case?

As a backup plan, I did begin to check to see if other, similar domain names are still available. I learned that the domain names smartbuy.com and smartbuyer.org have been registered by a former employee of ours. He left our company on rather bad terms, and I am afraid that he might use the domains to bad-mouth our site. Currently, though there is nothing at the site.  Is there anything we can do to prevent this?

Finally, let me just say that I find this whole matter extremely frustrating. Throughout this affair, we have done everything we were supposed to do. We registered our domain name according to the established procedure. We spent time and effort building our site up. Now we are running a serious risk of losing our business.

Sincerely,
Jack Strasser
Cambridge Computer Consultants
April 5, 1998

Trademark Infringement, Dilution, and Unfair Competition

There are a variety of disputes that occur based on the interaction of trademarks and domain names.  While any categorization is not exact, the following categories should help create a picture of the types of disputes that often arise.

Planned Parenthood Federation of America v. Bucci sets out the analysis used by most courts in likelihood of confusion cases. Although the court engages in a traditional trademark infringement analysis under Section 1114 of the Lanham act, the analysis is similar for unfair competition under Section 1125(a).   Unfair competition claims are primarily used when the mark is not federally registered and therefore not protectable under Section 1114.   In this case, the court sets out a broad interpretation of "use in commerce" and "use in connection with goods and services" that allows it to apply the Lanham act rather than having to rely on a claim of unfair competition.  While this is one of the older cases (1997) and its interpretations have been questioned by scholars, it has frequently been relied on by courts throughout the US in subsequent cases.

Like Planned Parenthood, Panavision v. Toeppen is one of the leading cases in this field.  This case deals with the issue of "cybersquatting."  The court in Panavision analyzes infringement as dilution rather than likelihood of confusion.  Dilution is often used in  cybersquatting cases where the domain name owner simply registers a domain name that is the same as the name of a company or a company's well-known product (usually these are registered trademarks).  Because trademark infringement and unfair competition require a likelihood of confusion, those theories often don't apply to these cases (they might if the domain name owner is a competitor who uses the web site to sell competing products, but this is not the usual definition of cybersquatting).  Thus dilution is used to reach cases where there is a web site that would not lead to consumer confusion because the content is minimal and not related to the trademark owner's products or services, or because there is no web site at all.  Often cybersquatters will simply register the trademark as a domain name but not use the domain name to link to a web site.  In this case, likelihood of confusion is impossible.  When you read the case, consider the analysis that the court uses to determine that dilution of the mark exists.  While a marketing channel has been reduced, should this constitute dilution of the mark?

Courts interpret the requirements for likelihood of confusion or dilution in slightly different ways.  Often, the determinations seem to depend on the category of the dispute (cybersquatting vs. legitimate name conflict).  To get a sense of the similarities and differences in court opinions, please read the following summaries of relevant cases.

In a very recent case, a Virginia State Court declared that domain names are property and can be seized and sold to pay a default judgment.  The impact of this decision could be significant if used to seize domain names from foreign registrants who do not show up to dispute the merits of the case or to dismiss for lack of personal jurisdiction.  For an analysis of the impact, as well as a factual background, please read A New Sword To Combat Domain Name Piracy, a client advisory written by the plaintiff's law firm.

The doctrinal summaries (optional) in our library are available for additional clarification of trademark doctrine.
 
 

Internet Corporation for Assigned Names and Numbers (ICANN) - DNS Management

Until recently, 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 since Jon Postel helped to invent it over 30 years ago.  IANA assigned the numbers that give domain names their address.  NSI registered domain names for the top level domains of ".com," ".org," and ".net."

With the increasing globalization and commercialization of the Internet, it is clear that it is no longer possible for the US to retain control over the domain name system (DNS).  As a means of resolving many of the policy issues raised by DNS, the US government decided that it would be best to privatize the management of Internet names and addresses.  To begin the process of privatization, the National Telecommunications and Information Administration (NTIA) of the United States Department of Commerce (DOC) issued a  White Paper (optional) that called upon the Internet industry to create a new non-profit entity to manage the DNS.  The entity that was created (with some controversy and dispute) and accepted by the US as the company that will begin management of the DNS is the Internet Corporation for Assigned Names and Numbers (ICANN). (optional)  The contract (optional) between the US government and ICANN puts in place a two year transition process in which ICANN will demonstrate its ability to safely manage domain names.

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."  (optional)  Most of the articles summarize the process, so you should be able to get an adequate picture by reading one or two.

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

World Intellectual Property Organization (WIPO)

As indicated in the introduction, the US government in its White Paper proposal asked WIPO (optional) to develop recommendations and guidelines for trademark/domain name disputes.  WIPO has issued its interim report (optional) on the issue of trademarks and domain name disputes which includes recommendations (required) for avoidance of disputes, dispute resolution, etc.  Most agree that businesses deserve protection from certain internet related uses of their trademarks.  It is imperative, however, that the protection system not be overly cumbersome so that the Internet loses its current benefits:  low barriers of entry and speedy access.  Thus the WIPO recommendations try to strike a balance between adequate trademark protection and maintaining the speed and cost benefits of the Internet.

The WIPO report claims that it expresses current standards for Intellectual Property protection in the context of cyberspace, not an extension beyond current protections.  When reading the recommendations consider what the system will look like if they are put in place.  Will IP protection maintain its current bounds, will some new rights be created and/or will some rights be diminished?  How effective do you think the recommendations will be? Will the alternative dispute resolution mechanism function as a viable alternative to litigation?

The WIPO interim report has received extensive criticism in several areas.  First, some claim that WIPO extended the scope of its report beyond the cybersquatting issue raised in the US White Paper.  Second, WIPO's suggested contractual requirement that domain name holder submit to administrative dispute resolution procedure is mandatory for all domain name holders, but optional for trademark holders.  This imbalance has been criticized as unfair to domain name holders and possibly unenforceable since it gives rights to an entity (the trademark holder) not party to the contract.  Additionally, the administrative dispute resolution procedure itself has been criticized as biased toward those with deep pockets (usually the trademark holder) and against small entities (usually the domain name holder or small trademark holder with a competing claim against a large trademark holder).  This is especially true given WIPO's recommendation that the loser pay the costs for the dispute resolution procedure.  The special provisions for "famous marks" has drawn the most criticism as a blatant extension of existing trademark rights.   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 (optional).   For an excellent and extremely detailed critical analysis of the interim report, see Professor Froomkin's full analysis in A Critique of WIPO's RFC3. (optional)

Even the American Intellectual Property Law Association (AIPLA) has indicated that the WIPO report goes too far in a few areas.  For example, they note that the scope of the dispute resolution procedures should be limited to trademark infringement (as opposed to intellectual property infringement).  Also, the challenger (trademark holder) is given the right to choose the forum (either administrative procedure or litigation) while the registrant (domain name holder) is not afforded the same option.  It will be interesting to see if these criticisms are noted and changed in the final report.

The WIPO final report will be published on April 23, 1999.  It will then be presented to ICANN for implementation.  The implementation process has not yet been determined, but ICANN staff will likely make a recommendation to the Board advising them which WIPO recommendations to adopt.  If this is the case, the staff recommendation would be posted on the ICANN web page for comment.  The Board will probably vote on the recommendations at its May 25-27 meeting in Berlin.

Explore various web sites and find a case where you think there might be a claim for trademark infringement.  Choose to represent either the trademark owner or the domain name owner.  Classify the category of the dispute and write a 2 page summary of the arguments that your client would present if taken to court.  There will probably be many facts, such as the strength of the mark, that you do not know.   Simply state your assumed facts and conduct the analysis from there. (Please do not spend much time looking for a case.  If you are having trouble finding one, please choose from the following list.)

Response assignment:  Review the arguments made in the initial submission.  Analyze those arguments and indicate how you would rule as a judge.  Additionally, indicate how the process, arguments presented, or the ruling would change if the WIPO recommendations had been implemented.
 
 

1.  How would you respond to the request for help in the Smartbuyer case study described above?  What advice would you give to the domain name owner?  If you represented the trademark holder what advice would you give?

2.  The Anti-Dilution act seems to broaden the application of trademark infringement in the context of domain names.  Thus trademark owners who would otherwise not have a legitimate claim against a domain name owner, now seem to be winning cases against those same owners (i.e.. Avery Dennison).  Are there some applications when dilution provides a necessary remedy that traditional trademark infringement (likelihood of confusion) did not provide?  Are there some applications where dilution goes too far?  Would a requirement of blurring or tarnishment (see the trademark primer for information) help to distinguish those cases where the trademark owner should have a remedy from those cases where the domain name owner should be able to keep the name?

3.  Should any alternative dispute resolution procedure adopted by WIPO be reserved only for cases of alleged cybersquatting, or should such a procedure be available for all cases of possible trademark infringement?

4.  Do you think there is an answer to the issue of legitimate competing claims for domain names?  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 wanting to find (such common pages are known as portals)?

5.  What impact would a publicly accessible database of contact information for domain name owners have on the privacy of those domain name owners?  What type of implications might this 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 this problem?

6.  If the contact information is only divulged upon an allegation of infringement, what should qualify as a sufficient allegation of infringement?  Does an allegation of parody suffice?

7.  Should domain names used in connection with non-commercial activities (including political activities) receive insulation from the requirement for provision of contact information?  Provision of details, might, in some cases lead to threats of suppression of freedom of expression.  Should some gTLDs be created that might allow only non-commercial use and thus not require provision of contact details.

8.  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?

9.  The WIPO recommendations provides for exclusion of famous marks.  Exclusion would seem to constitute an increased form of protection beyond the current protection of famous marks because such an exclusion does not differentiate between sites with related goods and services and those without such related goods or services.  WIPO indicates that such an extension is inevitable absent differentiation in TLDs and that the interest in suppressing abusive registrations of famous marks justifies such an extension.  Do you think such an increase in protection is justified?  (See sites such as  veronica.org, ajax.org, and pokey.org,for examples)  Are there other areas where the WIPO recommendations might increase the protection currently afforded trademark owners?  Should there be such an increase in protection?

10.  Would a requirement of use help dissolve some of the domain name disputes?  Some suggest that if the domain name owner must use the domain registered, then cybersquatting might be minimized.  How would you define use in such cases?

11.  What about a requirement for use in non cybersquatting cases?  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 - www.cough.com - but others - 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?  (You may not be able to access the list of domains registered by Procter & Gamble because NSI recently took over the InterNIC site - including the WHOIS feature.  This takeover has been decried by NTIA and ICANN and so may be reversed, but the status is unclear at this point.  For details see NTIA, ICANN Frown Over NSI's InterNIC Takeover - March 24, 1999.)

12.  One of the problems in current domain name disputes is the general issue of lack of jurisdiction.  How do the WIPO recommendations purport to solve this problem?  Are there problems with requiring domain name owners to submit to the jurisdiction of their registrar or registry?  How might national courts react to these jurisdictional contracts?

13.  Once WIPO issues its final report, how should ICANN proceed?  Should ICANN simply implement the report wholesale?  Should it remove some of the more controversial provisions?

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.

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.

The American Association of Domain Names provides a chronological history of domain name disputes from 1981 to 1997.  While not updated past 1997, this is the most comprehensive source of past domain name disputes on the web.  The AADN also provides information about domain names basics.

Summaries of Cases related to Domain Names are maintained and updated at the Perkins Coie Internet Case Digest site.
 
 

Internet Corporation For Assigned Names and Numbers (ICANN)

ICANN update on the status of the Domain Name Supporting Organization process.

ICANN update on the accreditation of new registrars who will enter into competition with NSI.

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.

InternetNews.com also provides some articles summarizing the DNSO and accreditation steps taken by ICANN.  See ICANN Takes Domain Name Action, by N Tham, InternetNews.com, March 8, 1999 or ICANN Releases Guidelines for Domain Registrars, by Michelle Masterson, InternetNews.com, February 9, 1999.
 
 

World Intellectual Property Organization (WIPO)
 

WIPO Home Page

WIPO Interim Report - RFC3

WIPO Interim Report Recommendations Only

Comments Submitted to WIPO regarding RFC3 (Interim Report)

• Professor A. Michael Froomkin - A Critique of WIPO's RFC3
• Laina Raveendran Greene, Chair and Facilitator of APPLe provides an Asian perspective and analysis of WIPO's interim report.
• Comments by Mike Doughney (former owner of peta.org) on the impact that the WIPO recommendations would have on small businesses.
• Access all comments submitted to WIPO at the WIPO Comments Page (English Version)

NSI Dispute Resolution Policy

Current NSI dispute resolution policy

Analysis and Suggestions Regarding NSI Domain Name Trademark Dispute Resolution Policy, by Carl Oppedahl.  Additional articles by Carl Oppedahl are available at his law firm's web site.  In addition to a critique of the NSI policy, the articles present an alternative analysis of trademark/domain name disputes that disfavors extension of trademark law in this area.  A different page on the web site also provides a collection of sources and links regarding NSI's dispute resolution policy.

The Domain Name System & Trademarks, Stuart E. Levi, Jose Esteves, & David Marglin; Practising Law Institute; June-July, 1998.  The first part of this article provides a useful introduction to the domain name system.  Additionally, the next section details the evolution of the NSI dispute resolution policy, some of the implications of the current policy, and summaries of some relevant cases.

One aspect of the NSI policy is that if the domain name holder can show a valid trademark registration prior to the initiation of a dispute, then NSI will not place the domain name on hold.  Countries such as Tunisia provide an easy means of registering a trademark for concerned domain name holders, thus avoiding the NSI policy.  For additional information see Domain Protect.
 
 

Lanham Act - Trademark Law

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)).

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

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.
 
 

Privacy and Freedom of Expression

WIPO report discussion of privacy

Cases with parody or political commentary

Planned Parenthood v. Bucci
Jews for Jesus v. Brodsky

Internet Domain Names: Privatization, Competition, and Freedom of Expression, a Cato Institute Briefing Paper by Milton L. Mueller argues that freedom of expression should be a primary concern.

Generic Top Level Domains (gTLDs)

WIPO suggestions on the introduction of new gTLDs

Internet Domain Names: Privatization, Competition, and Freedom of Expression, a Cato Institute Briefing Paper by Milton L. Mueller.  The paper suggests that the introduction of new gTLDs will eliminate the need for most of the current trademark protection granted against domain name owners.
 
 

Country Code Top Level Domains (ccTLDs)

WIPO report suggestions for treatment of open ccTLDs

The Great Domain Name Hunt, by Peter H. Lewis  - an interesting New York Times article on open ccTLDs where the author discusses his search for an available domain name with his name.  To read this article, go to the New York Times web site.  In the "search the site" box type Domain Names.  This will bring up a page that
allows you to search back issues.  Select "search all articles" and type in "The Great Domain Name Hunt."
 

Personal Jurisdiction

WIPO discussion of Jurisdiction

Cases:

KCPL v. William Cary Nash, 1998 WL 823657 (SDNY November, 1998).  The court distinguishes Panavision in two ways.  First, Panavision was decided by a federal court in California, thus the decision was based on California long arm statute.  The California long arm statute is more permissive than the New York long arm statute which is applicable in this case.  Second, the defendant in Panavision was clearly a cyber pirate while the actions in this case do not constitute cyber piracy.

Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).  The court held that it had jurisdiction because Toeppen's extortion of a California company qualified as intent to have an effect in that jurisdiction.

Playboy Enterprises, Inc. v. AsiaFocus International, Inc., 1998 WL 724000 (E.D.Va.).  The court found Jurisdiction against defendant located in Hong Kong because the defendant had targeted a Virginia Company.

Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997)  This leading personal jurisdiction case established that a passive web site alone is not sufficient to subject one to jurisdiction.  Instead "something else" is needed.

Zippo Mfg. Co. v. Zippo Dot Com, 952 F.Supp. 1119 (W.D.Pa. 1997) - The court granted jurisdiction because it determined that purposeful availment exists for an interactive web site.
 

Trademarks, Copyrights and the Internet, by Lateef Matima; Klehr, Harrison, Harvey, Branzburg & Ellers Philadelphia, Pennsylvania. ALI-ABA Course of Study, April 23, 1998.  This article provides a good overview of personal jurisdiction

The following paper by "IP in Cyberspace" Teaching Fellow Betsy Rosenblatt discusses the personal jurisdiction in the context of the Internet, not merely in trademark disputes.

Jurisdictional Issues in Domain Name Disputes, an article published by Perkins Coie.
 

WIPO Interim Report discussion of Keywords.

Netscape's Keyword Systems (and other similar systems) are discussed in the following articles:

"The Next Net Name Battle," Chris Oakes, Wired News, July, 1998
"Netscape's Quiet Power Grab," Gus Venditto, InternetWorld, August, 1998.

Netscape FAQ
Centraal's RealNames FAQ

Third Level Domains

A Primer on Trademark Law and Internet Addresses, by David J. Loundy, John Marshall Journal of Computer and Information Law, Spring 1997.  This article addresses the trademark issues found in third-level domains and user names.

Starting on Monday evening, Ching-Yi Liu and Professor Fisher will engage in a discussion in a special thread in our Domain Name Plenary Conference.