INTA "WHITE PAPER"
THE INTERSECTION OF TRADEMARKS AND DOMAIN NAMES
International Trademark Association
Internet Subcommittee
*Special Edition*
August 18, 1997
© International Trademark Association
The International Trademark Association (INTA)--founded in 1878 as The United States
Trademark Association--is a not-for-profit international membership organization committed
to:
* promoting trademarks as essential to commerce throughout the world
* fulfilling a leadership role in public policy matters concerning trademarks
* educating business, the press and the public on the proper use and importance of trademarks
* providing an extensive range of informational and educational programs and services for its members.
International Trademark Association
1133 Avenue of the Americas
New York, NY 10036-6710
Phone: (212) 768-9887
Fax: (212) 768-7796
Home Page: http://www.inta.org
Note to the Reader from INTA:
Because the arena of Internet domain name issues is constantly evolving due, in part, to proposed changes to the
domain name structure and new trademark disputes, this document will be updated by INTA on a regular basis.
This particular version has been specially prepared by INTA for submission to the U.S. Government, in
response to the "Request for Comments on the Registration and Administration of Internet Domain Names."
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Table of Contents
I. Introduction 1
II. Basics of Trademark Law 1
A. What is a Trademark? 2
B. Origins and Basic Principles 2
C. Functions of Trademarks 4
D. Scope of Protection 5
III. Background of the Internet and Domain Name Registration Process 6 A. Brief History of the Internet 6
B. The Nature and Value of Domain Names 7
C. How Domain Names are Assigned in the United States 9
D. The Domain Name Registration Process in the United States 9
E. NSI Dispute Policy: What Happens When Domain Names and
Trademarks Conflict 10
F. Registry Policies Worldwide 11
IV. Court Decisions and Disputes on Registration 13
A. U.S. Disputes Over Domain Names 13
B. Disputes Outside the U.S. Over Domain Names 19
C. Jurisdiction 20
V. Domain Name System Models: Current and Proposed 21
A. Current InterNIC Model 21
B. International Ad Hoc Committee (IAHC) Proposal 22
C. NSI's New Plan 24
D. Additional Proposals 25
VI. The INTA Proposal for New Domain Name Dispute Resolution 28
A. Background 28
B. The Proposal 31
VII. Conclusion 33
Appendix I 35
Appendix II 36
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I. Introduction
The world is shrinking! Perhaps not in geographical size, but certainly with respect to the
ability of human beings to exchange ideas with one another via the Internet-- the latest mode of
global communication.
The Internet or "World Wide Web" as it is sometimes called, represents one of the greatest
technological achievements of the 20th century. Indeed, as mankind approaches the dawn of the
21st century, we should recognize that the Internet has brought people from the four corners of
the earth closer together than they could have possibly imagined just 10 years earlier, and opened
doors that would have taken triple the amount of time to open before the establishment of this
highly complex, yet easy to use network of computers and people.
Trademark owners and their representatives throughout the world are struggling with the
emerging issues presented by the proliferation of electronic communication, specifically as these
issues affect protection for trademarks and domain names. International Trademark Association
(INTA) has contributed its resources, volunteers and staff to explore the intersection between
trademarks and domain names. Where do these two topics interconnect? How do they relate to
one another? What are the problems that have arisen as a result of their convergence? Finally,
how can we plan so that the problems of today can be avoided in the future?
This "white paper" is an attempt to answer these and other important questions. It is
designed to offer lawyers, engineers, students and "web junkies" and other interested individuals,
the opportunity to explore a number of related areas, including:
* the nature, history and importance of trademarks in global commerce;
* the history of the Internet, its global nature and the role of domain names in acknowledging a presence on the World Wide Web;
* the legal disputes in courts around the world which have arisen due to the intersection of trademarks and domain names; and,
* the proposals put forward by various individuals and organizations to solve the problems experienced by trademark owners around the world.
II. Basics of Trademark Law
This section is intended to give the reader a brief overview of trademark law. An
understanding of the function and purpose of trademarks is essential to fully understand the
context of the role and the function of Internet domain names in the emerging marketplace.
A. What is a Trademark?
While there is no international trademark law per se -- for the most part trademark law is
nationally based -- many countries are signatories to the World Trade Organization's Trade
Related Aspects of Intellectual Property (TRIPs) Agreement (1994) which defines minimum
standards for trademark protection. Article 15(1) of the TRIPs Agreement states:
Any sign, or any combination of signs, capable of distinguishing the
goods or services of one undertaking from those of other
undertakings, shall be capable of constituting a trademark. Such
signs, in particular words including personal names, letters,
numerals, figurative elements and combinations of colors as well as
any combination of such signs, shall be eligible for registration as
trademarks. Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make
registrability depend on distinctiveness acquired through use.
Members may require, as a condition of registration, that signs be
visually perceptible.
B. Origins and Basic Principles
Although the legal systems of almost every nation in the world encompasses trademark
law in the form to recognize and protect the identification of the source and/or quality of goods,
there is currently no international harmonization of worldwide trademark law. Most countries are
signatories to the Paris Convention, an international agreement which provides that member
nations shall give foreign nationals the same treatment as the member nations provide their own
citizens.(1) However, this guarantee of equal treatment in no way creates substantive rights in the
member nations who have signed the treaty. The common law/civil law dichotomy makes
international harmonization more difficult, although such efforts are underway, such as through
the TRIPs Agreement mentioned above.
1. Common Law
Under a common law regime, a trademark owner gains exclusive rights to a trademark by
adopting and using a trademark which allows consumers to identify goods which emanate from
the trademark owner.(2)
The requirement that the trademark be "distinctive" to a particular
producer or distributor is the linchpin of common law trademark rights. Accordingly, common
law rights to a mark may be limited to only those geographic regions in which the trademark
owner offer goods or only in connection with the types of goods offered by the trademark owner
if the "distinctiveness" of the trademark is similarly limited. Common law countries include the
British Commonwealth countries or prior colonies, such as Canada, the U.S., Singapore, Hong
Kong, Australia and India.
Common law rights in a trademark are lost if the trademark owner no longer uses the trademark. This is known as trademark "abandonment."(3)
2. Civil Law
In the civil law countries, registration of a trademark is the primary way to obtain rights.
The civil law countries are those that follow the Code Napoleon, Roman law, or other European
Continental codes, such as Germany and others including Japan, France, Spain, Italy, Korea,
Austria, China, and Latin America.
C. Functions of Trademarks
1. Protection of Consumers
a. Origin Function: Preventing Consumer Confusion
The primary public policy behind the acknowledgment of trademark rights is the
protection of consumers. As set out by the U.S. Supreme Court, "The law of unfair competition
has its roots in the common-law tort of deceit: its general concern is with protecting consumers
from confusion as to source."(4) The use of a confusingly similar trademark may cause a consumer
to purchase goods of different or inferior quality than those the consumer seeks, based on
information the consumer has gathered concerning the original trademarked goods.
In this sense, a trademark serves as a form of "shorthand" upon which consumers can rely
in making rational product selections. If a consumer is pleased with the quality and features of a
trademarked product, the consumer can then quickly and easily find the same or other goods
produced by the trademark owner and can expect that the goods offered under the mark are of the
same high quality as the initial purchase. The use of a trademark by consumers reduces the
information cost associated with assessing product quality and allows consumers to conserve
resources which might otherwise go into gathering product information.
b. Quality Function
Because consumers can use trademarks to identify goods which will meet their needs, an
incentive is created for manufacturers and distributors to meet the reasonable expectations of
consumers with regard to product quality. Accordingly, the use of trademarks tends to encourage
trademark owners to maintain consistent standards of quality for goods and services offered under
their marks. The value inherent in achieving consumer loyalty to a particular trademark through
the maintenance of consistent product quality is referred to as the "goodwill" associated with the
trademark.(5)
2. Protection of Property (Goodwill)
The "goodwill" inherent in a trademark can be a valuable intangible property asset
belonging to the trademark owner. The law recognizes this value and allows the trademark owner
to prevent unauthorized uses of the trademark which might tend to diminish the value of
the mark (i.e., those uses which prevent consumers from using the trademark as a "shorthand"
means to identify the goods of the trademark owner). The trademark owner has the ability
through infringement proceedings to protect its investment in creating the goodwill.
However, if market forces other than, for example, the attempt by another producer to
trade upon the goodwill established by the trademark owner, cause the trademark to cease serving
its function as an indicator for the source of goods sold under the trademark (that is, the mark
loses its inherent "goodwill") the trademark owner loses the right to prevent third parties from
using the mark. This is the case when a trademark, through uncontrolled use by the public,
becomes the generic name for the goods offered by the trademark owner and others.(6)
D. Scope of Protection
1. Trademark Classification
As mentioned above, trademark protection arises from the ability of the trademark to
distinctively identify the source of goods. Accordingly, under both the common law and civil law
approaches, trademark rights are acquired only as to specific goods or services. Typically,
therefore, the scope of trademark protection only extends to those goods which consumers are
likely to believe emanate from a single source. Consumers' belief in a single source is most likely
to occur if the goods are related (such as brushes and paint) or if the trademark owner offers a
wide variety of goods under its trademark such that consumers will see the new goods as an
expansion of the trademark owner's current product line.
For purposes of trademark registration, most countries use the International (Nice)
trademark classification system administered by the World Intellectual Property Organization
(WIPO). Applicants for registration are required to identify the relevant class(es) of goods or
services for which they seek registration. Applicants are also required to identify the "particular
goods and services" with which the mark is used. The allocation of the identified goods to a
particular class does not expand or narrow the scope of the applicant's rights in the identified
goods, but is merely a means of administratively categorizing the applicant and resulting
registration.
2. Protection For "Well-Known" Marks
In addition to receiving trademark protection for those marks which serve as a distinctive
indicator of source for a particular class of goods, owners of "well-known" trademarks may be
entitled to a broader scope of protection against use by others. In the international context,
according to Article 6 bis of Paris Convention, member countries are required to extend
protection to marks that are designated as "well-known in that country" against use or registration
of any confusingly similar mark for "identical or similar goods." Some countries extend well-known protection to such marks. In the U.S. owners of "famous" marks may seek to protect their
marks from "dilution" under the Federal Trademark Dilution Act of 1995 (Lanham Act, Section
43(c)) or analogous state statutes.
Dilution protection is designed to guard against "the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods"(7) or goods which consumers would not see as related enough to emanate from the same source. According to the anti-dilution section found in the U.S. Lanham Act, dilution is "the lessening of capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of -- (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake or deception."(8)
Protection of this sort gives
trademark owners a means by which to protect their "famous" marks even when traditional
infringement is not present.
III. Background of the Internet and the Domain Name Registration Process
A. Brief History of the Internet
What is known today as the Internet has its roots in a network set up by the U.S.
Department of Defense in the early 1970's. This network (ARPAnet), established by the
Advanced Research Projects Agency (ARPA), connected various military and research sites and
was itself a research project on how to build a distributed communications system that could
survive a nuclear attack. The methods ARPA developed included a "protocol" allowing dissimilar
computer systems to communicate, and a method that could route data through multiple
communications paths using groups of data with their own destination addresses incorporated into
the system. These methods were so successful that many other networks adopted the standards
they used, known today as TCP/IP.
In the late 1980's the National Science Foundation (NSF), a U.S. federal agency, started
expanding its own NSFnet, using the technology developed by ARPAnet, and a high speed
backbone network. This was done at first to allow college campuses and research centers to use
the NSF's supercomputers, but increasingly the connections were used for e-mail and for
transferring data and information files between sites. This growth and the subsequent upgrading
of the system led to broader horizons for Web users and the opportunity for a wider range of
groups to become involved in the evolution of what we commonly call the Internet.
Although commercial entities had the opportunity to obtain an online presence in the
1980s, few chose to do so. At first, the overwhelming majority of the Internet's users were
government agencies, universities and research centers. Few people outside of these
environments had any access to or interest in the Internet and most commercial activity was
banned under the National Science Foundation's then existing "Acceptable Use Policy."
Additionally, the Internet was impractical for mass consumer participation because it was a
medium that allowed for the transmission of text only, requiring the learning of arcane UNIX user
interfaces and commands. Also, it was difficult to access from a home or office telephone line and
required the purchase of an expensive computer.
Since 1993, computer technology, fueled by billions of dollars in new investments, has
developed the capacity to view pictures and video and to hear high quality sound over the
Internet. In addition, access from common telephone lines has become relatively cheap and
plentiful, where permitted by telecommunications infrastructure, and consumer user interfaces are
relatively simple, requiring less computer competency. Computers, many of which are sold as
"Internet ready," are decreasing in price and Internet access is now available on "dumb" terminals
and via cable television.
As a result, today the Internet is truly a global communication system serving
governments, schools, businesses and consumers. Millions of people communicate daily across
the "Net," sending e-mail, documents, pictures and related material, establishing Web pages (also
referred to as home pages) to inform, advise and solicit customers or potential customers. As
products and services are marketed electronically, in every way, the Internet has become a new
channel of commerce. The developing world of online commerce, where consumers can learn
about and order products and services with a few simple clicks of a mouse, renders the
identification and quality guarantee functions of trademarks, in addition to the traditional origin
function, all the more essential. While online, consumers have even less opportunity to view the
actual goods in a selling environment or to interface with service providers or store personnel to
learn the origin of a product. The trademark or domain name may be the only assurance that the
online consumer is getting what he or she expects.
B. The Nature and Value of Domain Names
Domain names are relevant, because consumers often perceive them as performing, in
electronic commerce, much the same role as trademarks and trade names historically have played
in more traditional modes of business.
1. Technology
From a technological perspective, every computer connected to the Internet is assigned a
numeric address, with which other computers on the network use to communicate. A typical
numerical Internet address is a string of numbers, such as 189.45.231.67. Because these numeric
addresses are difficult for people to remember, Internet authorities also assign alphanumeric
addresses or "domain names." Examples of domain names include "whitehouse.gov" or
"nestle.com." A full e-mail address also contains one or more preceding designations which
identify the specific person and/or department within that organization, i.e., "jones@nestle.com."
Thus, from the standpoint of the consumer of goods and services, an Internet domain name
identifies the company, school, institution or organization to which a seller is attached. In short,
domain names, like trademarks, often are used to identify a source of goods or services.
2. Value to Business
Initially, businesses may have given no more thought to domain name selection than to
their telephone numbers--as long as each one was unique they allowed the Internet to function.
Apart from this primary function, domain names had little significance and were often chosen by
technical personnel who paid little or no attention to marketing considerations.
All of this changed with the advent of the World Wide Web as an advertising medium and
marketplace. Because people use domain names to locate Web resources, companies doing
business online want domain names that are easy to remember and that relate to their products,
trade names and trademarks. For example, a florist might find the domain name "flowers.com"
very valuable to identify it as a source of flowers. Likewise, owners of famous trademarks (such
as Microsoft) typically register their trademarks as domain names (such as "microsoft.com").
This kind of identification can be highly important to a business that conducts commerce on the
Internet. Moreover, many consumers who do not know the domain name of a company will first
choose the principal trademark of such company to locate the company's web site.
As a result, we have two separate yet interrelated indicators of goodwill: the traditional,
i.e., trademark indicator, and the electronic, i.e., domain name indicator. There is an opportunity
of potentially mammoth proportions, to either destroy or fortify the existing trademark system -
depending on how domain name registry systems are ultimately designed throughout the world.
C. How Domain Names are Assigned in the United States
The present system for assigning domain names was established by several private and
government organizations working together, including NSF, the Internet Society (ISOC), and
Internet Assigned Numbers Authority (IANA) among others. Together they established InterNIC
(Internet Network Information Center), a virtual organization, to provide services in the United
States. InterNIC, through NSF, contracted with Network Solutions, Inc. (NSI), a private
company, to register names for domains with the root identifiers (also known as top level domains
or TLDs) .com, .org and .net (for entities which are commercial, organizational and network
infrastructure in nature, respectively).
Unrelated to NSI, in virtually every country around the world (including the U.S.), independent agencies or individuals assign domain names using two-letter country code TLDs such as .de for Germany and .ca for Canada. These operate in tandem with .com (i.e. "acme.com.uk"). Although not necessarily initially envisioned as a global TLD, .com has become a popular choice for many companies in and outside the United States, providing an alternative to the country code TLDs.
Because the Internet is a collective set of computers sharing common communications
protocols, any computer on the Internet, anywhere in the world (assuming the necessary
hardware, software and communications lines are available) can communicate by e-mail, host Web
pages, or send and receive files. Therefore, for the average Internet user, there is no practical
(functional) difference between an Internet site with the domain name "abc.com" and one with the
domain name "abc.ca." Each can be as easily accessed as the other, and, theoretically, each is
potentially confusing with the other. Hence, INTA members consider the likelihood of confusion
a particularly vexing problem in the international global community. The confusion arises
between one domain name and another, and between one right and another (i.e., trademarks and
domain names).
D. The Domain Name Registration Process in the United States
The first step in acquiring the right to use a domain name is to contact (usually through a
service provider) the administrator of the desired TLD. As an example, if one is applying through
NSI, an application must be submitted (electronically) for a domain name that includes the
appropriate TLD coupled with the desired second level domain (SLD). NSI, like most registries,
assigns domain names on a first come, first served basis. By the end of 1995, the number of
".com" domains names exceeded 200,000 and by the end of 1996, the number of ".com" domain
names exceeded 600,000. As a result, domain names including the ".com" suffix now form the
overwhelming majority of names on the Internet and the longer one waits to apply to NSI for a
".com" name, the greater the chance that one's choice will not be available.
If the requested domain name is not already assigned the name will be approved by NSI.
At one time, NSI had a general policy of limiting domain name registrations to one per
organization. However, the policy was enforced selectively (examples of multiple registrations
abound, including one company which registered about 200 domain names covering all of its
trademarks and a number of generic terms), and no longer is in force.
E. NSI Dispute Policy: What Happens When Domain Names and Trademarks Conflict
A trademark owner can no longer assume that its mark will be available as a SLD with the
".com" TLD, as someone else may have already received that domain name assignment. This may
merely be coincidental -- such as where two companies happen to own the same name or mark, or
an individual's name may be the same as a company's mark -- or it may reflect a deliberate
misappropriation by someone hoping that well-funded entities will pay to have domain names
incorporating their trademarks transferred to them. Even still, those trademark owners who do
obtain their desired SLD -- reflecting a key brand or trade name -- may find that SLD's which are
only slight variants of the mark or name are being obtained by other parties.
As disputes involving domain names and trademarks have arisen, registries have found themselves being pressured to take sides by denying, granting or suspending a domain name in controversy. Most registries, including NSI, maintain that domain names have no legal significance, but are used only to address various sites in cyberspace. Further, NSI states that its only purpose is to register domain names, not to perform trademark searches or arbitrate trademark rights. NSI contends that it is not equipped or funded to perform such searches, nor should it be responsible for any infringement that takes place involving the domain names it registers.
However, beginning in July of 1995, NSI instituted a policy intended to address certain of
these issues by trying to set forth a procedure to follow should disputes between parties claiming
rights in the same domain names arise. The policy seeks to avoid liability and prevent potential
lawsuits by third parties against NSI. Since July 1995, NSI has issued two revisions to that
policy, the most recent effective September 9, 1996.
For trademark dispute purposes, the more pertinent parts of the current NSI policy include
the following:
(1) An Applicant must submit a statement that states, to its
knowledge, the domain name requested does not interfere with or
infringe the right of third parties.
(2) An Applicant must have a bona fide intention to use the Internet
domain name on a regular basis.
(3) An Applicant must not seek the domain for any unlawful
purpose.
(4) The owner of a U.S. federal or foreign trademark registration
may challenge NSI's assignment of an "identical" SLD if the domain
name holder began use after the challenger's trademark registration
or first use date. The challenger sends NSI a certified copy
of its registration and a copy of its protest letter to the domain
name holder. Once NSI's dispute policy is invoked, NSI gives the
domain holder 30 days to prove either that its use of the domain
predates both the first use of the challenging party's registration and
the effective date of that registration or that the domain holder has
its own trademark registration, in which case the domain holder will
be able to keep the domain, subject to an obligation to indemnify
NSI. If, however, the domain holder cannot demonstrate the
required prior domain use or produce a trademark registration
certificate, then the domain holder must give up the domain, with a
90 day phase out. The disputed domain then goes into a "hold"
status, where it is not available to anyone, pending the outcome of
the dispute between the parties. Without a court order or a
decision from an arbitration panel, the best result a challenger can
expect is for NSI to place the domain name registration on hold.
A problem with NSI's policy is that the same rules apply whether the domain name holder
is merely an extortionist or has a legitimate business interest. This problem typifies the difficulty
inherent in trying to establish a dispute policy under these circumstances where there may be many
equities to consider.
F. Registry Policies Worldwide
NSI is an exception; most registries around the world do not have a dispute policy, but
follow RFC 1591, issued by Jon Postel of IANA, in March 1994, which sets forth an overview of
the domain name system, and states:
Rights to Names
1) Names and Trademarks
In case of a dispute between domain name registrants as to the
rights to a particular name, the registration authority shall have no
role or responsibility other than to provide the contact information
to both parties.
The registration of a domain name does not have any trademark
status. It is up to the requestor to be sure he is not violating
anyone else's trademark.
While it is impossible to review in this paper, registry policy in force around the world,
some reference pointers can offer assistance. Two of the more helpful, although nowhere near
exhaustive, indices of worldwide NIC policies are located on the Internet at:
http://www.digidem.com/legal/domain.html; and
http://www.law.gwu.edu/lc/internic/international/reg2.html.
For a list of some of the NIC sites referenced on these sites, please see Appendix I.
At least two registries appear to actively involve themselves in some aspects of
determining trademark rights. The Bulgarian (http://www.digsys.bg/bg-nic/) and Irish
(http://www.ucd.ie/hostmaster/ie-obtain.html) policies contain almost identical language. Both
contain a section on "Availability" which includes the following text:
§3.4: A domain name shall correspond with reasonable closeness
to the name of the applicant or to an abbreviation or trademark by
which the applicant is well known.
§3.5: Where the proposed name is either already in use, or appears
likely to be claimed by another applicant, another name shall be
chosen. For example, such names as IBM.IE, DUBLIN.IE,
IRFU.IE, and RUGBY.IE are protected by this requirement. (The
Bulgarian dispute policy reads, "For example, such names as
IBM.BG, SOFIA.BG, EMAIL.BG, and Internet.BG are protected
by this requirement.")
§3.6: Where the proposed name is in the opinion of the naming
authority likely to lead to confusion, another name shall be chosen.
In the Slovak Republic's policy, there is a statement about domain name removal but no
details about its implementation:
A company can request removal of a domain if the domain is
identical with [a] registered trademark in the Slovak Republic in
the case that the registration of the trademark was submitted before
the domain was registered.
A number of registry policies contain explicit language to the effect that they are in no way
responsible for handling trademark disputes and requiring that these be settled through normal
legal methods.
IV. Court Decisions and Disputes on Registration
A. U.S. Disputes Over Domain Names
Not surprisingly, a number of disputes have arisen between trademark owners and domain
name holders. These disputes have occurred in the U.S., as well as other nations.
One of the most publicized early disputes was between McDonald's Corporation and the writer, Josh Quittner.(9)
Quittner was in the process of writing an article about businesses that fail
to register their trademarks as Internet domain names, when he discovered "McDonald's" was not
registered. Quittner contacted McDonald's regarding its failure to protect its trademark, but
received no response. Quittner subsequently registered "McDonald's" as his own domain name,
activated a site, established the e-mail address, "ronald@mcdonalds.com" and wrote an article
about his endeavors.
Quittner did not demand money from McDonald's in exchange for the domain name. However, he did request that McDonald's purchase computer equipment for a public grade school. Eventually, McDonald's agreed to donate $3,500 for the equipment in exchange for Quittner's domain name.(10)
Basically, the cases that have arisen can broadly be divided into two types. The first
consists of the cases where a third party purposefully has chosen a domain name which either
clearly belongs to another party or is associated with another party so that its use by a third party
can have a detrimental impact on the mark. In the second type of case, it is not clear that the
domain owner registered a particular name to trade off a trademark owner's goodwill.
1. Intent to "Trade Off" of a Trademark
Some domain registrants have used their sites to harass or malign the owner of the
corresponding trademark, or to trade off of its goodwill. A notorious example of this is the case
of Kaplan Educational Center, Ltd. v. Princeton Review Management Corp..(11) Both Kaplan and
Princeton Review are in the business of offering preparatory courses for standardized tests.
Princeton Review registered "kaplan.com" as its domain name and used the site to post
disparaging remarks about the Kaplan course to those who sought information about it. In
arbitration, Princeton Review relinquished the domain name, but vowed to register a similar name,
namely "kraplan.com," for the same purpose.
In MTV Networks v. Curry,(12) MTV sought to reclaim "mtv.com" which had been
registered by a video jockey of MTV who subsequently left its employ. As part of the settlement,
MTV obtained the domain name.
In Avon Prods., Inc. v. Wong,(13) Avon alleged that defendant's registration and use of its
trademark as a domain name "avon.com" would result in the dilution of its trademark. Avon also
claimed that the defendant infringed its trademark and engaged in unfair practices. As a result of
a settlement, Avon was given control of the domain name.(14)
Kaplan, MTV, Avon and other early cases were settled before substantive rulings by the
courts on the infringement claims. However, by the middle of 1996, courts began deciding these
claims at least in the context of preliminary relief. For the most part, courts have granted such
relief in cases where the defendant's use of the domain name could tarnish plaintiff, or in clear
instances of extortion. The most common finding has been dilution of a famous mark under the
new federal dilution provision of the Lanham Act. (Supra p. 5-6.)
Perhaps the most compelling cases are those in which a domain name consisting of a
famous mark is used for a pornographic site. In Hasbro, Inc. v. Internet Entertainment Group,
Ltd.,(15) the court issued a restraining order prohibiting the Internet Entertainment Group from
using the domain name "candyland.com." Hasbro challenged the use of this domain name
because, for 47 years, Hasbro has manufactured a children's game named CANDYLAND. An
important factor was that the "candyland.com" site was used for explicit adult materials. The
court found the HASBRO trademark dilution claim likely to succeed on the merits and enjoined
use of the "candyland.com" domain name. Tellingly, the defendant had apparently also reserved
the domain "parkerbrothers.com."
In yet another case decided on the basis of dilution, Toys "R" Us Inc. v. Akkaoui,(16) the
court granted a preliminary injunction enjoining use of "adultsrus.com," "Adults R Us" or any
other colorable variation of plaintiff's mark. The court found TOYS "R" US and KIDS "R" US
famous and distinctive marks and eligible for protection from dilution under the Lanham Act.
Citing to the Hasbro case, infra, the court found that "Adults R Us" tarnishes the "R" US family of
marks by associating them with a line of sexual products that are inconsistent with the image Toys
"R" Us has striven to maintain for itself.
Other cases in this category include those in which the defendant clearly registered a
particular domain name in an attempt at extortion. In Intermatic, Inc. v. Toeppen,(17) the
defendant registered "intermatic.com," which was a registered trade name and trademark of
plaintiff. The defendant, in addition to this domain registration, also had registered
approximately 240 domain names, many being trademarks of well-known businesses, including
"deltaairlines.com," "eddiebauer.com" and "neiman-marcus.com." The court referred to the
defendant as a "cyber-squatter."(18) Toeppen had ceased use of the domain name before the
effective date of the new Federal Trademark Dilution Act. However, the court held that
"Toeppen's intention to arbitrage the 'intermatic.com' domain name constitutes a commercial use"
and granted summary judgment on plaintiff's dilution claims.(19)
Cardservice International, Inc. v. Webster R. McGee and WRM & Associates, et. al,(20) is
noteworthy for the court's grant of attorney's fees awarded on the basis of McGee's acts of bad
faith.
Plaintiff had registered the mark CARDSERVICE INTERNATIONAL with the United
States Patent and Trademark Office on November 29, 1994, and used the mark for credit and
debit card processing. According to plaintiff, McGee sought to become a representative of
Plaintiff. In March of 1995, and without plaintiff's permission, McGee registered the domain
name "cardservice.com" with NSI.
The court previously entered a preliminary injunction against McGee to end all direct and
indirect use of any variation of "Cardservice" on the Internet and to delete all content of
"cardservice.com" from the Internet site. The court found that McGee violated that injunction by
referring to Cardservice International at his Internet site under a different domain name and
intending to use a new domain site of "csimall.com" (derived as an abbreviation of Plaintiff's name
and mark) to engage in "guerilla warfare" on the Internet against Plaintiff.
The court ruled from the bench that a permanent injunction should be granted on the basis
of likelihood of confusion under the Lanham Act. Further, the court found that the bad faith
demonstrated by McGee warranted an award of $59,691.25 in attorneys fees, in addition to the
$3,665 amount previously awarded for Plaintiff's expenses in pursuing the Order to Show Cause
Why Defendant Should Not Be Held In Contempt.
2. No Obvious Intent to Trade Off of Trademark
In some cases, it is not clear whether the defendant intended to trade off of the plaintiff's
goodwill in adopting a domain name identical to an established mark.
Comp Examiner Agency, Inc., v. Juris, Inc.,(21) in which the court found that the domain name "juris.com" is likely to infringe the federally registered trademark JURIS, is an example. Juris offers law office management software and has provided goods and services under the JURIS mark since 1980. In 1988, Juris obtained a federal trademark registration of JURIS, under which computer programs and related goods and services are sold. In June 1995, Juris' application to register "juris.com" as a domain name was rejected on the basis of Comp Examiner Agnecy's (TCE) prior registration of the identical domain name in 1993. Upon demand from Juris (defendant and counterclaimant) that TCE (plaintiff and counterclaim defendant) cease and desist from using the juris.com domain and web site through which TCE was selling legally-related services, TCE filed a declaratory judgment action and sought to cancel Juris' trademark registration on various grounds. Juris counterclaimed and later moved for a preliminary injunction, which was granted on the basis of likelihood of confusion. The court issued a broad injunction against use of juris.com, juriscom.com, or any confusingly similar domain name or mark in connection with TCE's activities.
In ActMedia, Inc. v. Active Media Int'l, Inc.,(22) the plaintiff owned a registration of the
mark ACTMEDIA and used the trade name for a number of years. The court found that the
reservation of the domain name "actmedia.com" by the defendant without the plaintiff's consent
was likely to cause confusion and dilution under state and federal law.
In Gateway 2000 Inc. v. Gateway.com, Inc. and Alan B. Clegg,(23) the court denied
Gateway 2000 Inc.'s motion for a preliminary injunction, permitting defendant to continue use of
the domain name "gateway.com."
The defendant, a computer consulting business, registered the domain name over six years
ago and used "gateway.com" as an electronic address in May, 1988. Plaintiff began its company
in 1985 as Gateway 2000 and obtained registration of GATEWAY 2000, INC. in 1993.
Plaintiff filed suit claiming, inter alia, trademark infringement and dilution. Although the court found plaintiff appeared to own a famous mark, there was insufficient evidence at this stage in the hearing to establish plaintiff's mark was famous at the time the defendant's use began.
Further, the infringement claim was denied as there was insufficient evidence demonstrating that
previous to defendant's use, plaintiff used the name "Gateway" as opposed to "Gateway 2000."
3. NSI as a Defendant
To stave off a domain name from being placed on hold, the domain name owner sometimes will add NSI as a defendant.(24)
For example, in Roadrunner Computer Systems, Inc. v.
Network Solutions, Inc.,(25) Roadrunner Computer Systems ("RCS") sued to have NSI enjoined
from placing its domain name on hold because of a trademark challenge over the domain name
from Warner Bros.
Warner Bros. obtained a federal trademark registration for ROAD RUNNER on August 9, 1995 and sought to challenge RCS's use of the domain name "roadrunner.com." RCS had offered computer services on the Internet using the "roadrunner.com" domain name since it was issued by NSI in May 1994.
RCS claimed it had not been informed of the NSI Dispute Policy until Warner Bros. challenged its domain name. In response to the challenge and to prevent NSI from putting its domain name on hold, RCS obtained a defensive trademark registration of ROADRUNNER from Tunisia. However, NSI did not accept the Tunisian registration because RCS did not submit it within the 30-day period. NSI counterclaimed, stating the Domain Name Policy was not subject to court review.
The Roadrunner case was dismissed by the court on June 21, 1996. The court held that
the original dispute no longer existed between NSI and RCS because Warner Brothers agreed to
obtain another domain name, "Road_Runner.com."
Since the Roadrunner lawsuit, there have been several other cases in which NSI has been sued by domain name holders requesting their domain name not be terminated by NSI, and challenging NSI's dispute policy. In each, the domain holder has denied that its activities constitute trademark infringement.
In Data Concepts, Inc. v. Digital Consulting, Inc.,(26) was filed. In this suit, Data Concepts sought a temporary restraining order and injunction to prohibit NSI from removing "dci.com" from the registry, despite its use since 1993, because Digital Consulting owned the federally registered trademark "DCI." NSI agreed to allow Data Concepts to keep its domain name, if indemnified. On May 24, the parties agreed that NSI would not stop Data Concepts' use of the "dci.com" domain name until the court entered an order to that effect. Data Concepts then dropped NSI as a party to the suit. This case is particularly important in terms of considering the efficacy of and difficulties inherent in domain name dispute policy. Here the domain holder apparently had superior common law (unregistered) trademark rights, yet was subject to loss of its established domain name based on a challenge from the holder of a trademark registration certificate.
On May 30, 1996, Philip L. Giacalone, owner of the "ty.com" domain name, filed a
lawsuit against NSI and Ty, Inc., a manufacturer and distributor of stuffed animals.(27) Giacalone
used the domain name, named after his son, for advertising his computer consulting business. Ty,
Inc. owns the federal trademark registration of TY, which appears in a red heart design. Ty Inc.
first offered to purchase Giacalone's domain name. After Giacalone rejected the offer, Ty, Inc.
sent a cease and desist letter to Giacalone and a letter to NSI invoking its rights under the policy.
Giacalone moved for a temporary restraining order and preliminary injunction against both Ty and
NSI based on his belief that NSI would be suspending his domain name and Ty would be filing a
lawsuit. In addition to the usual causes of action, Giacalone has asserted a new cause of action
entitled "trademark misuse" alleging that Ty, Inc. is unlawfully attempting to
extend the scope of its trademark registration to areas where it has no legal right to protection.
A temporary restraining order was granted on June 3, 1996 and a preliminary injunction was granted on June 13, 1996. The case was settled when Giacalone agreed to transfer the domain name to Ty, Inc. for an undisclosed amount.
Another recent case is Clue Computing, Inc. v. Network Solutions, Inc.,(28) where Hasbro
objected to Clue Computing's domain name "clue.com" after it had been in use for two years.
NSI planned to take away Clue Computing's domain name which, according to its owner, would
put him out of business because 80% of his business was on the Internet. On June 25, 1996, the
state court granted a preliminary injunction that was the first to enjoin NSI from making any
change to the use and registration of a domain name until permitted to do so upon order from the
court. NSI filed an interpleader complaint in Colorado federal court naming Clue and Hasbro.
The judge dismissed that complaint on two grounds. First, because the state court issued an
injunction preventing NSI from suspending "clue.com" domain name, NSI did not have the right
to deposit the domain name with the court for judgment. Second, and perhaps more significantly,
the court found that NSI could not assert it was an "innocent stakeholder" in the typical
interpleader situation, but rather was an interested party to a breach of contract proceeding.
B. Disputes Outside the U.S. Over Domain Names
Outside the U.S., there have been reported decisions in domain name cases in Germany, the U.K. and the Netherlands.
In Germany, the Court of Landgericht Mannheim held that the private registration of the domain name "heidelberg.de" infringed on the City of Heidelberg's rights to its own name. (29)
In a case which bears a resemblance to the above mentioned "cybersquatter" Toeppen case, the U.K. High Court recently ordered a Michael Lawrie to hand over the domain name "harrods.com" to the famous London department store. The High Court held that the registering of this domain name, along with 50 other names corresponding to well-known companies, constituted infringement of Harrods' registered trademarks as well as passing off. (30)
Such trademark infringement was not found in two domain name cases in the Netherlands
brought before the President of the Amsterdam Court in 1996. In the first case, a German Internet provider claimed that the use of the domain name "XXLINK.nl" infringed on its Benelux trademark XLINK. This claim was rejected because of the lack of similarity of the services offered by both companies.(31)
The second Dutch case was initiated by the owner of the Benelux trademark "Ouders van nu" who opposed the use of the domain name "ouders.nl." This claim was also rejected by the President of the Amsterdam court who concluded that in view of the descriptive nature of the Dutch word "ouders" (which means "parents"), no infringement could be found.(32)
In a third Dutch case, Flevonet, decided by the Cantonal Judge Lelystad on June 3, 1996,
two persons who announced the beginning of a new business offering certain Internet services in
September 1995 under the trade name FLEVONET opposed the use of the domain name
flevonet.n1 by a third party which domain name was registered in January 1996 with Centrum
voor Wiskundige Informatie (CWI), the former institute responsible for registration of ".n1"
domain names. On the basis of the Trade Names Act the Cantonal Judge gave an injunction
against the use of the domain name flevonet.nl because there was likelihood of confusion with the
prior trade name.
In the most recent French case, Atalntel, an audiovisual company, invoked its company name and
trademark ATLANTEL to oppose the company Icare's registration of the domain name
"atlantel.com." In a summary judgement dated July 22, 1996, the Tribunal de Grande Instance de
Bordeaux enjoined Icare from further use of the Atlantel mark and ordered that the "atlantel.com"
domain name be withdrawn.(33)
C. Jurisdiction
As is true of trademark law, there is no international law of jurisdiction. In the context of the convergence of trademarks and domain names in cyberspace, questions arise as to where jurisdiction is proper should litigation ensue. Only one domain name case to date addresses these jurisdictional issues.
In Panavision Int'l v. Toeppen,(34) Mr. Toeppen, an Illinois resident, had registered
"Panavision.com" and informed Panavision, a California corporation, that he would discontinue
use of the domain name for $13,000. In reviewing the three prong test for specific jurisdiction,
the California court found personal jurisdiction existed by emphasizing Toeppen's conduct of
allegedly committing a tort against the state of California. It is interesting to note that the court
felt obligated to state that it was not holding that Toeppen was 'doing business' on the Internet,
but rather that jurisdiction was based on Toeppen conducting a scam against the state of
California.
In Zippo Manufacturing Company v. Zippo Dot Com, Inc.,(35) plaintiff, owner of the mark
ZIPPO for lighters, filed a complaint alleging violations of the Lanham Act and state dilution
claims against defendant's Internet news service providers and owner of the domain names
"zippo.com," "zippo.net" and "zipponews.com."
Defendant sought to dismiss for lack of personal jurisdiction and improper venue. The
court noted that defendant contracted with 3,000 individuals who subscribed to the news service
and entered into agreements with several Internet access service providers in Pennsylvania (two of
which were located in the Western District of Pennsylvania). The court found jurisdiction existed
as defendant processed Pennsylvania resident applications and assigned them passwords to use the
service. The fact that only a small percentage of clients were located in Pennsylvania was
irrelevant. For the above reasons, the court also found venue proper.
V. Domain Name System Models: Current and Proposed
In order to better evaluate solutions to the problems faced by trademark and domain name
owners, the following provides a summary of several (but not all) new domain name proposals by
various individuals and organizations interested in the issues. A review of the current model is
also presented for purposes of comparison.
A. Current InterNIC Model
1. Background
As noted above, the current Internet domain name system was established in the 1980's
with the intention of supporting alphanumeric names that would be easy-to-remember alternatives
to numeric Internet protocols. RFC 1591, a working document of IANA dated 1994 outlines the
current model.
A set of "top-level domain names" (TLDs) was created by IANA which includes .com (for commercial), .edu (for educational), .net (for computers of network providers, although other commercial entities have registered under this TLD), .org (miscellaneous organization), .gov (now only agencies of the US Federal government), .mil (US military), and .int (for organizations established by international treaties), and the two letter country codes from ISO-3166 (e.g., .fr for France; .jp for Japan). Registration in .com, .net, and .org is available to anyone in the world. The .us domain, with its geographical sub-domain structure is likely, for that and other reasons, rarely sought.
The central Internet Registry (IR) is the InterNIC for .com, .edu, .org, .net, and .gov. The Reseaux IPEuropeens Network Coordination Centre (RIPE NCC) is the regional registry for Europe and the Asia Pacific Network Information Center (APNIC) is the regional registry for the Asia-Pacific region, while the InterNIC administers the North America region, and all the as yet undelegated regions.
In the country TLDs, there is a wide variation in structure. In some countries the
structure is very flat, while in others there is substantial structural organization. For example, in
some country domains, the second levels are generic categories (such as, .ac, .co, .go, and .re),
while in others they are based on political geography, and in still others, organization names are
listed directly under the country code.
2. Issues
The negatives of the current system have already been outlined elsewhere in this paper. In
summary, the use of vanity names, the dependence on one central registry (NSI) for the popular
.com TLD which had drafted its own dispute policy, and the sometimes limited opportunity to
register as a domain name one's own trademark or trade name has caused harm to the rights of a
number of intellectual property owners.
B. International Ad Hoc Committee (IAHC) Proposal(36)
1. Background
The most current plan was released on February 4, 1997 by the International Ad Hoc
Committee (IAHC), formed under the auspices of the Internet Assigned Number Authority
(IANA) in response to issues that arose from a draft proposal put forward by Jon Postel (see
infra, p. 22). (Alternative approaches solicited from the public by the IAHC can be found at
http://www.iahc.org .) INTA, ISOC, Internet Architecture Board (IAB), IANA, WIPO and
International Telecommunications Union (ITU) were represented on the IAHC.
The IAHC plan calls for an increase from the current three generic Top Level Domains (gTLDs), i.e., .com, .org and .net, to a new total of ten (10).(37)
The seven new gTLDs will be: .firm; .store; .web; .arts; .rec; .info; .nom. All gTLDs will ultimately be shared among all registries. It is anticipated that between 20 to 30 new registries will be created, through a lottery selection process, during 1997. New registries will be dispersed throughout the regions of the globe.
All applications for SLDs in the gTLDs will be published on a publicly available,
publicized website, immediately upon receipt by the registrar. Such publication entries will
include:
Name of the SLD;
Contact and use information contained in the application;
A permanent tag or label indicating whether the applicant chose the
option of waiting 60 days prior to assignment of the requested SLD
or chose to forego the 60 day wait;
Entry validation using accepted digital signature and timestamping
techniques.(38)
Each application for a domain name under a shared gTLD will contain a clause whereby
the applicant agrees:
To participate in on-line mediation under the mediation rules of the
Arbitration and Mediation Center of the World Intellectual Property
Association (Geneva), if such mediation is initiated by a right holder
who wishes to challenge the domain name applicant's right to hold
and use the second level domain name.
To participate in binding expedited arbitration under the
corresponding rules of WIPO Arbitration and Mediation Center, if
such arbitration is initiated by a right holder who wishes to
challenge the domain name applicant's right to hold and use the
second level domain name.(39)
Challenges will be held on-line whenever possible. Nothing in the IAHC plan prohibits a plaintiff
from utilizing national courts.
The interim Policy Oversight Committee (iPOC) is the successor to the IAHC. The
mission of iPOC is to oversee the implementation of the IAHC plan. It is expected that the plan
will be activated on October, 15, 1997. IAHC, the new role of iPOC, trademarks and the
Internet, as well as the future of the "Web," were recently discussed at a WIPO meeting in
Geneva, Switzerland - May 26 through 30. Another WIPO meeting is scheduled for September
1and 2. Those wishing to signal their support for the IAHC can do so by signing the
Memorandum of Understanding (MoU).
2. Issues
It remains to be seen whether the addition of more gTLDs will result in a significantly
increased policing burden for trademark owners; and, whether any such additional burden is off-set by the existence of the on-line administrative domain name challenge mechanism or the other
protections built into the application process (such as the requirement of detailed contact
information, appointment of agent of service of process and submission to jurisdiction).
C. NSI's New Plan
1. Background
On April 17, 1997, NSI released a paper outlining its opposition to the IAHC plan. In
particular, NSI alleges the following problems with the IAHC proposal:
* It does not provide the incentive for TLD registrars to invest in improved services.
* Risks the fragile stability of the Internet.
* Too bureaucratic.
* Too narrow and does not address the total situation.
* Dispute resolution mechanisms appear unworkable and will lead to increased conflicts.(40)
To counter IAHC, NSI has proposed a plan that includes the following:
* Limited regulation
* Limit bureaucracy
* Minimize requirements for competition for the administration of gTLDs. This includes an unlimited number of gTLDs.
* Establishment of legal sponsorship. This includes a two- year interim period in which the U.S. government would assume control over the Internet.(41)
2. Issues
NSI's plan for the participation of the U.S. government would unnecessarily involve a national government, and contrary to the wishes of both the trademark and engineering communities, stifle industry self-regulation. In addition, an unlimited number of gTLDs poses policing problems for trademark owners, requiring them to spend infinite hours monitoring infinite gTLDs for infringing use of their marks.
D. Additional Proposals
The following section gives brief descriptions of additional proposals which have been offered by
interested parties.
1. The Postel Plan
The above referenced IAHC was formed as a result of the Postel Plan. The Postel Plan
(Plan) is a working document of the Internet Engineering Task Force (IETF). The Plan is
predicated on the need for open competition in the awarding of domain names, and seeks to
create a "legal and financial umbrella" for IANA. Mr. Postel anticipates the formation of up to
50 global registries that will create up to 150 new international top level domains (iTLDs).
2. Random Numbers with Directory
One approach proposed by various parties is the use of random numbers to function as
address locators for Internet sites. One example was outlined in 1995 by engineer Paul Vixie: (42)
In order to satisfy the requirements whereby the Internet has
multiple registries, independently operated, all using top level
domains which are equally desirable by users, we need to pick some
scheme for meaningless yet unique top level domain names. One
simple way would be to start counting in Base 36 ({A} .{Z}, {0}. .
{9}) and skip any result which is a word in any language. Or we
could use a letter-digit-digit-digit scheme, starting with {A000} and
moving upward, again skipping any {TLD} that is a word in any
language.
It is possible that lower numbered registry domains could be seen as
more desirable, and we can either let that stand (on the basis that
early registries deserve a little bit of a market advantage from their
head start) or we can finesse it by choosing numbers at random.
The goal is to have these identifiers be allocated and used similarly
to vehicle license plate numbers or radio/TV broadcast station call
letters.
In a random number scenario, the Internet user either has to already know the address
(e.g., through a business card, ad, letterhead, etc.) or requires a facility to conduct an online
"look-up" of the address. In the latter case, the user can try one of the currently available search
engines such as AltaVista, although these provide a lot of noise as well. Or, as has been
suggested, an easy-to-use, interactive company directory could be developed for this purpose
only.
3. Random Numbers and Vanity Names
David Maher and Robert Frank, have offered a plan that is considered a hybrid system,
because it combines features of the present NSI policy of personalized or "vanity" domain
names, coupled with a system of assigning random domain names, as discussed in Section C, above.
4. The Rutkowski Proposal for the Establishment of a
New Administrative Infrastructure
A proposal for an evolutionary change in Internet administration has been put forth by Anthony Michael Rutkowski, formerly Executive Director of the Internet Society (1994-95).(43)
Mr. Rutkowski seeks to join stockholders and experts together in a non-profit, "narrowly-tailored
international InerNIC committee" which is incorporated in a "neutral, low litigation venue"
(specifically, Switzerland). Membership would be divided into ordinary, ex-officio, and
distinguished categories. These roughly correspond to representation by the private-sector (with
voting privileges), government and administration (e.g., NSF, WIPO, ITU, etc. without voting
privileges), and a variety of expert members (again without voting privileges).
5. The International Classification System
At various times in the domain name debate, it has been suggested that IANA adopt the
International (Nice) Trademark Classification System to differentiate domain names in different
industries. A total of 42 international classes, identified by two-digit numbers, are currently used
to classify trademarks in most countries around the world. Examples are Class 05 for
pharmaceuticals, 25 for clothing, and 36 for insurance and financial. Thus, a domain name of
acme.05.com can be differentiated from acme.36.com.
6. Geographic Identifiers
Geographic identifiers have been proposed at various times as a solution to the domain
name problem. A structure based on political geography already exists under the .us TLD.
Examples of the type of domain name that could be registered under .us appear on the .us
administrators' website:
IBM.Armonk.NY.US
Microsoft.Redmond.WA.US
7. SIC Codes
Another of the alternative addressing schemes that has been proposed is the use of
Standard Industrial Classification (SIC) codes to identify the specific nature of the domain name
owner's products or services. SIC codes is a numbering system used by the U.S. federal
government consisting of four digit designations used to classify businesses by type of activity in
which they are engaged. These codes are used by the U.S. Office of Management and Budget
(OMB) to facilitate the collection, tabulation, presentation, and analysis of data relating to
establishments. The proposals that involve use of SIC codes would permit the same domain name
to be used by different companies engaged in non-competitive activities. Thus,
"http://apple.com.5045" could be assigned to Apple Computer (SIC Code 5045 relating to
"computer hardware/software/peripherals"). This would also permit an association of apple
growers to register "http://apple.com.0179" as their domain name (SIC Code 0179 relates to
"fruits & tree nuts NEC").
VI. The INTA Proposal for New Domain Name Dispute Resolution
A. Background
1. Introduction
The INTA Internet Subcommittee (the "Subcommittee") reviewed current policies and procedures related to the registration of domain names and InterNIC/NSI policy for domain name dispute resolution with the goal of proposing amended or alternative policy and procedure. The need for this activity was deemed acute in light of the increase in litigation regarding domain names, the continued practice of domain name piracy and extortion by persons or entities other than the owners of the trademarks and service marks registered as domain names by these third parties, a perceived general frustration by the trademark community regarding the domain name registration process and its effect on trademark rights, and the impending institution by the Internet Society of a plan introduced by IANA to add up to 50 new domain name registries (NICs) each responsible for registering second level domain names under a multiple number of new top level domain names.
The Subcommittee organized itself into various project groups to deal with discrete issues
originally viewed as separate aspects of the overall domain name policies and procedures review
initiative, principally (a) improving the current NSI dispute policy, (b) creating a special expedited
dispute policy in cases of extortion and (c) redefining the concept of deadwood to eliminate from
the .com registry second level domain names that are not being used. As further discussed below
and in Appendix II, the Subcommittee, having completed its review and analysis, determined that
an entirely new approach was required, and thus, rather than developing
proposals for each of the initially defined issues, created a single proposal. That proposal is
summarized below and is fully set forth in Appendix II.
2. Analysis of the Current Policies and Procedures
The Subcommittee concluded that the NSI domain name dispute policy had failed, and could not be "fixed," because neither NSI, nor any other future NIC should be a tribunal for dispute resolution or be expected to be expert in trademark matters. Thus, they should not be endowed with the right or function to make quasi-judicial determinations that will affect valuable business rights. There already exists in courts and tribunals which historically have been charged with adjudicating trademark rights a well-developed jurisprudence of state, national and multi-national trademark law. Many of these tribunals already are resolving disputes involving domain names. It should be the role of these tribunals, not the NICs, to resolve domain disputes which are in the nature of substantive legal disputes.
Many trademark owners view domain name extortion as the single largest problem for
trademark owners, and thus the Subcommittee attempted to devise a procedure to be adopted by
the NICs in addressing this problem. Several attempts to draft a workable "extortion policy" were
unsuccessful, however, principally because it has been difficult to define the metes and bounds of
"extortion" in this context. Further, consistent with the conclusion that disputes regarding domain
names are best left to the traditional tribunals, the Subcommittee determined that the NICs should
not be burdened with responsibility for determining what is and what is not extortion, and how,
once determined, the dispute should be resolved. With the impending institution of up to 50 new
NICs each resolving such disputes independently, the resolve became clear that all dispute
resolution should be left to the courts and trademark tribunals.
Attempts at creating a deadwood policy have been frustrated by the difficulty in
determining what an acceptable minimum level of use of a domain name would be. This is, in
part, because in the trademark context, a level of use which would be considered adequate to
preserve rights is contextual. The Subcommittee thus concluded that what is or is not an
appropriate use for a domain name in the context of a trademark dispute is best left, once again,
to the courts and trademark tribunals. The Proposal thus suggests that deadwood would be
substantially cleared by a renewal process and otherwise left to third party challenges.
3. Rationale for the Proposal
The Subcommittee recognized that in making any proposal for a workable domain name
policy, a number of interests had to be considered. At the threshold is the issue that the Internet
was not created solely for commercial enterprise and that domain names should not be the
exclusive province of trademark owners. Thus, those with legitimate non-trademark interests in
second level domain names have to be accommodated along with the rights of trademark owners.
Similarly, the interests of owners of trademarks which exist in commerce concurrently for
non-related products or services must be considered as do those of famous marks. Finally, it is not necessary to have a second level domain name to do business effectively or successfully on the Internet, and thus while it may be preferable to acquire the second level domain name of your choice, it is not an absolute right and may have to bend to accommodate competing interests.
After much debate, the Subcommittee concluded that, in its opinion, the best approach to creating a comprehensive domain name dispute policy was not to create one at all, but instead to propose a sui generis approach which would permit a workable procedural, rather than substantive, manner for domain name registration and dispute. Substantive issues, such as proper levels of use on the Internet, whether an extortion had occurred, and whether one party is entitled to domain name registration while another is not, will be left to the courts and trademark tribunals as they deem fit. There already is a growing body of domain name dispute jurisprudence which suggests that these substantive trademark law-related issues can be and are best resolved by these tribunals.
The proposal thus addresses the following procedural issues: (a) a registration procedure which will require a sufficient amount of information about a domain name applicant to allow potential challengers sufficiently to identify and locate that applicant for contact and if required, service of process, (b) a statement by the applicant as to the basis for its claim to the applied-for second level domain name, (c) a "publication" period which would allow all potential challengers of a domain name to act as required prior to the registration of the second level domain name, and (d) a renewal process for clearing deadwood, which would be combined with the current "lame delegation" procedure in the NSI Policy under which NSI voluntarily determines whether a registered name is being used and if not, removed.
Each of these aspects of the proposed policy deals with issues important to the
management of domain name registration and dispute resolution:
(1) One of the problems challengers have had in dealing with domain name owners was being able to find them and when required to serve process. The new domain name application would contain the necessary information to accomplish these tasks.
(2) Another issue was obtaining jurisdiction over the challenged domain name registrant. The new application would contain an admission of both personal and subject matter
jurisdiction to overcome the problem.
(3) While those with legitimate non-trademark interests in a second level domain name should be permitted to exercise those interests, those without any legitimate interest should be flushed out. Thus, the proposed policy requires the applicant to state how it arrived at the name sought to be registered. Thus, a person seeking to register his child's name will identify that right (as, for example, in the recent ty.com case), while an applicant for a name like xerox. com will have to pin itself down to what the courts
ultimately will have to determine is or is not a legitimate reason (having a dog named "Xerox" likely will not be deemed legitimate).
(4) The publication period of 90 days permits an adequate amount of time for a potential challenger to take whatever action it deems necessary with respect to a potential second level domain name, including seeking relief in the courts. It is, however, anticipated that the publication period will afford potentially adverse parties to the opportunities to resolve their differences without litigation. The parties can voluntarily agree to suspend registration pending resolution of their dispute. The NICs' sole involvement would be to publish the applied-for-name, register the name, and comply with any valid courts orders issued regarding such name.
(5) A short renewal process combined with the lame delegation procedure should weed out much of the deadwood, thus eliminating many of the earlier pirated names which never have been used, or names which others seek to actively use but now are not. What constitutes use in these contexts (as opposed to trademark dispute situations) could be the
current standard (capable of sending and receiving email) or another standard adopted by the NICs, although we would hope the same standard would be adopted across the board.
B. The Proposal
1. Registration Procedure
A. The application should require the disclosure of the following information:
(1) The applicant's name, business or residential address, telephone and fax numbers and e-mail address.
(2) The State or Country of incorporation or partnership (if applicable).
(3) Certified copy of the certificate of incorporation or partnership (if applicable).
(4) The name and address of an agent for service of process, which can be the applicant in the case of an individual. Service on the agent will constitute effective service on the applicant for all matters affecting the registration of the domain name.
(5) A sworn statement by the individual applicant, or by an officer of the
applicant corporation or general partner of the partnership:
- That there is a bona fide intention to publicly use the domain name within 60 days of its registration and a bona fide intent to continue such use for the foreseeable future.
- That the domain name will be used for a [stated] use (e.g., for a website to advertise the applicant's business, namely ___________________. This can be a very broad statement and is not intended to restrict actual use).
- That the applicant believes that the domain name is available and does not infringe the rights of any other party.
- That the applicant admits subject matter jurisdiction in an action brought under trademark law or unfair competition law, or analogous laws, arising out of the actual or intended use of the domain name, and also admits personal jurisdiction in any competent tribunal in the country in which the NIC through which the domain name would be registered is located, and waives the right to challenge either jurisdictional predicate.
- That the basis for its claim to the domain name is the following: ____________ (this would be an explanation of the claim, such as it is the applicant's trademark, or business name, or nickname, or child's name, etc.).
B. The application must be in writing and signed with a real signature (until digital signature technology is reliable and accepted). This can easily be done by making the application downloadable or printable, then signed, and mailed and/or faxed back to the particular NIC.
C. All of the foregoing information (minus copies of the supporting documentation) must be made available by the NIC in a publicly available database or "registry," easily accessed and searched. A copy of the full application must be made available by the NIC for a reasonable copying/mailing fee.
D. Publication -- The application should be "published" by the NIC on a publicly available website for 90 days before the registration becomes effective and before the registrant may begin use. The publication period should commence no later than one week after the NIC receives a fully completed application (including the fee). This publication period will allow potential challengers to take appropriate action. It is assumed that commercial searching services and smart agent/robot searching programs will be sufficient for monitoring the publication website. No extensions are available and there is no opposition procedure.
2. Renewal Procedure
A. A renewal process, similar to the application process, with a sworn statement by the applicant individual or the officer/general partner of the applicant business entity setting forth the actual use which has been made of the domain name since the application or last renewal period, should be required. The renewal application should be in writing and signed with a real signature.
B. The renewal information would be placed into a publicly available database or "registry."
C. There would be no "publication" of renewals of domain names. Renewal would be effective as long as the form is properly filled out and the renewal fee, if any, is paid.
D. Renewal should be required every 12 months.
3. Deadwood/Warehousing Procedure
A. The new "deadwood" policy would be the renewal procedure, which would relieve the NIC from complex policing obligations.
B. NICs should retain the current lame delegation procedure of pinging for server response, and removing non-responding domain names. The NIC can decide whether it will act on a statement in writing from a third party that a particular domain name is not in use and should be removed.
C. The NICs should search and remove deadwood and non renewed names a minimum of every 60 days and update the information on the publicly available database or registry accordingly.
4. Elimination of NIC Dispute Policy
In the event of a dispute the NIC would not engage in the resolution of the dispute, but
will abide by any order of a tribunal or arbitration panel having jurisdiction.
VII. Conclusion
For every INTA member, designing a feasible system to protect the delicate balance of
rights arising from trademarks and domain names, is a priority issue. This issue has unlimited
impact on the goodwill attaching to all INTA members, corporate, individual and organization.
These issues were not foreseen until recently, since the Internet has emerged as a preferred route for commercial transactions.
In this paper, we have sketched the history of Internet domain names and their intersection
with trademark law. Disputes between owners of trademarks and domain names have arisen and
attempts by NSI to date have met with varied degrees of enthusiasm. As a result, proposals are
being put forward by way of alternative. It is expected that problems will continue to present
themselves faster than solutions. In response, the Internet Subcommittee undertakes to continue
to cruise the highway and to report to INTA members. The opportunity is ours to contribute to
the design of a system which is fluid, flexible, equitable, and, responsive to the concerns of the
trademark community.
Appendix I
A Representative List of Registry Policies Accessible on the Internet
Australia (relating to .com.au only)
http://www.MelbourneIT.com.au/com_au/com.au_policy.html
Belgium
http://www.DNS.BE/regis-doc/term-conditions.html
Canada
ftp://ftp.cdnnet.ca/ca-domain/application-form
Greece
http://www.forthnet.gr/forthnet/DNSregistrationForm.html
Guam
gopher://uog2.uog.edu/00/gu.domain/faq.guam
Luxembourg
http://www.restena.lu/registration/domainform-ascii.html
Malaysia
http://www.jaring.my/jaring/mynic/domain.html#note
New Zealand
http://servius.waikato.ac.nz/isocnz/nz-domain/co.nz-policy.html
Singapore
http://www.nic.net.sg/apply.html
Slovak Republic
gopher://sk2eu.eunet.sk/00/sk-domain/sk-domain-registration-info
Switzerland & Liechtenstein
http://www.nic.ch/policy_03.htm
Thailand
ftp://ftp.thnic.net/form/THNIC-domain-template.txt
United Kingdom
http://www.nic.uk/nominet/terms.html
Appendix II
INTA Internet Subcommittee Proposed Domain Name Registry Policy
_____________
INTRODUCTION
With every new market that opens around the world trademark owners generally experience a rash of counterfeiting activity until the market matures and is brought into the mainstream of commercial and legal norms. The Internet is just such a new market, albeit a "virtual" and global one. Most trademark owners are capable of managing the counterfeiting problems posed by a developing market, which is not to say that they should be passively tolerated. Nevertheless, despite its global nature, there is nothing about the Internet that is so new or different that we need to adopt draconian and potentially unfair procedures to protect the interests of trademark owners. Indeed, the damage suffered in most domain name disputes is usually far less substantial than that found in a counterfeiting case, or even the average infringement case. Rarely is the damage lost sales or harm to reputation. Rather, in most cases, the greatest harm is that one may not be able to use one's trademark as a second level domain name on one's registry of choice (although alternate registries and higher level domain names are still available).
In short there is little to justify the current NSI/InterNIC dispute policy and its potentially unjust results. Nevertheless, Internet participants should be held accountable for their actions on the Internet, including their choice of a domain name. If their activities violate the rights of others, it should not be more burdensome than necessary for a victim to pursue legal remedies. The Proposal set forth in this paper attempts to address the legitimate interests of all trademark owners as well as all legitimate users of the Internet.
Accordingly, this paper proposes that the current NSI Dispute Policy be recognized as a failure and eliminated, that domain name disputes be left to the courts, that NICs not participate in the resolution of domain name disputes, and that all NICs worldwide adopt identical domain name registration and renewal procedures along with publicly available registries of domain names, thereby (i) ensuring accountability by domain name registrants, (ii) allowing complainants sufficient information to pursue appropriate legal remedies against extortionists available pool of domain names, (v) ensuring fair and legally supportable decisions regarding domain names, and (vi) reducing NIC legal exposure and costs by taking NICs out of the dispute resolution business.
It is assumed that the reader has a fair degree of familiarity with the problems presented by
the interface of trademark law and domain names and with the current procedures for the
assignment of domain names in the U.S. and abroad. If further background is required by the
reader, the following articles and websites are recommended: (i) Robert Shaw, Internet Domain
Names: Whose Domain is This? (http://www.itu.ch/intreg/dns.html), (ii) A.M. Rutkowski,
Internet Domain Names and Other Identifiers: A Roadmap Among Issues and Initiatives
(http://www.wia.org/pub/identifiers/issues-roadmap.html), (iii) Carl Oppendahl, Analysis and
Suggestions Regarding NSI Domain Name Trademark Dispute Policy, (iv) Sally Abel, Trademark
Issues in Cyberspace; The Brave New Frontier, and (v) the Georgetown Law Center website:
http://www.law.georgetown.edu/lc/internic/domain.html.
PROBLEMS WITH THE CURRENT NSI DISPUTE PROCEDURE
The problems with the current NSI/InterNIC ("InterNIC") dispute resolution policy provide much of the impetus and justification for the Proposal set forth later in this paper. In response to complaints by trademark owners about the registration of arguably infringing domain names, often for genuinely illegitimate purposes such as extortion of the legitimate trademark holder, NSI and InterNIC have instituted over time several versions of a "dispute policy" whereby NSI steps into and becomes an active player in domain name disputes.
Summarized very briefly, the current dispute policy provides that InterNIC will suspend any domain name if the complaining party can produce proof of a trademark registration from any country in the world for a mark identical to the challenged domain with an effective registration date or date of first use predating the domain name's use, and if the domain name applicant cannot produce evidence of a trademark registration for the domain name that issued before the complainant's first demand letter to the applicant.
While this and predecessor dispute policies appear to be well-intentioned attempts to address the legitimate concerns of trademark owners, they are rife with problems, including the following:
A trademark registration does not confer trademark rights in the U.S. and certain other countries, but rather merely constitutes rebuttable evidence of those rights. In the U.S., substantive trademark rights arise from actual use as a trademark. Accordingly, the current policy will sometimes accord unjust advantage to the prior registrant over the prior user who may have superior rights. This is unfair.
Under trademark law, most trademark owners do not own the right to use the mark in question to the exclusion of all others -- many similar and identical marks coexist happily and peaceably in commerce because rights are very often limited by industry and by strength of the mark in that industry. Thus, the current policy may favor the rights of one trademark owner over the legitimate coexisting rights of another, solely because one registered and the other did not. This is unfair.
Putting an active domain name on hold is effectively a form of injunctive relief, granted by InterNIC after the registrant has invested in the challenged domain name. Thus, in some circumstances, the dispute policy will allow certain trademark owners to trump the legitimate rights of other trademark owners and obtain the equivalent of injunctive relief, without meeting the stringent standards for such relief required by law. This is unfair.
InterNIC and other NICs are fundamentally unsuited to play a judicial role, particularly
since domain name/trademark disputes are highly contextual in nature and require a close
examination of the facts and equities of each case in order to reach a fair result. No amount of
tweaking the current dispute policy will remedy this.
InterNIC risks being pulled into court whenever they put an active domain name on
hold -- this is a resource drain on the NIC, whose resources are better spent on NIC administrative activities, rather than funding litigation to defend the dispute policy.
In short, the current dispute policy does not serve the interests of all trademark owners, but only some. The policy can result in injustice and it can get the NIC dragged into court (often to prevent just such an injustice) because the NIC is playing a judicial role that it is neither authorized nor competent to play.
PROPOSAL
The following Proposal recognizes the inherent problems with any NIC inserting itself into
a domain name dispute. Accordingly, it is proposed that NICs not have any dispute procedure at
all. Rather NICs should adopt domain name registration procedures that ensure registrant
accountability, while leaving dispute resolution to the courts where it belongs.
I. Initial Registration Procedure
A. The Application: All applications for assignment of a second level domain name should
include the following:
1. Applicant's name, business or residential address, email address, fax and phone number(s).
2. The state or country of incorporation or partnership (if applicable).
3. Certified copy of the certificate of incorporation or partnership
(if applicable).
4. The name and address of the designated agent for service of process, which may be the applicant in the case of an individual. The applicant will be required to designate an agent for service of process for all matters affecting the registration and use of the domain name applied for.
5. A sworn statement by the individual applicant or by an officer or general partner of a corporate or partnership applicant:
(a) that there is a bona fide intent to use the domain name publicly within 60 days of registration, and a bona fide intent to continue such use for the foreseeable future.
(b) that the domain name will be used for [fill in the blank, e.g. "for a website to advertise applicant's candy manufacturing business"].
This may be a broad statement and is not intended in any way to restrict actual use. However, to the extent that a commercial use is intended, this statement should identify the industry in which the use is intended to be made and should indicate which of the following uses will be made: (i) website, (ii) email, (iii) bulletin board, etc.
(c) that the applicant believes that the domain name is available and that its intended use will not infringe any rights of any other party.
(d) that the reason for requesting this particular domain name is
[check one of the following]:
____ applicant's company name or abbreviation thereof
____ applicant's trademark or abbreviation thereof
____ individual applicant's name or abbreviation thereof
____ Other (provide full explanation)
(e) that applicant admits to the personal and subject matter jurisdiction and venue of any competent tribunal in the country where the NIC resides for purposes of any action brought under trademark law, unfair competition laws, or similar/related laws arising out of actual or intended use of the domain name applied for; and applicant waives all rights to challenge personal jurisdiction, subject matter jurisdiction, and/or venue.
6. The application must be in writing and signed with a real signature (until digital signature technology is considered commercially reliable and legally binding). This can be done by making the application downloadable and printable, so that it can be completed, signed, and returned to the NIC.
B. Examination: The application would be immediately examined for completeness by the NIC. Incomplete applications would be rejected. No other examination is contemplated.
C. Publication: Complete applications would be "published" by the NIC on a publicly available website for 90 days before the registration becomes effective and before the applicant may begin use. The publication should be reasonably prompt, preferably no later than one week after receipt by the NIC of the application.
II Renewal Procedure
A. Timing: Renewal would be required annually.
B. The Renewal Application: The renewal application should include the following:
1. Applicant's name, business or residential address, email address, fax and phone numbers.
2. The state or country of incorporation or partnership (if applicable).
3. Certified copy of the certificate of incorporation or partnership (if applicable), but only if there has been a change in status (e.g., change of state of incorporation) since initial application
or last renewal.
4. The name and address of the designated agent for service or process, but only if there has been a change since initial application or last renewal.
5. A sworn statement by the individual applicant or by an officer or general partner of a corporate or partnership applicant:
(a) that the domain name has actually been used for [fill the blank, e.g. "for a website to advertise applicant's candy manufacturing business"]. This may be a broad statement and is not intended in any way to restrict actual use.
However, to the extent that a commercial use is being made, this statement should identify the
industry in which the use is being made and should indicate which of the following uses are being
made: (i) website, (ii) email, (iii) bulletin board, etc.
(b) that the application believes that the domain name continues to be available and that its actual use does not infringe any rights of any other party.
6. The renewal applicant must be in writing and signed with a real signature (until digital signature technology is considered commercially reliable and legally binding).
C. Examination / No Publication: Renewal applications would be examined only for completeness, but would not be published . If complete, the domain name registration continues undisturbed. If incomplete or not received within an appropriate grace period (e.g.,
no more than 10 days) following the deadline, the domain name would be suspended and
ultimately removed.
III. Public Registry
The NIC would maintain a public domain name registry, regularly updated a minimum of every 60 days (preferably more often) to include newly registered, renewed, and expired domain names.(44)
The application and renewal information would be available on-line and any supporting documentation would be available for a reasonable copying fee. (It is anticipated that commercial watch services would develop to watch the various registries around the world on
behalf of trademark owners and other interested parties).
IV. Lame Delegation (Deadwood Removal)
It is intended that the renewal process combined with third-party policing will take care of
a great deal of "deadwood" domain names, i.e., domain names that are not in actual use.
However, given that the Renewal is annual, and given that renewers may not always be
completely honest on their Renewal applications, it is hoped that the NIC would be able to
maintain a "lame delegation" procedure whereby the NIC regularly (e.g., quarterly) pings domain
names for server response and removes non-responding domain names after a specified period of
time, e.g., 60 days. Further investigation is required as to whether the lame delegation procedure
is technically feasible and can be fairly and practically implemented.
V. Dispute Procedure
The NIC would maintain no separate dispute procedure. It would not place disputed
domain names or hold or in suspension (except at the request of the domain name registrant). It
would however always abide by any order of any court with jurisdiction.
WHY THIS PROPOSAL IS A BETTER SOLUTION
Some may argue that this Proposal is not a solution on the dispute front because it requires a victim of infringement to go to court, and incur substantial cost and inconvenience in the process. But going to court is how civilized societies deal with infringements of rights and other wrongs. There is no legitimate reason why domain names should be treated differently than other forms of infringement. On the other hand, when one wants to participate in society in a manner that may result in the infringement of another's rights, one must be accountable for one's activities. Again, there is no reason why this principle of civilized society should not apply to activities on the Internet. In a nutshell, this Proposal requires infringement victims to go to court for redress, while ensuring that domain name registrants remain accountable (and thus suable) for their choice of a domain name.
However, this Proposal goes further than just addressing the injustices of the current
InterNIC dispute policy. This Proposal is an integrated approach that addresses many of the issues arising out of the global nature of the Internet, domain name extortion/piracy, warehousing of domain names, "deadwood" (i.e., unused names) on the register, and the need for a public database. Advantages of this Proposal include the following.
Global Nature of The Internet: The Internet is global, and use of a domain name is instantly global use. The global nature of the Internet is greatly increasing the pressure to fully "internationalize" trademark law. However, the development of an international body of trademark law, and the process of the nations of the world acceding to that law, will take many years. In the meantime, this Proposal will allow for the application of national trademark laws around the world in as predictable a way as possible.
Quick Implementation: This Proposal can be implemented relatively quickly at least in the U.S. Its adoption by NICs around the world should be far less controversial and difficult than any competing proposals, such as those that contemplate an international body of trademark law. This Proposal provides an immediately workable solution that can be implemented while longer-term, more comprehensive solutions are considered and possibly implemented.
Fairness: In disputes between legitimate trademark holders and/or legitimate domain name holders/users, this Proposal would even the playing field and ensure that nobody has an unfair advantage in the resolution of the dispute.
Extortion/Piracy: In disputes with extortionists, pirates, and other nefarious types, this
Proposal makes it harder for the extortionist to register a domain name and to maintain that
registration, and it makes it much easier for a challenger to launch a court challenge against an
alleged extortionist, infringer, and the like, as follows:
> One problem trademark owners have had in dealing with potentially infringing domain
name owners is being able to locate them and serve them with effective process. The domain
name application addresses this issue by identifying the actual owner on a publicly available
registry and by requiring the owner to designate an agent for service of process.
> A similar problem exists in obtaining personal jurisdiction over domain name holders. The
Proposal requires a domain name applicant to admit to jurisdiction in the country of the NIC,
which is a reasonable condition of doing business in the country of the NIC.
> The Proposal requires the domain name applicant to identify the reason for the choice of
domain name and the intended use. Where the domain name applicant intends a legitimate use,
this information simply advises potential challengers of information that is useful in deciding
whether to challenge the use. Where the applicant's purpose is not legitimate, this requirement
will make it harder to register and will "get his lies on the record," thereby increasing the ease
with which the use will be challenged. It should also have some prophylactic effect in that the
casual wrong-doer or prankster is not likely to be willing to make a fraudulent sworn statement.
> The publication period will permit an adequate amount of time for a challenger to take
whatever legal or other action it deems necessary to protect it rights, including filing a lawsuit
and even obtaining temporary relief. At a minimum, a challenger will be able to put the applicant
on notice of any claim of infringement. The 90 day publication period would allow for
appropriate action to be taken before the applicant has invested in, and begun use of, the domain
name. It should, in most cases, avoid the more dramatic relief of enjoining use of a domain name
already in use. And where a plaintiff has not taken advantage of the publication period, but
challenged after use has begun, then that fact will be considered by a court balancing the equities
of any injunctive relief it may be considering.
> The renewal process will make it very difficult for an extortionist or warehouser to maintain a domain name past the annual renewal date, since some actual use must be sworn to in the renewal application. Additionally, the renewal process will ensure that the register remains sufficiently up-to-date as to be useful to potential challengers.
Warehousing and Deadwood: This Proposal would make it far more difficult to warehouse marks, due both to the requirements of the initial application process and to the requirement of annual renewal. Additionally, annual renewal should clear most "deadwood" from the register.
Public Registry: The requirement of a public registry will allow "sunshine" into the process of
domain name registration and will allow trademark owners and other interested parties to more
effectively search and police domain names. And there should be no legitimate objection to
making the application and renewal information publicly available - none of the information is
sensitive, and it is the same sort of information that is currently publicly available on trademark
and company name registries and in phone books around the world. There can be no legitimate
objection by responsible and accountable individuals and entities to having this information
available on a public registry.
NIC Resources: This Proposal gets NICs out of the dispute resolution process and allows them
to conserve their resources for their administrative functions rather than for legal defense of their
own policies. Accordingly, it is believed that NICs will be more likely to favor this approach.
Internet Subcommittee
Sally M. Abel, Chair
Susan Anthony
Courtney Bailey
Lisa E. Cristal
Michael Cronin
Sarah Deutsch
Geert Glas
Neal S. Greenfield
Anne B. Gundelfinger
Keith Gymer
Steve Hartman
Steve Hayward
Jeffrey H. Kaufman
Kathleen Klesh
Peter Olson
Valerie Benkert Paci
Andrea Rush
Elizabeth Shankman
Mark Traphagen
Steven M. Weinberg
Ken Whitaker
Issues and Policy Committee
Clark W. Lackert, Chair
Charles Gielen, Vice Chair
INTA Staff Liaison
Michael Heltzer
© 1997 International Trademark Association
1. Vanity Fair Mills, Inc. v. T. Eaton Co. 284 F.2d 633, 640-41 (2d Cir. 1956), cert. denied, 452 U.D. 871 (1956).
2. Common law jurisdictions may also provide additional protection for trademark owners through registrations. For example, under the U.S. Lanham Act, registration gives the trademark owner constructive nationwide use and notice of the trademark in connection with the goods specified in the registration.
The analysis applied to determine if a trademark is registrable essentially tracks the analysis to determine the acquisition of common law trademark rights: (1) the mark must have the ability to serve as an indicator of the source of goods and services and (2) the mark must be distinctive to the registrant. However, the registration scheme imposes an additional requirement -- the mark sought to be registered may neither be confusingly similar to a trademark or trade name previously used by another anywhere in the United States nor abandoned.
Registration under the Lanham Act constitutes prima facie evidence that the registrant has the exclusive right to use the trademark in commerce in the United States. After five years, a registration becomes "incontestable", that is, a prior user cannot challenge the registration on the basis that the mark was previously used in the United States by another. However, other basis for cancellation, such as abandonment of the trademark, remain available.
3. See Defiance Button Machine Co. v. C&C Metal Products Corp. 759 F.2d 1053 (2d Cir. 1985).
4. Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141 (1989).
5. This guarantee of quality of goods offered under a trademark gives rise to the requirement that an effective trademark license provide that the quality of goods sold under the license be monitored and policed by the owner of the trademark.
6. Bayer Co. v. United Drug Co. 272 F.505 (S.D.N.Y. 1921) (holding trademark ASPIRIN generic for acetyl salicycic acid.)
7. F. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. (1813) 1927
8. 15 U.S.C. §1125 (c).
9. Joshua Quittner, "Billions Registered: Right Now, There are No Rules to Keep You From owning a Bitchin' Corporate Name As Your own Internet Address," Wired, October 1994, 54.
10. Dan L. Burk, "Trademarks Along the Infoban: A First Look at the Emerging Law of Cybermarks," Richmond J.L. & Tech. 21 (1995).
11. No. 94 Civ. 1604 (MGC)(S.D.N.Y. filed March 9, 1994)
12. 867 F. Supp. 202 (S.D.N.Y. 1994)
13. No. 96-CV-451 (E.D.N.Y. April 3, 1996)
14. Sally M. Abel, Trademark Issues in Cyberspace: The Brave New Frontier, sma@fwpa.com (1996).
15. 40 U.S.P.Q.2d 1479 (W.D. Wash. 1996)
16. No. C 96-3381 CW, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. Oct. 29, 1996)
17. 40 U.S.P.Q.2d 1412 (N.D. Ill. 1996).
18. Id. at 1417.
19. Id. at 1422.
20. U.S. Dist. LEXIS 552 (Jan. 16, 1997) E.D. Va
21. No. 96-0213-WMB(CTx) (C.D. Cal. April 26, 1996)
22. No. 96C 3448, 1996 WL 466527 (N.D. Ill. July 17, 1996).
23. 1997 U.S. Dist. Lexis 2144 (Feb. 6, 1997) S.D.N.C.
24. Two early cases in which NSI was included as a defendant were KnowledgeNet v. David L. Boone, (N.D. III, filed Dec. 2, 1994) and Fry's Electronics, Inc. v. Octave Sys. No. C95-2524 CAL (N.D. Cal.). They also were the first cases to include a RICO claim against the defendants. The first settled; the second remains pending.
25. No. 96-413 (E.D. Va. filed March 26, 1996).
26. No. 96-CV-429 (M.D. Tenn., May 8, 1996).
27. Giacalone v. Network Solutions, Inc., No. C-96 20434 RPA/PVT (N.D. Cal.).
28. No. 96 CV 694, Div. 5 (Dist. Ct., Boulder County, Colo. filed June 13, 1996).
29. Decision of March 8, 1996, 7 0 60/96, Computer und Recht, 1996 at 353.
30. Reported by Newsbytes News Network on January 8, 1997.
31. President of the Amsterdam Court, August 29, 1996 (Unpublished).
32. President of the Amsterdam Court, September 20, 1996 (Unpublished).
33. Gazette du Plais, December 11-12, 1996, p. 9.
34. 938 F. Supp. 616 (C.D. Cal. 1996).
35. LENS (WD. Pa 1997)
36. This plan can be found at http://www.iahc.org
37. A generic TLD is a term newly coined to more accurately reflect the characteristics of these domains as opposed to the only true international Top Level Domain (iTLD), int, for use by organizations that answer to multiple national governments, such as UN Treaty Organizations.
38. This can be found at http://www.iahc.org
39. This can be found at http://www.iahc.org
40. http://www.netsol.com/papers/internet.html
41. http://www.netsol.com/papers/internet.html
42. Paul Vixie, "External Issues in DNS Scalability." Paper presented at The Kennedy School of Government conference, "Internet Names and Numbers Management and Beyond...", November 20, 1995.
43. Anthony Michael Rutkowski, "Toward a Stable, Effective, Global Administrative Infrastructructure for Internet/Intranets/WWW and Agents." Presented at conference on coordination and Administration of the Internet, USA Institution and Governance Panel (Cambridge, MA: Sept. 10, 1996). See http://www.agent.org/pub/iip-amr.html.
44. Note that publication of domain name applications would occur eithin one week of receipt of a complete applicaiton, as described above.