New Domain

NEW DOMAIN 

Written by Dr. IAN JAY KAUFMAN of Ladas & Parry with the assistance of Michael D. Stewart, Esq. 

            Issues concerning how to resolve conflicts between domain names and trademarks have been some of the most visible in recent times.  What began as a .COM world, however, has now evolved into a myriad of suffixes–ranging from top-level domain names (“TLDs”), both “restricted” to limited uses, e.g., .BIZ for business purposes, and “generic” or “open” to anyone for any purpose, e.g., .COM or .INFO.; and country code top-level domain names (“ccTLDs”) corresponding to actual countries, some with local presence requirements, others without. Users searching for a particular location on the Internet will soon, if they have not already, experience difficulty finding what it is they are looking for.  

            With the recent introduction of new top-level domain names, such as .BIZ , .INFO and .NAME, the problem of “cybersquatting,” whereby one with no legitimate interest in a trademark registers the mark as a domain name to later sell it to the trademark owner for a profit, will only become more pervasive, despite the fact that many of these new domains are “restricted” domains, and despite the fact that protective mechanisms were put in place to prevent an initial “gold rush” of cybersquatters attempting to claim new turf.  

            One positive step towards harmonization in the Domain Name System (“DNS”), however, is the Internet Corporation for Assigned Names and Numbers (“ICANN”), a not-for-profit entity established by the United States government to remove the DNS from U.S. Governmental control for the benefit of all nations, and to take over many of the management functions of the DNS. Based upon a perceived need for change in the DNS, the United States Government, in its June 5, 1998 Statement of Policy on the Management of Internet Names and Addresses (the “White Paper”), called for the privatization of the DNS “in a manner that allows for the development of robust competition and that facilitates global participation in the management of Internet names and addresses.” The need for change in the DNS was seen to arise from 1) dissatisfaction with the absence of competition regarding domain name Registrars; 2) the increasing occurrence of conflicts between trademark and domain name owners, and the fact that the mechanisms for overcoming these were seen as expensive and cumbersome; 3) the call from commercial interests for more formal management of the Internet; 4) increasing desire from non-U.S. interests in participation in the management of various aspects of the Internet; 5) the need for accountability in the decision of whether to add new generic top-level domains (“gTLDs”); and 6) the inappropriateness of U.S. agencies managing and funding commercial enterprises on the Internet.   

            The White Paper resulted in the formation of ICANN, which now has taken over many of the management functions of the DNS. The ICANN By-laws call for the creation of Supporting Organizations (“SOs”) to develop proposals for the improvement of various aspects of the Internet. The initial three SOs were 1) the Address SO – concerned with the system of Internet Protocol addresses, 2) the Protocol SO – concerned with the technical standards that let computers exchange information, and 3) the Domain Name SO. The SOs serve as advisory bodies and have “the primary responsibility for developing and recommending substantive policies regarding matters falling within their specific responsibilities.”  Whereas the first two SOs relate to the more technical functioning of the Internet, the Domain Name SO (“DNSO”) is of particular interest to the intellectual property community.  

Within the DNSO, at present, are seven Constituency groups that have been ratified by ICANN:1. ccTLD Registries;
2. commercial and business entities;
3. gTLD Registries;
4. Internet Service Providers (“ISPs”) and connectivity providers;
5. registrars;
6. non-commercial domain name holders; and
7. trademark, other intellectual property and anti-counterfeiting interests.
 

            These Constituency Groups are self-organized and made up of interested individuals and entities. According to the ICANN By-laws “[a]ny group of individuals or entities may petition the Board for recognition as a new or separate Constituency.” The Constituency Groups make recommendations to, and select members for the Names Council, which is responsible for consensus building, and communicating DNSO recommendations to the Board of Directors. There are also various advisory committees within ICANN as well as an At-Large Membership with an “open and inclusive” membership.  

            It was foreseen that problems concerning the functioning of this management structure would arise, and in fact have, and on occasion quite heated, particularly within and between Constituencies; with respect to geographical limitations on the members of the Board of Directors and the Councils; and with respect to voting structures and consensus building within the SOs and Names Council. Given the initial interest shown by a multitude of groups and individuals in becoming a part of Constituencies, it was assumed that consensus would be difficult to achieve. However, ICANN has been able to achieve some consensus and has taken significant actions, although the results of some of these actions may have unintended consequences, particularly with respect to confusion over the introduction of new TLDs.  

WIPO Process             The White Paper also called upon WIPO to develop a process designed to culminate in recommendations concerning domain name issues to be submitted to ICANN. This process resulted in the April 30, 1999 WIPO Final Report. The recommendations contained in the report relate generally to 1) Best Practices for Registration Authorities; 2) Administrative Procedures Concerning Abusive Domain Name Registrations; 3) Exclusions for Famous and Well-known marks; and 4) New TLDs. While the WIPO recommendations are reasonable with respect to the first three general categories, the paucity of meaningful recommendations concerning the creation of new TLDs, which were basically limited in the Final Report to stating that new TLDs would be beneficial to the DNS once the rest of the proposals were implemented and functioning adequately, was disturbing in its lack of sufficient concern for the protection of intellectual property and the orderly and efficient functioning of the DNS.  

            A further WIPO domain name Report, WIPO2 RFC-3, Interim Report of the Second WIPO Internet Domain Name Process, April 12, 2001, was published for comment, which deals with the subjects of personal names; International Nonproprietary Names (“INNs”) for pharmaceutical substances; names of international inter-governmental organizations; geographical indications, indications of source and geographical terms; and trade names. Whether significant additional protections will be implemented for these types of intellectual property remains, at present, to be seen.  

            It is now generally accepted by the intellectual property community that second-level domain names can serve the same function as trademarks, particularly “[w]hen the domain name includes elements that would be recognized by the public as indicating the source of goods or services of a particular business.” Additionally, a domain name can function to enhance or diminish the reputation of a business, celebrity, musical group, organization or politician, and, when obtained by another, has the potential to cause serious harm to the intellectual property rights of these entities and/or individuals. As the Internet becomes increasingly important as an information provider and as a mechanism to sell goods and services, domain names are becoming nearly, if not completely, interchangeable with trademarks in their ability to create goodwill among consumers, and their resultant capacity to sell goods – and a web presence, whether by a business or public figure, is becoming increasingly important to enhance reputation. Nonetheless, there appears to be a reluctance, at least on the part of the WIPO panel of experts, to regulate the Internet in a manner similar to that of intellectual property in the real world, as for example trademarks, which system has been in place and has arguably been effective for hundreds of years.  

            This is despite the fact that the WIPO panel of experts has recognized that there is a “considerable disjunction between on the one hand, the cost of obtaining a domain name registration, which is relatively cheap, and, on the other hand, the economic value of the damage that can be done as a result of such registration and the cost to the intellectual property owner of remedying the situation through litigation, which may be slow and very expensive in some countries.”  

            Although the WIPO Final Report stated that “A constant consideration has therefore been to ensure that the recommendations of the WIPO process are practical and do not interfere with the functionality of the Internet by imposing unreasonable constraints on the high-volume and automated operations of domain name registration authorities,” it is nonetheless disappointing that stronger proposals at this beginning and crucial stage were not recommended with respect to TLDs, to lead the way for ICANN to seriously approach a system that is only becoming more chaotic.  

            It is the belief of this author that a significant increase in problems associated with the orderly functioning of the DNS will be seen due to the “multi-jurisdictional” nature of the Internet, the rapid increase in domain name registrations, and the inability for persons or companies with the same names to coexist on the Internet. There is an urgent need for more stringent regulation of the DNS at this early stage of the Internet, if this still can be considered an early stage in the growth of the Internet, which will allow for the “fair use” of domain names, while not lessening the protection of intellectual property and personality interests, and the free flow of information, both on the Internet and in the real world. If specific actions are not taken now, particularly with respect to the introduction of new TLDs and their policies of use, registration and dispute resolution, current intellectual property protections will be lessened, leading to a chaotic system in which an intellectual property owner can have no reasonable expectations as to the scope of their intellectual property rights, and the Internet user will be unable to locate what they are looking for without confusion. In fact, with the introduction of new domain names discussed herein, the ship may have already sailed, leaking and without adequate lifeboats.  

Competition Among Domain Name Registrars             One of the first actions taken by ICANN was the introduction of competition among Registrars in providing registration services for the .COM, .ORG and .NET gTLDs. Previously, Network Solutions, Inc. (“NSI”), under contract with the United States Government, had been the only Registrar authorized to provide these services. ICANN has now accredited approximately 100 new Registrars to provide competing registration services, and many are currently active and profitable.  

            The introduction of competing Registrars, however, created uncertainty concerning an intellectual property right holder’s ability to protect his intellectual property rights against the registration of an identical or confusingly similar domain name by another. Therefore, as a condition of being accredited by ICANN to provide domain name registration services, all Registrars must contractually agree to be bound by ICANN’s Uniform Dispute Resolution Policy, outlined below.  

            Other problems have arisen, however. For example, although required by ICANN to provide WHOIS services, which list the contact details of those who register domain names, it has been difficult in some instances to ascertain this information due to technical deficiencies in the WHOIS services of particular Registrars.  

            Furthermore, with the glut of competing regsitrars, it is often difficult for a trademark owner to ascertain with which Register a potential cybersquatter has registered a domain name. Current Dispute Resolution Methods ICANN Uniform Domain Name Dispute Resolution Policy
The Anticybersquatting Consumer Protection Act
 

            While NSI was the only domain name Registrar, in order to prevent the increasing occurrence of disputes involving domain names, NSI implemented its now well-known, perhaps, infamous, “on hold” procedure. Under this procedure, a trademark owner, with a registered mark identical to the domain name in question could apply with NSI to place the domain name “on hold,” so that no one could use the domain name until the dispute was resolved, either amicably or via the judicial process.  

            Many perceived problems with the NSI policy, however, leading to an increasing demand for a domain name dispute resolution procedure that better addressed the rights of the respective parties. For example, under the NSI policy, the trademark had to be identical to the domain name to trigger the policy. This failed to account for the rights of trademark holders with marks which were confusingly similar to the domain name. Also, the NSI policy did not account for the common law rights in a given mark.             Furthermore, the NSI policy did not allow comparison of the goods and services covered by a trademark in relation to those associated with a given domain name. The NSI policy lead many trademark holders to engage in “reverse domain name hijacking,” by threatening to place domain names being used in good faith for goods/services unrelated to the trademark holder’s mark “on hold,” unless the domain name was transferred to the trademark owner.  

            The need for change to many was clear.  

ICANN Uniform Domain Name Dispute Resolution Policy             Under the ICANN Registrar Accreditation Agreement, a Registrar must agree to abide by the Uniform Domain Name Dispute Resolution Policy (“UDRP”), which was adopted on August 26, 1999. The implementation documents for this policy were approved on October 24, 1999. Updates to these documents, if any, can be accessed on the Internet at Uniform Domain Name Dispute Resolution Policy; and Rules for Uniform Domain Name Dispute Resolution Policy. The first day in which complaints could be submitted to accredited Dispute Resolution Providers was on December 1, 1999, for disputes involving domain names registered with Registrars, for various reasons, other than America Online, the NameIT Corp. and NSI. The first day complaints could be submitted in respect of domain names registered by these other three Registrars was on January 3, 2000.  

            The Uniform Domain Name Dispute Resolution Policy is incorporated by reference into every Registrar’s Registration Agreement with domain name Registrants and sets forth the terms and conditions for resolving disputes between the Registrant and another party concerning the registration and use of a name.             The Policy provides that a domain name Registrant is required to submit to mandatory administrative (arbitration) proceedings if a third party complains with respect to a .COM, .NET or .ORG, and now a .BIZ, .INFO or .NAME domain name, to one of the ICANN accredited Dispute Resolution Providers. Current accredited Dispute Resolution Providers include are WIPO, Disputes.org/eResolution Consortium, the National Arbitration Forum, and the CPR Institute for Dispute Resolution. Each provider has its own supplemental rules of procedure. A Complainant must assert to the chosen Provider that: (i) the domain name is identical or confusingly similar to a trademark or servicemark in which the complainant has rights;

(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith. Evidence of a bad faith registration, without limitation, includes: (i) circumstances indicating that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the costs related to registering the domain name; or

(ii) the domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that there is a pattern of such conduct; or

(iii) the domain name was registered primarily for the purpose of disrupting the business of the Complainant; or

(iv) the Registrant intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.As a defense to a complaint, any of the following circumstances, if found by the Panel, indicates the Registrant’s legitimate interest in the domain name:(i) the Registrant’s use, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the Registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights in the name; or

(iii) the Registrant is making a legitimate noncommercial or fair use of the domain name, without intent of commercial gain, to confuse consumers or to tarnish the trademark or service mark at issue.            The remedies available under the UDRP are limited to requiring cancellation of the domain name or the transfer of the domain name to the Complainant. Either party can file an action in a court of competent jurisdiction at any time during a pending UDRP action. Also importantly, the Complainant has the choice of either a one-person or a three-person panel. If the Complainant chooses a one-person panel, the domain name Registrant is given the opportunity to choose a three-person panel, in which case the domain name Registrant will be required to pay half of the costs associated with the procedure. A Complainant or Respondent will usually choose a three person panel when they believe that they can secure at least one panelist who has ruled favorably in similar cases because a three person panel is comprised of a panelist nominated by each side, with the third panelist selected, if possible, from ranked lists submitted by the parties, but ultimately chosen by the dispute resolution provider.             The UDRP has been used by aggrieved parties around the world, including Indian companies in respect of Indian trademarks registered as .COM, .NET, or .ORG domain names in “bad faith” by third parties, such as, for example, the domain names PHILIPSINDIA.COM, THETIMESOFINDIA.COM, MARUTI.COM, MYMARUTI.COM and THEECONOMICTIMS.COM. [20] 

The Anticybersquatting Consumer Protection Act  

            Another important change that has benefitted trademark practitioners, particularly in the United States, was a United States law, which amended the Lanham Act by adding new Section 43(d), known as “The Anticybersquatting Consumer Protection Act (“ACPA”). The ACPA was enacted into law on November 29, 1999 and, except for the damages section, applied retroactively.  

Section 43 (d)(1)(A) states that:“A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person–

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section

(ii) registers, traffics in, or uses a domain name that – (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark.”  

            Liability under this section depends on whether the person registered or used the domain name in “bad faith”, and includes a provision whereby the complainant may elect at any time before final judgment to recover either actual damages and profits, or an award of statutory damages in an amount of not less than $1,000 and not more than $100,000 per domain name in the discretion of the court. Thus, unlike the stated policy of ICANN’s UDRP, a domain name Registrant can be liable for merely registering a domain name in bad faith, without the necessity of use. It should be noted, however, that under the UDRP, certain panelists have found bad faith in cases of mere “passive holding” of a domain name.  

            Another important section in the ACPA is Section 43(d)(2) under which the owner of a mark may file an in rem civil action against the domain name itself in the judicial district in which the domain name Registrar, domain name Registry, or other domain name authority that registered or assigned the domain name is located, if the court finds that the trademark owner is not able through due diligence to obtain in personam jurisdiction over the person who would have been the defendant. The remedies available under this action are limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.  

            In determining whether a registration was in bad faith, a court may consider the following nine non-exclusive factors:(I) the trademark or other intellectual property rights of the person, if any, in the domain name, which takes into account the fact that various persons or entities can have the coexisting right to use a particular name. For example, an Apple Computer and an Apple shipping company would both have the theoretical right to register and use the APPLE.COM domain name. Since there can only be one APPLE.COM in use at a given time, it certainly pays to register your domain name early.

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person.

(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services.

(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name which recognizes that under certain circumstances a person can use another’s trademark in a domain name in a lawful way. Examples of such uses would be parody and comparative advertising.

(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.

(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct. [22]

(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct. [23]

(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties.

(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous.  

            Bad faith intent will not be found where the court determines that the person believed or had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.  

            In any civil action involving registration, trafficking, or use of a domain name, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the trademark.  

 

            Another potential area of conflict relating to the Internet pertains to the use and registration of country code top-level domain names (“ccTLDs”), which correspond to a particular country. .IN, for example, is the ccTLD for India. Currently, ccTLDs serve many purposes, including to designate a particular country under the domain name registrant registered the domain name, such as .DE for Germany, or reflecting another meaning, such as .TV for Tuvalu which has been marketed as a television-related ccTLD.  

            At this time, only a limited number of ccTLDs are governed by the ICANN UDRP, making harmonization of dispute resolution on the Internet, in the foreseeable future seem very unlikely. It is encouraging, however, that many ccTLD Registrars, while not adopting the UDRP, have followed the language of the UDRP in their respective dispute resolution procedures.  

The .IN Domain             As noted, and as with most countries in the world, India has its own country code top-level domain, .IN, and registrants can register their domain names in the .CO.IN extension. Foreign companies are currently able to register their trademarks, service marks and company and trading names in the .CO.IN domain, provided that the following conditions are fulfilled:a) the domain name is not generic;

b) the domain name is derived from the company name; or

c) the domain name is the same as the trademark of the company;

d) the administrative contact for the domain name is from the company applying for the domain name;

e) the company has an Indian subsidiary incorporated by the Registrar of Companies, or a liaison office in India with the mandatory approval of the Reserve Bank of India.             While there is currently no provision under Indian law concerning the protection of domain names, Indian courts, particularly the Delhi High Court, have prevented the misuse and bad faith registration of domain names under such theories as passing-off. Similarly, the Delhi High Court has stated that a domain name can serve the same function as a trademark, but it has to date required a showing of secondary meaning in the domain name to warrant protection.The .US Domain             While many Internet users searching for a United States company on the Internet might intuitively believe that they should search under the .US domain, if not .com, this has generally not been the case. Even though almost anyone can register under the .US domain if they have some connection with the United States, e.g. state and local governments, schools, community colleges, technical schools, museums, libraries, organizations, businesses, and individuals, the organization of this domain has made it much less popular for United States companies, and others, than the original generic top-level domains, .COM, .NET and .ORG.  

            An example of the hierarchy of a .US domain name is ABC.LOS-ANGELES.CA.US. The ABC portion of the domain name represents the Registrant’s chosen name, LOS-ANGELES represents the city to which the Registrant has a connection, and .CA refers to California. Clearly, attempting to locate a website intuitively using this extension does not appear to be a “user friendly” way of locating ABC in Los Angeles, California. Nonetheless, at the writing of this paper, and not taking into account the new domain extensions, .BIZ, .INFO and .NAME, the .US domain is approximately the sixth most popular domain suffix in the world.  

            Given the perceived demand for .US domains which would be used in the same manner as .com domains, the .US domain name Registry will shortly allow registration of those domains in the form ABC.US. Although the success of a given TLD is difficult to predict, this may be a very popular one and trademark owners would be prudent to familiarize themselves now with this TLD.  

            Other United States domains are .MIL, for the United States military, .EDU for degree granting institutions, and .GOV for the United States Federal Government. These domains are, of course, restricted as to purpose and as to whom may register in these domains.  

Domain Names and Dispute Resolution Policies             On November 15, 2000, ICANN passed a resolution to add seven new top-level domains to the current .COM, .NET and .ORG domains. The new domain names will be .AERO, for the air-transport industry), .BIZ, for business, .COOP, for cooperatives, .INFO, for unrestricted use, .MUSEUM, for museums, .NAME for registration by individuals and .PRO, for registration by accountants, lawyers, physicians and the like.  

            ICANN has already reached agreement with the Registries of the .BIZ, .INFO and .NAME domains. The .BIZ domain is operated by NeuLevel, whose web site is located at NEULEVEL.COM; the .INFO domain is run by Afilias, whose web site is located at AFILIAS.COM; and the third domain, .NAME is operated by Global Name Registry, whose website is located at GLOBALNAME.ORG. Confusion has already arisen with the introduction of these new domains, and their corresponding dispute resolution policies, and it can only be expected that future consumer confusion is likely.  

            The .BIZ, .INFO and .NAME Registries each held an initial period whereby the owners of trademark rights could pre-apply to claim protection for their trademark rights in respect of these new TLDs. An overview of the initial “ Sunrise” protection periods for each of these new domains follows. Specific information concerning the steps necessary to obtain protection under these new domains can be obtained from the Registries’ respective web sites.  

The .BIZ Domain             The new .BIZ TLD is a “restricted domain” limited to only those parties who intend to use the domain for a “bona fide business or commercial use.” A bona fide business or commercial use or intent to use is defined as “(i) to exchange goods, services, or property of any kind; or (ii) in the ordinary course of trade or business; or (iii) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.” It is not a bona fide business or commercial use to use or intend to use the domain name “exclusively for the expression of noncommercial ideas, i.e. registering ABCSUCKS.BIZ exclusively to criticize or otherwise express an opinion on the products or services of ABC company, with no other intended business or commercial purpose.”  

            In addition, selling, trading , or leasing the domain name, or making an unsolicited offer to sell, trade or lease the domain name for compensation is not considered a bona fide business purpose or intended purpose.  

            In order to prevent potential “cybersquatting” with respect to the initial introduction of the .BIZ domain, NeuLevel, the .BIZ Registry, introduced an I.P. Claim Service to protect trademark holders from the expected initial “gold rush” in registering .BIZ domain names.  

            Under the I.P. Claim Service, trademark holders, whether common law, registered or pending trademarks or service marks, filed claims of their trademark rights electronically with NeuLevel, or other Registrars which had entered into agreements with NeuLevel. The claim of trademark rights was not an application for the domain name in question. The trademark owner needed to separately file applications for the domain name.  

            If a third party filed an application for the exact trademark upon which a trademark owner had electronically filed a claim under the I.P. Claim Service, the .BIZ Registry would notify the applicant of the trademark holders’ claimed prior rights, and would also notify the trademark holder of the application, including the applicant’s particulars.  

            The applicant would then have the opportunity to either notify the .BIZ Registry that it planned to maintain its application, in which case the application would enter the pool of applications which would be randomly selected for registration; or, if the applicant notified the .BIZ Registry that it did not wish to maintain its application or if the applicant took no action, the application would be considered withdrawn and would not be included in the random selection process.  

            If an applicant maintained its application and the application was randomly selected for registration, the domain name which was identical to the trademark upon which the trademark owner had filed a claim would be placed “on hold” so that no one could use the domain name during a “Cooling-Off Period,” during which period the trademark holder could either resolve the matter amicably, or could file a “Start-Up Trademark Opposition Policy” (“STOP”) claim, a modified version of the ICANN UDRP. Under the STOP Opposition procedure, the trademark holder had to prove that the domain name was either registered or used in “bad faith,” a much lower standard of proof than under the UDRP, which is applicable to disputes if the I. P. Claim procedure was not invoked by the trademark holder.  

            In addition to the STOP procedure, and the availability of the UDRP, there is also an on-going Restriction Dispute Resolution Policy (“RDRP”), to resolve claims that that the .BIZ domain name Registrant is not using or does not intend to use the domain name for a bona fide commercial purpose. Under the Policy, a third party with standing can file a complaint alleging that the “domain name is not being, or will not be, used primarily for a bona fide business or commercial purpose” and the Complainant “has been injured, or is likely to be injured, as a direct result of the third party’s registration or use of the domain name.” A mere claim of non-use of the domain name will be insufficient to succeed in such an action.  

            The .BIZ domain is currently active, although as could be expected merely from the description of the initial start-up procedures, problems were and are being encountered in its implementation.  

The .INFO Domain             The .INFO domain is a gTLD, similar to .COM, .NET, or .ORG, meaning that it is unrestricted in that anyone can apply for registration in this domain.  

            As with the .BIZ domain, the .INFO domain Registry attempted to protect trademark owners by having a “Sunrise Period” whereby those owning a trademark or service mark which had been registered on or before October 2, 2000, in any national trademark office, could pre-apply for the identical textual or word element of the mark as a domain name. Applications were randomly selected for registration, e.g. if United Airlines and United Van Lines both applied to register UNITED.INFO, either application, but not both, could be randomly selected for registration. Sunrise registrations could be subsequently challenged on narrow grounds. Otherwise, the UDRP would apply.  

Challenges to Sunrise registrations could be based on the following grounds:  

(1) the registrant was the owner of a current trademark or service mark registration;

(2) the trademark or service mark registration did not have national effect. For example, in the United States it is possible to obtain a state trademark or service mark registration in any one of the United States of America, which registrations have only statewide effect, not national effect;

(3) the second-level domain name is not identical to the trademark or service mark registration; or

(4) the trademark or service mark registration did not issue on or before October 2, 2001.            If the challenger was successful in the challenge, it would then have the opportunity to register the domain name, or the domain name would remain available for registration. WIPO was the exclusive Dispute Resolution Provider during the Sunrise challenge period. After the sunrise challenge period, all disputes are to be governed by the ICANN UDRP.  

The .NAME Domain             The .NAME domain allows individuals to register their names as personal domain names on the Internet, i.e. JOHN.DOE.NAME. The .NAME domain is an unrestricted domain in that anyone with rights in a name should be able to register in this domain. Eligible personal names are expected to include a person’s legal name or the name by which that person is commonly known. The names of fictional characters will also be allowed if the registrant has trademark or service mark rights in the character’s name. In addition, it will be possible to add numeric characters to the person’s name, e.g. JOHN.DOE1957.NAME. There is still, however, a question with respect to other eligible names; for example, even Registrars and, apparently, the Global Name Registry have given contradictory advice concerning the ability to register the names of deceased persons. Domain names in the .NAME domain will only be open to registration in the <third-level>.<second-level>.NAME format. This format will allow users with the same last name to share the second-level TLD, while using a unique third-level domain, i.e. JANE.SMITH.NAME and JIM.SMITH.NAME.  

            The .NAME Registry provides special provisions for trademark owners whereby they can obtain Defensive Registrations (“DRs”) by which they can “reserve” a particular character string, e.g. ABC, to prevent others from using the string.  

            DRs can be filed at certain times to be determined by the Registry, for second-level domain names, third-level domain names, or a combination of both. Thus, it may be possible to register one-word DRs, although, confusingly, not one-word “regular” registrations.  

            DRs obtained during “Phase 1” of the process, when implemented, must be identical to the textual or word elements of a valid and enforceable trademark or service mark, having national effect, issued prior to April 16, 2001. According to the Registry, there will not be any eligibility requirements for DRs obtained during “Phase 2.”  

            When a person attempts to register a domain name that conflicts with a DR, the applicant is notified of the DR, and is given a chance to withdraw the application. Otherwise, the applicant can request that the owner of the DR consent to registration. If the owner of the DR refuses to grant consent, a challenge against the DR under the Eligibility Requirements Dispute Resolution Policy (“ERDRP”) may be brought.  

            Under the ERDRP, the applicant must show that he meets the eligibility requirements for registering the domain name, or prove that the DR does not meet the eligibility requirements for a DR.  

            As an example of where an applicant would prevail in a dispute, if an unknown John Doe applied for JOHN.DOE.NAME, and a famous John Doe, who had previously obtained a DR on the character string JOHNDOE, attempted to challenge the application, the applicant in the case would prevail. If successfully challenged three times, referred to as “three strikes”, the DR will be canceled.  

            Any person or entity may bring a challenge to a DR, registered domain name, or second-level e-mail address by submitting a complaint to an ERDRP Dispute Resolution Provider approved by ICANN.  

            The ICANN UDRP will also be available for .NAME domains, as with the other domain suffixes approved by ICANN.  

            In this ever expanding universe of domain name extensions and associated dispute resolution mechanisms, one thing is clear–that trademark owners and/or companies of all sizes, and even individuals, need to consult with their trademark and intellectual property counsel concerning strategies for dealing with domain names and their relationship to trademarks as well as corporate and personal names. Confusion Caused by the New Domains             As was expected, confusion concerning the initial registration periods and the intended purposes and uses of these new domains was bound to arise. In addition, as the new domain names begin resolving, i.e. are available for use on the Internet, confusion is likely to increase. This is unfortunate as the main purpose behind the introduction of these new domains was to open up more name space in the DNS while, according to the WIPO Final Report, not disrupting the orderly functioning of the DNS.  

            Internet users will now be faced with many new choices when utilizing web browsers. Rather than merely searching for a particular website using the intuitively simple ABC.COM, or variations of ABC.COM, ABC.NET, and ABC.ORG, Internet users will need to decide, if, for example, they are searching for a business, whether also to search under .BIZ, and whether a business or not, weather also to search under the .INFO domain. Furthermore, if a business contains a personal name, Internet users will need to decide whether to search under .NAME. If the business happens to be in the air transportation industry, the Internet user might then need to search under .AERO, although it is expected that .AERO will be limited to the internal functions of those in the air transport industry. When searching for information concerning their local museum, an Internet user will need to decide whether to search in the .MUSEO domain, the .COM, .NET, and .ORG domains, or the .INFO and .BIZ. domains. If the museum happens to be the name of a person, such as, for example, the GUGGENHEIM museum in New York, the Internet search may well need to include a search under .NAME, i.e. SALOMON.R.GUGGENHEIM.NAME. Further exacerbating the problem is the possibility that the domain name might be listed under a ccTLD. In short, the current situation is akin to having numerous telephones, each only capable of connecting to a certain location.  

            A further dilemma for companies that wish to prevent such confusion to their consumers will be whether they should obtain registrations in each of these domains, for all of their marks. Certain individuals will face similar problems in policing their names on the Internet. For larger companies with many marks, and smaller companies with limited resources, the range of potential domain name registrations clearly presents significant logistical and economic barriers. Given the amount of choices, inevitably there will be “holes” in the domain name coverage which a company or individual is able, or wants to, procure, opening the door to those who would wish to exploit such holes, i.e. cybersquatters.  

            To add to the confusion, there is also discussion concerning restricting the .ORG domain to solely not-for-profit organizations, as was the original intention. Through years of use by all types of individuals and entities, the .ORG domain is no longer perceived by the Internet community as what it was originally intended to be, a restricted domain for not-for-profit organizations. Rather, it is now perceived and used as merely another generic top-level domain, like .COM. The .COM domain was originally intended for commercial activity, and .NET was originally intended for networks. The separate designations were an attempt to segregate the users dependent, at least to some small extent, by the activity of the user.  

            However, at this late date, unfortunately, the “milk has been spilt.” It would cause great confusion to many in the Internet community if we were now to attempt to revert back to restricting the use of .ORG to not-for-profits. Doing so would be harmful to those who have already registered .ORG names, many of whom registered them as the “second best” alternative to a .COM or .NET domain name, and use them in ways not compatible with not-for-profit activities. Even if the previous Registrants were allowed to keep their names, this would then be harmful to them as the “cache” of an .ORG address would no longer remain and Internet users might cease searching for businesses operating for-profit under this domain, making the .ORG domain of limited value to the for-profit businesses who were first to register. It would also be potentially harmful to those not-for-profit organizations the proposal is intended to benefit, as confusion could be caused in the minds of consumers concerning the profit or not-for-profit motive of the respective companies accessed under the .ORG address. If there is sufficient community consensus among not-for-profit organizations, these groups should petition ICANN for a new domain suffix, such as, for example, .NONCOM.  

            There is also discussion concerning the adoption of a .EU domain for the European Union as either a gTLD or a ccTLD. The author is skeptical of this proposal and believes that, like the addition of other domains, this will only lead to further confusion and cybersquatting. As an initial matter, the .EU domain should not be allowed to function as a ccTLD as it is not a country, but merely a quasi-governmental organization. As a gTLD, .EU would be unrestricted and could be registered by anyone, whether or not residing or having any association with the European Union, and this would clearly lead to confusion. The creation of this domain will also open the door to more confusing domain extensions like it, for example .BX for Benelux, or perhaps, O.A.P.I., for the African Intellectual Property Organization, and many more claims. Third Level Domains Alternate Roots 

            Another layer of confusion is added when one considers those entrepreneurial individuals who register a .COM, .NET or .ORG domain with a country code as the second-level domain name, such as, for example, UK.COM, United Kingdom, or BR.COM, Brazil, or even .EU.COM, European Union, and offer to lease space on the third-level of their domain names, such as ABC.BR.COM. Increasingly entrepreneurial individuals are offering to lease the third-level space to the owners of famous and well-known marks. As a practical matter, however, so long as these third-level domains are not put to use, it might not be cost effective or feasible to monitor or to prevent each and every one of these offered leases.  

Alternate Roots            Finally, further confounding the current situation are those who choose not to obey the mandates laid down by ICANN, and have created their own Domain Name Systems which exist alongside the current DNS. One such example currently gaining popularity is a Registry called New.Net. New.Net sells domain name extensions that are more specialized than the domain extensions currently authorized by ICANN, including .AGENT, .ARTS, .AUCTION, .CHAT, .CHURCH, .LAW, .GOLF, etc. In order for these extensions, which are actually attachments to the .NET domain, to function, it is necessary for Internet users to download a “software patch” which allows their computers to resolve these domain names. According to New.Net’s website, hundreds of thousands of people have already done so. Further information concerning New.Net can be found at its website located at WWW.NEW.NET. It remains to be seen what actions, if any, ICANN will take with respect to this “unauthorized” expansion of available domain name extensions, although discussions between the parties are underway. A Domain Name System Solution             As the domain name system becomes more and more chaotic, the author reminds those within ICANN that he has proposed previously what he believes to be a more logical system. The author proposes a system which would involve two categories of gTLDs, commercial and non-commercial. All domain names within these categories would be restricted to either one or the other of these two categories. The non-commercial, or “.NONCOM” gTLDs would be reserved solely for non-commercial use on the Internet, such as “chat rooms” and “message boards.” Commercial use of one of these gTLDs would result in the cancellation of the registration, as well as the corresponding loss of the registration fee, with a preferential right to re-register in the commercial category.  

            The commercial category would be broken up into Classes corresponding to the Nice Classification , whereby, for example, a company named Apple involved in the metal industry might register its domain names as “Apple.6” corresponding to International Class 6 covering metal products under the Nice Classification. At the same time, another company with a name and trademark comprising the word “Apple” could register a domain name in Class 9 and coexist with the first company, without a likelihood of confusion, affording both companies with honest claims to the same name the right to peacefully coexist with no loss to either and more importantly, no need for involvement of arbitration proceedings. Users would also, by means of a directory, immediately have access to the correct category.  

            Those potential commercial domain name registrants who owned a trademark registration for the proposed domain name in a particular Nice class would have priority over those without a corresponding trademark registration. For example, the Apple company in the above example would have priority over an Apple.6 domain name registrant without a trademark registration. This would encourage potential domain name Registrants first to obtain a trademark registration for the proposed name before conducting business on the Internet. This system would most importantly allow for coexistence of domain names that are involved in non-conflicting fields of business.  

            This system would also discourage the adoption of domain names, which are generic, leaving them open for use by other traders. A good example of this is PETS.COM, who, before the “.COM bust” put them out of business, by registering this domain name were granted a monopoly over the name PETS, whereas in the “real” world this name would not have been registrable as a trademark in most jurisdictions of the world. Other examples are BUSINESS.COM, WINE.COM, etc. Discouraging the registration of domain names which are not distinctive can only increase protections for trademarks on the Internet, and would therefore increase the incentive for companies to create distinctive and unique identifiers to distinguish their goods and services from those of others.  

            The author’s system could also be used in respect of ccTLDs. It was envisaged by WIPO that ICANN authority would one day cover ccTLDs, although at present these domains are administered and governed, for the most part, by the laws and regulations of individual jurisdictions. This was truly a unique opportunity to create “harmonization” in respect of Intellectual Property rights, and the groups within ICANN, namely the DNSO and the Government Advisory Committee (“GAC”), should have fostered a process designed to achieve more readily such harmonization.  

            Another proposal within the DNSO which the author believes would be tenable under his system is the possibility of including exclusions in the DNS from the registration of famous or well-known marks, such as COCA COLA, so that no one except for the owners of these trademarks would be able to register anything confusingly similar to these trademarks as domain names. As much difficulty has been encountered in determining what a famous or well-known mark is in the “real” world, it would appear that the implementation of an exclusion for this special breed of mark would be difficult to achieve, particularly given the global reach of the Internet, and definitely in the context of the addition of a wide number of disorganized TLDs. The author would propound this exclusionary process, however, if the Nice Classification were adopted in respect of TLDs and ccTLDs. In this case, it is also possible that treaties such as the Paris Convention and the TRIPS Agreement/WTO could be applied to domain names leading us closer to the creation of a “harmonized” trademark and domain name system.  

            Furthermore, there is now a thrust to reform ICANN in recognition of the serious problems and weaknesses of ICANN in harmonizing the rules of the newly created TLDs. They are now so numerous and came “on-line” so quickly that it becomes extraordinarily difficult even to know what is available for registration and/or to access information from a given domain name registering agency.  

            Domain names have become, like the earliest maker’s marks, valuable intellectual property allowing users on the Internet to locate a particular business, venture, or commercial criticism. If the system is not modified in a meaningful way soon, we may have achieved just the opposite of the goal envisioned in adding new TLDs; rather than increased name space, protections for intellectual property owners on the Internet, and an orderly and efficient DNS, there will be chaos and confusion. © Copyright Dr. Ian Jay Kaufman 2001The law Offices of Michael D. Stewart can assist you in these and a variety of other issues.  You may contact us at:  

Michael D. Stewart, Esq. Law Offices of Michael D. Stewart

335 S. Biscayne Blvd., #UPH00

Miami, Florida 33131 midstewart@gmail.com michaelstewartlaw.com 1-954-778-1181 Telephone 1-866-438-6574 Toll-free 1-866-380-8986 Facsimile 

 

   

  

The Law Offices of Michael D. Stewart
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866-438-6574

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