Legal Issues

LEGAL ISSUES

Domain Name Conflicts: "Hey! That's My .Com!"

by Shelley M. Liberto, Esq.

The explosion of the Internet as a communications medium has given rise to conflicts in domain name assignments. Domain names on the Internet are composed of at least two parts: a top level domain name (TLD) and a second level domain name (SLD). The levels of domain names are counted from right to left. There can be only one of a particular SLD in each TLD. A number of TLD registries already exist for each country, with codes such as .uk, .fr, .us, .de, .at, etc. Additionally, InterNIC, a firm contracted by the U.S. Government entity known as the National Science Foundation, has instituted the oldest international system for assigning TLDs such as .com, .org, and .net. By the end of 1995, the number of ".com" domain names exceeded 200,000, and by the end of 1996, the number exceeded 600,000. The ".com" TLD hosts the overwhelming majority of names on the Internet and, therefore, one's chance of obtaining a domain name with that TLD is greatly diminished. The fight for popular domain names, and confusion over the authority for resolving disputes, has given rise to Domain Name Dispute Resolution Procedures both with InterNIC and a new international body for coordination of the Internet known as the International Ad Hoc Committee (IAHC).

The International Solution

The IAHC was formed at the request of the Internet Society, Internet Assigned Number Authority, and the World Intellectual Property Organization. These are ostensibly nongovernmental international organizations for global cooperation and coordination for the Internet. Together they have created a "Memorandum of Understanding" for an Internet domain name system. The IAHC aspires to concluding a Memorandum that will attract the voluntary agreement of countries and international organizations to abide by its terms.

The Memorandum does not purport to govern the existing TLDs mentioned above, such as ".com" and ".org." It does, however, propose that seven new TLDs be added for Internet addresses:

.firm businesses or firms

.store businesses offering goods for purchase

.web entities emphasizing activities related to the World Wide Web

.arts entities emphasizing cultural and entertainment activities

.rec entities emphasizing recreation and entertainment

.info entities providing information services

.nom individual or personal identifiers

The Memorandum also sets out Domain Name Conflict Resolution Procedures. These are to be instituted by an Administrative Domain Name Challenge Panel. The purpose of the Panel is to sort out challenges to SDLs that are "identical or closely similar to" an alphanumeric string for which intellectual property rights already exist, such as trademarks. The dispute is submitted to online mediation and, finally, if mediation fails, to online arbitration. The language to be used in mediation or arbitration is English. The cost of mediation is expected to be between $100 and $200, and arbitration is expected to cost about $500 plus the arbitrator's fee. Although the Memorandum does not yet represent a binding convention, it stands as the next step toward developing a "World Court of the Internet" in the not-too-distant future.

InterNIC's Solution

With regard to SDLs administered by InterNIC on the .com, .org, and .net TLDs, Domain Name Dispute Resolution Procedures are set out in a Policy instituted by InterNIC's subsidiary, Network Solutions, Inc. The Policy, however, is replete with nonbinding language on the part of InterNIC. Throughout the document, InterNIC makes clear that it "may apply the procedures" as it wishes. The Policy only addresses domain name conflicts arising from claims of trademark ownership.

Under the Network Solutions Policy, a challenger must first submit an original copy of a trademark registration which has been certified within the prior six months pertaining to the challenged SDL. The trademark must be registered on the principal registry of a country. Trademark or service mark registrations from the supplemental registry of a country, or from individual states or provinces, are not accepted. The challenger must also submit a copy of a prior written notice sent to the alleged offending domain name registrant. Network Solutions then compares the effective date of the trademark with the effective date of the domain name registration to determine chronological priority. If the domain name violates a preregistered trademark, Network Solutions assists the registrant with the registration of a new domain name. Network Solutions also accommodates the registrant with a 90-day transition period during which time both domain names may be maintained simultaneously by InterNIC.

In the event a registrant fails to cooperate upon determination of a violation of trademark, Network Solutions places the domain name "on hold," thereby depriving all parties of its use, until the dispute is resolved by arbitration, agreement, or a court of law. In the event either the registrant or challenger files a lawsuit with regard to the registration and use of the domain name, Network Solutions will maintain the status quo, be it the continued use of the domain name or maintenance of the "on hold" status.

Conclusion

The recent explosion in commercialization of the Internet has created a logjam of domain name applications, conflicts, and challenges. Accordingly, it is not surprising that InterNIC and international organizations are in the process of forming Domain Name Dispute Resolution Procedures on both a domestic and international level. These steps indicate the likelihood that the international arena of the World Wide Web will, in the not-too-distant future, give rise to a single international body assigned to administer Internet issues at large. The IAHC Memorandum of Understanding, InterNIC's Domain Name Dispute Resolution Policy, and the World Intellectual Property Organization's online Mediation and Arbitration procedures may be found on the Web.

Shelley M. Liberto is an attorney specializing in software- and Internet-related issues. His Web page is located at http://www.libertolaw.com.