Legal Issues on Domain Name: A World Wide Watch
Chambers Yang (Haworth
The Internet use expanded at an amazing rate in the last decade. By the
end of 1999, there were over a quarter-billion Internet users worldwide.
The "total number of host computers and users have been growing
at about 33 percent every six months since 1988, with some 72 million
host computers on the Internet currently serving users in 218 countries
and territories." The USA accounts for the large majority of Internet
users, and the number of Internet hosts in Europe increased by about
600 per cent between 1993 and 1996, the growth in Internet hosts in
Africa and Asia amounted to about 840 per cent for each region over
the same period. It is obvious that the use of the Internet in developing
countries will increase more quickly in the next few years while these
countries are devoting to fill in the ¡±digital gap¡±. Meanwhile, domain
name registration also increases very quickly. By 25 September 2000,
29,374,480 domain names have been registered worldwide, compared to 645 in July 1991 and 150,000 in late
1995. The weekly volume of new registrations is about
As the rapid development of the Internet and the dramatically increasing
of domain names, some legal issues surrounding the protection of intellectual
property have arisen, especially the relationship between trademark
and domain name becomes the focus among them. There are so many articles
discuss this issue in almost all aspects, and the domain name registration
rules always include some basic principles to deal with the trademark
infringement in domain name registration. However, it seems that some
other legal issues on domain names have been overlooked. And authors
of most of the articles on these issues are from USA. They maybe disagree
with each other in some aspects, but it seems that they all agree
that the management of domain name system should be led or guided
by USA. Many countries have enacted or are enacting legislations specifically
target to abusive domain name registrations. However, it seems that
these legislations are also inconsistent in some aspects.
The Internet itself is multijurisdictional. Users can access it from any
place on the Planet, and information may travel through various countries
or jurisdictions in order to reach its destination. It is a global
medium which is no longer limited by the historical system of separate
physical jurisdictions. Hence, the legal issues on domain name should
be discussed in an international context but not a purely USA domestic
matter, and the disputes should be resolved according to a uniform
policy adopted by an international organization, such as the WIPO
but not the ICANN.
This article indentifies the legal issues on domain name in a world wide
background. Part two discusses the relationship between domain names
and trademarks, trade names, geographical names, names of celebrities,
names of internetional organizations, INNs, etc. Part three reviews
the management of domain name system. Part four makes some suggestions
about the management of domain name system and domain name disputes
Domain name issues and disputes
At first, domain names are nothing but user-friendly
addresses. However, in a commercial marketplace, they came to be seen
as marketing tools and brand names. Thus, domain names became a tradable
commodity, a market resource object being contended by interested
parties. So many legal issues on domain name have arisen, and accordingly
more and more disputes between domain name holders and complainants
have been taken before relative courts all over the world. There are conflicting decisions among different
jurisditions and even within the same nation. Wildly divergent levels
of technical comprehension seem to have led to somewhat inconsistent
justifications. However, it is clear that in domain name litigations
the judicial decision making process is becoming a globalized event,
and domain name litigation will have a signficant impact on the conflicts
involving all manner of e-commerce issues.
Trademarks v. Domain
With the growth of the Internet, especially
the influx of commercial enterprises onto the Internet, domain names
have come into conflict with trademarks. The possibility of such conflict
arises from the lack of connection between the system for registering
trademarks and the system for registering domain names. The trademarks
registration system is administered by a governmental authority on
a territorial basis, while the domain names registration system is
usually administered by a non-governmental organization without any
functional limitation. Further, trademarks generally are issued for
one or only a few categories of goods or services at a time, unless
the trademark is famous or well-known, while domain names are registered on a first-come, first-served
basis and offer a unique, global presence on the Internet. Trademark
registrations generally require use to remain effective, while domain
names can be reserved for future use.
An underlying legal issue is whether registration
of a domain name that is identical to a trademarked term is in and
of itself a trademark violation. In general, one does not violate
a trademark right without commercial use, unless registration is itself
a commercial use. However, even some types of commercial use are protected,
e.g. accurate comparative advertising and news reporting and news
commentary. Then, when domain name is conflict with trademark? And
when they can coexist with no infringement? It seems there is no simple
answer. It is necessary to discuss different cases in different circumstances.
as domain names for selling to the trademark owners or their competitors
The leading case is Panavision v.
Toeppen. Toeppen registered the panavision.com and
approached Panavision to sell it. Rather than pay, Panavision sued
Toeppen and won an injunction on a trademark-dilution theory. The
court found commercial use because Toeppen¡¯s business was to reserve
trademarks as domain names and then sell to the trademark owners.
Before this case, in Intermatic,
Inc. v. Toeppen, ransom of domain name was also found to be
In the UK One In A Million case, the cybersquatters registered a lot of domain names
incorporating famous UK trademarks and trade names. They then attempted
to resell them, posting details of availability on a website. Eventually,
they were sued under the Trademarks Act. The court found for the plaintiffs
because the cybersquatters¡¯ activity amounted to a threat of passing
off because it was a deliberate practice with a clear intent to deceive
people as to the origin of the domain. This activity in itself constituted
appropriation of the plaintiff's goodwill. In another UK case Harrods
Ltd. V. UK Network Service Ltd., the respondent registered the ¡¯harrods.com¡¯ and
attemped to secure payment from Harrods. The court ordered the respondent
to give up ¡¯harrods.com¡¯ and to refrain from infringing or passing
off its service as those of Harrods.
More and more similar cases were reported. It seems clear that cybersquating
is recognized to be a kind of trademark infringment. However, it cannot
be concluded from the traditional trademark theory. As the Ninth Circuit
of USA in Panavision v. Toeppen found that using federal anti-dilution law
to cover cybersquatting was creating a new form of dilution outside
of traditional tarnishment and blurring. Now the principle is confirmed by the USA Anticybersquatting
Consumer Protection Act and WIPO Final
register trademarks as domain names for own use
Since trademarks are registered in different
classes, while domain name is unique on the Earth, this issue should
be discussed respectively.
as domain names in same class of product or service.
In Bell Actimedia, Inc. v. Puzo,
et al., the Canadian court issued a preliminary injunction
against the defendants who had just established a website under the
domain ¡°lespagesjaunes.com¡± as a French language business directory.
The plaintiff telephone giant has long-standing registered marks for
¡°yellow pages¡± and ¡°pagesjaunes.¡± The injunction prohibits acts of
the defendant that infringe on the plaintiff¡¯s marks, including use
of the domain name.
In Affair Sapeso, the defendant registered its competitor's trademark
as a .com domain. The French court ordered the defendant to withdraw
its domain name from the Internet
and enjoined the company from any further use of the trademark.
The court held that the offending activity (domain registration) took
place outside of France and that trademark rights are defined by territory
was no bar to the court's authority since doing otherwise would allow
trademark infringers to escape liability by simply registering in
a foreign jurisdiction.
In the "Ozu" case, "ozu.es" is Spain's first search engine
created at Advernet. Advernet received a trademark registration for
"ozu" in Spain. Some of Advernet's partners broke away and
started a competing company and registered the domain "ozu.com"
in the USA. The Spanish court held that the trademark owner had exclusive
use of the "ozu" and that all of the defendant's use was
It seems that the courts in different jurisdictions all agree to prohibit
registering a domain name that is identical or similar to its competor¡¯s
trademark. However, they based on different legal reasons. The enforcement
of an order that applies to an extra-territorial domain name registration
is still a problem.
as domain names in different classes of products or services.
In China, a plaintiff registered the trademark ¡°PDA¡± for the manufacture
of electronic goods in 1997. When the company planned to register
the domain name ¡¯pda.com.cn¡¯ in late 1998, it found the defendant
has registered the domain name and used it to sell other¡¯s products.
An action was brought under China¡¯s Trademark Law and Law Against
Unfair Competition. Because the plaintiff failed to provide any evidence
that defendant¡¯s products were the same or similar, the court was
unable to find actual infringement.
In Avery Dennison Corp. v. Sumpton, the plaintiff had acquired distinctiveness in the
¡¯Avery¡¯ and ¡¯Dennision¡¯ trademarks, the defendant registered ¡¯avery.net¡¯
and 'dennision.net' for sale vanity e-mail address. The court held that the defendant's
customer base is Internet users who desire vanity e-mail address,
while the plaintiff¡¯s customer base includes purchasers of office
products. There was no evidence demonstrated that the plaintiff possessed
any degree of recognition among Internet users or the defendant directed
e-mail service at the plaintiff¡¯s customer base.
While in France, a court refused to apply the trademark concept of speciality
(classification by type of good or service) to domains and specifically
prohibited a computer services company from using ¡±alice.fr¡± against
a trademark owner in a totally non-competing class of products in
Affair Alice. However, this decision was reversed by the Court
of appeal which applied the speciality test to conclude that two trademarks
could coexist as far as there is no confusion between the services
or the products. Traditional confusion analysis was therefore applied
in most subsequent cases.
the above cases, all the final decisions are based on tradtional confusion
analysis. However, as discussed below, both the French courts and
the USA courts ruled that mere registration trademarks as domain names
is trademark infringement because it block the trademark owner¡¯s ability
to use the trademark online. The conflict is obvious.
or famous trademarks as domain names.
In USA, trademark owners have successfully used the Lanham Act to protect their famous trademarks.
For example, in Hasbro, Inc,
v. Internet Entertainment Group, Habro brought the action after discovering that
its trademark ¡¯candyland¡¯, which is the name of one of
its most popular children¡¯s games, was registered as ¡¯candyland.com¡¯
for a pornographic website. The court held that such use of the mark
as a domain name for pornography could in fact result in consumer
confusion and thereby dilute the mark. In Planned
Parenthood Federation of America, Inc. v. Bucci, the defendant registered the plaintiff¡¯s trademark
as a domain name for the purpose of bringing target audiences to the
content to his non-commercial site. However, the court held that the
use of the trademark had the potential to prevent some Internet users
from reaching plaintiff¡¯s own website, and the use resulted in unfair
competition and dilution under the Lanham Act.
Brazil enforced a new regulation in 1998 attempted
to clarify some domain name conflicts. The regulation forbids third-party
registration of domain names that conflict with well-known trademarks
and reputed trademarks. No other trademarks are given specific protection
againt conflicting domain name registrations. Well-known trademarks
are protected in Brazil only to the extent that the trademark is used
on identical or similar goods. Reputed trademarks are those registered
in Brazil but declared by the Patent & Trademark Office as being
well-known within Brazil and therefore entitled to protection across
all classes of goods and services.
It is no doubt that well-known trademarks should
be protected specificly. WIPO suggests in its Final Report that the registration of a domain name identical to well-known
trrademark in any new gTLDs should be automatically blocked. It is
an active suggestion. However, what is well-known trademark? So far
there is no world widely confirmed list or criteria. Further, how
to reach the balance between well-knopwn trademrk protection and free
speech is a big problem. Should the domain names for non-commercial
use also be prevented from registering?
as domain names for non-commercial use.
In USA, there are conflicting decisions. In Jews for Jesus v. Brodsky, the plaintiff registered the ¡¯Jews for Jesus¡¯ trademark
and the domain ¡¯Jews-for-Jesus.org¡¯. The defendant set up sites with
the domain names ¡¯Jews for Jesus.org¡¯ and ¡¯Jews-for-Jesus.com¡¯ that
ridiculed, maligned and parodied plaintiff¡¯s website. The court fount
that defendant¡¯s use of his domain name created a likelihood of confusion
and blurred and tanished the value of the ¡¯Jews for Jesus¡¯ trademark.
However, in Bally Total Fitness
Holding Corp. v. Faber, the plaintiff brought an action agaist a website
which domain name included the words ¡¯bally sucks¡¯. The site was dedicated
to complaints about the plaintiff¡¯s health club business. The court
held that confusion as unlikely because the defendant¡¯s site had a
fundamentally different purpose from the plaintiff¡¯s site. The former
was a consumer commentary while the latter was a commercial advertisement,
therefore there was no trademark infringement.
What can constitute a commercail use? In Germany, a website is commercial,
if there are goods or services offered on the site, if there is advertisement,
or if there is a link to some commercial site. Use may also be commercial if the domain name itself
shall be auctioned off. It is obvious that these interpritations are too
broad. Many individuals register free domain names to establish their
non-commercial site, but the free site providers always insert advertisements
automatically into their non-commercial sites. Does it turn the sites
into commercial? Further, many commercial sites have some useful information
that is worthy linking for non-commercial use. We cannot conclude
that the sites with such links are commercial.
only register trademarks as domain names, no use
In the Capricom case, the Belgian court found the nabber had
merely registered the domain and was not conducting business under
it, so there was no possible confusion concerning any goods or services.
Nor was the domain registration causing any business harm or restriction
to the plaintiff since it had been conducting business quite easily
under a totally different domain name.
While in France, mere registration of a domain name may qualify as an
act of unfair competition by blocking the trademark owner¡¯s ability
to use the trademark online. In the ¡°pacanet.com¡±
case, the domain holder was held to have infringed the French trademark
despite the lack of any activity on the website. In the French ¡°AltaVista¡±
case, the plaintiff¡¯s claims in unfair competition were upheld. The
court held that by reserving the use of the domain name for another
party amounts to blocking its use by the lawful owner and infringes
that owner¡¯s rights.
The German courts also tended to render their decisions in favor of trademark
owners without consideration of the contents of the website that was
posted under the domain name. In the epson.de
case, the court disregarded the lack of website content.
German courts examine whether there is a threat of a future use of
the domain name in an unlawful manner by the cybersquatter. If there
is, they preliminary forbid this future use. Threat of future use
may be apparent, if the holder of the domain name offers the domain
to a commercial third party that is most likely going to offer goods
or services on the Internet. A court also argued that sole registration of a
domain name represents a threat of use.
The USA courts in both Toeppen cases found that although Toeppen did not use the trademarks
in connection with any goods or services related or unrelated to plaintiffs,
because of the limitations of the existing domain name system, Toeppen¡¯s
registration of plaintiffs¡¯ trademark lessens the capacities of plaintiffs
to identify and distinguish their goods and services by means of the
Internet. Therefore the plaintiffs were awarded permanent injunctions
In the "One In A Million"
case, although the UK court found for the plaintiffs,
it stressed that mere registration of a domain was not, in itself,
passing off or infringement of a trademark. However, the Court of
Appeal held that the mere registration of a domain name could be actionable
either as fraud or as misappropriation of goodwill or as "taking
unfair advantage of or...(being) detrimental to the distinctive character
or repute of the mark".
It seems that the courts in different jurisdictions, even in same nation
like UK, disagree with each other on this issue. In my opinion, whether
there is a trademark infringement depends on infringing activity,
damage and causality between the two. Mere registration constitute
a trademark infringement only when the trademark owner has the property
in the trademarked words or the trademark is well-known. Otherwise,
it is a typical reverse domain name hijacking.
reverse domain name
There have been some well-reported cases of attempted reverse domain hijacking
in which trademark holders retracted their threat to sue the holders
of domains that used the same string as their trademark. A few of
these cases involved commercial, but most involved non-commercial
uses of the domain name. In Roadrunner
v. Network Solutions Inc., the holder of the domain name "roadrunner.com,"
a small Internet-based business, resorted to legal action to defend its right to use the domain name after it was challenged
by the owners of the registered trademark "Road Runner."
The suit was dismissed after NSI agreed not to disrupt Roadrunner's
use of the domain name in the absence of a court order.
Reverse domain name hijacking have detrimental effects on individuals
and small business. WIPO has suggested a few measures to reduce it.
Trade names v. Domain
Some courts in different jurisdictions protected trade names from being
registered as domain names by others, although different laws were
apllied. In France, bulk registration of well-known French corporation
names has been condemned as cybersquatting. The defendant¡¯s plea that
it was ¡°safeguarding prestigious marks¡± was summarily rejected. In Affair Champagne C¨¦r¨¦ales, protection from competing
web sites was extended to company trade names without formal mark
In Germany, the Trademark law protects registered
marks as well as non-registered names used in business relationships,
such as trade names. The Civil Code also protects the names of corporations,
partnerships, associations, trade unions, etc. Neither the commercial
use nor the names be identical is required. Similarity leading to
confusion can be infringement.In "epson.de"
case, the court also asserted that the registration of another's name
for no purpose other than to hinder the true owner from using it is
an "unfair operational disturbance" under the Against Unfair
In Labouchere v. IMG Holland, a group of banks and insurance companies sued IMG
for registering the names of each of the banks and insurance companies
as domain names. The Holland court held that such use by IMG prevented
plaintiffs from registering the names as domain names.
While some other courts were not so strict on this issue. In Peinet Inc. V. O¡¯Brien, a Canadian court considered the potential
for confusion between pei.net and the plaintiff¡¯s corporate name Peinet
and held that the use of lower case letters and a period to separate
the domain name into two parts was sufficient to avoid confusion.
In the Capricom case, the Belgian court held that the Belgian
Company Act is inapplicable because it only restricts use of words
as tradenames and does not restrict or otherwise applies to words
used as domain names.
v. Domain names
Geographical names are protected under the Paris Convention and in some jurisdictions,
especially when they are related to the sources of some particular
goods. They should also be protected from being registered as domain
names by unrelated parties. A French commune of Saint Tropez had registered
in the name in France, the defendant registered "saint-tropez.com"
in USA for itself. The
court held that trademark rights were enforceable against domain names. A different conclusion was reached where the name
only appeared as a file path. In Affair Elancourt, the court held that name rights could not be used
to prohibit non-commercial speech about the subject matter of the
name. While bulk registration of the names of cities, monuments has
been condemned as cybersquatting in France.
In Germany, decisions under the Civil Code allowed Heidelberg and Braunschweig to enforce their Namensrecht against domain holders.
However, the court of Koln ruled that consumers do not necessarily
expect domains using geographical names to be exclusively associated
with the corresponding municipality, particularly when the municipality
was not well known, therefore confusion was unlikely.
The UK is just beginning to confront this issue. A company paid 5 pounds
each to register about 1500 village names and plans on reselling them
for 500 pounds each.
Names of celebrities
v. Domain names
Shortly after every Chinese athlete won a Olympic gold medal, his or her
name was registered as domain name by someone else. The names of celebrities were registered as domain
names all over the world. Should they be protected? As we know, Julia
Roberts and Madonna have been successful in getting back the domain
names which are identical to their names, while Sting lost his case because the panel held
that "there was evidence that the Respondent had made bona fide
use of the name Sting prior to obtaining the domain name registration
and there was no indication that he was seeking to trade on the good
will of the well-known singer."
In Germany, the Civil Code seeks to protect
one¡¯s personality by enabling everybody to be recognized by his or
her own name. If someone
claims protection based on the Civil Code, the use of the domain name
by the Cybersquatter does not necessarily have to be a commercial
This is one of the most controversial area.
Some argues that the danger is that this expensive scope would constrain
Names of international
organizations v. Domain names
If a law student wants to visit the website of International Chamber of
Commerce (ICC) to find out the new Incoterms 2000 but does not know
the domain name, he or she maybe tries ¡±icc.org¡±, unfortunately it
is Internet Chamber of Commerce, then tries ¡±icc.com¡±, again it is
a California-based software company, then tries ¡±icc.net¡±, it is Internet
Commerce Corp. How disappointed! But it is the fact! The names and
acronyms of international intergovernmental organizations should be
protected from comfusion in domain names. WIPO has included this issue
in its second Internet domain name process.
INNs v. Domain names
Names (INNs) are set down by the World Health Organization for pharmaceutical
substances, so as to protect patient safety worldwide. It should be
protected from comfusion in domain names. There is no need to say
a more word. WIPO has also included this issue in its second Internet
domain name process.
Legitimate rights v.
In France, the Court of appeal applied the speciality test to conclude
that two trademarks could coexist as far as there is no confusion
between the services or the products in Affair Alice. Traditional confusion analysis was therefore applied
in most subsequent cases such as Affair MMA. This dispute between
two legitimate owners of the same mark (MMA) was resolved in favor
of the first to register the domain.
In Germany, as between multiple parties with legitimate rights in a name,
the first to register the domain prevails. However, holders of famous
trademarks or trade names have successfully claimed the domain, when
the initial holder had a legitimate, but much lower interest himself. And if the cybersquatter raises a threat of the
use of the domain name in connection with the same goods or services
as the plaintiff is using his trademark or name, courts will order
the cybersquatter to relinquish the domain name.
In UK, the judicial decisions
have also backed the ¡¯first come, first serve¡¯ policy, particularly
in the absence of any compelling reason to favor the later domain
registrant. The Pitman case
involved two non-competing firms, both with common law trademark rights
in the Pitman name. Against claims of passing off and interference
with contract, the court ordered the domain transferred back to the
earlier registrant. In the Prince decision, a US sporting goods company
was enjoined from threatening infringement litigation in the UK over
the domain registration for "prince.com" which was held
by a British computer services firm that also used the trade name
In Desknet Systems, Inc. v. Desknet,
Inc., the USA court found that the defendant¡¯s use of
the disputed domain name ¡¯desknet.com¡¯ appeared to be an innocent
result of its similar corporate name. The plaintiff¡¯s motion was denied.
To overcome the difficulty of uniqueness, WIPO suggests using the gateway
or portal page. Under a gateway, a list of names using a common
element is produced with links to the various addresses and information
to distinguish the addresses and their owners from each other. It
is a good measure so far. The rights of a trademark holder in one
territory must coexist with the legitimate rights of other trademark
holders or Internet users in
different jurisdictions and for different uses. However, WIPO
suggests that it should be voluntary but not compulsory. Then who will voluntarily share with others if
he or she first registered the domain name? Most owners of domain
names clearly wish to preserve their unique identity and do not wish
to countenance sharing it with others, even through a portal.
Domain names v. Domain
case, the ACCC brought a class action on behalf of a group of
consumers who claimed they had been misled by a website ¡°internic.com¡±,
which was comfusive similar to the famous domain name ¡°internic.net¡±
registered by the Internet Network Information Centre (InterNIC).
The case was settled with a trust fund to repay money to up to 13,000
In Paine Webber Inc. v. Fortuni, the USA court ordered NSI to freeze the domain
name ¡¯wwwpainewebber.com¡¯ used by the defendant operating a pornographic
website because it was different from the plaintiff¡¯s domain name
only by the omission of dot between ¡±www¡± and ¡±painewebber¡±.
A Brazil court favored a small Brazilian ISP over US giant America Online
in a contest over the domain aol.com.br. The local company, America
On Line Telecommunications, was the first to register the domain,
but more importantly, the US AOL had not yet established any corporation
in Brazil, a requirement for all .br registrations, and therefore
was not permitted to use a trademark infringement action as a means
of reserving the domain name for future use.
In the epson.de case, the German court held that domain names themselves
have a distinguishing function (differentiating one website from another)
which deserves protection.
Similar to trademark infringement, domain names also face some servere
infringement. The above cases are something like trademark infringement,
the disputed names are identical or similar to other¡¯s names. However,
as we know, generic words cannot be used as trademarks under trademark
law, but they are used in domain names, such as law, lawyer, business
are used frequently. Can ¡±lawyers.com¡± challenge ¡±lawyers.com.cn¡±?
We are still waiting for judicial dicisions or legislations.
Domain names v. Trademarks
Affair Agaphone, the French Tribunal held that subsequent registration
of a trademark does not provide rights against a prior domain registration. However, the dicision did not tell us whether the
prior domain names have the rights against the subsequent registration
of trademarks, especially when they have competing interest. Can a
well-known domain name be same protected as a well-known trademark?
Domain names v. Site
China State Administration For Industry and Commerce began to register
the site names in September 2000. For some websites, the site names are same as the
domain names, but for others, the site names are different from the
domain names, especially most Chinese websites are named just as trademarks
or trade names. Many site names are popular in the Internet users.
Some disputes has arisen in this new area, and cybersquatters are
also active in this area. The most famous case is that two news websites
use the same site name ¡¯East Net¡¯, and both of them claim the exlusive
right to use it. Therefore it is necessary to grant the registant
the exclusive right to its site name. The regulation also identifies
the relationship between site names and domain names, trademarks as
well as trade names. However, to what extent site names should be
protected is still the problem.
Domain names registered
In United States, since September 1999, if a
domain name has any source indicating significance, it is registrable
as a trademark or service mark. The Examining Attorney must review the specimens
in order to determine how the proposed mark is actually used. In a
domain name mark, consumers look to the second level domain name for
source identification, not to the TLD or the terms "http://www."
or "www." Therefore, it is usually acceptable to depict
only the second level domain name. In analyzing whether a domain name
mark is likely to cause confusion with another pending or registered
mark, the Examining Attorney will consider the marks as a whole, but
generally will accord little weight to
the TLD portion of the mark. Marks containing the phonetic
equivalent of a TLD (e.g., XYZDOTCOM) are treated in the same manner
as marks composed of a regular TLD.
Making domain names trademarkable provides a
measure to protect domain names. However, as discussed above, domain
anme is different from trademark in some aspects, this measure cannot
apply to all domain names. Meanwhile it does not avoid the problems
surrounding trademarks and domain names.
It is important that the Internet evolve to be more accessible to those
who use non-English language character sets. Early from the Internet
was introduced into China, some have begun to work for the solutions
to adopt Chinese domain names. On 18 January 2000, CNNIC began to register Chinese domain names for test. On 19 May 2000, Chinese Domain Name Consortium
(CDNC) was set up in Beijing to take in charge of the coordination
and regulation about Chinese domain name around the world. On 2 November 2000, CNNIC promulgated the Chinese
Domain Name Registration Rules and the Chinese
Domain Name Dispute Resolution Rules. Since 7 November 2000, nine registrars approved
by CNNIC began to register Chinese domain names both in .cn and in
.zhongguo (China), .gongsi
(company), .wangluo (net). Domain names registered in the latter three TLDs
are completely in Chinese.
Meanwhile, NSI Registry also competed in developing
Chinese domain name system. It announced its plans to open a testbed
for ICANN-accredited registrars to register domain names in non-English
language character sets in .com, .net, and .org on 24 August 2000, and actually it began accepting registrations on
10 November 2000. No one knows yet if there will be conflict between
the CNNIC system and the NSI system and if they are compatible each
other. And it is controversial that whether non-English language domain
names should be administered and registered by their national institutions
which are more authoritative in these languages. However, it is worthy
noting that the internationalization of the domain name system must
be accomplished through standards that are open, non-proprietary,
and fully compatible with the Internet's existing end-to-end model
and that preserve globally unique naming in a universally resolvable
public name space.
discussed above, to solve the legal issues surrounding domain names,
some courts tried to expend the traditional trademark theroy to domain
name cases, while some others adhered to existing laws. Other than
trademark law, different courts in different jurisdiction employ different
measures. In UK, Australia and Canada, the courts tried to find whether
there was passing off or deliberate damage to goodwill in the cases,
while in USA, the trademark dilution theroy was well developed in
domain name cases. As to other names besides trademarks, all the courts
in Common Law Countries tried to find whether the parties had the
common law trademark right in the names. While in the European Continent,
the theroy of agaist unfair competition as well as civil law were
used. Most of the isseus were not well settled, except that cybersquatting
was almost universally condemned. Judicial dicisions and legislaions
on some issues are still needed to harmonize, and the management of
the domain name system should be well organized.
The management of domain name system
The domain name system (DNS) serves the central
function of facilitating users¡¯ ability to navigate the Internet.
It does so with the aid
of two components: the domain name and its corresponding Internet
Protocol (IP) number. A domain name is the human-friendly address
of a computer that is usually in a form that is easy to remember or
to identify, such as www.wipo.int. An IP number is the unique underlying
numeric address, such as 220.127.116.11. The DNS operates on the basis
of a hierarchy of names. At the top are the top-level domains (TLDs),
which are generally divided into two categories: the generic top-level
domains (gTLDs) and the country code top-level domains (ccTLDs). There
are seven gTLDs at present. Three of these (.com, .net and .org) are open to
all persons or entities. The other four gTLDs (.int, .edu, .gov and
.mil) are restricted, only certain entities meeting certain criteria
may register names in them. There are at present 243 ccTLDs. Each
of these domains bears a two-letter country code, for example .au
(Australia), .cn(China) and .fr (France). Some of these domains are
open, others are restricted, only persons or entities satisfying certain
criteria (for example, domicile within the territory) may register
names in them. Functionally, there is no distinction between the gTLDs
and the ccTLDs.
The Internet technical development has been
guided by protocols established through participatory decision-making
processes by bodies such as the Internet Engineering Task Force (IETF)
and its subcommittees, and the Internet Assigned Numbers Authority
(IANA). However, there has not been a central rule-making entity that
has exercised comprehensive legislative authority over the Internet.
And the DNS was used for about 12 years (1982-94) without creating
any significant public policy issues. The year 1995 can be used as
the date when the Internet became a truly commercial, public medium.
In 1995, the USA government allowed Network Solutions, Inc. (NSI)
to be responsible for registering domain name in the gTLDs .com, .net
and .org. NSI adopted the ¡¯first come, first sreved¡¯ policy for registration
of domain name and a Dispute Resolution Procedure to deal with the
conflict between trademarks and domain names. NSI policy was criticized
for it strongly favoring the owner of a trademark registration and
it was also criticized as operating a monopoly in the reserving of
the .com, .net and .org TLDs.
The USA Department of Commerce (DOC) issued for comment A Proposal to Improve the Technical Management
of Internet Names and Addresses (the "Green Paper")
on January 30, 1998. It proposed for discussion a number of measures
relating to the administration of the DNS, including the creation
by the private sector of a new corporation located in the USA and
managed by a globally and functionally representative Board of Directors.
Following the closure of the comment period, DOC issued its Statement of Policy on the Management of Internet
Names and Addresses (the "White Paper") on June 5, 1998. It confirmed the call contained in the Green Paper
for the creation of a new, private, not-for-profit corporation responsible
for coordinating specific DNS functions for the benefit of the Internet
as a whole. Following the publication of the White Paper, the Internet
Corporation for Assigned Names and Numbers (ICANN) was established,
then DOC and ICANN entered into a Memorandum of Understanding in November
1998, with the intention of coordinating the on-going transition of
the management of the DNS.
In the "White Paper", DOC alleged that the USA Government ¡±is
committed to a transition that will allow the private sector to take
leadership for DNS management¡± and international organizations may
provide specific expertise or act as advisors to ICANN. While it granted
authority to ICANN, it alleged that it still believed that neither
national governments acting as sovereigns nor intergovernmental organizations
acting as representatives of governments should participate in management
of Internet names and addresses. It called on WIPO to ¡±initiate a
balanced and transparent process¡± to develop recommendations for a
uniform approach to resolving trademark/domain name disputes involving
cyberpiracy, recommend a process for protecting famous trademarks
in the gTLDs, and evaluate the effects of adding new gTLDs and related
dispute resolution procedures on trademark and intellectual property
holders. ¡±These findings and recommendations could be submitted
to the board of the new corporation for its consideration in conjunction
with its development of registry
and registrar policy and the creation and introduction of new gTLDs.¡± (emphasis added)
As an organ of the United Nations, responsible to all its member states
rather than just the USA, WIPO felt empowered to define its own terms
of reference. WIPO stated that it intended to make recommendations
concerning dispute prevention, dispute resolution, process for the
protection of famous and well-known marks in the gTLDs and effects
on intellectual property rights of new gTLDs. WIPO thus gave itself a considerably broader and
more ambitious charge than the fairly narrow one proposed by the USA.
Unfortunately, the Final Report largely returns to the original mandate suggested
by the USA Government. WIPO's recommendations in the Final
Report has been submitted to ICANN, which can adopt them, modify
them, or ignore them as it will. However, WIPO's report is likely
to be influential. ICANN's registrar accreditation guidelines adopted
some of the features of the WIPO interim report. On 24 October
1999, ICANN approved the Uniform Domain Name Dispute Resolution Policy
which has been adopted by all domain name registrars, and four dispute-resolution service provider were
approved so far. Thus, ICANN, a so-called ¡±private¡± USA corporation
became the administrative authority of the DNS and a USA-centric management
of DNS thus was established.
The legal issues on domain name and the organization
and management of the DNS has been the subject of intensive discussions
throughout the world over the past a few years. These discussions
have been motivated by a desire to institutionalize the functions
associated with the management of the DNS in a manner which will permit
the system to accommodate the growing volume of traffic on the Internet
and to be administered in a stable, reliable, competitive and open
way, taking into account the interests of all Internet stakeholders.
As mentioned above, the conflicts between domain names and trademarks
and other legitimate rights of identity mainly because the different
registration and adminitration system. Under the existing domain name
system, problems can only be solved in some respective aspects. We
must establish a new system to reduce the problems to the minimum
extent. Since trademark system is well established after more than
100 years development, we can adopt some valuable principles for the
new system. In the new system, while non-commercial used domain names
should still be keep open to all persons and entities in specific
TLDs such as .nom and .org, commercial used domain names should be
registered in certain related class under relative ccTLD. The classification
should be world wide uniform and should not be conflict with trademark
classification. Only recognized well-known trademarks, domain names
and other names can be registered under .com. As WIPO noted that restrictions
can have an effect on reducing the tension between domain names and
intellectual property rights. Under the new system, problems would
be prevented rather than remedied after the fact.
As the Internet is multijurisdictional, the new system cannot be established
without international cooperation. It should be administered by WIPO
and the ¡±A¡± root server should also be operated by WIPO. To keep the
system stable, ICANN can be re-organized as a commission under WIPO,
which will be in charge of administering the DNS according to an international
aggreement. The existing domain names should be permitted to transfer
to new classified domain names in a provided period.
Surely, it is a hard work to the international community to establish
the new DNS.
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