|I. IntroductionThe 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."1 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.2 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,3 compared to 645 in July 1991 and 150,000 in late 1995.4 The weekly volume of new registrations is about 21,000.5|
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 resolution. [page]
II. 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.6 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.
1. Trademarks v. Domain names
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.
A. register trademarks as domain names for selling to the trademark owners or their competitors
The leading case is Panavision v. Toeppen7. 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,8 ransom of domain name was also found to be commercial use.
In the UK One In A Million case,9 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.,10 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. Toeppen11 found that using federal anti-dilution law to cover cybersquatting was creating a new form of dilution outside of traditional tarnishment and blurring.12 Now the principle is confirmed by the USA Anticybersquatting Consumer Protection Act and WIPO Final Report.
B. 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.
a. register trademarks as domain names in same class of product or service.
In Bell Actimedia, Inc. v. Puzo, et al.,13 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,14 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,15 "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 infringing.
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.
b. Register trademarks 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.16
In Avery Dennison Corp. v. Sumpton,17 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.18 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.
In 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.
c. Register well-known 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,19 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,20 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?
d. Register trademarks as domain names for non-commercial use.
In USA, there are conflicting decisions. In Jews for Jesus v. Brodsky,21 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,22 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.23 Use may also be commercial if the domain name itself shall be auctioned off.24 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.
C. only register trademarks as domain names, no use
In the Capricom case,25 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 ?I>pacanet.com?case, the domain holder was held to have infringed the French trademark despite the lack of any activity on the website.26 In the French ?I>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.27
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 case28, 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.29 A court also argued that sole registration of a domain name represents a threat of use.30
The USA courts in both Toeppen cases31 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 against Toeppen.
In the "One In A Million" case,32 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.
D. reverse domain name hijacking
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.,33 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.34
2. Trade names v. Domain names
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.35 In Affair Champagne Céçç÷ç÷÷æréçç÷ç÷÷æales, protection from competing web sites was extended to company trade names without formal mark registration.36
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 Competition Law.
In Labouchere v. IMG Holland,37 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,38 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,39 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.
3. Geographical 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.40 A different conclusion was reached where the name only appeared as a file path. In Affair Elancourt,41 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.42
In Germany, decisions under the Civil Code allowed Heidelberg43 and Braunschweig44 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.45
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.46
4. 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.47 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,48 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."49
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 one.
This is one of the most controversial area. Some argues that the danger is that this expensive scope would constrain expressive activity.50
5. 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.51
6. INNs v. Domain names
International Nonproprietary 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.52
7. Legitimate rights v. Legitimate rights
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.53 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.54
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.55 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.56 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 "Prince."57
In Desknet Systems, Inc. v. Desknet, Inc.,58 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.59 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.60 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.
8. Domain names v. Domain names
In ?I>internic.com? case,61 the ACCC62 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 victims worldwide.63
In Paine Webber Inc. v. Fortuni,64 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.65
In the epson.de case66, 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.
9. Domain names v. Trademarks
In Affair Agaphone, the French Tribunal held that subsequent registration of a trademark does not provide rights against a prior domain registration.67 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?
10. Domain names v. Site names
China State Administration For Industry and Commerce began to register the site names in September 2000.68 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.69 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.
11. Domain names registered as trademarks
In United States, since September 1999, if a domain name has any source indicating significance, it is registrable as a trademark or service mark.70 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.
12. Multilingual 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, CNNIC71 began to register Chinese domain names for test.72 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.73 On 2 November 2000, CNNIC promulgated the Chinese Domain Name Registration Rules and the Chinese Domain Name Dispute Resolution Rules.74 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).75 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 2000,76 and actually it began accepting registrations on 10 November 2000.77 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.
As 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. [page]
III. 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.78 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, 1998.79 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, 1998.80 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.81
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. ?U>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.82 WIPO thus gave itself a considerably broader and more ambitious charge than the fairly narrow one proposed by the USA. Unfortunately, the Final Report83 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,84 and four dispute-resolution service provider were approved so far.85 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. [page]
1.World Intellectual Property Organization (WIPO), Final Report of the WIPO Internet Domain Name Process, April 30, 1999,
available at http://wipo2.wipo.int/process1/report/finalreport.html#II. (visited on 8 October 2000)
2.Matthias W. Stecher, Webvertising: Unfair Competition and Trademarks on the Internet, Kluwer Law International, 1999
3.J Thomas McCarthy, Domain Names and Trade Marks, (1998) 9 Australian Intellectual Property Journal 53
4.Clive Gringras, The Laws of the Internet, Butterworths, 1997
5.A Michael Froomkin, A Commentary on WIPO's The Management of Internet Names and Addresses: Intellectual Property Issues, available at http://www.law.miami.edu/~amf/commentary.htm (visited on 2 October 2000)
6.Davis, III, G. Gervaise, Internet Domain Names and Trademarks: Recent Development in Domestic and International Disputes, 21 Comm/Ent No. 3, Spring 1999.
7.Milton Mueller, Technology and Institutional Innovation: Internet Domain Names, International Journal of Communications Law and Policy, Issue 5, Summer 2000, available at http://www.ijclp.org/5_2000/ijclp_webdoc_1_5_2000.html (visited on 25 Augest, 2000).
8.Julianne Ross Davis, Protecting your trademark on the internet, Federal Lawyer, July 2000
9.Diane Cabell, Esq. Foreign Domain Name Disputes 2000, The Computer & Internet Lawyer, October, 2000
10.Richard J. Greenstone, Overview of Internet Domain Name Law: Trademark Registration and Litigation Issues, available at http://www.rjg.com/basf.html (visited on 18 September)
11.Chad de Souza, Specific Remedies for Cybersquatting, (2000) 3(4)(5) Internet Law Bulletin 49, 65
12.Michael V. LiRocchi, Stphen J. Kepler & Robert C. O’Brien, Trademarks and Internet domain names in the digital millennium, UCLA Journal of International Law and Foreign Affairs, Fall/Winter 1999-2000
13.Robert L. Tucher, Information Superhighway Robbery: The Tortious Misuse of Links, Frames, Metatags and Domain Names, 4 Virginia Journal of Law and Technology 8 (Fall 1999)
14.Judge Li Dongtao, Dongtao on Law: First Domain Name Case Go to Trial, China Computerworld, 30 June 1999 at http://www.computerworld.com.cn/99/law/e990630_01.html (visited on 25 Augest 2000)
15.Gayle Weiswasser, Domain Names, the Internet, and Trademarks: Infringement in Cyberspace, (1997) 13 Santa Clara Computer & High Tech. L. J. 137
16.Lewis C. Lee & J. Scott Davidson, Intellectual Property for the Internet, Wiley Law Publications, 1997
17.Adam Chase, A Primer on Recent Domain Name Disputes, 3 Virginia Journal of Law and Technology 3 (Spring 1998)
18.George A. Wowk, Remedies in Domain Name Disputes: A Canadian Perspective, available at http://www.intelproplaw.com/Articles/IP/2.shtml (visited on 2 October 2000)
19.Christopher S. Lee, The Development of Arbitration in the Resolution of Internet Domain Name Disputes, The Richmond Journal of Law & Technology, Volume VII, Issue 1, Fall 2000
1 Robert E. Kahn and Vint Cerf, What is the Internet (and What Makes It Work), Internet Policy Institute, December 1999. Re-recited from Wireless Internet: The Need for Openness and Interoperability in the Development of Wireless Computing Standards, Global Internet Project, March 2000, available at http://www.gip.org/publications/papers/gipwireless.asp. (visited on 2 October 2000)
2 Global Internet Project, Internet Foundations: Breaking Technology Bottlenecks, Aug 29, 1998, available at http://www.gip.org/publications/papers/gip10.asp. (visited on 2 October 2000)
3 Statistics from Netnames Ltd., at http://www.netnames.com. (visited on 26 September 2000)
4 Milton Mueller, Technology and Institutional Innovation: Internet Domain Names, International Journal of Communications Law and Policy, Issue 5, Summer 2000, available at http://www.ijclp.org/5_2000/ijclp_webdoc_1_5_2000.html (visited on 25 Augest, 2000).
5 World Intellectual Property Organization (WIPO), Final Report of the WIPO Internet Domain Name Process (hereinafter ?I>Final Report?/I>), April 30, 1999, para 9, available at http://wipo2.wipo.int/process1/report/finalreport.html#II. (visited on 8 October 2000)
6 After ICANN was established, some disputes have been taken before dispute resolution providers approved by ICANN. This will be discussed in part three.
7 141 F.3d 1316 (9th Cir. 1998)
8 947 F.Supp. 1227, 40 U.S.P.Q.2d 1412 (N.D. Ill. 1996)
9 Marks & Spencer and others v. One In A Million and others, High Court of Justice, Chancery Div. 28 November 1997
10 1996 H 5453 (1996) (Chancery Division of the High Court)
11 141 F.3d 1316 (9th Cir. 1998)
12 Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316, 46 U.S.P.Q.2d 1511 (9th Cir. 1998).
13 Court File No. T-1839-98, Federal Court of Canada, 26 April 1999.
14 Sapeso and Atlantel v. Icare and Reve, Tribunal de Grande Instance de Bordeaux, 22 July 1996.
15 Advernet, S.L v. Ozucom, S.L., Bilbao No. 13, 30 December 1997 (Spain)
16 Judge Li Dongtao, Dongtao on Law: First Domain Name Case Go to Trial, China Computerworld, 30 June 1999 at http://www.computerworld.com.cn/99/law/e990630_01.html (visited on 25 Augest 2000)
17 1999 WL 635767 (9th Cir. 1999)
18 Affair Alice, Tribunal de grande instance de Paris - 12 March 1998
19 40 U.S.P.Q. 2d (BNA) 1479 (W.D.Wash. 1996)
20 1997 WL 133313 (S.D.N.Y. 1997)
21 993 F. Supp. 282 (D.N.J.1998)
22 29 F. Supp. 2d 1161, 1162 (C.D. Cal.1998)
23 Landgericht Mannheim, 7 O 529/97 (Brockhaus.de); OLG Karlsruhe, June 24, 1998; ZUM 1998 944, 944 (zwilling.de).
24 LG Hamburg, March 25, 1998; CR 1999 47, 47 (eltern.de).
25 S.A.Tractebel vs. Mr. P. Le Clerq, Capricom Inc. and Network Solutions, Inc., Commercial Court of Brussels (11 June 1997) R.G. 2903/97, Computerrecht, 1997.
26 Affair Pacanet, Tribunal de Grande Instance de Draguignan, 8 April 1998.
27 Affair Altavista, Tribunal de Commerce de Paris, 28 January 2000.
28 LG Düsseldorf, April 4, 1997; CR 1998 165, 167 (epson.de).
29 LG Düsseldorf, April 4, 1997; CR 1998 165, 167 (epson.de).
30 LG Braunschweig, August 5, 1997; CR 1998 364, 365 (deta.com).
31 See Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) and Intermatic, Inc. v. Toeppen, 947 F.Supp. 1227, 40 U.S.P.Q.2d 1412 (N.D. Ill. 1996)
32 Marks & Spencer and others v. One In A Million and others, (High Court of Justice, Chancery Div. 11/28/1997)
33 No. 96-413-A (E.D. Va. complaint filed on March 26, 1996, dismissed on June 21, 1996)
34 WIPO, Final Report
35 Affair Lafayette, Tribunal de Grand Instance de Paris, 25 May 1999.
36 Affair Champagne Céçç÷ç÷÷æréçç÷ç÷÷æales, Tribunal de grande instance de Versaille, 14 April 1998.
37 President District Court Amsterdam, May 15, 1997, RvdW193
38 (1995), 61 C.P.R. 334 (P.E.I. Supr. Ct.)
39 S.A.Tractebel vs. Mr. P. Le Clerq, Capricom Inc. and Network Solutions, Inc., Commercial Court of Brussels (11 June 1997) R.G. 2903/97, Computerrecht, 1997.
40 Commune de Saint-Tropez c. Eurovirtuel, Quadra Communication et Nova Déçç÷ç÷÷æveloppement, Tribunal de Grande Instance de Draguignan, 1ère ch. civile, 21 August 1997.
41 Affair Elancourt, Cour D’Appel de Versailles, 29 March 2000. The disputed URL is www.chez.com/elancourt.
42 Affair Lafayette, Tribunal de Grand Instance de Paris, 25 May 1999.
43 LG Mannheim, 03/08/1996, 7 O 60/96.
44 Der Stadt Braunschweig v. Herrn, LG Braunschweig, 01/28/1997, 9 O 50/96.
45 Der Stadt Kerpe, LG Köln, 12/17/1996, 3 O 477/96, Der Stadt Hürth, LG Köln, 12/17/1996, 3 O 478/96, Der Stadt Pulheim, 12/17/1996, 3 O 507/96.
46 Firm Accused of Net Name Piracy, BBC News, 26 January 2000 at http://news2.thls.bbc.co.uk/hi/english/uk/scotland/newsid_619000/619312.stm (visited on Augest 28, 2000)
47 See Sohu News at http://sports.sohu.com/20000921/file/0000,012,100153.html (visited on 21 September 2000)
48 See Roberts v. Boyd, WIPO, Case No. D2000-0210, 5/29/00 (5 ECLR 616, 6/7/00), and Ciccone p/k/a Madonna v. Parisi, WIPO, Case No. D2000-0847, 10/12/00
49 See Sumner p/k/a Sting v. Urvan, WIPO, Case No. D2000-0596, 7/24/00
50 A. Michael Froomkin, A Commentary on WIPO's The Management of Internet Names and Addresses: Intellectual Property Issues, available at http://www.law.miami.edu/~amf/commentary.htm(visited on 2 October 2000)
51 WIPO, Second WIPO Internet Domain Name Process, available at http://wipo2.wipo.int/process2 (visited on 5 October 2000)
53 Affair Alice, Tribunal de grande instance de Paris - 12 March 1998
54 Affaire Mutuelles du Mans, Tribunal de Grand Instance de Paris, 23 September 1999
55 Defendant with the surname "shell" was to relinquish the related domain name. See OLG München, March 25, 1999, (shell.de); Same in OLG Hamm, January 13, 1998; CR 1998 241 (krupp.de).
56 Pitman Training Ltd. v. Nominet UK  F.S.R. 797
57 Prince plc v. Prince Sports Group Inc., CH 1997 -- P No. 2355
58 1997 WL 253246 (S.D.N.Y. 1997)
59 WIPO, Final Report, para 125
60 WIPO, Final Report, para 128
61 Australian Competition & Consumer Commission v Internic Technology Pty Ltd & Anor,  818 FCA (14 July 1998)
62 The Australian Competition and Consumer Commission
63 Perkins Coie LLP.The Internet Case Digest, available at http://www.perkinscoie.com/casedigest/icd_results.cfm?keyword1=domain name&topic=Domain Names. (visited 22 Augest 2000)
64 1999 U.S. Dist. Lexus 6552 (ED Va April 9, 1999)
65 Joanna Glasner, AOL Loses Brazil Ruling, Wired News, 27 May 1999 at http://www.wired.com/news/news/slashdot/politics/story/19918.html (visited 22 Augest 2000)
66 LG Düsseldorf, April 4, 1997; CR 1998 165, 167 (epson.de).
67 Affair Agaphone, Tribunal de Grand Instance de Paris, 13 November 1998
68 The Interim Provisions on Website Name Registration, available at http://www.hd315.gov.cn/badj/badj.htm (visited on 5 September 2000)
69 See Sohu News at http://news.sohu.com/20000818/file/0969,004,100241.html (visited 18 Augest 2000)
70 See Patent and Trademark Office, Trademark Registration of Internet Domain Names (EXAMINATION GUIDE NO. 2-99 ), available at http://www.uspto.gov/web/offices/tac/notices/guide299.htm (visited on 5 October 2000)
71 China Internet Network Information Center
72 See Sohu News at http://news.sohu.com/20001023/file/0002,004,100865.html (visited on 23 October 2000)
73 It is an independent non-profit organization set up by four NICs around the Taiwan Strait, who are CNNIC (mainland China), TWNIC (Taiwan), HKNIC (HongKong) and MONIC (Mocau). Its homepage is at http://www.cdnc.org.
74 See Sohu News at http://news.sohu.com/20001102/file/0936,004,100340.html (visited on 2 November 2000)
75 See Sohu News at http://news.sohu.com/20001102/file/0936,004,100303.html (visited on 2 November 2000)
76 See NSI announcement at http://www.nsol.com/news/2000/pr_20000824.html (visited 28 Augest 2000)
77 See NSI announcement at http://www.nsol.com/news/2000/pr_20001031.html (visited on 2 November 2000)
78 However, it is worthy noting that some non-English language TLDs are coming into being, such as above-mentioned .zhongguo (China), .gongsi (company) and .wangluo (net). Are they new TLDs or only Chinese translation of .cn, .com and .net? Actually they are new TLDs.
79 The Green Paper and relevant comments are available at http://www.ntia.doc.gov/ntiahome/domainname/domainname130.htm (visited on 5 October 2000)
80 It is available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm (visited on 5 October 2000)
81 The Agreement was extended for up to one year. ICANN announcement is available at http://www.icann.org/announcements/icann-pr04sep00.htm (visited on 5 October 2000). No one knows what will happen after one year.
82 WIPO, Request for Comments (RFC-2), para 12.
83 It was issued on 30 April 1999.
84 They are all accredicted by ICANN. So far 62 companies all over the world were accredited as registrars. The List of Accredited and Accreditation-Qualified Registrars is available at http://www.icann.org/registrars/accredited-list.html (visited on 5 October 2000).
85 See ICANN, Approved Providers for Uniform Domain Name Dispute Resolution Policy, at http://www.icann.org/udrp/approved-providers.htm (visited on 5 October 2000