Domain Names

domain_name

The domain name system is among the most familiar and most frequently litigated aspects of the Internet. It is a hierarchical system for naming computers so that they can be found on the World Wide Web[1]. At the Internet’s inception, each computer was centrally numbered so it will be identified. As more computers joined the network, it became increasingly difficult to allocate numbers for each computer on the network[2]. Hence, the development of the IP address class system in which addresses were subdivided into fixed structures so that a range of addresses could be allocate. In order to permit greater flexibility on the matter when changes were introduced in the records associated with an individual identity, it was decided to introduce the use of domains name that would correspond to the Internet Protocol addresses.

Rather than maintain a single, undifferentiated list of domain names, the community created a hierarchy used today that begins with a top-level having small number of domains for example “.com” and “net”. Within each of these top level domains there can be many second level domains such as “cyprus.net”. Within each second-level domain there can be unlimited third-level domains, such as “law.cyprus.net” and so on.

Registration of domain names is meant to be simple procedure of applying to the appropriate registry with a registration fee. Traditionally, domain names have been allotted on a first come first served basis[3].  In the United Kingdom the body in charge of domain names is Nominet U.K. Each registry has different policies of domain name allocation, and most have adopted a dispute policy and rules specifying what can and cannot be registered.

Until March 1999, NSI was the sole registrar and administrator for generic Top-level domains. In October 1998, the Internet Corporation for Assigned Names and Numbers known as, a non-profit organisation, was created and it was agreed the registration of domains would be shared between an unlimited numbers of registrars. Only registrars accredited by ICANN are authorised to register TLD, ICCAN is responsible for co-ordinating some of the technical functions relating t internet, including the management of the domain name system.  The Internet Assigned Numbers Authority (IANA) is responsible for various administrative functions associated with management of the internet domain name system including the allocation of I.P. addresses[4].

 

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[5]. TLD registrars must make it a condition of registration of TLD’s that all domains names disputes are subject to the ICANN Uniform Dispute Resolution Policy known as UDRP. ICANN’S UDRP was approved on October 24, 1999 and introduced on December 1, 1999[6]. The UDRP provides a cheap and quick arbitration process and allows cancellation or transfer of the disputed domain name. Complaints under the policy are handled by ICANN approved providers. The current Approved Providers are CTR Institute for Dispute Resolution, eResolution, the National Arbitration Forum and the World Intellectual property organisation. In order to use the UDR process, the claimant must show that a) the domain name is identical or similar to a trade mark or service mark which the complainant has rights; b) the domain name owner has no rights legitimate in respect of the domain name and c) the domain name has been registered and is being used in bad faith[7]. Moreover there three ways in which a legitimate interest in the domain name can be demonstrated: (1) use or demonstrable preparations for use of the domain name in connection with a bona fide offering goods or services; or (2) being commonly known by the domain name, even if no trade mark or service marks have been acquired or (3) making a legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly divert consumers or to tarnish the trade mark or service mark at issue.[8]

Use of the domain in bad faith can be established by showing that the domain names have been registered or acquired primarily a) for the purpose of selling it to the owner who owns the trademark, b) to prevent the owner of the trade mark in a corresponding domain name; (c) for the purpose of disputing the business of the competitor or (d) for the intention of attracting commercial value or internet users to the web site. Under the UDRP, complaints must therefore show that they have a legitimate interest in the domain name and that the domain has been registered and is being used in bad faith[9].

UDRP has been very popular tool for mark owners against cybersquatters, more than 8.500 proceedings were filed to UDRP panels concerning more than 14.500 domain names[10].In cases of registering or using a domain name in bad faith with the intention to profit from the goodwill of a trademark belonging to someone else is known as cybersquatting.

The second mechanism controlling cybersquatting disputes is the Anti-cybersquatting Consumer Protection Act which was incorporated in the Lahman Act. The ACPA came into force in the U.S. in November 1999 in order to protect famous trade marks against cybersquatters, who register, or traffic in, identical or confusingly similar domain with intent to make profit on the part of the registrant[11]. A trade mark owner in this case can apply for injunctive relief and elect ether actual damages and recovery of profits or statutory damages of US 100,000 per domain name.[12] Decisions under the ACPA demonstrate that the U.S. courts take a very dim view of cybersquatting. Already many cases have be solved and damages have been given.

Another way to protect a mark which has been registered as a domain name by someone else, which is being used by a business, whether or not it is registered as a trade mark, is to employ the tort of passing off. It is a mechanism for protecting the goodwill that has arisen in a business name. Traditionally, in order to succeed in obtaining an injunction against a rival for passing off, you need to establish the following: (a) that there was a misrepresentation; (b) which was made by a competitor in the course of his trade; (c) to his potential customers (c) which was calculated to injure your business and goodwill and which causes actual damage or is likely to do so to your business or goodwill.[13] There are three elements which must be satisfied by a claimant in a passing off action: (a) good faith attached to goods or services which he supplies in the mind of the purchasing public by association with identifying ‘get up’ as distinctive specifically of the claimant’s goods or services; (b) demonstrate a misrepresentation by the competitor to the public leading or likely to lead the public to believe that goods or services offered by him are goods or services of the claimant and (c) demonstrate that he suffers or that he is more likely to suffer damages[14]

Furthermore, a further aspect of this tort has been recently resurrected in the domain name disputes area. This arises in situations where a competitor puts or authorises someone to put an instrument of deception into the hands of others[15]. When a person registers a well known domain name for the purpose of selling it to another person at a price so that the later use it dishonestly, that is enough to amount to passing off. This can be established even if the owner has done nothing with it as yet in respect of the design of the website. This was illustrated in the One in a Million case[16]. In this case Aldous L.J. stated that there was clear evidence or systematic registration by the appellants’ of-well know trade names as blocking registrations and a threat to sell them to others.[17]

This meant that domain owner’s can be protected through passing off, even if the traditional elements mention above are not met. This can apply where trade names are known brand names and the defendant intends to use that name to sell it to another who might use it obtain money from the true owner of that trade name. The registration of such domain names will amount to the commission of the tort of passing off. This is because the value to the defendant who registers such names lies in the threat that it would be used in a fraudulent way.

It is, therefore, possible for registered trade mark owners to stop cybersquatters from maintaining ownership over domain names on the basis that there may be future passing off. This is because the courts are prepared to extend passing off to those who threaten to sell domain names to others.

There are two cases to consider in regard of trademarks infringement and passing off, and the domain names and passing off. The first case is Harrods Ltd v UK Network Services Ltd and Others[18] where the domain name ‘harrods.com’ was registered by Michael Lawrie. Harrods, the famous department store in London wanted this domain name to advertise themselves and their wares on the Internet. Michael Lawrie was ordered by the court to hand the domain name over to Harrods, on the grounds that his potential use of the domain name constituted trade mark infringement and passing off. The second case is Pitman Training Limited and PTC Oxford Ltd v Nominet UK Ltd and Pearson Professional Ltd.[19] which based on the common law of passing off as neither party had a registered trade mark. The dispute was over the domain name ‘pitman.co.uk’ which was claimed by Pearsons plc who operates a publishing business, and Pitman Training Limited who operate a training and correspondence course business. Both were equally entitled to use the trading name ‘Pitman’ in the UK within their respective spheres of business. Nominet, the body in the UK responsible for allocating domain names under the top level domain ‘co.uk’ originally allocated the name to Pearsons plc. For some unknown reason, when Pitman Training Limited asked Nominet to register the same domain name several months later, it was duly allocated to them, thus depriving Pearsons plc of their registration. Pitman Training Limited proceeded to set up a web site and email service using the domain name, and it was only a period of months later, when Pearsons were ready to go online with their website, they discovered that they no longer had the registration. After much correspondence between the various parties, Nominet re-allocated the domain name to Pearsons plc. On application for interlocutory injunction, the court ordered that it should revert to Pitman Training Limited, pending the full hearing. At the full hearing, Pitman Training Limited argued that because they had used the domain name for a period of months, the general public would associate that name with their business, and should it revert to Pearsons plc, that would constitute passing off. The court disagreed that a case of passing off had been established on the rather thin evidence presented and ordered that the domain name should be allocated to Pearsons plc on the basis that they had registered it first with Nominet[20]. Though this case highlights the importance of early registration (and the basis of first come first served) in situations of competing legitimate rights, the rulings does not mean that passing off will never succeed against someone who registered the name first in time but has no connection with or real interest in the domain name.

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Bibliography:

Books:

Michael Chissick, Alistair Kelman “Electronic Commerce: Law and Practice” (Sweet & Maxwell 2002)

David W. Quinto, Deven Desai “Law of Internet Disputes” (Aspen Publishers Online 2002)

David I. Bainbridge “Introduction to Computer Law” (Pearson Education 2004)

Websites:

Charlotte Waelde, “Domain names and Trade marks: What’s in a name?” http://www.law.ed.ac.uk/it&law/ch4_main.htm

Chambers Yang, “Legal Issues on Domain Name: A World Wide Watch” http://www.law-bridge.net/english/e-domainname.htm#_ftn6

“Trade Marks Law and Passing Off” http://www.kaltons.co.uk/articles/124-2.cfm

 

“IANA Report on Establishment of the .name Top-Level Domain” http://www.iana.org/reports/2001/name-report-16aug01.html

 

 


[2] “Law of Internet Disputes” pp8

[3] “Electronic Commerce: Law and Practice” pp20

[4] “IANA Report on Establishment of the .name Top-Level Domain” http://www.iana.org/reports/2001/name-report-16aug01.html

[5]Chambers Yang, “Legal Issues on Domain Name: A World Wide Watch” http://www.law-bridge.net/english/e-domainname.htm#_ftn6

[6] http://www.enom.com/terms/drp.asp

[10] http://www.icann.org-/udrp/-

proceedings-stat.htm

[11] efroni p54

[12] Efroni p55

[13] “Electronic Commerce: Law and Practice“ Pp23

[14] “Trade Marks Law and Passing Off” http://www.kaltons.co.uk/articles/124-2.cfm

[16] British Telecommunications plc and Another v One In A Million Ltd and Others [1998] 4 A11 ER 476, CA

[17] “Electronic Commerce: Law and Practice“ Pp25

[18] [1997] 4 EIPR D-106

[19][1997] FRS 797

[20] Charlotte Waelde, “Domain names and Trade marks: What’s in a name?” http://www.law.ed.ac.uk/it&law/ch4_main.htm

 

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