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book cover: choosing the right domain name

Choosing the Right Domain Name:
a Marketing Perspective

all you need to know about domain names (and some you don't need to know, but is interesting anyway)


CHAPTER 2.02
HOW ARE DOMAIN NAME DISPUTES RESOLVED?

Important note
I do not profess to be a legal expert. For full and accurate information on specific details of legal issues with regard to domain names you should contact a qualified lawyer/attorney. For this reason I've kept this chapter short - effectively pointing out those topics about which you should seek qualified legal advice.

Disputes occur when recognized trading or brand names are registered by parties other than the owners of those names. Despite being slow off the mark, most countries have now addressed the issue within their legal systems. For example, in the USA the Anti-cybersquatting Consumer Protection Act of 1999 (ACPA) allows trademark holders to sue for possession of Internet addresses that are the same or 'confusingly similar' to their trademarked names, and the somewhat self-describing Truth in Domain Names Act (part the PROTECT Act 2003) aims to prevent the exploitation of children. Although there are now similar laws in the EU, early cases relied on the application of existing laws that pertained to the use of a domain name rather than the actual registering of it - and those cases are now part of the legal system.

Originally, the registering authorities washed their hands of the legal issues, though subsequently the Internet Corporation for Assigned Names and Numbers (ICANN) has introduced an arbitration system for resolving disputes. In this, disputing parties each make their case to an independent panel of arbitration that is overseen by accredited organizations such as the World Intellectual Property Organization (WIPO).

In the UK, Nominet UK, the Oxford-based Registry for .uk domain names, has a dispute resolution procedure which has been in force since September 2001. Under Nominet UK's arbitration procedure, the complaining party must assert that It has rights in respect of a name or mark which is identical or similar to the domain name and that the domain name is an abusive registration. The arbitration system is much quicker than normal court proceedings for trade mark infringement - and considerably cheaper.

However, decisions made by both ICANN and Nominet are not binding in the courts, meaning that if a complaining party is unsuccessful in arbitration it can still pursue the domain name registrant through the courts. This lack of legal standing stems from these domain name dispute resolution policies being essentially in place to deal with cybersquatters - and are not a substitute for trade mark infringement proceedings.

As new domains become available, their creation has been supported by well thought-out dispute resolution procedures. The .me.uk names are a good example, applying their Eligibility Requirements Dispute Resolution Policy (ERDRP) - a version of the Uniform Domain Name Dispute Resolution Policy (UDRP) adapted for .name domains. The ERDRP rules state that any complainant must prove all of the following three points:

1 The name corresponding to the registered name is not the legal name of respondent (the owner)
2 The name corresponding to the registered name is not the name of a fictional character in which the respondent has trademark or service mark rights
3 The respondent has not been commonly known by the name corresponding with the registered name.

In addition, the complainant must also fulfil similar criteria themselves, showing at least one of the following:

1 The registered name should be the same as the legal name of complainant, or
2 The registered name is the name of a fictional character in which complainant has trademark or service mark rights, or
3 The Complainant has been commonly known by the registered name.

The principles embedded within the ERDRP make it much easier for rightful owners - celebrities in particular - to recover .name domains. This contrasts with other procedures, such as the UDRP, which has seen personalities such as Sting and even the late Albert Einstein losing domain disputes.

A brief examination of a few of the significant cases in domain name disputes that have made it to the courts will give you some idea of how future disputes are likely to be resolved. The first two are from the UK and are important in that as they were the first such cases they became case law referred to by other countries.

Pitman Training Limited vs Pearson Professional Ltd (t/a Pitman Publishing) The first UK court ruling on a domain name issue, this is essentially a case of two companies who both trade under the same name - Pitman - each claiming the right to use a domain name. There is a sub plot to this in that one party registered the name first but did not use it, and the other 'claimed' it from the registering authority. The judge found that whenever two parties have equal claim to a domain name, then whoever registers it first becomes the rightful owner - the so called 'first come, first served' rule that has been applied many times since.

Harrods and others In this case high-end retailer Harrods brought the lawsuit although there were a number of other parties who had been 'wronged' by the defendant. The defendant registered a number of domains in the names of household-name companies and then offered to sell the names to those organizations. The judge found that the registration of a domain name that is the trademark of another was not an offence in itself. However, an offence was committed as the defendant 'clearly constituted infringement of Harrods' registered trade marks and passing off'. It is arguable, therefore, that had the defendant simply waited for the companies to contact him with an offer of purchase rather than contacting them then he would have committed no offence.

Cases from outside the UK that have had an impact on domain name related laws include:

Sex.com A protracted case that has a plot which John Grisham would be proud of (the book and the film can't be far away). The name was originally registered by [then] student Gary Kremen. He did nothing with the name. The villain of this piece, Stephen Cohen, then forged a transfer document that the registering authority (Network Solutions) rather naively accepted as real. Mr Cohen, an experienced operator in the pornography industry, went on to build a significant business around the domain name. Mr Kremen did not realise he had 'lost' the name until Mr Cohen had been using the name for some time. Kremen then commenced legal proceedings against not only the pornographer but Network Solutions for the negligence in the transfer. The case ran for a number of years, but ultimately the judge declared Mr Kremen to be the legitimate owner. The importance of this decision was in not only establishing the legal precedent that Internet domains were legal property, but the ruling of how much the guilty party had gained through its use - effectively putting a value on potential commercial applications of a domain name. In this case the judge decided that the pornographer owed Mr Kremen $65 million. The story doesn't end there however, as Mr Cohen fled the country and has yet to pay anything. Network Solutions did not get off scot-free. Kremen also sued them and was paid around $15 million to settle the lawsuit in April 2004. (Note that the payment was made by VeriSign, who had inherited the case when it acquired Network Solutions). In January of 2006, Kremen sold the name for a sum reported to be anything from 12 to 14 million dollars - though that sum also included the business based on the domain, and not just the domain name itself.

Nissan.com - Another story with a number of twists, this is a classic David versus Goliath story. It all started with a North Carolina businessman called Uri Nissan who, in the early days of the world wide web, registered nissan.com for the website of his computer-related products and services business. When the global car manufacturer realised that the web was to become an integral part of car sales they wheeled out the big (and expensive) legal guns and took Mr Nissan to court. Mr Nissan used the web to gain support for his cause and eventually won the case. The judge ruled that as his nissan.com website was clearly about computer-related products [and not cars] and Mr Nissan was not misusing the domain (his website's front page even included a link to the Nissan Motors website for those who found themselves there by mistake) - and he registered it first! Subsequently, however, Mr Nissan allowed the car giant's lawyers another day in court by selling advertising space on nissan.com's front page to other car manufacturers. The final result was effectively a draw because no one won. The message from Mr Nissan on nissan.com says it all:

'In compliance with a ruling issued by the United States District Court in Los Angeles on November 14, 2002, in the lawsuit of Nissan Motor Co., Ltd. v. Nissan Computer Corporation, this website has been converted to non-commercial use.'

I bet Nissan Motors wished they had simply made Uri a financial offer he couldn't refuse instead of taking legal action. Given the reputation American lawyers have for their costs, it must surely have been the cheaper option.

Student prank For those offended by swearing, skip this paragraph. In this story, once again, car manufacturers are involved - this time in a domain name spoof perpetrated as a joke by a group of American students. They registered the domain 'fuckgeneralmotors.com (don't ask how it got past the '7 filthy words' rule) and made it live, but actually redirected surfers to ford.com. The students were taken to court not by General Motors, but Ford - who claimed that people might think it was they (Ford) who had perpetrated the prank. The judge declared that it was obviously a spoof and dismissed the case, but the domain name was withdrawn by ICANN anyway.

Big hammer to crack a small nut - in late 2003, Vancouver teenager Mike Rowe received an email from Smart & Biggar, Microsoft's Canadian lawyers (yes, that really is their name), informing him that he had been committing copyright infringement against Microsoft. His crime? Because his part-time business sold software, he added 'soft' to his own name and registered the domain name - mikerowesoft.com.
In a subsequent email Microsoft offered Mike $10 for the domain name, which he found 'insulting' and replied explaining how much work he had put into the business and that the domain was worth at least $10000. And therein lays Mike's big mistake, he fell for the standard trap set by large corporations in small-fry domain disputes. The mega-corp offers a few dollars for the registration fee, and so goads the domain owner into a counter offer. The mere fact that a counter-offer is made is taken - in the convoluted arbitration process - as prima facia evidence that the owner is a cybersquatter who is attempting to extort cash. Result: big company wins domain name.
And of course we would all have got mikerowesoft.com and microsoft.com mixed up wouldn't we? Postscript; because of the publicity that this story generated (Mike was interviewed on, amongst others, CNN) Microsoft subsequently backed down, a spokesman saying, 'We take our trademark seriously, but in this case maybe a little too seriously' The name was eventually exchanged for, amongst other things, an Xbox console.

More recently, as the web has become accepted as an integral element of both business and marketing, disputes where a brand or trade name are only part of a domain name have become common. Two examples involving .coms are these:

Volvospares.com This ruling went against Swedish car maker Volvo who had complained about a website trading under this domain. The decision being that although the domain name was 'confusingly similar' to Volvo's trade mark, the domain's owners had a legitimate business interest in using the name.

Raleighbikes.com The owners of the Raleigh trade mark argued this was a clear infringement of their intellectual property rights, but again ICANN disagreed, ruling in favour of raleighbikes.com because its owner was using the name for a non-commercial forum site for fans of Raleigh bikes and had not registered the name in bad faith. In marketing terms, Raleigh committed a significant gaffe in this example - suing some of your most vociferous supporters (read customers) is not something you will find in the manual of good public relations practice.

I conclude this chapter with a repeat of my comments at its start.

I am not a lawyer. This chapter is not legal advice. Do not rely on any of it to support any legal argument. If any of the content seems relevant to your situation, go find someone who has the legal qualifications to comment on your case.

Go to the next section, return to the contents page
or visit the book's webpage for additions and updates.

Copyright copyright 2009 Alan Charlesworth. All rights reserved.
International Standard Book Number: 978-1-4452-0538-0
No part of this publication may be reproduced, stored in a retrieval system or transmitted in any form or by any means electronic, mechanical, photocopying, recording or otherwise without the prior permission of the author.
Notice
Every effort has been made to make this book as complete and as accurate as possible, but no warranty or fitness is implied. The information provided is on an 'as is' basis. No responsibility is assumed by the author for any injury and/or damage to persons or property as a matter of products liability, negligence or otherwise, or from any use or operation of any methods, products, instructions or ideas contained in the material herein.
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