Trademarks and Domain Names: Property Rights and Institutional Evolution in Cyberspace
| Autor | Milton Mueller |
| Páginas | Milton Mueller Website |
Trademarks
and Domain Names: Property Rights and Institutional Evolution in Cyberspace
Milton Mueller, Associate Professor and Director, Graduate Program
in Telecommunications and Network Management. Syracuse University School
of Information Studies.1
The Internet is currently in the throes of a global redefinition of
its institutional framework. One of the major points of controversy in
this process is the conflict between domain names and trademarks. This
paper is an empirical study of the domain name-trademark interaction. It
examines the conflicts that have led to trademark-based challenges to domain
name registrations, and the settlements or decisions that have resulted
in order to show how a new system of property rights is being forged. The
paper employs a hybrid of legal and quantitative methods. The study collected
information about 121 cases of conflict between domain name registrants
and trademark owners. These cases were classified into four distinct types,
based on the way the challenged domain name was being used. The study also
categorized the way the cases were settled.
Regulating domain names to protect trademarks
A domain name is a hierarchically structured character string that serves
as an Internet address. The "real" Internet Protocol (IP) address is a
string of numbers that is difficult to use and remember (e.g., 128.82.75.52).
Internet users rely on domain names, which take the form of memorable and
sometimes catchy words, to stand in their place. The uniqueness requirement
creates an exclusivity that has important economic consequencesøno two
users can use the exact same character string as a domain name.
Domain names are interestingøand controversialøbecause they are meaningful.
The semantic dimension allows domain names to act not only as unique addresses,
but also as slogans, billboards, or brand names.2 The business
identity of many Internet firms, such as Internet guide Yahoo! or
book retailer Amazon.com, is solidly linked to their domain names.
Even non Internet-based businesses want domain strings that match, or are
easily derived from, their corporate names.
The character strings used for domain names sometimes correspond to
the character strings of registered trademarks. Often this occurs accidentally.
Juno Online Services registered juno.com but the Juno Lighting Company
holds a federal trademark on the brand name "Juno." Sometimes the correspondence
is a deliberate result of name speculators.3 It is fairly inexpensive
to reserve a name ($35-50/year is the norm), and many character strings
may be perceived as more valuable than the going price. Thus, some "cyber-squatters"
attempted to make a business out of the practice of reserving desirable
names and attempting to resell them to others, sometimes for thousands
of dollars. Sometimes the correspondence between a domain name and a trademark
is part of a pattern of deliberate passing off, which is intended to confuse
or deceive customers.4 There are also numerous gray areas. To
the Internet, one minor difference in a character creates a completely
different address but to users the difference may be hard to discern. Thus,
some small businesses register domain names that are the same as a famous
name but with only one minor character difference; e.g., amazom.com
or micros0ft.com.
All of these conflicts over domain name rights have resulted in litigation,
or threats of litigation, under trademark law. Both the users who registered
the name and the domain name registry itself have been targets of such
litigation. Internet registries and policy makers have responded to trademark
challenges by making or proposing numerous restrictions on the way Internet
domain names are distributed or used.
Network Solutions, Inc. (NSI), for example, is the exclusive government
contractor selected by the National Science Foundation to register names
under the top-level domains .com, .org, and .net.
NSI allowed trademark holders to trigger a suspension of a userøs domain
name without any court proceeding whenever the domain name character string
corresponds to their registered trademark.5 Suspension can occur
regardless of whether any use is being made of the name that would correspond
to the legal definition of infringement. A January 30 draft proposal of
the US Department of Commerce proposed a similar policy.6 An
even more extreme policy was proposed by the so-called gTLD-MoU group based
in Geneva.7 Their proposal for domain name reform attempted
to give famous name holders a right to pre-empt all character strings similar
to or corresponding to their name in all top-level domains. The gTLD-MoU
also proposed that all domain name distributions be subjected to an extensive
review and challenge process administered by the World Intellectual Property
Organization (WIPO). If that policy had been implemented, trademark owners
could mount challenges to domain name registrations based entirely upon
the character string, regardless of how it was used. Although the gTLD-MoUøs
attempt to assert authority over domain names failed, its attempt to regulate
name registration to enhance trademark protection survives in a proceeding
underway at the World Intellectual Property Organization (WIPO). Encouraged
by a US government White Paper asking it to study the problem,8
WIPO is holding an international proceeding that is expected to propose
extensive regulations on the distribution of domain names.9
Politically, trademark owners have been instrumental in stifling widespread
demands by Internet service providers and users for an expansion of the
supply of top-level domains.10 Many trademark holders opposed
the gTLD-MoU because of its creation of seven new TLDs. Among corporate
trademark holders, the idea that the distribution of domain names should
be subjected to some kind of regulatory process in order to protect trademark
rights has become widely accepted.
Many legal analysts have been critical of the linkage between domain
names and trademarks. DeGidio (1997) and Hilleary (1998) have criticized
the vagueness and potential for abuse of the new Federal Anti-dilution
statute as it has been applied to domain name cases. Oppedahl (1997) argues
that the domain name challenge procedure of NSI gives trademark holders
more sweeping rights than they have under trademark law. Nathenson (1997)
shows that the concept of dilution has been exploited by trademark holders
in the domain name arena to engage in "reverse domain name hijacking."
Missing from both sides of this debate is a sense of the quantitative
dimensions of the problem. The legal literature about domain names has
already recognized that there are distinct types of domain name conflict
and that the applicable law may hinge upon what type it is.11
We submit that it is important and useful to know the frequency with which
the different types occur. The quantitative information affects our identification
of the problem, our assessment of its significance, and our conception
of what might be an appropriate policy response.
Suppose, for example, that there were a half a million known instances
of domain name conflict and that 80 percent of them could be readily classified
as cases of clear and intentional infringement. On the basis of such quantitative
evidence, it would be reasonable to conclude that trademark infringement
using domain names was a major problem on the Internet. But suppose that
the number of cases of conflict is much smaller and that the vast majority
of domain name-trademark conflicts arise from name speculation. Such an
outcome would lead to an entirely different conception of the problem and
suggest different policy responses. Perhaps the profitability of name speculation
depends upon current artificial limits on the number of top-level domains,
and public policy should be focused upon the need to expand the name space.
Or perhaps registries should impose a "use it or lose it" policy and/or
require immediate payment to prevent speculators from hoarding names. Alternatively,
suppose the data suggest that most of the conflicts arise from innocent
attempts to use the same word by businesses with no intent to deceive or
infringe. If this type of conflict was most common, the notion that domain
name conflicts are primarily a trademark problem is powerfully undermined.
Method
Ideally, a study of domain name trademark interactions would be based
on a comprehensive list, or a representative sample, of all domain name
trademark conflicts. In an attempt to get this data, researchers first
approached NSI to request a list of all domain names that had received
complaints from trademark owners or, barring that, a list of all domain
name conflicts which had invoked the NSI dispute resolution policy. NSI
refused to make this data available. Other registries were contacted and
none of them could provide comprehensive data. Most of them do not collect
and record such data. NSI did, however, agree to provide aggregate data
about the number of complaints and dispute resolution proceedings.
The unavailability of comprehensive registry data at the individual
domain name level meant that it was impossible to perform a statistical
sample of the real population of interest: all domain name trademark
conflicts. The best that could be done was to gather information from publicly
reported cases, which included court cases, reports, and news reports (in
English). There was no need to sample this group, because it was possible
to count nearly all of them.
The following method was used:
The researchers identified and collected as many cases of domain name conflict
involving trademark claims as possible. Cases were identified on an entirely
unselective basis by a research assistant who was not responsible for their
classification. A case was then included in or excluded from the database
whenever sufficient information about it could be gathered to...
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