Does someone already own your online identity?
Now that we are no longer subjected to the deluge of Y2K day-of-reckoning chatter, we can truly appreciate the other ultra-hyped subject of our time, the Internet. But unlike Y2K, the Internet appears to be the real deal. The explosion of online activity has literally changed our society, and has introduced a slew of social and legal questions about how we should deal with this new medium. The legal world, which has historically lagged behind social developments, is just starting to catch up with cyber culture. For the past few years governments the world over have been grappling with the virtual anarchy of the Internet, and only recently have the U.S. Congress and federal courts managed to create some restrictions designed to protect individuals and corporations.
There is no question that dot-com mania is upon us. According to netnames.com, approximately fifteen-million domain names–Internet “addresses”–have been registered to date. The Internet has changed the way information is exchanged and business is conducted, but the old adage–that the three most important ingredients for a successful business are location, location, location–ironically still pertains to the cyber world. On the Internet, a business’ “location” is its domain name, or URL (uniform resource locator), and easy-to-remember domain names have become the beach-front property of the electronic world.
Ownership of a name that matches your company’s trademark in the dot-com domain (URLs that end with the “.com” suffix) can be invaluable since it allows consumers to intuitively find your company’s site. Problems arise when someone has coincidentally, or not so coincidentally, registered your trademark as a domain name before you thought to.
In the early days of the Internet, domain registration looked more like a Wild West land grab. Savvy (or so they thought) computer types would register domain names that were identical to famous trademarks (e.g., nike.com) and wait for the owners of the trademarks to come and buy the domain names from them. Some might call it extortion or cyber piracy, but the popular term is “cybersquatting.” Over the last few years, American courts have handed down decisions that have all but eliminated the practice, and Congress also just recently chimed in by passing legislation that attempts to curtail cybersquatting. This recent legislation defines what constitutes an offense, and establishes minimum penalties for bad-faith registration of a domain name. The statutory penalties can range from 1,000 to 100,000 dollars, depending on what the court considers just. Of course, enforcing these judicial and statutory rights requires that the harmed party file a lawsuit and bear the costs that go along with that process. The high price of litigation can be prohibitive to some, and luckily there is now a less costly domain-name dispute-resolution process.
Last October the Board of Directors for the Internet Corporation For Assigned Names And Numbers (ICANN) adopted a Uniform Domain Name Dispute Resolution Policy to replace the previous dispute-resolution policy. More information about ICANN and the new policy can be viewed online at www.icann.org.
The Uniform Domain Name Dispute Resolution Policy only pertains to the top level domains: dot-com, dot-net, and dot-org. It governs all ICANN-accredited registrars, and requires an administrative hearing whenever a third party complainant claims that a domain name is identical or confusingly similar to a trademark owned by the complaining party, the owner of the domain name has no legitimate interests in it, and the domain name has been registered and is being used in bad faith.
The Uniform Domain Name Dispute Resolution Policy differs from the previous policy in several ways: it provides for the cancellation of the offendingg domain name if the complainant is successful; there is no “on-hold” provision, meaning that during the resolution process the domain name in question remains functioning; the trademark doesn’t have be identical to the domain name in question; and the new policy creates a remedy for registered and common-law trademarks. The new policy isn’t full-proof, so it may not be the perfect tool to combat cybersquatting in every situation. But it is one way to stop profiteers from interfering with your trademark.
Not all domain name conflicts involve bad-faith registration; many times several companies will have the same trademark and use it on dissimilar goods or in different territories, thus not infringing on each other. However, a conflict may arise when several non-infringing users of the same mark attempt to register their trademark as a dot-com URL, only one party can have the domain name. Some companies facing this situation have solved the problem by adding words like “skateboards” or “co” to the end of their trademark for their domain name. This solution rids them of the potential conflict, but limits the intuitive nature of the domain name. Others have suggested that several companies with the same trademark name could share the same domain name, and include links at that location to their respective Web sites–almost a mini-directory of sorts. Of course the mini-directory scenario requires a level of cooperation among the trademark holders.
Another domain-registration issue arises when a third party registers the personal name of well-known people without their approval. This actually happened to Ed Templeton. Several months ago, while in the process of registering his name as a domain name, Templeton discovered that someone he didn’t know had not only registered www.edtempleton.com, but had posted all kinds of information about him and some images of his artwork on the site, and titled it “The Official Ed Templeton Web Site.” Terribly uncomfortable with the idea that someone he didn’t know was controlling his online public image, Templeton contacted the owner of the site, who turned out to be an admirer of his, and negotiated a “loose agreement” with him.
Luckily for Templeton, the owner of the edtempleton.com domain name was cooperative and willing to work with him. Had he not cooperated, Templeton would have been able to challenge the registration, and the new legislation mentioned earlier would have worked in his favor.
Many other famous names of skateboarding have been registered by unaffiliated persons, and it’s not yet clear what they will do with those domain names; registering a domain name doesn’t require that you activate it. Should those skaters decide to challenge the registration of their personal names, the law currently stands on their side. Not only are trademarks now receiving protection as domain names, but so are personal names.
Anti-cybersquatting laws and the new resolution mechanisms are hopefully removing some of the parasitic elements sabotaging the Internet’s potential as an effective communication and business tool. By creating protections for individuals and companies, the Internet becomes less like the Wild West, where the first to draw and shoot wins, and more like a modern society governed by common sense and the rule of law.