Resolving Domain Name Disputes: A Primer

I. Introduction

A few years ago, if a child searching for information about Hannah Montana accidentally visited the website Disneychanel.com (as opposed to DisneyChannel.com), the child would be disappointed.  If the child’s parent wanted to investigate family-friendly programming and went to parentstelevisioncouncil.com, the parent would not find the information sought (but rather would be directed to a website of a targeted program instead).  If that person wanted information about a luxury sports car and went to porshe.com (as opposed to Porsche.com) or wanted to find a luxury handbag and went to LuisVuitton.com (as opposed to LouisVuitton.com), the person would not find the expected high quality sites.  Instead these web travelers were being directed to sites where enterprising but not necessarily scrupulous entities awaited. 

The companies behind the valid websites faced lost revenues, and tarnishing of their trademarks and goodwill as consumers spent money on such “typo domains.”  However today, if those domains are accessed, individuals will either be automatically linked to the appropriate website, or the sites will display a “not found” notice with sufficient information to direct individuals to the appropriate website.  The companies behind the valid websites no longer need to be as concerned with imposters, because they have learned to assertively protect their brands online.  But no business with an image or a brand to protect can afford to let down its guard for very long.  Danger lurks in every corner of the Internet.
With the explosion of Internet use and the burgeoning presence of commercial entities online in the past 15 years, it is not surprising that innumerable disputes have erupted over domain names.  While the technologies supporting the Internet are sophisticated and complex, procedures for registering domain names are remarkably simple and inexpensive.  It is largely a first-come, first-served system. A sophisticated, well-funded enterprise is not needed to register a domain name.  A high school student without a job could be as dangerous as a multibillion-dollar competitor.  Anyone can register a “dot-com” domain name not currently in use for as little as $6.95 a year.

Many companies eager to enhance their image and facilitate operations by launching a website have discovered their most obvious choice of domain name taken by another – often by a cybersquatter, an enterprising “investor” who preemptively amasses names in hopes of profiting down the road, or by a typosquatter, an entity seeking to capitalize on the innocent mistakes of Internet users who fail to accurately type in the domain name for the site they wish to visit.  Other companies have discovered their bottom lines and goodwill jeopardized by sites with similar sounding names – sites to which their customers are often misdirected.  It was not always clear where companies victimized by such conduct could turn.  But new laws, universal dispute resolution policies and forums have brought a semblance of order to the growing battlefield over domain names.  It is essential to grasp these developments, if one is to avoid the perils of cyberpiracy, or defend against a cybersquatting claim.

 

II. Birth of the Internet and Domain Names

 

 The system of registering domain names for websites in use today was designed by University of Wisconsin researchers in the 1980s.  By the 1990s, Internet use exploded in the commercial sector.  A domain name is simply an address.  It is an alias for the long IP or Internet protocol string of numbers – where web pages are located and e-mail is directed.  However, unlike the name of your street or town, a domain name can be chosen by the addressee.  In Internet lexicon, the letters after the “dot,” such as “.com,” “.edu,” and “.gov,” are termed “top- level” domain names, while the name directly to the left of the dot is called a “second-level” domain name.

 

The Internet Corporation for Assigned Names and Numbers (ICANN) is the organization responsible for the global coordination of the domain name system. Until December 1999, Network Solutions, Inc. was the sole registrar overseeing the registration of second-level domain names.  By 2000, ICANN had accredited several more registrars, but they all followed Network Solutions’ general first-come, first-served, no-questions-asked policy for selecting domain names.  It was not long before the inevitable happened.  Companies eager to build a presence on the web discovered that the most logical domain name for them to use – their company or product name – was owned by someone else.  Where the company and the website owner were at cross-purposes with conflicting values, litigation often ensued.  Litigation also arose when the entity holding the domain name appeared to be merely “parking” it to collect revenues or otherwise exploit the name.

 

Example:  When Hasbro Toys tried to register the domain name Candyland.com, it was too late.  The name was registered to an adult entertainment provider.  Hasbro ultimately sued and won rights to the name.

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