Making the Most of Commercial Global DomainsThomas G. Field, Jr.Prepared for a Brussels conference, Intellectual Property Management in the Digital Age, Nov. 17, 2000. 41 IDEA: THE JOURNAL OF LAW AND TECHNOLOGY 101 (2001)
Acknowledgments I. IntroductionThe Internet is the world’s largest computer network... containing several million “host” computers.... An estimated 25 million individuals have some form of Internet access, and this audience is doubling each year.Only six years later, Professor Quinn reported:[4] The growth of the Internet has been remarkable by any standard. This truth is underscored by predictions from the Gartner Group that business to business e-commerce, which accounted for $145 billion worldwide in 1999, will account for $7.29 trillion worldwide by 2004. It is further highlighted by the fact that traffic on the Internet doubles every 100 days, with 1 billion people expected to be connected to the Internet by 2005. In short, the Internet is here to stay.Remarkably, little of significance beyond the volume of traffic and the number of hosts and advertisements featuring internet addresses[5] has changed since Judge McKenna explained:[6] Each host computer... has a unique Internet address. Users seeking... a particular Internet host require the host’s address in order to establish a connection.In the absence of directories equivalent to those used to find phone numbers, he observed, users regarded nominal[7] addresses as valuable, particularly when they could often be guessed.[8] He noted, too, that hosts regarded addresses, e.g., mirroring corporate names as being valuable for reaching customers.[9] Such advantages were not widely seen a few years ago,[10] but some people now rely on nominal addresses more than on phone numbers. Addresses may even trade online for high prices;[11] <business.com>,[12] for example, is reported to have sold for $7.5 million and <loans.com>, for $3 million.[13] Addresses based on the names or marks[14] of well-known hosts are worth far more. Hence, it is not surprising that disputes among nominal address owners and between owners of such addresses and of valuable marks are far more common than disputes over postal addresses and phone numbers ever were.[15] While such net addresses may help users and suppliers of information, products and services find each other, they are not without their shortcomings. They are equally capable of, e.g., generating source confusion and inhibiting competition. Despite echoing skepticism about the long-term prospects for commercial global domains based in part on how they are governed,[16] this paper concludes that nominal addresses are essentially a new form of intellectual property to be viewed and managed in ways sometimes fundamentally different from trademarks and other indicia of commercial goodwill. In support, it first reviews the domain name system (DNS) under which nominal addresses may be registered. Second, it outlines central principles of “unfair competition” law that underlie the resolution of disputes within the U.S. Last, it reviews how nominal addresses pose several new kinds of issues regarding dilution, genericism, territoriality and governance. Notes for Introduction See also, e.g., Office of the General Counsel, U.S. Government Accounting Office (GAO), July 7, 2000, memorandum to Congress concerning “Department of Commerce: Relationship with the Internet Corporation for Assigned Names and Numbers” (ICANN), Enclosure II: The Government and the Domain Name System, at 1. Online at <http://www.gao.gov/new.items/og00033r.pdf>, the memorandum responded to a conference report, requesting a review of the relationship between the Department of Commerce and ICANN; Id. at 1. (For reasons given infra, “http://” is hereafter omitted from such addresses.) [2] Id. [3] MTV Networks v. Curry, 867 F.Supp. 202, 204 n.1 (S.D. N.Y. 1994) (emphasis added). In this and other quotations, internal citations are generally omitted. Internal quotation marks are also omitted unless required to convey meaning. [4] Eugene R. Quinn, The Evolution of Internet Jurisdiction: What A Long Strange Trip It Has Been, Syr. L. & Tech. J., 1-2 (Spr. 2000); <www.law.syr.edu/studentlife/publications/lawandtechnology/spring_2000.shtml> (links to an Adobe Acrobat (.pdf) file) (emphasis added). [5] See World Intellectual Property Organization, The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process, April 30, 1999, at 3 — online at <wipo2.wipo.int/process1/report/pdf/index.html>. [6] MTV Networks, 867 F.Supp. at 204 n.2. [7] This term is used in lieu of more common, equivalent terms,“mnemonic” and “alphanumeric.” [8] MTV Networks, 867 F.Supp. at 204 n.2. Still, it is important to keep in mind that nominal addresses must be converted to numerical addresses for communication and that distinct domain name systems could match various names with the IP address for a specific computer. See, e.g., Anick Jesdanun (AP), Domains in discord - Cybercolonies clash with the Internet establishment, carried in, e.g., the San Diego Union & Trib., Jan. 16, 2001, at C1 (2001 WL 64375). For the most part, this paper will ignore that possibility. [9] MTV Networks, 867 F.Supp. at 204 n.2. [10] See, e.g., Kathryn Balint, Site Seer, San Diego Union-Tribune, Sept. 7, 2000, at E1, 2000 WL 13984404. [11] See, e.g., <Greatdomains.com>, where domain names are traded. [12] Internet addresses are now conventionally set off in thus: “<...>.” [13] See, e.g., Balint, supra note 6; see also, e.g., Tamara E. Holmes, Sell your good domain name for hard cash, USA Today, Sept. 11, 2000, 2000 WL 5789209. But see ICANN, ICANN Announces Selections for New Top-Level Domains, <www.icann.org/announcements/icann-pr16nov00.htm>. Because one of the new gTLDs is "dot-biz," one must wonder whether <business.com> retains much value. See also <http://satirewire.com/news/0011/new_domains.shtml> (a critical view of the ICANN process). [14] This term is intended to cover, e.g., service marks as well as trademarks. It may also cover, e.g., logos and trade dress, but source identifiers other than sets of alphanumeric characters are of no concern here. [15] But see, e.g., Federal Communications Commission, Area Codes: Frequently Asked Questions, at <www.fcc.gov/Bureaus/Common_Carrier/Factsheets/areacode.html>. [16] See, e.g., WIPO, supra note 5, at 109 speculating about “the impact of new navigational measures.” See also, American Intellectual Property Law Ass’n, (AIPLA) comments filed Mar. 23, 1998, in response to the Department of Commerce request, supra note 1 — online at <www.ntia.doc.gov/ntiahome/domainname/130dftmailAIPLA.htm>. II. Brief Overview of the DNSAs mentioned earlier, users may be able to guess nominal addresses, but that is true only if addresses are short and simple.[19] Consider these: <www.fire-department.ventura.co.ca.us>. Those examples should demonstrate the potential complexity of domain names and establish a key point in this paper: Nominal addresses are not universally more easily typed or remembered than twelve-digit numerical addresses. Until users become far more sophisticated,[22] it is equally unlikely that such complex addresses can be guessed. As explained by Judge Ellis in resolving a recent dispute, full gTLD addresses are often even more complex:[23] A domain name refers to a computer, and does not refer to a particular file, such as a web page. Instead, a particular file on the Internet, such as a web page, is identified by its Uniform Resource Locator (URL), which includes the domain name, identifies the file, and indicates the protocol required to access the file. For example, Roger Ebert’s web page is located at the URL, <http://www.suntimes.com/ebert/index.html>... (i) “http” refers to “Hypertext Transfer Protocol,” the language required to access the web page, (ii) “www.suntimes.com” is the domain name for the Chicago Sun Times, and refers to the web server of the Sun Times, (iii) “ebert” refers to a particular directory on that server, and (iv) “index.html” refers to a particular file in that directory.Yet, such complexity, elevated by right to left priority through the TLD and left to right priority beyond, rarely presents difficulty. First, users need not enter “HTTP://” into web browsers; it is assumed.[24] Second, “www” is often unnecessary.[25] Moreover, unless a particular file is sought beyond the “home” default file, no “/” — much less anything else — need appear to the right of, e.g., <www.suntimes.com>.[26] Therefore, usually with the “www” inferred, such addresses will hereafter, for brevity, be called URLs. The “dot-com” domain has generated the most disputes, but all gTLDs share one feature that has remained essentially unchanged since 1994. Most RDNs are still obtained “under a very simple rule: First come, first served.”[27] Although many can have a stake, because each address must be unique, only one party can “own” a particular <RDN.com>.[28] From 1995-98, Network Solutions, Inc. (NSI) was the sole registry of global commercial domains.[29] Attempting to satisfy firms distressed to learn that unaffiliated parties had registered, e.g., <my-company-name.com> or <my-famous-mark.com>, NSI soon developed a dispute resolution system. NSI’s system has since been replaced,[30] but it governed several cases discussed below. Basically, it required protesters to notify registrants and provide evidence of trademark registrations.[31] If registrants could not show that their names were also registered trademarks,[32] NSI might suspend their RDNs. If, however, either a registrant or a third party took a dispute to court, NSI would wait.[33] In this way, NSI could stand aside and avoid most litigation.[34] Moreover, in one case where NSI, itself, was the litigation target,[35] the 9th Circuit echoed the district court and affirmed an award of summary judgment in its favor, partly because:[36] Where domain names are used to infringe, the infringement does not result from NSI’s publication of the domain name list, but from the registrant’s use of the name on a web site or other Internet form of communication in connection with goods or services.... NSI’s involvement with the use of domain names does not extend beyond registration.Moreover, the Court of Appeals saw fit to add:[37] ... NSI’s role differs little from that of the United States Postal Service: When an Internet user enters a domain-name combination, NSI translates the domain-name combination to the registrant’s IP Address and routes the information or command to the corresponding computer. Although NSI’s routing service is only available to a registrant who has paid NSI’s fee, NSI does not supply the domain-name combination any more than the Postal Service supplies a street address by performing the routine service of routing mail.Since that time, registry liability seems to be unchanged. If anything, recent U.S. anticyberpiracy legislation[38] may reduce it:[39] The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order. Notes for DNS Overview [18] These are often called “generic,” but global seems more apt. See also, e.g., <au.com> and <www.us.com> presenting hybrids that might be called “ccgTLDs”. [19] Internetters, a U.K. registry, reports that the maximum domain name length is “now 63 characters (previously restricted to 26, including 4 for the .com),” <www.internetters.co.uk>, raising a question about the scope and origin of such restrictions. [20] See Information Sciences Institute, The US Domain Overview (Locality Names), <www.nic.us/overview.html #Locality Names>. [21] Id. As also indicated, hosts need not be located in the designated geographical area. Thus, nothing seems to prevent a resident of New Hampshire, or Korea for that matter, from registering <her-name.ventura.ci.ca.us> were she so inclined. [22] See, e.g., GoTo.com Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2/2000): “Our ever-growing dependence on the Web may force us eventually to evolve into increasingly sophisticated users of the medium, but, for now, we can safely conclude that the use of remarkably similar trademarks on different web sites creates a likelihood of confusion amongst Web users.” [23] America Online, Inc. v. Huang, 106 F.Supp.2d 848, 851 n.5 (E.D. Va. 2000). See also, e.g., the second address supra note 17. [24] Only when a different file transfer protocol, e.g., FTP, is involved, must one be entered. [25] While, e.g., <scrabble.com> is adequate, <harrods.com> is not; <www.harrods.com> must be used. [26] It bears mention that it is highly unlikely that a user would ever have to enter a URL such as the second address in supra note 17. Generally, they appear only in web page code. [27] MTV Networks, 867 F.Supp. at 204 n.2. [28] Yet, the party need neither have a stake nor use the RDN. See, e.g., <www.granitestate.com>. As explained below, many have a stake in that term, but the web page contains nothing except the word, “yo.” [29] See, e.g., ICANN, Registrar Accreditation: History of the SRS <www.icann.org/registrars/accreditation-history.htm>; see also, e.g., PGMedia, Inc. v. Network Solutions, Inc., 51 F.Supp.2d 389, 392 (S.D. N.Y. 1999), aff’d Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573 (2d Cir. 2000) (protesting control). [30] ICANN, The Uniform Domain Name Dispute Resolution Policy (UDNDRP)<www.icann.org/udrp/udrp-rules-24oct99.htm>. But see <www.icann.org/udrp/udrp-policy-24oct99.htm>; remarkably, that document is also called ICANN's "Uniform Domain Name Dispute Resolution Policy" (UDNDRP II). [31] See generally, e.g., Juno Online Services, L.P. v. Juno Lighting, Inc., 979 F.Supp. 684 (N.D. Ill. 1997). [32] That posed a serious problem for firms with legally-protectable goodwill but no trademark registration. [33] See, e.g., Juno Online, 979 F.Supp. 684. [34] Id. [35] Lockheed Martin v. NSI, 194 F.3d 980, 982 (9th Cir. 1999). [36] Lockheed Martin, 985 F.Supp. 949, 958 (C.D. Ca. 1997) (quoted by the Circuit, 194 F.3d at 985) (emphasis added). [37] Lockheed Martin, 194 F.3d at 984-95. [38] Anticybersquatting Consumer Protection Act (ACPA) amendments to, e.g., § 43 of the Lanham Act, 15 U.S.C § 1125, made by Pub.L. No. 106-113, § 3010 (1999). The first appellate case to apply it was Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000). [39] 15 U.S.C. § 1125(d)(2)(D)(ii). III. Unfair Competition and DilutionTo prevail, such a party usually must show, by virtue of inherent or acquired distinctiveness (or “secondary”[42] meaning), that its alleged mark has source significance. It must also usually demonstrate that some relevant part of the public is or is likely to be confused.[43] Once those conditions are met, it is irrelevant whether the other party intended to mislead anyone. If, however, a defendant intentionally misrepresents that the plaintiff is the source of its goods or services, courts may well presume both distinctiveness and likelihood of confusion.[44] In a possibly modest expansion of that proposition, owners may sometimes stop the use of famous marks on dissimilar goods or services[45] — despite lack of competition. In such circumstances, the public may be misled in the short term as to sponsorship. Perhaps more importantly, both consumers and owners suffer in the long term from eroded capacity to distinguish sources.[46] Dilution statutes may help, but it is unclear how much, particularly when marks differ.[47] Fame, however, is not something a mark either does or does not have. Rather, it is distributed along a spectrum that controls the scope of injunctions granted when another impermissibly uses a mark. In contrast with famous marks, generic terms usually confer no exclusivity with respect to the named goods or services. Indeed, famous marks have become essentially worthless after the public came to regard them as the common name of goods or services.[48] In such circumstances, the most to be expected is an injunction addressing possible differences in quality[49] or requiring affirmative disclosure of source.[50] As mentioned above, terms that lack initial capacity to indicate source may be protected as marks once the public perceives them as source indicators. These include geographically or otherwise descriptive adjectives and surnames,[51] which are denied federal registration absent evidence of distinctiveness. Once registration is secured, such marks may even become incontestable.[52] However, others may use them “fairly.”[53] Moreover, that is true of marks historically regarded as among the strongest; thus Apple Computer, Inc. could not prevent an orchard from advertising that it sells MacIntosh (or any other type of) apple. Suggestive terms are good marks and may be registered in the U.S. without evidence of distinctiveness. Whopper, for example, suggests something large,[54] but any connection to Burger King’s sandwich is remote.[55] It is difficult so see how any other firm could justify prominent use of that term without evidence of prior use.[56] Finally, coined terms such as Kodak or Exxon make the strongest marks. While marketing departments may resist because of the cost required before the public associates them with the goods, it is nearly impossible for strangers to justify their use — except to indicate goods originating with owners of those marks.[57] After a mark is chosen,[58] measures must be taken to preserve its strength. Despite any other characteristic of marks, the weakest are those used widely. Geographical terms, such as “DelMarVa,” suggesting that a firm straddles the borders of Maryland, Delaware and Virginia, or “Granite State,” the official nickname of New Hampshire, are extremely common.[59] Once a good mark is selected, it must be policed. Consider, e.g., the famous 1947 Sunkist case.[60] Remarkably, it was brought by two, independent plaintiffs, each with substantial goodwill at stake.[61] One had invested over $40 million advertising Sunkist and had sold over $2 billion worth of, e.g., citrus fruits, oils and acids, and citrus-flavored beverages. It had registered the mark for those goods with the Patent Office. The second had spent over $350,000 in advertising Sun-Kist and had sold about $50 million worth of canned and dried fruits and vegetables, milk, butter, catsup, pickles and a wide variety of other groceries. It, too, had federally registered its mark. Presumably in settlement of an earlier dispute, plaintiffs had agreed to recognize each other’s exclusive rights in the mark in their respective, if similar, lines of trade. Yet, that led to their undoing when both protested a baker’s use of essentially the same mark. Not only did the Court refuse relief, but it appeared to be upset about the prior agreement:[62] Granted the plaintiffs had a right to contract away the public’s likelihood of confusion..., [but] their cry that there is a likelihood of confusion of the source of a loaf of bread... is hardly audible to us.In some ways, the situation later faced by McGregor-Donigal was very similar.[63] Owning the mark, Drizzler, for $25-50 golf jackets, it protested another’s use of Drizzle for $100 to $900 women’s coats. If that situation could continue, it is difficult to imagine how others selling even less similar goods could be halted. Yet, McGregor lost. By the time defendant’s use was discovered, it had extended over a five year period. Moreover, firms that intend to free ride on others’ goodwill generally do not sell more expensive products. Hence, it is very unlikely that defendant was aware of plaintiff’s mark. Because U.S. law does not require searches before parties adopt marks,[64] a heavy duty falls on owners. Had defendant been earlier alerted to plaintiff’s mark, it probably would have adopted something else. Moreover, one must wonder, as did the Court of Appeals, how defendant’s use of its mark, with both parties in Manhattan, could have escaped plaintiff’s attention for such a long time if confusion was likely.[65] That aside, it is difficult to imagine how either party, much less both, could later argue that use of Drizzle or Drizzler on similar goods would be likely to confuse the public. One last aspect of unfair competition law also warrants close attention, particularly in the context of internet commerce. To prevail, owners of marks must have priority within disputed territories. At common law, such priority was based on use as explained in this classic articulation:[66] [W]here two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant; unless, at least, it appear that the second adopter has selected the mark with some design inimical to the interests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like. .... But this is not to say that the proprietor of a trademark, good in the markets where it has been employed, can monopolize markets that his trade has never reached, and where the mark signifies not his goods, but those of another.The Lanham Act now allows U.S. firms to reserve unoccupied territory through federal registration.[67] However, it does not divest others’ rights arising from earlier use.[68] Notes for Unfair Competition and Dilution [41] 15 U.S.C. § 1125(a)(1)(A). [42] Few words have only two meanings. In the context of unfair competition and trademark cases, the term “secondary meaning” signifies that something has come to indicate a particular commercial source. See generally, e.g., Restatement (Third) of Unfair Competition § 13 (1995); see id., cmt. e, specifically. [43] See, e.g., McGregor-Donigal v. Drizzle, 599 F.2d 1126 (2d Cir. 1979) (discussed below). [44] See, e.g., My-T-Fine v. Samuels, 69 F.2d 76 (2d Cir. 1934); see also, American Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560 (1953). [45] See, e.g. , Polaroid v. Polarad Electronics, 287 F.2d 492, 495 (2d Cir. 1961); see also, Aunt Jemima Mills Co. v. Rigney & Co., 247 F.2d 407 (2d Cir. 1917). [46] See, e.g., California Fruit Growers Exchange v. Sunkist Baking Co., 166 F.2d 971 (7th Cir. 1947). As discussed below, two firms diluted their own marks to the point that relief was denied. See also, In re E. I. DuPont DeNemours & Co., 476 F.2d 1357 (Fed. Cir. 1973) (reversing an administrative refusal to accept such a settlement). [47] See, e.g. , Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989). (“Lexus” for automobiles found not to dilute “Lexis” for computerized legal research services under the N.Y. state statute). Cf. Polaroid, 287 F.2d, at 495 (plaintiff prevailed without benefit of a dilution statute). See also, the Federal Trademark Dilution Act of 1995, Pub.L. No. 104-98, 109 Stat. 985, codified at 15 U.S.C. §§ 1125, 1127. For a comparison of that with the ACPA, see Sporty’s Farm, 202 F.3d 489. [48] For example, under 15 U.S.C. § 1064(3) a registered mark may be cancelled “(a)t any time if [it] becomes the generic name of the goods or services....” [49] See, e.g., Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F.Supp. 1270 (S.D. N.Y. 1983) (allowing use of a generic term subject to meeting an originator’s specifications). [50] DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.), cert. denied 299 U.S. 601 (1936) (requiring a firm allowed to use a well-known name clearly to label itself as the source). [51] See 15 U.S.C. § 1152(e) and (f). [52] See, e.g., Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985). [53] See, e.g., 15 U.S.C. § 1115(b)(4) (excludes from trademark infringement uses, other than as a mark, of a “party’s individual name in his own business” or of a term “descriptive of and used fairly and in good faith only to describe [his] goods or services.”) [54] A “whopper” is also an extreme prevarication, so firms must be alert to the full range of formal and informal meanings of adopted terms. [55] It is interesting that both <www.whopper.com> and <www.burgerking.com> are indicated to be “The Official Web Site Of Burger King Corporation.” [56] See 15 U.S.C. § 1115(b)(5). [57] See Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070 (5th Cir. 1997). Also, Kodak must tolerate some uses of "Kodiak;" but see, e.g., <www.akweathercams.com/Kodiak/Kodiak.asp>. [58] See, e.g., Thomas G. Field, Jr., Trademarks and Business Goodwill, online at <www.piercelaw.edu/tfield/trademk.htm> (suggests strategies for choosing good marks and avoiding bad ones). [59] It is interesting that neither is being used on the net. See supra note 28; also, <www.delmarva.com> quickly resolves to <cpd.conectiv.com>. [60] California Fruit Growers, 166 F.2d 971. [61] 166 F.2d at 972. [62] 166 F.2d at 975. [63] McGregor-Donigal, 599 F.2d 1126. [64] But see Int’l Star Class Yacht Racing Ass’n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753-54 (2d Cir. 1996): “Hilfiger’s choice not to perform a full search... reminds us of two of the famous trio of monkeys who, by covering their eyes and ears, neither saw nor heard any evil. Such willful ignorance should not provide a means by which Hilfiger can evade its obligations under trademark law. ” [65] McGregor-Donigal, 599 F.2d at 1136, n.6. [66] Hanover Star, 240 U.S. at 415-16. While it focused on the territorial limits to unfair competition, note the Court’s anticipation of dilution by acknowledging the potential to halt a firm’s efforts “to take the benefit of the reputation” of another’s goods. [67] See, e.g., Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968) (passim). Cf. Lucent Information Management, Inc. v. Lucent Technologies, Inc., 986 F.Supp. 253 (D. Del. 1997) (no priority based on use after another has filed a federal intent to use application). [68] 15 U.S.C. § 1115(b)5). IV. When Worlds CollideNew Problems Related to DilutionJO was quite successful, and its free e-mail accounts soon represented 5% of the U.S. market; in January 1997, alone, it opened 250,000 new accounts. Nevertheless, JO continued undiscovered until applications were filed, in mid-1995, for federal registration of its marks. Now alerted to another firm’s use of Juno, JL not only opposed JO’s registrations but also asked NSI to cancel its RDN.[71] In response, JO filed an action against JL and NSI, but it dropped the latter when NSI agreed not to suspend JO’s RDN pending the outcome of the suit. JL, adding an interesting twist to the dispute, further upset JO by registering <juno-online.com> with NSI. However, the court refused to find JL’s actions improper, and matters were apparently later resolved to their mutual satisfaction.[72] A later suit brought by Lockheed offers an interesting contrast in two respects. First, consider the facts as set forth by the 9th Circuit:[73] Lockheed owns and operates “The Skunk Works,” an aircraft design and construction laboratory. Since 1943, The Skunk Works has developed prototypes of this country’s first jet fighter, the U-2 and SR-71 spy planes, and the F-117 and F-22 fighter planes. The Skunk Works is currently involved in designing a possible replacement for the space shuttle. “Skunk Works” is a registered and incontestable service mark.Lockheed’s core grievance was that:[74] Third parties, not involved in this litigation, have registered domain-name combinations with NSI which are variations on the phrase “skunk works.” These include: <skunkworks.com>, <skunkworks.net>... [and <skunkworks.org].After convincing two different registrants to give up <skunkworks.com> and <skunkworks.net>, Lockheed was upset by NSI’s failure to cancel those registrations promptly. The parties in Juno may have been satisfied, but Lockheed thus found NSI’s dispute resolution system unhelpful. It was surely even more distressed when NSI later allowed still another stranger to register <skunkworks.com>. It sued NSI as an alternative to having to cancel many spurious RDNs one-by-one and having to hold them all, lest others re-register them. Yet, NSI won for reasons given earlier, e.g., that “infringement does not result from NSI’s publication..., but from the registrant’s use of the name on a web site” and that it “does not supply the domain-name combination any more than the Postal Service supplies a street address.”[75] The Court therefore held: “NSI is not liable for contributory infringement as a matter of law.”[76] The upshot is that firms aggrieved by multiple registrations by different parties cannot deal with them en masse.[77] Nothing has since changed. While the ACPA does pose some risk of statutory damages ranging from $1000 to $100,000 per domain name,[78] bad faith intent to profit is required.[79] It seems unlikely that Lockheed, for example, would have been helped; rather, it seems to have been beset by strangers more aptly characterized as fans than pirates.[80] One last case shedding light on problems unique to RDN registration also illustrates the territorial implications of gTLDs and the potential flexibility of the ACPA.[81] More than four years before filing that case, plaintiff, BroadBridge, had offered its clients, comprising major record labels and other CD publishers, an internet-based system for controlling consumers’ use of CD contents. It also held a federal registration for the mark, HyperCD. Besides the mark, BroadBridge held a RDN enabling its use of <hypercd.com> in both web and e-mail addresses.[82] The RDN was critical to keeping promises to its client publishers to provide technical support to purchasers of over 4.5 million CDs on which the URL and e-mail address appeared. Despite that, “(t)hrough inattentiveness and inadvertence,”[83] BroadBridge did not renew its registration on Mar. 1, 2000, and it was terminated. Meanwhile, Henderson, a Canadian, had also chosen “HyperCD” as an apt name for a similar technology soon to be offered by his firm. Finding <hypercd.com> available, he paid $70 to register it on Mar. 21. Ironically, he was contacted by BroadBridge’s president the very next day. After several fruitless exchanges, a complaint was filed under the current Internet Corporation for Assigned Names and Numbers (ICANN) dispute resolution system,[84] but that was dropped in favor of an ACPA action only two days later.[85] The ACPA action was filed in rem, i.e, against the RDN only. While such an action requires a lack of in personam jurisdiction over owners of offending RDNs, Henderson had notice, filed papers and appeared through counsel. The non-judicial proceeding had been suspended pending the outcome of this case, so Henderson’s argument that such a proceeding afforded the sole avenue of review was rejected, and jurisdiction was taken.[86] The record does not suggest that Henderson had copied BroadBridge’s mark or that his registration was in bad faith according to any of nine statutory factors.[87] Yet, plaintiff managed to recover “his” RDN because the Court found bad faith based on Henderson’s refusing $7,000 and his final demand for $46,000[88] following the registration. Stressing the relationship between trademarks and RDNs, the Court gave still another reason for ordering that BroadBridge’s nominal address be returned:[89] While not a factor relevant to Henderson’s bad faith, I note that inevitably future trademark litigation would arise should Henderson use <hypercd.com> in the way he proposes. To the extent Congress enacted the ACPA intending to give trademark owners inexpensive and effective legal remedies that were uncertain and expensive under then-existing trademark law... Henderson’s proposed use of the domain name which is nearly identical to plaintiff’s trademark is certain to engender a presumptively meritorious yet expensive trademark action against him.To succeed, however, a trademark action would have had to be brought in Canada, where BroadBridge could secure personal jurisdiction. While nothing in the Court’s opinion explains the substantive basis for such a suit, it is nevertheless unlikely, because his technology had yet to be used, that Henderson could secure trademark rights superior to those available to BroadBridge.[90] New Problems Related to GenericismConversely, recall that <business.com> sold for $7.5 million and <loans.com> for almost half of that.[93] If a purchaser spends heavily to advertize such a term, how much difference should that make? In any event, until a firm predominates, it is difficult to regard the use of, e.g., <gettaloan.com>, <loan.com>, <e-loans.com> or <myloans.com> as cyberpiracy. Depending on the extent to which a strategy of halting such registrants were successfully pursued, it, too, might cause antitrust problems. Some, aware of the outcome of a recent dispute between e-cards.com and ecards.com,[94] may reach unwarranted conclusions. Although e-cards.com is reported to have won a $4 million judgment, it nevertheless agreed to settle. True, Ecards did agree to change its name, but its president related that changing to Blab Media Inc. was already planned, partly because generic names were foreseen to become less useful than a “brandable identity.”[95] Moreover, Ecards agreed to the name change only after it was allowed to have visitors to the old site be bounced to its new one for a full six months. Plaintiff’s settlement, particularly in light of that condition, suggests little confidence of prevailing on appeal.[96] Before leaving this topic, one should also wonder about the prospects for, e.g., Apple computer to buy up all RDNs containing “apple” or to stop firms selling fruit from calling themselves, e.g., <e-apple.com> or <macintosh-orchards.com>. Similar queries might be made about a host of otherwise excellent marks such as <avon.com> and <amazon.com> (both potentially subject to legitimate geographical claims).[97] New Problems Related to TerritoryWhen independent firms having exclusive rights in Scrabble, but in different areas, faced such a problem, they agreed to share the RDN. This seems better than, e.g., <firm1-mark.com> and <firm2-mark.com>. Not only will a shared <scrabble.com> minimize consumer confusion (without any apparent prospect for dilution), but the URL will also remain short and easily guessed. Compare that case to the in rem action filed in Virginia by Harrods, a U.K. firm. The suit was based on 23 U.S. trademark registrations for Harrods, as well as on involvement, through a licensee, in Harrods Online — that allowed U.S. and Canadian consumers to purchase Harrods-branded and other products sold in its department store.[102] Ironically, its target was a former affiliate,[103] Harrods (Buenos Aires) Ltd. (HBAL). HBAL had, about eighty years earlier, registered Harrods in Paraguay, Uruguay, Brazil, Chile, Bolivia, Colombia, Peru and Venezuela. It had actual notice of the suit but was not within jurisdiction of the Court. Thus, the nominal ACPA defendants were 60 RDNs, including cyber harrods.com, harrodsbuenosaires.net, harrodsamerica.com, harrodsargentina.org, harrodsbank.net, harrodsbashopping.net, harrodsbrazil.com and shoppingharrods.com, previously registered with NSI. Judge Brinkema dismissed several claims for relief based on the “improper registration and use” of those names, stating:[104] Because HBAL is not before this Court in personam, plaintiff cannot pursue any cause of action with the potential to impose personal liability. ... [T]he effect of a judgment in an in rem action is “limited to the property that supports jurisdiction and does not impose a personal liability on the property owner, since he is not before the court.”Concerning its request for in rem cancellation of the offending RDNs under ACPA, plaintiff had argued that it was not required to prove HBAL’s bad faith. Still, with no evidence of that as evidenced by, e.g., HBAL’s failure to keep its “address current or to leave an accurate forwarding address,” the in rem count, too, was dismissed.[105] Had the court been able to take jurisdiction, it is difficult to discern a basis for granting relief without HBAL’s having an URL as blatant as, say, <harrods-uk.com>. Barring that, how could its conduct be regarded as any less “fair” than plaintiff’s? Indeed, even with personal jurisdiction over both parties, the only way a Court could prevent confusion would be to order, perhaps on cross-motions, neither firm to use <www.harrods.com>.[106] Because plaintiff already held that RDN, firms in similar cases should consider such risks. Absent agreement, each firm in such circumstances also should at least consider whether the long-term costs and aggravation of two firms’ having similar URLs do not offset the short-term costs of adopting new marks. The Current Governance Scheme is UnhelpfulWithin areas governed as single ccTLDs, many new unfair competition problems of the kind discussed above either disappear or are more easily solved. As Diane Cabell has reported, for example:[108] most nations require prior registration of a trademark to attain protection, so ignorance of a prior claim is not an excuse. Some... limit domain registrations to a company’s official trade name.... Brazil cancels the domain if it isn’t used within 6 months. Finland has a limit of one domain per company. Others, like Israel, strictly enforce the distinction between domain categories....Yet, within global TLDs, the owner of data needed to match RDNs with numerical addresses and much else is unclear.[109] ICANN is in charge at some level,[109a] but its funding is uncertain despite the potential availability of large sums of money.[110] For example, at one time NSI could charge:[111] $100 to register a domain name for a two year period and $50 a year thereafter. Of the funds NSI collects..., it keeps 70%; the remaining 30% is placed into an interest-bearing account which will be used for the preservation and enhancement of the “Intellectual Infrastructure” of the Internet in general conformance with approved Program Plans. ... [T]here are almost three million domain names currently registered under the four TLDs for which NSI handles the registration.One Court described ICANN as “a new, quasi-governmental internet-regulating body.”[112] Still, beyond the most elementary provisions for accrediting registries[113] and a dispute resolution system difficult to characterize,[114] commercial domains are essentially unregulated. Many prefer that. For example, the American Intellectual Property Law Association:[115] has repeatedly stressed that any effort to design and implement a new Internet domain name system should include... a recognition that the private sector, rather than the government, is best equipped to administer and maintain the domain name system...Is ICANN in the private sector? If so, and it can nevertheless institute new gTLDs,[116] that may please some. Yet, it will create serious difficulties for others,[117] including the public.[118] Who can reconcile the competing interests of hosts in different territories with exclusive rights in single marks and lines of trade? Even cyberpiracy has proven difficult to define and address.[119] If true of something almost universally condemned, what of other practices such as warehousing?[120] If that is to be actionable on grounds other than antitrust, who shall articulate them? ICANN? Again, under what authority? Dispute resolution panels offer little more hope. Arbitration doesn't characterize the process they serve. RDN owners might be bound by contracts signed at registration, but that isn't required.[120a] Nor, under the first paragraph of Rule 3(b)(xiv), are complainants bound:[121] (b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall...The process neither necessarily binds its private parties nor does it adequately accommodate the need to reconcile public interests.[122] Moreover, it fails to indicate how conflicts between panel decisions about the law as “extended by a good-faith and reasonable argument” are to be resolved. Notes for When Worlds Collide [70] 979 F.Supp. at 685-86. Regarding NSI’s dispute resolution process, see also supra at notes 30-33. [71] 979 F.Supp. at 686. [72] 979 F.Supp. at 693. JL has a web site at <junolighting.com>, and a firm named simply “Juno” offers free e-mail and other internet services at <juno.com> (both visited Oct. 19, 2000). [73] Lockheed, 194 F.3d 980. [74] 194 F.3d at 983. Others included skunkwear, skunkwerks, skunkworx, theskunkworks, skunkworks1, theskunkwerks, skunkwurks and theencryptedskunkworks; id. [75] 194 F.3d at 984-95. [76] 194 F.3d at 987. [77] Should Lockheed be able to block all uses of “skunk” in any RDN? In that respect, surely more than appearance of “skunk” in “skunkwear” would be needed to establish either infringement or dilution. [78] Codified at 15 U.S.C § 1117(d). [79] 15 U.S.C. § 1125(d)(1)(A)(i). [80] See also supra , at note 36. [81] BroadBridge Media, LLC v. HyperCD.com, an Internet Domain Name,106 F.Supp.2d 505 (S.D. N.Y 2000) (citations omitted). [82] 106 F.Supp.2d at 508 (<tech@hypercd.com>). [83] 106 F.Supp.2d at 507. The opinion does not explain whether any notice was given by the registrar. [84] UDNDRP, supra note 30. [85] 106 F.Supp.2d at 509 n.4. [86] Presumably because the registry was located within the judicial district; see 15 U.S.C. § 1125(d)(2)(A). [87] 15 U.S.C. § 1125(d)(1)(B)(i). [88] Representing over a 65,000% return on a very short-term investment. [89] 106 F.Supp.2d at 512. [90] Assuming basic similarity between U.S. and Canadian law. [91] Although NSI was originally the sole registrar, many now exist. Several offer bulk registrations; see, e.g., <www.register-domain-names.com/multiple.htm> (offers a 40% discount on 100 or more names). [92] Sec. 2 of the Sherman Act, Pub.L. No. 93-528, § 3 (1890); codified at 15 U.S.C. § 2 (2000). [93] See supra at notes 10-13. [94] John Partridge, Ecards.com loses name, Settles suit with similarly named U.S. firm, The Globe and Mail, Oct. 7, 2000 — online at <www.globetechnology.com/archive/gam/News/20001007/RCARD.html>. [95] Id. [96] Yet, precedents for such relief were discussed supra at notes 49 and 50. [97] 15 U.S.C. § 1115(b)(4). In that vein, see <www.avon.co.uk>, a page stating: “USP Networks have forwarded you to this page to show that, although the owner has not yet developed the site, the name has been registered.” [98] See, e.g., Natural Footwear Ltd v. Hart, Schaffner & Marx, 760 F.2d 1383 (3d Cir. 1985) (passim). [99] As with phone numbers, each must be unique. [100] See, e.g., <google.com> or <altavista.com>. [101] See, e.g., GoTo.com Inc., 202 F.3d 1199. [102] Harrods Limited v. Sixty Internet Domain Names, 110 F.Supp.2d 420, 421-22 (E.D. Va. 2000). [103] Since 1963, however, there has been no further ownership connection; 110 F.Supp.2d at 422. [104] Harrods, 110 F.Supp.2d at 423. [105] 110 F.Supp.2d at 426. [106] See, e.g., Manhattan Industries, Inc. v. Sweater Bee by Banff, Ltd., 627 F.2d 628 (2d Cir. 1980). There the court gave neither party exclusive rights over a mark the public had come to associate with a third firm. A functionally equivalent result would be easier to achieve on cross motions to prohibit use. [107] Id. See also, e.g., WIPO supra note 5, at 96-109. [108] Diane Cabell, Foreign Domain Name Disputes 2000, <www.mama-tech.com/foreign.html>. [109] See, e.g., GAO, supra note 1. As mentioned there, the report addressed the relationship between the Department of Commerce and ICANN; Id. at 1. Several issues were raised, most notably for present purposes whether the Department has “legal authority to transfer control of the authoritative root server to ICANN.” Id. at 2. That appears to be the same as NSI’s Whois database, <networksolutions.com/cgi-bin/whois/whois>. It “contains information about networks, networking organizations, domain names, and the contacts associated with them for the com, org, net, edu, and ISO 3166 country code top-level domains,” <networksolutions.com/cgi-bin/glossary/lookup?term=Whois>. The database page also contains a notice stating in part: “Compilation, repackaging, dissemination, or other use of the WHOIS database in its entirety, or of a substantial portion thereof, is not allowed without NSI’s prior written permission. By submitting this query, you agree to abide by this policy.” [109a] However, ICANN recently disputed that; see the order in Economic Solutions, Inc. v. ICANN (E.D. Mo.), <www.icann.org/tlds/correspondence/esi-v-icann-13nov00.htm>: Contrary to plaintiff's initial understanding, ICANN represents that it has no authority to implement new TLDs, and that instead, it merely makes recommendations to the Commerce Department, which retains the ultimate authority to make such decisions.[110] See, e.g., GAO, supra note 1, at 21-24; see also, id., Enclosure V: ICANN’s Funding and Current Budget Proposal. [111] PGMedia, 51 F.Supp.2d at 392-93. See also, e.g., Thomas v. Network Solutions, Inc., 176 F.3d 500 (D.C. Cir 1999) (upholding NSI’s ability to collect fees). [112] Weber-Stephen Prod. Co. v. Armitage Hardware & Build. Supply, Inc., 54 U.S.P.Q.2d 1766, 1767 (N.D.Ill. 2000) . [113] See supra note 29. [114] See, e.g., the discussion of BroadBridge, supra, at note 84. See also, Weber-Stephen Prod. Co., 54 U.S.P.Q.2d 1766. [115] AIPLA, supra note 16, part II, ¶ 1. Avoiding anarchy will present challenges; see, e.g., Domains in discord, supra note 8: Small in numbers but vocal, Internet users who bypass ICANN's naming structure question the organization's authority altogether.Moreover, it is pointed out that "China... wants its own address system for sites using Chinese names." Id. [116] See, e.g., ICANN, New TLD Program, <www.icann.org/tlds>. [117] Again, as raised supra at note 13, consider the effect of the new “dot-biz” domain on the value of <business.com>. See, e.g., Dotcom.com, Expanding the dot Universe, <www.dotcom.com/news/tld.html> (recounting the results of a survey of 8000 RDN owners). Over 300 new domains were suggested, and dot-bus or dot-biz were at the top of the list; id. See also, e.g., AIPLA supra note 16 at II.B.5. [118] See, e.g., Name.Space, Inc., 202 F.3d 573 (affirming a refusal to require NSI to amend the master root zone file to include 530 new global domains under which Name.Space had been accepting registrations since late 1996). Compare, e.g., the International Classification scheme, online at <www.acadi.se/english/international/e-a-t-international_class.htm>. It contains 34 classes of goods and eight of services. It would seem to furnish a logical place to start, but: How difficult would it be for consumers to master? [119] See, e.g., supra at note 80. [120] See, e.g., Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir.1999). [120a] See UDNDRP II supra at note 30, § 4(k): If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days... before implementing that decision. We will then implement the decision unless we have received... official documentation... that you have commenced a lawsuit against the complainant....[121] UDNDRP, supra note 30 (emphasis added). [122] See, e.g., Thomas G. Field, Jr., Patent Arbitration: Past, Present and Future, 24 Idea 235 (1984) (discusses another area that posed concern about accommodating public interests in private proceedings). V. Conclusions[W]e envision a telephone-type directory covering all gTLDs which would allow... interested parties to search through multiple trademark, trade name or surname listings at a single Internet address where the users could then have direct linkage to the home page or Website corresponding to a given listing. .... The domain name itself would then largely become irrelevant, because the directory would become the most common means of access.Given the frequency and scope of problems at many levels, a replacement for the DNS seems inevitable. Most likely, as was true of the net itself in the incredibly recent past, the replacement will be something unforeseen and unforeseeable.[128] Meanwhile, if RDNs do not share all the attributes of realty or tangible personalty,[129] registrants nevertheless hold enforceable rights. Subject to dilution by new domains,[129a] as well as to a need to renew at prices and frequencies open to change, they represent a discrete, new form of intellectual property. RDNs are not only more alienable than trademarks and trademark registrations,[130] but they can also furnish ample basis for unfair competition actions. Despite their many problems and their potential, indeed welcomed, demise, firms must make the most of the current situation. Their best strategy is certainly not to adopt generic RDNs.[131] Rather, it is to develop coined names at least as unique as Kodak, and to spend whatever it takes to fix them in the public eye.[132] If RDNs eventually come to be of little more importance than mnemonic telephone numbers[133] are now, firms will find themselves in the enviable position of holding the best trademarks available — not in the unenviable position of holding an empty bag. Notes for Conclusions [124] See, e.g., AIPLA, supra note 16 at II.C. See also GAO, supra note 1 at 20 (discussing the Department of Commerce’s participation in ICANN’s Governmental Advisory Committee). Also consider that: “As recently as a year ago, many Europeans avoided the Internet, viewing it as ‘an American toy’,” Anick Jesdanun (AP), U.S.-born Web becomes more worldwide, carried in many newspapers, e.g., The San Diego Union-Tribune, Jul. 2, 2000, 2000 WL 13973743. [125] Based on more than 30 years of experience with various kinds of legal processes, I prefer (a normative assessment) those that offer clear political oversight and judicial review. [126] Several such things are now available if less widely used than they might be. Two sites are sponsored by NSI; besides the Whois database, supra note 109, it also appears to own the “dot com directory,” <www.dotcom.com>. See also, e.g., GoTo.com Inc., 202 F.3d 1199, 1208 (dispute between firms that compete to provide such services): “[I]n its attempt to show that GoTo has not been harmed by any possible infringement, Disney has cited the tremendous success of GoTo and its rise to the twenty-sixth most visited web site on the Internet.” [127] See AIPLA, supra note 16 at II.B.3.b, ¶3. [128] See, e.g., WIPO, supra note 5, at 108-09 n.128, regarding new navigational measures: “For instance, the latest releases of Netscape’s browser include a feature called ‘Internet Keywords.’ A user wishing to access, for example, the website of BankAmerica Corporation would no longer be required to enter ‘http://www.bofa.com’ in a browser, but simply ‘bank of america.’” [129] See, e.g., Dorer v. Arel, 60 F.Supp.2d 558 (E.D. Va. 1999) (mark owner could not execute upon an infringing RDN in partial satisfaction of a judgment); compare Kremen v. Cohen, 99 F.Supp.2d 1168, 1173 (N.D. Ca. 2000) (“a domain name is a form of intangible property which can not serve as a basis for a conversion claim”). [129a] See, e.g., supra note 13 regarding the effect of new dot-biz gTLD on <business.com>. [130] See In re McGinley, 660 F.2d 481, 484 (CCPA 1981): There is, of course, a limited statutory right to registration, which carries certain benefits. Although, as [the Patent and Trademark Office] notes, these are more procedural than substantive, that right cannot be denied without compliance with Fifth Amendment due process requirements.See also, e.g., 15 U.S.C. § 1060 (limitations on assignments of marks that do not apply to RDNs). It is thus difficult to understand the desire to register them as marks; see, e.g., Oscar S. Cisneros, Internet Land Rush at TM Office, WiredNews, Sept. 18, 2000. [131] See, e.g., Dotcom.com, Expanding the dot Universe, <www.dotcom.com/news/tld.html>: “In reality the number of million dollar domain names is very few, particularly given the sheer quantity of domain names that have been registered. At this point, the average domain owner would have just as much chance of winning the lottery as of selling a domain name for a million dollars.” See also, e.g., Mike Dash, Tulipomania, 165-66 (1999). In 1637, within weeks Dutch tulip bulb prices dropped to 1-5% of their previous value, a crash said to be “far more rapid and complete than... the Wall Street crash of 1929.” [132] See, e.g., Thomas Barrett, Best Practices for Trademarks on the Web, Domain Names, Supp. to Trademark World, April 2000, at 26. [133] For example, 1-800-WESTLAW. Top Professor Field's Course Page URL: http://www/piercelaw.edu/tfield/rdns.htm © 2001 Franklin Pierce Law Center. All rights reserved. |