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Internet Domain Name Disputes

Any organization that is involved in an Internet domain name dispute, or anticipates that its activities or portfolios implicate the potential of Internet domain name disputes, should be aware that the existing Internet-regime dispute "resolution" policy will become obsolete in approximately six weeks. This may therefore be a crucial period during which to act or react to domain name issues.

Domain names are presently the coin of the realm on the Internet. New technologies may eventually render domain names obsolete, but present Internet technology, both on the Internet itself and on the desktops of users, relies largely on domain names as identifiers of the source or affiliation of Internet websites. Domain names, which were not meant to function as trademarks, have become irrevocably enmeshed in trademark law, both as potential sources of new, Internet-based trade identities — i.e., — and in the incorporation of existing corporate trademarks and business names in domain-name form. In the U.S. and many other countries, registrants need not show use in commerce or any trademark-type right in order to reserve a name, which has been a mechanical, first-come, first-served process. As would be expected in any case where new value is created almost out of nowhere, many disputes have arisen between real and putative trademark holders and domain name registrants.

The present procedure for non-litigation resolution of these disputes, administered by Domain Solutions / InterNIC, allows the holder of an unstylized, registered word trademark to presumptively place on "hold" the registration of any other person that is "the same" as the registered mark. It is necessary to provide InterNIC with an official certified copy of the registration, from the PTO, to effectuate this process, but besides this formality the procedure is quite simple and quite effective for trademark holders.

In essence the existing policy allows trademark holders to freeze domain names registered by others that are superficially the same as the registered mark, and effectively hands them over to the registered holder. This is without regard for the age-old trademark criteria that would normally require a court to examine, for example, the applicability of the trademark to the service or product to which the first registrant had sought to apply it, the existence of secondary meaning, and the likelihood of confusion in the total Internet context — namely, the domain name combined with the website content and presentation. This latter factor is increasingly being relied on in the courts, notwithstanding a number of earlier rulings to the contrary. The present policy also ignores whether or not a mark is "famous," which must be established for a mark to be protected under the Federal dilution statute, as well as issues such as parody, fair use and the like. For all practical purposes, this policy places on the junior user / first domain registrant the burden and expense of retrieving the rights, on trademark law grounds, to a domain name that has been placed on "hold." Usually this party is less well-equipped to litigate.

We have been involved with this policy both on behalf of trademark holders -- where we have effectively "cancelled' registrations of domain names -- and on behalf of alleged trademark infringers, where we have put would-be, alleged trademark enforcers on notice that they would be overstepping the bounds of their actual trademark rights, and would be held responsible for the same, by their threatened invocation of the InterNIC process without just cause. For more information on the extant system, see

Pursuant to agreements finalized on October 24, 1999, however, the Domain Solutions / InterNIC policy will soon be obsolete. It will, effective January 3, 2000, be replaced by the new Uniform Domain Name Resolution Policy, which will be administered by a new body, the Internet Corporation for Assigned Names and Numbers, or ICANN, a body created by the U.S. Department of Commerce. Domain name disputes will be handled by a panel of experts in essentially an arbitral fashion. More can be learned about this policy at The policy itself can be found at

Suffice it to say that the new ICANN system will be substantially more complex and subtle than the present InterNIC system. What is critical to know in these next few weeks are the following points:

  • Our trademark-holding clients will arguably never be in a better position to strongly assert their rights under, and to utilize, the present, markholder-friendly regime, than between now and January 3rd.
  • Savvy non-markholders presented with InterNIC-based cease and desist demands may, however, be in a good position to leverage the timing of the changeover, because of certain escape hatches in the present system.
  • No one really knows how or if the new system will work and what implications its quasi-governmental status may have in terms of presenting defenses to those who choose to avoid it and proceed straight to court.
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