An Introduction to Domain Names, Their Importance, and Problems Relating to Domain-Name Registration

Diana MacPherson [email protected] Darrell F. Cook [email protected]

Robinson & Cole Hartford, Connecticut

An estimated 20 to 30 million people worldwide have Internet access.1 As more and more people are going on-line, it has become increasingly important for law firms and businesses to utilize this modem avenue of communication with clients and potential clients. Understanding a “,” which serves as a law firm’s or business’ link to the computing public, is critical to realizing the greatest on-line audience. This article provides a basic understanding of domain names, their importance, and registration procedures. It also addresses disputes that have arisen between parties over the use of a domain name.

What is a Domain Name?

A domain name is the second half of an E-mail address; the portion that follows @ and which identifies your firm or company. Just as a street address is used to locate an individual’s home or business in the “real world,” each set of computers on the Internet is located by its numerical Internet Protocol (IP) address. Requiring Internet users to remember lengthy numerical IP addresses, however, would be burdensome. This is where domain names enter the picture  a domain name is a user-friendly mnemonic which equates to an IP address.2 Rather than entering a numerical address, Internet users can use the domain name as a link to an organization’s computers.

A domain name consists of a character string followed by a period and a three-character suffix. The suffix indicates the computer user’s category, i.e., “.com” (commercial), “.edu” (educational), “.gov” (government), “.org” (non-profit), and “.net” (network). For example, Robinson & Cole, the law firm of the authors, has an IP address on the Internet of 199.97.100.1, and a domain name of “rc. com.” The latter is much easier to remember.

Domain names should not be confused with E-mail addresses. A user identification precedes a domain name in an E-mail address, i.e., “lawyer’[email protected].” Thus, to send E-mail to a particular attorney at Robinson & Cole, the format “lawyer’[email protected]” is used, where the attorney’s user identification is substituted for “lawyer’sname.” Subdomains may also be created using domain names. For instance, Robinson & Cole operates a World Wide Web site on the Internet under the name of “www.rc.com.”

HART1-908526-1 Copyright 1996

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The Importance of Domain Names

“On the Internet, as in real estate, location is key.”3 Just as a business prefers a prestigious street address for its real property, businesses favor notable domain names to identify their locations in cyberspace. For instance, Microsoft’s corporate headquarters in Redmond, Washington is located at a street address of One Microsoft Way, and the software giant’s cyberspace Web site can be reached on the Internet at an address of “http://www.microsoft.com.”4

Because a domain name is the principal means of creating an identity on the Internet, a catchy name is critical  it should be “memorable, recognizable and readily associated” with its user.5 After all, domain names are “the equivalent of vanity license plates on the information superhighway.”6 Obviously, an easy-to-remember or easy-to-guess-at name facilitates greater communication between a business and the computing public. Well-known domain names include “ibm.com,” “apple.com,” “mtv.com,” “buick.com,” “ford.com,” “remax.com,” and “mcdonalds.com.”7

Domain-Name Registration with InterNIC

Through a cooperative agreement with the National Science Foundation, a single entity, , Inc., of Virginia (InterNIC) administers the registration of domain names under the .com, .edu, .gov, .org, and .net categories. Names are assigned on a “first come, first served” basis. InterNIC has been flooded with registration applications, and handles approximately a thousand applications per day.8 In an effort to curb this trend, InterNIC recently imposed a $100.00 registration fee for a new domain name. The domain name is valid for two (2) years, and may subsequently be renewed for a $50.00 annual fee. Detailed information regarding InterNIC’s registration process can be found on the Web at “http://rs.internic.net/domain-info/billing-procedures.html.”

Because the number of words which connote or name a particular entity and can be used as a domain name are finite, businesses are rushing to register their domain name of choice with InterNIC before someone else beats them to it. There can be only one “mcdonalds.com,” “ibm.com,” and “rc.com.” However, to their dismay, many businesses are finding that their preferred domain name is already taken.

The Problem of Poaching

The biggest problem resulting from InterNIC’s “first come, first served” policy is poaching. The term poaching is used to describe instances when an individual or entity intentionally registers, with an ulterior motive, a domain name that corresponds with or is similar to another business’ trade mark or trade name. Recognizing the value that is associated with a particular domain name, the “poacher” may hold it for ransom or use it in a disparaging manner.

“Perhaps the most notorious example of poaching was by the Princeton Review test preparation service, which registered and briefly used the address Kaplan.com.”9 According to the President of Princeton Review (Princeton), Princeton registered Stanley Kaplan Educational Centers (Kaplan)’s name in part to “irritate” its arch-rival.10 When students accessed

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“kaplan.com,” they were greeted with belittling information about Kaplan’s test preparation services, as well as advertisements for Princeton’s services.11

Although Princeton’s President offered to transfer the name for a case of beer, Kaplan refused. A lawsuit ensued, but the case was ultimately resolved as a result of binding arbitration. In the end, Princeton was ordered to transfer the domain name to Kaplan. The dispute became so contentious that Princeton even threatened to register “kraplan.com” as a domain name to continue providing negative information regarding Kaplan’s services.

In another well-known case, MTV Networks (MTV) sued a former video disc jockey (VJ) who registered the domain name “mtv.com.”12 The VJ used the domain name to host a bulletin board that facilitated communication between performers and other music professionals.13 When the VJ refused to acquiesce to MTV’s request that he cease using the domain name, a lawsuit followed. The case was ultimately settled under undisclosed terms, but MTV now has use of the “mtv.com” domain name.14

Legitimate Domain-Name Disputes

This is not to say that all domain-name disputes result from competitive poaching. Some arise when “a come-lately legitimate user [discovers] another legitimate user with the same acronym who has already registered the desirable domain name.”15 Legitimate use of “abc.com” by ABC Design of Seattle, for instance, has precluded the American Broadcasting Cos. from using the domain name.16

A battle between legitimate users over the domain name “frys.com” recently landed in San Francisco federal court.17 Frenchy Frys, a small distributor of french-fry vending machines for company lunch rooms, was the first to register “frys.com” with InterNIC. When Fry’s Electronics Inc., the seller of computer hardware and software, discovered that its name of choice was taken, it sued Frenchy Frys and InterNIC for wrongful appropriation of Fry’s trade name.

The “frys.com” lawsuit raises several interesting trade mark and trade name issues. In the real world, two different companies may use the same name, or own the same mark, as long as there is no likelihood of confusion by the public.18 For instance, the trade mark “cadillac” is owned and registered by General Motors for automobiles and by Menu Foods, Inc. for pet food.19 Because automobiles and pet food are distinct product markets, there is no likelihood of confusion by the public. Similarly, the public is unlikely to confuse a computer/electronics company named “Fry’s,” and a french-fry vending machine distributor named “Frys.” On the Internet, however, there can be only one “frys.com.”

To what extent does the likelihood-of-confusion test apply to domain names? When is there a likelihood of confusion on the Internet even though there would be no confusion outside of cyberspace? Will a large company always prevail against a smaller, lesser-known company that has registered a domain-name first? Fry’s Electronics will most certainly argue that it is so well-known that Internet users will automatically associate the domain name “frys.com” with its business, not that of the lesser-known Frenchy Frys. If Fry’s Electronics has sufficient proof to

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Fear of losing a valuable domain name, whether to a competitor by poaching, or to another legitimate user, has led to ridiculous consequences. Proctor & Gamble, for instance, has registered between 110 and 200 domain names for almost every conceivable product and body part or ailment for which its products are used, i.e., “badbreath.com,” “dandruff.com,” “diarrhea.com,” “headache.com,” “pimples.com,” and “underarm.com.”21 Kraft General Foods Corp. has also registered an estimated 150 domain names from “hotdogs.com” to “velveeta.com.”22 “

Recent Changes to InterNIC’s Registration Policy

InterNIC has never screened domain-name registration applications to determine whether a requested domain name infringes upon a trade name or trade mark. That has been and still is the registrant’s responsibility. However, as a result of getting hauled into court over domain- name disputes (i.e., Frenchy Frys), InterNIC made several changes to its registration policies in 1995. Of primary significance, an applicant for registration must agree to indemnify and hold InterNIC harmless from any liability, including attorneys’ fees, that arises from the registration or use of any requested domain name. InterNIC has also established certain procedures to manage domain-name disputes.23 InterNIC’s 1995 revised policy statement can be found on the World Wide Web at “http://rs.internic.net/domain-info/internic-domain-4.html.” A copy has been downloaded and is attached to this article.

New Registration Services

InterNIC may no longer be the only game in town. Although InterNIC exclusively handles distribution of domain names under the .com, .edu, .gov, .org and .net categories, several companies plan to create additional categories under which to handle domain-name registration. A Mount Pleasant, Michigan company announced plans to create categories including “.web” (World Wide Web serving), “.bus” (business-related domains), “.lmtd” (limited corporations), and even “.xx” (X-rated sites).24 The company plans on charging less than InterNIC for both the initial registration, and for the annual renewal fee. The Internet Service Providers Association (ISPA) also wants to create new categories of domains including “.biz” (commercial), “.isp” (network), “.nfp” (not for profit), and “.ind” (individuals).25 ISPA plans on handing out domain names to its members for free.

Conclusion

While this article is not exhaustive, a basic understanding of domain names and the importance of quickly registering a desired or catchy name with InterNIC is essential in the new world of high-speed marketing and information exchange. Those who are armed with knowledge of potential domain-name registration problems and the emerging litigation exposure will not find themselves surprised by such new technology-related issues.

At the time of this writing, a related concept in lawyer ethics has begun to be discussed: is there a need for specific rules of professional conduct governing the establishment and content of Web sites by law firms? Before establishing a domain on the Internet, the lawyer and his or

- 4 - DM-5 her client should visit InterNIC’s Web site at “http://rs.internic.net” and review its policies and procedures. And the philosophy as well as the mechanics of a new Web site should be carefully evaluated.26

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1 Mark F. Radcliffe, Doing Business On the Internet; Do You Know If You Own Your Own Name in Cyberspace, The Legal Intelligencer, February 12, 1996, at 9. 2 In other words, a domain name is “the human language equivalent of a computer’s numerical location on the Internet’s global network.” Rosalind Resnick, Paying a Toll on the Information Superhighway; Company Plans To Start Charging an Annual Fee for Registering Domain Names on the Internet, Chicago Tribune, October 9, 1995, at C3. 3 Steve Higgins, What’s in an Internet Name? To On-Line Marketers, Lots, Investor’s Business Daily, October 17, 1995, at A10. 4 Resnick, supra note 2, at C3 (explaining that “Microsoft.com is the domain name; www stands for World Wide Web, the hypermedia system that courses through the Internet, allowing Netsurfers to see pictures and experience audio and video”). When accessing a Web site on the Internet, “http” (Hypertext Transfer Protocol) is used as part of the addressing scheme. See G. Burgess Allison, The Lawyer’s Guide to the INTERNET, at 334. 5 Domain Names Are Like Trade Marks, New Media Age, February 15, 1996, at 12. 6 Peter H. Lewis, The Internet’s Nomenclature Becomes Harder To Sort Out; Guess Who Becomes Busier?, The New York Times, August 14, 1995, at D5. 7 “Want to know whether a name is taken? Visit http://www.internic.net and point-click your mouse at ‘registration services.’ You’ll find a hot link called ‘ query.’ Click on it and follow the instructions, and you can find out which domain names are registered and to whom.” Michael Maurer, Name Game Is Important On the World Wide Web, Crain’s Detroit Business, January 15, 1996, at 10. 8 Nigel Powell, Firms Held Ransom On Net, The Observer, March 3, 1996, at 6. At the time a domain-name request is submitted, “the Applicant is required to have operational name service from at least two operational Internet servers for that domain name. Each server must be fully connected to the Internet and capable of receiving queries under that Domain Name and responding thereto.” InterNIC Revised Policy Statement (“http://rs.internic.net/domain-info/internic-domain-4.html”). 9 Edward B. Chansky, USE IT OR LOSE IT: Registering Names on the Internet, Connecticut Lawyer, at 8 (December 1995/January 1996). 10 Ethan Horwitz & Robert S. Weisbein, Claiming Internet Domain Names, Corporate Counsel (March 18, 1996). 11 For an excellent synopsis of domain-name disputes, including the Kaplan controversy, see Gary W. Hamilton, Trademarks on the Internet: Confusion, Collusion or Dilution?, 4 Tex. Intell. Prop. L. J. 1, 6-7 (1995). 12 See MTV Networks v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1994). 13 Id. at 204. 14 Jessica R. Friedman, A Lawyer’s Ramble Down the Information Superhighway: Trademark, 64 Fordham L. Rev. 730, 735 (1995). 15 David P. Krivoshik, By Any Other Name, Legal Times, December 11, 1995, at 13. 16 Id. 17 Mark V. Boennighausen, Spud Vendor’s E-Mail Address Prompts RICO Suit, The Recorder, August 1, 1995, at 3. 18 See generally Leonard D. DuBoff, What’s in a Name: The Interplay Between the Federal and Trademark Registries and State Business Registries, 6 DePaul Bus. L. J. 15 (1994). 19 See Chansky, supra note 9, at 9. 20 In , Inc. v. Sunriver Corp., 1995 U.S. Dist. LEXIS 19012 (N.D. Cal. 1995), a federal district court, with little discussion, entered a preliminary injunction prohibiting the defendant from using the “Sunriver” mark or name in “World Wide Web pages and links, Internet domain names, or any other company material regardless of media.” Id. at *3. 21 Timothy C. Barmann, CYBERTALK: To Win the Great Land Grab of Cyberspace, Just Stake a Claim To Unused Domain Name, The Providence Journal-Bulletin, February 4, 1996, at 5E; Krivoshik, supra note 16, at 13. When asked why Proctor & Gamble registered “underarm.com,” a spokeswoman for the company explained, “[w]e are providing ourselves with more than one avenue to reach consumers with helpful information. We make Sure, Secret, and Old Spice. Underarms are important to us.” Ani Hadjian, What’s in a Name? On the Internet You’d Never Guess, Fortune, October 16, 1995, at 38. 22 Krivoshik, supra note 16, at 13; Higgins, supra note 3, at A10. 23 For a nice summary of these procedures, see Chansky, supra note 9, at 25. 24 Resnick, supra note 2, at C3.

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25 Id. 26 It may also prove beneficial to read The Do-It-Yourself Home Page, New Jersey Law Journal, January 22, 1996, at S2. The article contains an excerpt of an on-line discussion between several attorneys on issues relating to a law firm’s establishment of a Web site.

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