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 “domain name,” 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 DM-2 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, Network Solutions, 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 - 2 - DM-3 “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 - 3 - DM-4 back up this claim, must Frenchy Frys relinquish the domain name? These are open questions for the courts to resolve.20 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.