Cyberspace and the Law.
Article by Jonathan Berman
In my last article I dealt with some of the key issues involved in the emergence of a body of law to cope with the growth of the global market place emerging out of the World Wide Web "WWW". In this article I will be dealing with one key issue - Domain names. There is a struggle for control of the www. which is clearly demonstrated by this issue. This struggle involves both Governments and some of the bodies involved with the Internet from the very beginning. Only by understanding the hidden agendas of those involved is it possible to understand why matters are evolving in shape they are.
Domain Names and Trademarks.
"A rose by any other name" - does not it appears smell quite so sweet in this context. Our Domain Name is www.weblaw.co.uk. Please feel free to visit it, I will not be offended. It is registered to the firm and as long as we pay the fees, it will remain our property. Until the moment that the commercial world discovered the Internet and the www. a Domain Name was nothing more than an address and disputes over such names were unheard of. This remained the case until a journalist on Wired Magazine, one Joshua Quittner, registered MacDonalds.com as his web address and took Ronald@Macdonalds.com as his e-mail address. He then told the Burgermeisters what he had done and waited for the inevitable explosion. After much negotiating and wonderful publicity for Mr Quittner he gave them the name in exchange for a donation of $13,000 to charity.
The argument put forward by companies who find that they have arrived too late to the party is that an entity is using a Domain Name, which coincides with the entities Trademark and up with this they will not put. Some farsighted individuals anticipated commercial interest in the WWW and they went off and registered lists of corporate names and Trademarks in the hope of selling them in the future. This became know as Cybersqatting or Netnapping. There have been a number of court cases in the US over this issue and one in the UK, where Harrods successfully got an order for the transfer of Harrods.com.
A Trademark is a sign, which serves to distinguish the goods or services of one undertaking from those of other undertakings. The sign may particularly consist of one or more distinctive words, letters, numbers, drawings or pictures, emblems, colours or combinations of colours, or may be three-dimensional, such as the form of containers or packages for the product (provided they are not solely dictated by their function). The sign may also consist of combinations of any of the above.
Trademarks have traditionally been used and registered in respect of geographically defined areas of use. It is common for the same Trademark to be owned by two different companies in different countries or for the mark to be licensed for use. As soon as one of the entities use the mark on the WWW there is a potential infringement. This is a problem that is yet to be solved in respect of the WWW.
There is still an argument raging between lawyers as to whether the use of a Domain Name is using the Trademark in the course of trade, leading to an infringement or is it just an address and one needs to look at the contents of the web site to see whether it is used on the site giving rise to an infringement action or possibly an action for passing off. (misleading the public as to the origin of the goods or services.) The number of disputes reaching the US courts and general dissatisfaction around the world soon made it clear that something needed to be done.
The structure and control of Domain Names is particularly interesting in the light of recent developments in this area intended to do something about the Domain Name system. Historically the Internet and its offspring the WWW is an "All American Boy". The early division was: .Com, .Edu, .Int, .Net and .Org and .Gov. The .Com domain which has provided the most problems was intended for use by US Commercial entities and those outside the US who were operating globally. Commercial entities outside of this group were provided with country codes, thus .co.uk for British companies and .co.Ie for Irish ones.
The National Science Foundation controlled the .Com domain and licensed Network Solutions Inc "NSI" to actually do the work, which they did under the name "Internic". Internic was soon faced with aggrieved parties complaining about the registration of names involving Trademarks and Internic would suspend a name pending the parties going off to court to settle the issue, as a number did. Internic would do so faced with a registerd Trademark being produced by the offended party. Recently a UK company called Prince who operate in the computer industry lost their use of Prince.com (which they had for two years) to an American sports company called Prince who had a registered Trademark which the UK Prince did not. Nominet who perform the same function with regard to .co.uk names had a different policy as did other regional bodies. The .Com name soon acquired the most cache and was often registered by companies who did not fit the profile intended.
In an effort to deal with what was perceived to be a very unsatisfactory state of affairs the Internet community went into labour and produced IAHC, the Internet International Ad Hoc Committee (which should get an award for the most boring title ever invented). IAHC went into a dark room put cold towels over their heads and came up with their final report containing their recommendations for administration and management of top lever domain names. This document in the form of a Memorandum of Understanding was signed on 1st May at a conference hosted by the International Telecommunications Union "ITU"
Whilst nobody is at issue with the principles underlying the formation of IAHC and their objectives, their has been a lot of criticism of the report and its recommendations. IAHC has come up with seven new generic Top Level Domains: .firm, .store, .web, .arts, .rec, . info, and .nom. These are intended to deal with the needs of business, leisure, the web and individuals. IAHC has been criticised for the American approach taken with regard to the choice of names which is obvious from reading them. IAHC is less international than the name implies. The major issue is that .com is outside of the intended reforms and as it remains the most sought after Domain, US businesses will retain an advantage in the name game. NSF have withdrawn from their control of NSI, who assert that they are the owners of the rights to .com and want to continue to act as the registrars of this Domain. This matter may yet get to court. The Trademark issue has been addressed by the creation of .tm Domains which may have country codes eg. .uk.tm. It is debatable whether this solution will indeed solve the use of Trademark on the Internet problem. The argument over Domain creation has been put by someone as a clash between "Internet Socialism" and "Internet Capitalism" with IAHC in the guise of the socialists, stifling free enterprise and preventing the free market in the creation of Domains.
Some concern has been expressed about the role of the ITU in hosting the signing of the MoU as being a play for the control over the standards, which are essential in the future growth of the Internet. The Internet is not really controlled by anyone but arises out of the Internet community itself under the benign auspices of the Internet Society.
It is clear that the signing of the MoU is only the beginning of the saga and the implementation of the IAHC report is going to raise a number of complex issues affecting the growth of the global market place.
© This article is copyright Sprecher Grier Halberstam LLP.2008 and should not be construed as legal advice or opinion in any specific facts or circumstances. The contents are intended for general information purposes only. You are urged to contact a suitably qualified lawyer for specific advice.