Domain name

Introduction
The Internet is an enormous repository of information, contained on individual web pages, organized into websites. To locate a specific web page requires the use of an Internet Protocol number, which is like a telephone number or street address, to locate a particular page of information. These numbers consist of four groups of digits separated by periods (e.g., “192.215.247.50”). Because it would be extremely difficult for users to remember these sequences of numbers, the Domain Name System was developed to make it easier for users to locate web-based information.

Each domain name consist of a unique string of characters (letters, numbers and certain symbols), arranged so that reading from right to left, each part of the name points to a more localized area of the Internet. For example, in the domain name “iii.org.tw,” the “.tw” is the country code, which means that the domain name is located on a computer in Taiwan, the “.org” is known as the top-level domain, reserved for educational institutions, while the “iii” specifies a second-level domain, a website owned by the Information Industry Institute.

If a user knows or can deduce the domain name associated with a website, the user can directly access the website by typing the domain name into a web browser, without having to conduct a time-consuming search. Because users often try to “guess” the domain name to avoid searching for the website, having an easy-to-remember domain name is a distinct advantage. Otherwise, the user may have to engage in a length search to locate the desired web site.

Distinction Between Trademarks and Domain Names
There are several important distinctions between domain names and trademarks which should be noted.

• A domain name can be registered only if the identical domain name is not current registered to another; a trademark may be registered to multiple claimants, as long as there is no likelihood of confusion between them

• Domain name registrars only reject identically spelled domain names; no attempt is made to determine whether two domain names which are not spelled alike may be likely to cause confusion because of how they are pronounced, have identical meanings in different languages, or otherwise would be rejected by a trademark examiner.

• A domain name has global usage and there can only be one user of a specific domain name in the world; trademark protection is national in scope, and different entities may own the same trademark in different countries.

• Registration of a term as a domain name does not necessarily give the registrant trademark rights in the term.

• Generic and descriptive marks may not be protectable as trademarks, but can be used as domain names.

Domain Name Administration
When the Internet was non-commercial, and used primarily for government and academic research, there were no domain name disputes. Each organization was given a domain name in either the .edu, .gov, .mil or .net, and any potential confusion over the use of a specific second-level domain name was easily resolved. However, in the early 1990s, there was increasing pressure to allow the Internet to be used for commercial purposes.

The U.S. National Science Foundation (“NSF”), which had been administering the Internet for many years, decided to open the Internet to commercial and private individuals. In conjunction with that decision, the NSF also decided to withdraw its oversight of the Internet and transfer its functions to other organizations.

In 1992, it entered into a contract with Network Solutions, Inc. (“NSI”), a private corporation, to administer the domain name registration system for the .com, .net, .org, .edu, and .gov domains. The contract with NSF authorizes NSI to charge $100 for an initial two-year registration and $50 annually starting in the third year. During that time period, NSI registered approximately 100,000 Internet domain names per month. Registration applications were made via e-mail and in more than 90% of registrations no human intervention took place. On average, a new registration occurred approximately once every 20 seconds.

At that time, NSI performs two functions in the domain name system. First, it screens domain name applications against its registry to prevent repeated registrations of the same name. Second, it maintains a directory linking domain names with the IP numbers of domain name servers. The domain name servers, which are outside of NSI's control, connect domain names with websites and e-mail systems.

NSI did not make an independent determination of an applicant's right to use a domain name. Nor did NSI assign domain names; users could choose any available second-level domain name. NSI assigned domain names on a first-come, first served system. Since the second-level domain name must be exclusive, and only one specific second-level domain name can be registered for each top-level domain, there have been numerous disputes over who has the right to a specific second-level domain name.

When NSI began registering domain names in 1993, many enterprising individuals and companies registered large numbers of domain names, expecting to be able to sell these domain names to various companies who would eventually decide to establish a web presence. Many of these domain names were simply generic, but potentially valuable names, such as www.computer.com; however, others contained the trademarks owned by third parties. These latter registrants (who have been referred to variously as cybersquatters and cyber pirates), have caused most of the domain name disputes that have been filed in courts in the United States and elsewhere.

NSI’s Dispute Resolution Policy
Faced with complaints from trademark owners that others were registering domain names containing their registered trademarks, NSI developed a “dispute resolution policy” to deal with these problems. The policy, which was revised repeated, was drafted primarily to keep NSI out of litigation over domain name disputes, not to resolve disputes regarding domain name usage in a fair manner protecting the due process rights of the conflicting parties.

The biggest problems with NSI’s policy were:

• NSI favored the owner of a registered trademark, even if the other party has equal or greater right to the mark.

• A party who has been using the domain name for a long period of time could have its investment in the domain name lost without a trial.

• NSI did not apply traditional trademark infringement law to the dispute.

• NSI did not actually resolve the dispute, but at most would place the domain name on “hold,” so that no one could use it, forcing the parties to go to court to get a final resolution of the issue.

While some parties used the NSI dispute resolution process successfully, most had to go to court to obtain relief.

Domain Name Litigation
During this time, there were a large number of lawsuits filed in the United States, with smaller numbers filed in Australia, Canada, England, France and Germany, over the right to use a particular domain name. They generally fell within one or more of the following categories:

• Competitors. There were a number of cases in which a commercial or political organization adopted a competitor’s trademark or trade name as its domain name – either to confuse users looking for the legitimate trademark owner or to embarrass the competitor. Courts had little problem in finding such uses to be infringing.

• Free riders. Some companies chose a domain name in an effort to play off of a famous mark. Courts also had little problem enjoining such uses.

• Cybersquatters. A number of individuals and organizations registered large numbers of trademarks'' as domain names with the expectation that they would be able to sell the domain names back to the trademark owners at a considerable profit. While some companies were willing to purchase the domain names, others went to court. Judges were not sympathetic to [[cybersquatter’s claims, and in most of the reported cases, the cybersquatter lost. Cybersquatters have been held to violate trademark laws, even if the defendant did not use the domain name, but merely reserved it.

• Legitimate users. Companies in disparate industries can legally use and register identical marks without confusion (e.g., Delta Airlines, Delta Faucets, Delta Dental). However, when those companies go online, there may be confusion, since only one company can own a particular domain name (e.g., www.delta.com). Cases in this category must be decided by applying traditional trademark doctrines.

There are several possible claims that can be made in a domain name dispute. The most common under U.S. law are: federal trademark infringement, federal unfair competition, federal trademark dilution, and the Anticybersquatting Consumer Protection Act.

• '''Federal trademark infringement. Owners of federally registered trademarks can bring an action against a domain name holder if the use of the domain name is “likely to cause confusion” regarding the source of commercial goods or services. To determine llikelihood of confusion, the court looks at eight factors:

(1) the similarity of the two marks in appearance, sound, and meaning;

(2) the strength of the owner’s mark;

(3) the similarity of the products or services on which the marks appear;

(4) the similarity of the marketing methods and distribution channels;

(5) the sophistication of the target audience;

(6) the existence of actual confusion;

(7) the intent of the infringer; and

(8) the likelihood that the parties will expand their line of goods or services into similar markets.

A number of court decisions have found a likelihood of confusion, either enjoining the defendant’s use of the domain name or even ordering the domain name be assigned to the plaintiff.

• Federal unfair competition. Owners of registered or unregistered trademarks can bring a claim under Section 43(a) of the Lanham Act if the use of the mark is likely to cause confusion as to the source of the goods or services, of if it misrepresents the nature or quality of the goods or services.

• Federal trademark dilution claim. The Federal Trademark Dilution Act provides remedies for dilution of famous marks. The owner of a famous mark can pursue a claim if there has been a blurring or tarnishment of the mark. It is not necessary to show likelihood of confusion. This claim has been extremely useful in domain name disputes.