Internet Domain Registration Law

Introduction

This article is to acquaint you with some of the factors affecting which domains you can register safely; i.e., without violating any statutes or risking unpaid confiscation by others desiring to own your domain. The discussion to follow is somewhat USA-centric, so if you are not a US citizen you’ll need to research the differences that may apply to your country of residence.

Trademark Law

In the US, this is a somewhat nebulous subject, impacted by a combination of federal intellectual property law in general, trademark law specifically, applicable case law, and ICANN practices. As a general rule, it is risky to register a second level domain name identical or “confusingly similar” to a phrase already trademarked. You can check for live, trademarked phrases at uspto.gov, which provides a powerful search feature to help you.

The mere fact that a phrase is trademarked does not automatically mean you are out of luck. For example, if the trademark is for a single real dictionary word, like “dog” or “cat,” you may be able to challenge the trademark on “public domain” grounds. The same applies to commonly used phrases, like “time will tell”. Unique phrases, like “Joe’s Pro Bike Shop” will certainly lead to problems on your end.

Sometimes, even a specific trademarked phrase, or something very similar to it, may be safe as long as there is little chance of confusion with the trademarked business, and a low probability that your domain will siphon internet traffic away from the trademark owner’s web site. An example might be a phrase that is used within a completely different business sector than that of the trademark owner, and there is no duplication of the trademark owner’s unique styling of the phrase in his/her corporate logo. These decisions can be complex, and may require the advice of a competent intellectual property lawyer.

The Clinton era Lanham Act provides some guidance on the general topic of internet domain trademark law. It is not an all-encompassing law, as common law and state regulation also impact the subject. Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) disallows “false or misleading description of fact, or false or misleading representation of fact in commerce, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” As you can see, this somewhat clarifies the issue of what can and cannot be considered a safe harbor for domain registration. The mere duplication (or semi-duplication) of a trademarked name does not automatically lead to risk of confiscation. The potential harm to the trademark owner is factored into the analysis.

Another aspect of the Lanham Act is that it protects, to an extent, the right of an individual to how his or her own name is used, even if his/her name is not trademarked. For example, if you create a domain like “daveletterman.com” and use the domain to falsely imply that Dave Letterman is endorsing a product you are selling on the associated web site, you would be in violation of the Lanham Act. You run a lower risk if the associated web site is non-commercial (say, an informational site about the individual), as long as the material you present is factual. Lanham Act aside, you need to be very careful in general when the individual’s name is trademarked (either as the name by itself, or as part of a phrase like “Dave Letterman Enterprises”). These cases have been litigated in the past, typically in favor of the plaintiff.

Domain Extensions

Each domain extension (like .com, .net, etc.) falls under the jurisdiction of the laws and customs of a particular country. The major generic extensions, like .com, .net, .org, and .info may be registered by anyone anywhere.

Many other extensions have what are called “nexus requirements.” These are conditions the applicable jurisdiction and registration authorities impose in determining whether or not you are entitled to own a particular domain name (for reasons apart from trademark infringement). For example, the .us extension is limited to US citizens, US residents, and those operating businesses or organizations in the US.

Nexus requirements vary by extension. Some relate to citizenship, others relate to residency, yet others relate to whether or not you are operating a web site related to the second level domain name, etc. Some extensions involve multiple nexus requirements (e.g., residency and relevance of the second level domain name to site content). Australia (.com.au) has one of the strictest nexus requirements; you have to actually be running physical business operations in Australia that are related to the domain name.

Important country specific extensions that are safe for anyone to own, without any material nexus requirements, include .at (Austria), .be (Belgium), .ch (Switzerland), .co.nz (New Zealand), .co.uk (Great Britain), .de (Germany), .eu (European Community), .ph (Philippines), .ro (Romania), .ru (Russia), and .co.za (South Africa). By “material,” I am referring to the fact that a small number of the above extensions have the requirement that your domain be held by a registered agent with a physical presence in the applicable area (the .eu extension is an example) if you are not a local citizen. Major domain registrars sometimes provide registered agent services at no charge when you register a new domain using their system. The domain registrar simply owns the domain for you beneficially; you retain full rights to use or sell the domain as you wish, just as with any other domain.

In Closing

Domain registration law can be complex, and is an evolving topic, both in terms of formal “black letter” requirements, as well as applicable case law. There will be situations where you are obviously within a safe harbor, and other times where it is equally obvious that you are at material risk of uncompensated confiscation. In gray areas, a well trained intellectual property attorney may be required to help you make the correct call.

Glossary of Domain Name Disputes

The domain name dispute resolution system was supposed to be user-friendly, but this goal has not always been achieved. One of the main barriers to effective access has been the jargon that has grown up around the system. To successfully negotiate the system you must need to know the differences between registrants, registrars and registries; you must not confuse your UDRP with your ACPA; and you’ll need to be able to choose between NAF and WIPO should it become necessary.

Abusive registration:

This is a key concept under the Nominet Dispute Resolution Policy; there is no concept of an abusive registration under the UDRP (although see the entry on bad faith). An abusive registration is one which was registered or acquired or has subsequently been used “in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights”.

ACPA:

See the entry on the Anti-Cybersquatting Protection Act.

ADR:

ADR stands for alternative dispute resolution. In the domain name dispute context, arbitration proceedings are sometimes called ADR proceedings, especially in EURid documentation.

Alternative dispute resolution:

See the entry on ADR.

Anti-Cybersquatting Protection Act:

A US law enacted on 29 November 1999. It amended the Lanham Act – the centrepiece of US trade mark legislation – and forms section 43d. The ACPA may – in certain circumstances – be applied to your case by the US courts, even if you’re not a citizen of or based in the US.

Arbitration:

Domain name arbitration is the contractually-based system of dispute resolution used to determine disputes about the proper ownership of domain names. It is distinct from traditional arbitration: a sophisticated system of private dispute resolution proceedings commonly used to determine international contractual disputes.

Bad faith:

Under the UDRP a successful complainant must prove that the domain name was registered or is being used in bad faith. The concept of bad faith is not defined in the UDRP; however four examples of circumstances which are evidence of bad faith are given, and I have (crudely) summarised these below. First, circumstances indicating that the respondent intended to sell the domain name to the complainant are evidence of bad faith. Second, so-called “blocking” registrations are evident of bad faith, providing they are part of a pattern of such registrations. Third, evidence of bad faith may be found in registrations intended to disrupt a competitor’s business. Finally, circumstances indicating the commercial use of a domain name which creates a likelihood of confusion between the domain name and the complainant’s mark are evidence of bad faith. The list is non-exhaustive.

Cancellation:

One of the remedies permitted under the UDRP, Nominet Policy, and the .eu Regulation, but rarely employed. The usual remedy is transfer. Cancellation is also known as revocation.

ccTLD:

This stands for country code top level domain. Examples of ccTLDs include .us, .uk and .de.

Complainant:

The person making a complaint via a domain name arbitration service about a domain name registration (analogous to a plaintiff or claimant in litigation).

Complaint:

The document setting out the complainant’s case. There are detailed rules about what must go into a complaint, and the length of complaints is strictly limited under some regimes. Typically, a complaint would include references to the provisions of the relevant policy document, a description of the factual circumstances of the case, arguments as to why the case should be found in the complaint’s favour, and references to previous decisions which support the arguments.

Cybersquatting:

The practice of improperly registering or acquiring domain names in which others have rights.

Decision:

The domain name dispute equivalent of a court judgment. There is no formal system of precedent in domain name arbitration. However, the arbitration bodies are loath to allow a diversity of interpretations of their rules, and in practice panelists will not usually depart from well-reasoned earlier decisions (or at least that they know about).

Domain name holder:

Another name for a registrant.

EURid:

The body administering the .eu domain name. The EURid dispute resolution service is provided by the Prague-based Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic.

Expert:

The Nominet term for panelists – the “judges” of the domain name dispute resolution system. Most experts are practising intellectual property lawyers.

Federal Trademark Dilution Act:

US legislation providing a powerful remedy for the owners of famous trade marks. The FTDA was enacted in 1996. It was the first statutory amendment of the US Lanham Act to address the challenges presented by the internet. Its main effect was to expand the protection available to famous marks by prohibiting dilution.

FTDA:

See the entry on the Federal Trademark Dilution Act.

gTLD:

This stands for generic top level domain. Examples of gTLDs include .com, .net and .org. Compare ccTLDs.

ICANN:

The Internet Corporation for Assigned Names and Numbers (ICANN) administers the domain name system. It has promulgated no less than 10 different policies relating to dispute resolution. The most important policy is the Uniform Domain Name Dispute Resolution Policy (the UDRP). The UDRP must be read in conjunction with the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules). ICANN’s other dispute resolution policies relate, for instance, to specific kinds of domain name with particular registration requirements (e.g. .pro or .biz), the .info sunrise period, and disputes with registrars over domain name transfers.

IDNs:

See the entry on Internationalised Domain Names.

Internationalised Domain Names:

A domain name potentially containing non-ASCII characters, for example a domain name consisting of Arabic or Hebrew characters.

Legitimate Interests:

To help defeat a complaint made under the URDP, a Respondent should argue that he or she has legitimate interests in the domain name in dispute. A non-exhaustive list of ways of demonstrating a legitimate interest is set out in the UDRP. First, pre-dispute use of (or preparations for the use of) the domain name or a name corresponding to the domain name “in connection with a bona fide offering of goods or services” may constitute a legitimate interest. Second, you or your business being commonly known by the domain name may constitute a legitimate interest. Third, a legitimate non-commercial or fair use of the domain name may constitute a legitimate interest, providing that use does not misleadingly divert consumers of the complainant or tarnish the trade mark at issue.

NAF:

The National Arbitration Forum is a major forum for the resolution of domain name disputes. NAF focuses upon North American domain name disputes. Arbitration proceedings using NAF are governed by the UDRP, the Rules and NAF’s Supplemental Rules. NAF also provides non-UDRP dispute resolution services, for example for disputes about .us and .kids.us domain names.

Mediation:

Mediation is a form of alternative dispute resolution where the parties to a dispute try to agree a settlement to the dispute with the help of a professional facilitator. The Nominet Dispute Resolutions Service provides a free mediation service.

Mutual jurisdiction:

This concept is used in the UDRP and other policies to refer to the jurisdictions in which formal court proceedings should be conducted in the event that domain name arbitration proceedings do not produce a satisfactory outcome. Under the UDRP it means either the courts of the country in which the relevant registrar is based or the courts in the country which the registrant claims to be based in its WHOIS entry.

Nominet:

The Nominet dispute resolution service deals with disputes involving .uk domain names (including .net.uk, .ltd.uk, .plc.uk, .co.uk, .org.uk and .me.uk). Nominet does not use the UDRP; instead, disputes are determined under Nominet’s own Policy and Procedure.

Panel:

One or three panelists usually constitute the panel.

Panelists:

The judges of the domain name dispute resolution system. Many are practising intellectual property lawyers; many NAF panelists are retired US judges.

Party:

Legalese meaning a person who is involved in legal proceedings as a litigant. In the context of domain name arbitration proceedings, that means involvement as either a complainant or a respondent.

Passing off:

The English-law tort of passing off has been inherited many other common law jurisdictions. It is sometimes referred to (with some carelessness) as “unregistered trade mark infringement”. The registration and use of a domain name can constitute passing off.

Policy:

The UDRP and the Nominet Policy are the most important documents in UDRP and Nominet arbitrations respectively. The equivalent rules in .eu arbitrations are contained in the Regulation.

Procedure:

The Nominet Procedure contains the detailed rules governing the conduct of Nominet domain name arbitrations – for example, time limits for action.

Provider:

The company or organisation that administers a domain name dispute resolution service. Some systems of domain name dispute resolution, such as the UDRP system, have more than one provider; others, such as the .eu system, have only one provider.

Registrar:

A company or organisation that is accredited by a registry to register domain names.

Registrant:

The person that “owns” (i.e. has the contractual right to use) the domain name. The registrant of a domain name can be found using a WHOIS service.

Registration agreement:

The agreement entered into between a registrar and a registrant upon the registration or acquisition of a domain name. The registration agreement stipulates the manner of dispute resolution, and therefore underpins the whole domain name dispute resolution system.

Registration authority:

See Registry.

Registry:

The organisation administering the domain name extension in question. For example, Nominet it the .uk registry and EURid is the .eu registry. Sometimes called the registration authority.

Regulation:

In the context of .eu domains, this means Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu top level domain and the principles governing registration.

Reply:

The document in Nominet proceedings containing the complainant’s arguments in response to the respondent’s arguments in the response. It should not in general contain new arguments unrelated to points raised in the response. There is no equivalent in the UDRP or .eu procedures.

Response:

The document containing the respondent’s arguments in response to the complaint.

Respondent:

A person responding to a formal complaint about his or her domain name registration (analogous to a defendant in legal proceedings).

Reverse domain name hijacking:

The improper use of domain name arbitration proceedings to dispossess a registrant of his or her domain name.

Revocation:

See cancellation.

Rights:

In Nominet proceedings, a complainant must show that he or she has rights in respect of a name or mark which is identical or similar to the domain name at issue. The Nominet Policy provides that rights “includes, but is not limited to, rights enforceable under English law. However, a complainant will be unable to rely on rights in a name or term which is wholly descriptive of the complainant’s business”. The most important rights are registered trade marks and, in English law, the right to bring proceedings for the tort of passing off.

Rules:

The Rules for UDRP supplement the UDRP itself. The Czech Arbitration Court also has a set of rules for .eu disputes.

Supplemental Rules:

Under the UDRP, both NAF and the WIPO Mediation and Arbitration Center issue their own supplemental rules, which supplement the UDRP and the Rules for UDRP, and include for example provisions about the costs of arbitration. The Czech Arbitration Court also has a set of supplemental rules for .eu disputes.

Trade Marks Act 1994:

The centrepiece of the UK trade mark law regime, the 1994 Act has been frequently amended, usually to reflect developments in European law.

Transfer:

The most important remedy in domain name arbitration proceedings. If the panel determines that a complaint has been made out, the domain name will usually be transferred from the respondent to the complainant.

Typosquatting:

The practice of improperly registering domain names which are very similar to names in which others have rights. A form of cybersquatting.

UDRP:

The Uniform Domain Name Dispute Resolution Policy promulgated by ICANN governing most disputes about generic top level domains, and many disputes about country code top level domains. The UDRP must be read in conjunction with the Rules for Uniform Domain Name Dispute Resolution Policy.

WHOIS:

Directory service for looking up names and other details of domain name registrants.

WIPO:

The World Intellectual Property Organization (WIPO) is an agency of the United Nations. WIPO’s Arbitration and Mediation Center was the first dispute resolution service accredited by ICANN. Arbitration proceedings using WIPO are governed by the UDRP, the Rules and WIPO’s Supplemental Rules. It is – along with NAF – one of the “big two” providers of dispute resolution services under the UDRP.

This glossary is intended to help you get to grips with the jargon; if you need more information, please visit the Internet Library of Cybersquatting and Domain Name Disputes at [http://www.sequitur-ips.com/domain-name-disputes/library.html].

Internet Governance: A Disputed Domain

The world of internet is excruciatingly more complex than we can imagine. Net surfing, internet-aided messaging, and transactions appear very easy, but the rigors and complexities behind how the internet runs are hidden and unknown to most of us.

In an attempt to systematize internet governance, former US President Bill Clinton established the Internet Corporation for Assigned Names and Numbers (ICANN)in the 1990s. ICANN is a very technical body mandated with ensuring that the net function in a stable and secure manner by
managing the net’s domain name system. It is the organization responsible for designating domain names like .com, .net, and .org.

In 2000, the ICANN approved the registering of seven more domain names like .biz and .info after receiving massive request and prodding for more domain names from the net community. Even up to this day, there is still much pressure for ICANN to approve the creation of additional domain name extensions. The pressure is high since the domain name registry business presents a very lucrative opportunity to collect annual registration fees for potentially millions of new domain names. Domain name registrars demand for more domains to accommodate the increasing influx of new products and service being sold through the internet.

ICANN has been hard on this demand, fearing that the existence of new top-level domains and extensions will drastically affect the reliability of the internet. And this reluctance has put ICANN in a lot of troubles with different parties.

The most recent controversy involving ICANN was the .xxx issue. In 2004, the ICM Registry (US-based) collaborated with the Canadian-based International Foundation for Online Responsibility to propose the creation of .xxx. The proposed new top-level domain is aimed at better classifying websites and web contents for millions of internet user around the world. The proponents said that a .xxx domain extension will give a clear message to net surfers that sites with that domain extension contain adult materials of sexual nature.

Further, the move initiated by the ICM is for consenting legal-age patrons of adult entertainment to have greater online experience, for adult entertainment providers to be able to identify themselves as legal for greater customer retention, better complaints resolution, and as a proactive step for them to instill responsibility and accountability for their actions. Also, the proposal for a .xxx domain extension is seen to benefit individuals or families wanting to avoid adult content. Surfers can easily filter websites with adult contents just by merely looking at the extension names.

After about a year, the ICANN publicly announced that it had entered into commercial and technical dealings leading to the creation of .xxx domain. The US government was quick to respond to this surprising move and asked the ICANN to delay the final approval for the creation of .xxx after various sectors loudly aired their opposition to it.

Although many countries lauded the decision to put a halt in the creation of .xxx and give way for multi-lateral consultation, a clear, steering issue boiled and steamed out. The international community raised concern of American hegemony in the internet governance. The *European Union* is clear in its stance that the .xxx case is a crystal-clear proof of government intervention in the policies of ICANN. This, the EU says, is unacceptable to sovereign governments who are relying on ICANN for the control of their websites like UK’s .uk.

With the .xxx controversy still unresolved, the ICANN is now faced with yet another crucial issue. The international community has demanded that internet governance be transferred from ICANN to a neutral, political intervention-free body. This has been prompted by the fear of American
government’s strong political influence on the policies of ICANN. Also a concern is the slow action, if not complete inaction, of ICANN on the proposal to have a multi-lingual domain system that would allow citizens of different countries to register domain names in their native language.

With many governments using the internet to deliver services to their citizens, internet governance and its autonomy from a suspected American hegemony is a hotly contested and very legitimate issue. With internet intersecting with critical elements like freedom of speech, privacy, and a fair marketplace, its governance is really of global concern and undeserving of any political maneuvering. Currently, the US Commerce Department is holding a hearing on the fate of internet governance and ICANN management.

Looking For the Best Home Business Income Opportunity Available Today? You’ve Found It!

The best home business income opportunity available today… eBay coupled with the public domain!

You will know all about eBay, the world’s biggest market place and a place where ordinary people can set up a business for next to nothing and be making real cash profits within a week!

But What is the “public domain”?

Here is the Wikipedia definition:

“The public domain is a range of abstract materials commonly referred to as intellectual property which are not owned or controlled by anyone. The term indicates that these materials are therefore “public property”, and available for anyone to use for any purpose.”

And….

“A creative work is said to be in the public domain if there are no laws which restrict its use by the public at large. For instance, a work may be in the public domain if no laws establish proprietary rights over the work, or if the work or its subject matter are specifically excluded from existing laws.”

So material is in the public domain (pd) if;

· Its copyright has expired

· Its copyright wasn’t properly renewed

· It has been released into the public domain by its creator

what kind of ‘material’ are we talking about?

–books

–works of art

–illustrations

–music

–magazines

–videos

–Government publications (in the USA)

How can we tell what is in the pd?

A very important point to bear in mind here is that different countries have different rules for what constitutes pd material.

In the USA the following applies;

— Published Before 1923 IN THE PUBLIC DOMAIN

— Published 1923 – 1963 copyright not renewed IN THE PUBLIC DOMAIN

— Published by the US Government, regardless of date IN THE PUBLIC DOMAIN

— Published after 1963 NOT PUBLIC DOMAIN

In the UK (and many European countries), copyright expires on the 70th anniversary of the end of the year that the creator died. (for example; if the creator died on 27th March 1910, copyright expires on the 31st December 1980)

Material published by the UK Government is not in the pd.

It is your responsibility to check the law governing the pd in your own country.

So now you understand a little about how the pd works but why does it represent the best home business income opportunity today?

There are millions (literally) of books, artworks, musical works, videos and other publications (some created by the greatest thinkers and historical figures the world has seen) freely available for you to do whatever you want with including SELL them.

And this is where eBay comes into the equation.

Because eBay has such a huge, global audience running into hundreds of millions of people it is a relatively simple task to research popular niches (eBay provide the free tools) where people are spending money and then find pd material to repackage into products to sell to them.

It is not difficult with a little determination and work to fully stock your own eBay store with products created from pd material. The simplest and cheapest way to package these products is on CD and DVD (easy and cheap to post) so your costs are a few cents per disc plus your eBay/PayPal fees.

With one product you’d be making maybe $5 profit per sale, nothing to get too excited about but consider if you had 50 products each selling one copy per day (remember this is a 365 day a year business) you’d be making nearly six figures per year!!

Are you now beginning to see the power of the public domain when coupled with eBay and why this is the best home business income opportunity available today?