e-ditorials - Issue #3: The Name Game

The Crumbling of the Web's Domain Name System.

Someone recently asked me what the difference is between a dot net and dot com domain name. That is an excellent question.

Back when the web was new and beautiful, dot-com, dot-org and dot-net meant something. Your name reflected who you were. Dot-com was for business entities, dot-org was for non-profit organizations, and dot-net was for Internet Service Providers and other types of networks. What has happened?

Somewhere along the path to the commercialization of the web, domain name registration companies emerged and the sale of domain names became big business, with profit motives quickly obliterating the intended use of the different web extensions. Network Solutions, one of the domain name registration companies, actually sent email to domain name owners asking them to register their name for all extensions available to protect their copyright. For example, if you had the name "mybusiness.com," you were encouraged to buy "mybusiness.org," and "mybusiness.net." Not only did Network Solutions, and other domain name registration companies make money from the first registration, they were generating new business by saying it is okay to own all three domain extensions, regardless of your business type. No one did anything then, and now it's become a very messy situation.

How does this affect you - A web site owner?

The first issue, and foremost to many, you are affected financially. By encouraging "defensive" domain name purchases to protect your name, you can triple your cost when registering a domain name. For example, a company who would only have registered one domain name is now encouraged to register the 3 extensions dot-com, dot-net and dot-org. This now forces a potential user of the .net or .org version of that domain name to find a new domain name, and consequently register all three of those domain name extensions. In essence, instead of two names being registered, the registration companies profit on six domain names, along with the potential renewals in subsequent years.

The fear and fact of domain names being gobbled up gave rise to the idea to add new domain name extensions. Now, the Internet Corporation for Assigned Names and Numbers (ICANN) is working to add seven new TLDs (top-level domains) such as dot.biz and dot.info. Should your company buy all of the new extensions? Wouldn't this cause the same cycle of unavailable domain names?

This means that adding new domain extensions doesn't solve the problem of unavailable domain names unless the domain name applicants are reviewed to be appropriate for the extension, either by the Registration Company or ICANN.

The second issue affects your rights. If two companies with similar names are battling for ownership, how are web address debates being decided in the courts?

The most recent example is between The World Wildlife Fund and World Wrestling Federation Entertainment Inc. The World Wildlife Fund owns the domain name wwf.org, and the World Wrestling Federation has wwf.com. There is a contract in place between the two companies about the limited use of the initials by the World Wrestling Federation, because The World Wildlife Fund did not want to be associated with wrestling. The World Wildlife Fund won the right to the domain name wwf.com even though it is clearly an organization. On CNN, it was stated that the judge, Robin Jacob, "said it was understandable the fund did not want to be associated with the wrestling group. 'Some would say its (the federation's) glorification of violence is somewhat unsavory'."

The domain name wwf.org was registered in 1992. The domain name wwf.com was registered in 1994 and the World Wrestling Federation estimates that it will cost $50 million to change its logo and re-brand their product based upon the court's recent decision. They intend to appeal but it raises the question - When the new domain extensions are release, will the World Wildlife Fund petition to own wwf.biz, wwf.info and the rights to all other extensions beginning with the initials wwf?

We really need to examine the rights of domain name ownership. Was this judgment made because of a contract between both organizations? Was it made because the judge thinks wrestling is "unsavory?" Or was it made because a trademarked name entitles an entity to all domain name extensions? Wouldn't that negate domain name extensions altogether?

Under the Uniform Dispute Resolution Policy adopted by ICANN, trademark owners can only take away names that someone is using "in bad faith." An example of a sign of bad faith is registering a name "primarily for the purpose of selling" it to a trademark holder. In 1999, the World Intellectual Property Organization (WIPO) Center was accredited by ICANN to administer cases filed under ICANN's Uniform Domain Name Dispute Resolution Policy. In early 2000, the WIPO was receiving an average of four new claims per day from international parties. As an added benefit, the WIPO Center provides an inexpensive on-line system for dispute resolution that allows the parties to communicate via the Internet, without being required to be physically present, to resolve the issue.

Other interesting cases to note:

• Pop artist Madonna won her case in October 2000 against Dan Parisi, who registered and used Madonna.com as a pornography site. The WIPO declared that Parisi did not have any trademark right to the name and they ordered Parisi to transfer ownership of the domain name to Madonna. Madonna.net is currently not operational but it is owned by Madonna : The Virgin Mary, of Dallas, TX and Madonna.org is being used by Madonna Rehabilitation Hospital
• Gordon Sumner, A.K.A. the musician Sting, recently lost his battle to win the rights to sting.com because he had not trademarked the name.
• In early 2001, Bruce Springsteen was denied rights to brucespringsteen.com, which was being used as a fan club web site. The site owner, as stated in a CNN article, had "demonstrated that he has some rights or legitimate interests in respect of the domain name and (Springsteen) has failed to demonstrate that the domain name was registered and has been used in bad faith."

Under the Uniform Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers, trademark owners can only take away names that someone is using "in bad faith."

The following is from a document obtained on the WIPO web site:

In addition to the factors mentioned in paragraph 171(2) of the WIPO report, the following should be considered in determining whether a domain name was registered in bad faith:

1. Whether the domain name holder is making a legitimate noncommercial or fair use of the mark, without intent to misleadingly divert consumers for commercial gain or to tarnish the mark
2. Whether the domain name holder (including individuals, businesses, and other organizations) is commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; and
3. Whether, in seeking payment for transfer of the domain name, the domain name holder has limited its request for payment to its out-of-pocket costs.

You do not have too agree with any or all of the decisions rendered in the above examples regarding domain name extensions and who can use them. The point is that the rules not only need to be defined, as above, but they need to be enforced. Should a company, who has a trademark on a name, be entitled to all domain name extensions and if so, then are domain name extensions necessary? Will the new domain name extensions be checked by registration companies or by ICANN? If you have concerns about these new policies and wish to protect your company and your trademark, speak up now or forever hold your peace.

To learn more about the proposed regulations for domain names, contact ICANN and the WIPO.

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