Developments in the
Domain Name System:
For Better or for Worse?

Annette Orange
LLM - Computers and Law 1997/8
Queens University Belfast.
(Office of the General Attorney, Dublin)
Annette_Orange@ag.irlgov.ie
 

The Winner of the 1998 BILETA Lord Lloyd Prize for the best postgraduate entry in information technology in law .
 

1. Introduction: What's in a Name?

Although difficult to quantify precisely, it is generally agreed that use of the Internet has grown phenomenally in recent years. One commentator has even gone so far as to predict one billion Internet users by the year 2000[ 1 ] An inevitable by-product of this exponential growth has been the ever-increasing use of the Internet as a forum for conducting trade. Its global scale provides an excellent opportunity for businesses of all sizes to market their wares in previously inaccessible corners of the world[ 2 ]

Yet the Internet consists of a unique electronic environment which differs substantially from the terrestrial business world to which we are accustomed. Unlike a location in the real world, companies cannot establish their presence on the Net by hanging out a sign ( Radcliffe, 1996 , p1). Instead they must mark out their territory by what is known as a 'domain name'. This is simply an Internet protocol address (e.g. 123.456.123.12) expressed in user-friendly form (e.g. abc.xyz) which identifies a computer site in the same way that a telephone number identifies a phone line in the global phone system ( Yee, 1997 , p2) However, as there is no 'Yellow Pages' directory of domain names, Internet users often try to guess them by typing in the firm's full trade name (e.g. 'britishtelecom.com') or its acronym (e.g. 'bt.com'). Companies are therefore extremely keen to use the trade mark they are recognised by as a domain name. Yet the Domain Name System's modus operandi has meant that this has rarely been an easy task. This article attempts to assess the reasons why and takes a critical look at whether current proposals for reform are likely to provide any improvement.

2. The Original Domain Name System

Each domain name is comprised of two elements. In the 'bt.com' example given above the latter half, 'com' is known as the 'Top Level Domain'(TLD) whilst the first component, 'bt', is termed the 'Second Level Domain' (SLD). It is the SLD that companies wish to use their trade marks for. TLDs may be either geographic or non-geographic. The geographic variety are based on two letter country codes provided by the ISO 3166 standard and indicate the country in which the domain name is registered. Examples of such TLDs include 'uk' for the UK. 'fr' for France and 'us' for the USA and responsibility for their allocation lies with National registries. Here in the UK the entity concerned is 'Nominet' which has even created subdomains to further classify and divide the '.uk' domain name space ( Shaw, 1996 , p3). Thus 'ac.uk' denotes an academic institution, 'co.uk', 'plc.uk' or 'ltd.uk' a commercial organisation and 'gov.uk' a governmental body. By and large our national system has had a relatively smooth ride ( Dooley,1997 , p3). The only known case against Nominet is Pitman Training Ltd & PTC Oxford Ltd v Nominet UK Ltd & Pearson Professional Ltd ( 1997 ), in which the court affirmed its 'first come first served' policy. Instead it is the non-geographic TLDs that have typically been at the eye of the storm in domain name disputes ( Abel & Ellerbach, 1997 , p2).

The non-geographic variety are an American creation and are issued by Network Solutions Inc. (NSI) in association with the National Science Foundation. This operates as part of the Internet Network Information Center (InterNIC), a private organisation in Virginia. Unlike the country codes, of which there are at least 160, there are only 5 non-geographic TLDs - 'edu', 'gov', 'net', 'com', and 'org'. Yet ironically it is the latter variety which has proven most desirable. Reasons cited are that it is easier to advertise a single universal name than to try and popularise 160 or more geographical ones. Also, it is simpler to register and legally maintain a single name with InterNIC than to register over 160 names in as many different countries, each with their own registration authorities and legal systems ( Yee, 1997 , p3).

3. The Difficulties

The commercial explosion of the Internet led to a gold rush on the coveted '.com' domain intended for commercial users. The upshot is that this TLD has more or less reached saturation point but not without a significant number of casualties along the way. These have stemmed almost exclusively from the 'first come first served' basis of Internic's allocation policy and its failure, apparently due to lack of resources ( Leventhal, 1995 , p2)[ 3 ], to investigate whether a proposed domain name incorporates or is confusingly similar to an existing trade mark ( Wells, St. John, Roberts, Gregory & Matkin, 1998 , p2). Many companies have therefore attempted to register their trade mark in the '.com' TLD only to find that their proposed domain name is already taken. The difficulty is that countless identical trade marks may co-exist harmlessly if located in different geographical areas or if they relate to different categories of goods and services[ 4 ] and are not likely to be confused with one another. But as each domain name must be entirely unique, only one of these may be registered in the '.com' space. Another problem is that the capitalisation, stylised formats and designs which so often distinguish trade marks (e.g. the McDonalds golden arches logo) cannot be used as second level domains due to technical restraints. Parties are also precluded from using a name of more than 24 characters ( Brunel, 1996 , p4). Thus the number of possible permutations is even further reduced.

Accordingly, global competition for a 'com' registration has been excruciatingly stiff with the result that disputes have become a fact of life within the Domain Name System. The first type involves situations where two legitimate trade mark holders are vying for the same name as happened in the UK case of Prince PLC. v Prince Sportswear Group . Prince plc are an IT service provider located in the UK. They had been operating a web site under 'prince.com' for approximately 2 years when they received a letter from the Prince Sportswear Group claiming that use of this domain was an act of infringement, unfair competition and dilution on its federal trade mark 'Prince'. The US company threatened to take legal action unless Prince Plc. assigned the name over to them and agreed not to use the name 'prince' in any name in the future. The IT company applied for and were granted relief by the London High Court on the basis that Prince Sportswear's allegations amounted to groundless threats for the purposes of s 21 of the Trade Marks Act 1994. Although the US company had also filed suit in the Federal District Court of New Jersey, the action was subsequently withdrawn allowing Prince Plc. to continue using the 'prince.com' name undisturbed.

The case highlights the system's inability to cope with the registration of trade marks as domain names. As Sally Tate, Joint Managing Director of Prince Plc. has remarked: 'in the real world we could have co-existed with Prince Sports Group in trade mark classes 9 and 28 and Prince Plc. in class 41 for computer services. How could an IT business in the UK be confused with a tennis racket manufacturer in the US? Only in Cyberspace.'( Tate, 1997-98 , p35).

Arguably though it is the second variety of dispute that gives rise to the greatest cause for concern - domain name hijacking. InterNIC's first come first served principle of registration has enabled nimble amateurs to register the names of well known trade marks: sometimes with innocent intent - and sometimes in the hope of a quick pay-off from a sleepy company who suddenly wants to get on-line ( Shaw, 1996 , p1). In perhaps the best known example of this Josh Quittner, a writer for Wired magazine, registered the domain name 'mc.donalds.com' simply to demonstrate the ease with which a famous name could be poached ( Dooley, 1997 , p2). (The hamburger people were at that time operating under 'mcd.com'). Mr Quittner eventually agreed to relinquish the domain to McDonalds in return for a $3500 donation towards computing facilities in a local school.

More often, domain name grabbers are motivated by malicious intent. Some businesses have registered the names of their closest rival as in the US case The Princeton Review Management Corp. v Stanley H. Kaplan Educational Center Ltd ( 1994 ). Princeton Review registered the 'kaplan.com' domain name and used the web site to compare its competitor's services unfavourably with its own. This would not only have produced confusion among Internet users over the source of the information located at this address but also, real damage to Kaplan's goodwill ( Brunel, 1996 , p4). A private arbitration panel ultimately ruled that Princeton Review hand over 'kaplan.com' to its proper owner.

Closer to home, Harrods department store found that it had been beaten past the finishing post when it attempted to register 'harrods.com' as its domain name. Although the group in question was not strictly speaking a competitor, its use of the Harrods name was undoubtedly an attempt to mislead the public into thinking that their goods had been given the Harrods seal of approval. Harrods brought a successful High Court action under s 10 of the Trade Marks Act 1994, Mr Justice Lightman finding that the actions of Michael Lawrie and his associates[ 5 ] 'clearly constituted infringement of Harrods' registered trade marks and passing off' The court granted an injunction and ordered the defendants to take all available steps to hand over the domain name to Harrods ( unknown author, 1996-97 , p1).

More flagrantly, some domain name speculators have registered portfolios of famous trade marks in the '.com' TLD ( Yee, 1997 , p10). They see it as an investment because some companies will concede to hefty ransom demands in return for the domain name. For example, when Microsoft wanted 'slate.com' for their new WWW-based interactive magazine of politics and culture, they supposedly purchased it (through a third party) for $10,000 ( Shaw, 1996 , p6).

It was a similar situation that gave rise to the recent case, BT and Others v One in a Million, ( The Times, 1997 ). The Plaintiffs were companies with well known trade marks including British Telecom Plc., J. Sainsbury Plc., Virgin Entertainment Enterprises Ltd., Ladbroke Plc., Cellnet Plc. and Marks and Spencer Plc. The defendants were dealers in Internet domain names who had registered the names but were not actually using them as web sites. Contrary to what the Plaintiffs alleged, the Judge held that the mere registration of a deceptive domain name did not make out the necessary elements of the tort of passing off because although an instrument of deception had been created, it was not being used for that purpose and had not been put into the hands of someone else to do so. Nor could registration in itself amount to trade mark infringement as s 10 of the Trade Marks Act requires that the name be used in the course of a trade or business. Nevertheless, the court did find that there was a genuine threat that passing off and trade mark infringement would occur if the Defendants started using the domain names or sold them on to someone else for that purpose. A quia timet injunction was therefore granted restraining them from doing either and compelling the assignment of the disputed names to the Plaintiffs.[ 6 ]

Domain name hijacking is therefore a very serious concern. Not only can damage be done to a company's goodwill as in the Princeton Review case, it may also prejudice the reputation of business goliaths who, by allowing others to get in first, are considered to have been found asleep at the wheel of the information highway. In a bid to combat these problems and curtail the number of frivolous applications ( Dooley, 1997 , p2), the NSI in 1995 introduced a series of measures which unfortunately have proven to be rather ineffectual. The first step was to the limit registrations to one per organisation. This served only to exacerbate the difficulties for companies whose applications to register subsidiary business names were rejected. Also, the Registry did not force any of the 670 companies who already had more than one domain name to relinquish them ( Brunel, 1996 ).

The second measure imposed an annual fee on registration - $100 for the first two years and $50 per year thereafter. Yet this did little to deter hijackers because the figure is relatively low in comparison with the buy-off prices they have been able to extort.[ 7 ] In addition, criticism has been levelled at InterNIC for the substantial revenue it has generated from these fees which would seem to suggest that the Registry's motives were not entirely altruistic. During the first six months alone (September 1995 - March 1996) some $20 million was collected ( Shaw, 1996 , p6).

The most controversial measure however was the implementation of a Domain Name Dispute Policy (DND). Although this has been amended no less than three times[ 8 ], basic elements relating to registration have remained fairly consistent throughout. Applicants must complete and submit the Registration Agreement which certifies that the statements in the application are true, that to the best of their knowledge registration of the selected domain name will not interfere with or infringe the rights of third parties and that the domain name is not being registered for any unlawful purpose.[ 9 ] The DND further requires applicants to abide by a pre-established code of conduct in the event of a dispute arising.

This basically provides that NSI does not act as arbiter or provide resolution of disputes. Nor does the policy confer any rights on third party complainants.[ 10 ] The Registrant must also agree to indemnify both NSI and the National Science Foundation for any loss or damage resulting from disputes over registration of a domain name. If however NSI is presented with information that a domain name possibly violates the rights of a trade mark owner, (including evidence of registered trade mark ownership and written notice to the domain name holder describing the legal harm the former is incurring) it will carry out whichever of the following is appropriate.

If the date of the domain name holder's registration precedes that of the complainant's trade mark registration, no action will be taken. If the date of registration of the domain name is later than that of the complainant's trade mark, NSI will request proof from the domain name holder of his own registered trade mark. If this predates the complainant's no further action will be taken. However if it was acquired at a later date or if the domain name holder fails within a 30 day period to provide evidence of any trade mark registration, NSI will, upon the Registrant's request, assist him or her in registering a new domain name. The disputed name will then be put on 'Hold' pending resolution of the dispute. Alternatively, if the Registrant declines to make any such request, the name will automatically be put on 'Hold' and can be used by neither party until the dispute has been resolved.

But this policy neither mollified trade mark owners or domain name holders ( Shaw 1996 , p7). Instead of fulfilling its goal of minimising disputes and insulating the NSI from litigation, the DND may actually have spawned it ( Abel & Ellerbach, 1997 , p5). In Roadrunner Computer Systems Inc. v Network Solutions Inc . ( 1996 ), NSI was joined to the proceedings in a bid to prevent it putting the disputed domain name on 'Hold'. The plaintiff computer company had been operating under the < http://roadrunner.com/> domain since May 1994. In December 1995 Warner Bros., makers of the famous cartoon, initiated a challenge on the grounds that use of the domain name infringed their 'Road Runner' trade mark issued August 1995. However the legitimacy of NSI's suspension of the name was never decided on in court. On Warner Bros.' failure to show evidence of legal harm incurred as a result of the domain name's use,[ 11 ] NSI itself released the hold and had the action dismissed.[ 12 ]

More significantly, Roadrunner ( 1996 ) is an important example of how NSI's dispute policy does not sit easily with traditional trade mark law. The latter only confers protection against use of similar marks in sufficiently related classes of goods or services to give rise to consumer confusion. It is inconceivable to suggest that computing services might be mistaken for or associated with cartoon memorabilia. So in this respect the dispute policy awards a far greater scope of protection against use of the same domain name than anyone could ever hope to achieve for their trade marks. ( Abel & Ellerbach, 1997 , p5).

Early versions of the Domain Name Dispute Policy also raised the spectre of a new type of hijacking ( Dooley, 1997 , p2). On notification of a challenge to their domain name by a registered trade mark holder, Registrants who did not already possess one could obtain a quick fix trade mark, present it to NSI within 30 days and successfully defend their domain name usage. This is what happened in Pike et al v Network Solutions Inc. et al ( 1996 ). Mr Pike had obtained the 'pike.com' domain for use in relation to his real estate business. He was later challenged, via NSI, by an electrical contractor who possessed a US trade mark registration of 'PIKE' in stylised format. Mr Pike obtained within 48 hours a Tunisian trade mark registration which he accordingly used to trump the other party's claim. It is noteworthy that the policy was subsequently amended to preclude a domain name holder from relying on a trade mark registration issued after the initial challenge ( Abel & Ellerbach, 1997 , p6)[ 13 ] However this must have been of little comfort to Pike Electrical which found itself embroiled in further litigation as a result of the change.

The remaining bone of contention is that NSI's Dispute Policy only takes registered trade marks into account. It does not acknowledge that business owners who have used and been recognised by a particular unregistered name may actually have superior rights to that name than registered trade mark owners. The interests of such parties have long been protected in the US (currently by the Lanham Act) and in the UK by the rules relating to the tort of passing off. Yet they are not protected by the Dispute Policy. The inequity of this approach was exemplified by Data Concepts Inc. v Digital Consulting Inc. & Network Solutions Inc. (1996). Data Concepts are a data management and software development company who had been using the 'CDI' trade name since 1982. They registered the 'dci.com' domain name in 1993 only to be challenged some years later by Digital Consulting Inc. who produced a registered trade mark for the name 'DCI' in relation to its software business. The case went to court where it was concluded that Digital Consulting had the better claim to use of the 'dci.com' domain, even though Data Concepts had commenced usage of the 'DCI' trade name four years prior to its registration by the defendants. Thus Data Concepts joined a host of other legitimate businesses who are finding the rug pulled out from under them as they are confronted with the loss of a domain in which they have invested significant financial and other resources ( Abel & Ellerbach, 1997 , p6).

4. Reforming the System

Given the catalogue of problems it has engendered, there can be no doubt that the Internet Domain Name System is now overdue for reform. After all, it was developed back in 1984 when no-one could possibly have predicted the commercial boom of the Web and its consequences. Further impetus for change is also provided by the imminent expiry of NSI's co-operation agreement with the National Science Foundation. However the related issues for a sensible evolution are complex and there is far from unanimity on what to do next ( Shaw, 1996 , p2). Some commentators have suggested using extensive geographical subdomains ( Shaw, 1996 , p8) making names more akin to addresses or even telephone numbers ( Waelde, 1997 , p5). In addition Registrants could specify which of the 42 trade mark classes of goods and services his company belongs to and a global directory of these could be compiled for users and potential registrants to consult ( Dooley, 1997 , p5).

In view of the fact that national registries have experienced fewer difficulties and that it is under-use of the '.us' country code[ 14 ] which has largely contributed to overcrowding in the '.com' domain, this solution would seem to merit consideration. It would certainly pay greater respect than the current system to the inherent classification and territorial nature of trade mark law.[ 15 ] Yet every time this approach is suggested howls of protest are heard ( Waelde, 1997 , p5). Lengthy addresses or numbers would neither be easy to recognise nor remember and multinational companies would face the unenviable task of registration in numerous different countries.

5. The gTLD MoU

The solution which it is hoped will go ahead is that proffered by the IAHC (International Ad Hoc Committee, 1997) and formalised in the Generic Top Level Domain Memorandum of Understanding ('gTLD MoU', 1997 ). This agreement was drawn up after extensive consultation with prominent members of the global Internet community[ 16 ] and proposes the creation of seven additional non-geographic or 'generic' TLDs which were due to become available around the time of writing of this article. Designed to alleviate congestion in the Net's naming scheme, the new 'gTLD's are as follows:

firm for businesses or firms

• store for businesses offering goods to purchase

• web for entities emphasising activities relating to the WWW

• arts for entities emphasising cultural/entertainment activities

• rec for entities emphasising recreation/entertainment activities

• info for entities providing information services

• nom for those wishing individual or personal nomenclature

Responsibility for their administration will lie with 28 new competing Registries who were selected by means of a lottery[ 17 ] and are dispersed throughout 7 global regions.[ 18 ] These will operate under the umbrella of a Council of Registrars (CORE) whose job will be to ensure consistency of service amongst them and facilitate the establishment of a shared gTLD database to which they will all have access. Responsibility for the management of the NSI Registry would eventually be transferred to CORE when its contract with the NSF runs out. The removal of InterNIC's monopoly combined with the competitive, not for profit status of these Registries should have the welcome effect of improving the services they provide.

Although the new system adopts the same first-come first-served principle employed by its predecessor, it does comprise a series of new features which, it is hoped, will make allocation of the gTLD space more equitable. Each applicant must submit detailed information about his interest in and intended use for the domain name. These details will then be published on a special web site giving trade mark owners adequate opportunity to assess whether a challenge to the proposed SLD domain is required or not. Applicants may also choose to invoke a voluntary 60 day waiting period which will protect their interests in the event of an objection being raised after publication. Evidently a much more proactive approach is being taken towards resolving the issue of domain name collisions. Trade mark holders will therefore be required to keep a watchful eye on all gTLD applications. But surely a little vigilance is a small price to pay in comparison with the loss of a domain name in which considerable time, money and effort have been invested?

Inevitably though disputes will continue to arise, albeit at an earlier stage than before. In recognition of this the gTLD MoU has made provision for a new fast track system of on-line mediation which will be carried out by Administrative Domain Name Challenge Panels[ 19 ]. These 'ACP's are to consist of International experts in the field and will operate under the mediation rules of the World Intellectual Property Organisation. Their principal role is to administer the policy set out in section 2 (f) of the gTLD MoU that second level domain names which are identical or closely similar to Internationally known names and for which demonstrable intellectual property rights exist, should only be held by or with the authorisation of the owner of such rights. Obviously this is designed to combat the hijacking scourge that had become so prevalent under the old system. It also has the added benefit of being wide enough in scope to cover the rights of non-registered trade mark holders (which were not protected by InterNIC's Dispute Policy).

ACPs would have power to exclude a challenged domain name from the gTLD in which it was registered and in exceptional cases from all of them. Yet the Memorandum of Understanding is at pains to minimise the role played by the ACPs in dispute resolution. It stresses that their jurisdiction would be limited solely to determining whether a second level domain is held in violation of s 2 (f). Their rights will be over the domain names only and not over the parties themselves. Trade mark concerns, being territorial in nature remain firmly within the ambit of national courts. To further insulate the ACPs from the thorny issues associated with arbitration, the gTLD MoU prohibits them from placing the disputed domain names on 'Hold'. The IAHC felt that this would essentially confer on a non-judicial body the ability to grant an injunction without giving consideration to the merits of the claim ( IAHC, 1997 , section 7.2.1). In view of the litigation that arose out of such a power in Roadrunner (1996) this aspect is also to be welcomed.

The IAHC also made a number of further recommendations which it hoped would be implemented in the not too distant future. Acknowledging that lack of use and failure to subdivide the 'us'country code is to a large extent responsible for congestion in the original gTLD space, it suggests that IANA[ 20 ] undertake further delegations to alleviate this pressure ( IAHC, 1997 , section 8.1.1). It also urges the administrators of all ISO 3166 country codes to adopt the voluntary 60 day waiting period and on-line system of mediation discussed above ( IAHC, 1997 , section 8.1.3). However the most interesting aspect, at least from a trade mark owner's point of view, is the proposal to create trade mark specific domain name spaces ( IAHC, 1997 , sections 8.1.2 & 8.2.2). Internationally the TLD would be represented simply by '.tm' whilst at national level the relevant country code would be added as a suffix (e.g. '.tm.uk'). Details of such registrations would be kept in an on-line, user-friendly directory and multiple entries for the same name would be allowed to co-exist if related to different classes of goods or services or geographical areas. Thus by respecting the basic foundations of trade mark law, the potential for legitimate domain name collisions could be significantly reduced.

6. Criticism of the System

Nevertheless, the system has been subjected to widespread criticism, some justifiable, some not. Sally Tate, Joint MD, Prince Plc., has voiced a number of concerns ( Tate, 1997 , p36) which appear to be shared by most of the gTLD's opponents. The first is that companies may not be sure which domain to register in and as a safeguard may register in all of them. This could give rise to the same overcrowding problems as before. In addition, it is feared that the system will provide an open invitation to a new generation of hijackers whose scope for exploitation is about to increase sevenfold. Ms Tate's greatest objection however is that the gTLD MoU, with its first-come first-served allocation policy, reinforces a bad model. A better approach would be a global commercial solution to represent conflicting interests and hold them accountable. This would also necessitate the international harmonisation of trade mark laws together with a global database of registered marks.

7. Response to Criticism

In my view the first problem is by no means insurmountable. Registries should be able to tell from the detailed information on the application whether a name is being matched with the wrong gTLD. As each has the power to register names in any of the 7 gTLD spaces and operates on a non-profit-making basis, Registries would have no real motive (e.g. loss of business) to conceal this from applicants. Accordingly they should be encouraged to notify prospective registrants and advise them on how their application should be amended.

It is also submitted that features of the new system will make it infinitely less prone to hijacking and collisions than the old one. These include: the requirement on application to state one's interest in and intended use for a domain name, subsequent on-line publication and the voluntary sixty day waiting period. Finally, the IAHC's proposal for an international trade mark specific domain and accompanying directory highlights that it does anticipate global harmonisation of trade mark law driven by new technologies such as the Internet. As stated in its Final Report:

The only remaining concern is that as use of the Internet for commerce continues to burgeon, space even within these new gTLDs will eventually run out. It is my contention that this will occur more quickly in some domains than in others as happened with '.com'. For example, '.firm' and '.nom' are likely to prove more popular amongst businesses than '.rec' or '.arts'. I would also predict that demand for trade mark specific registrations will be immense on the grounds that such a registration provides conclusive proof of the owner's trade mark right. Although the IAHC stipulates that there would be no negative legal consequences for trade mark holders by being listed in other groups ( IAHC, 1997 , section 8.2.), the added security provided by a '.tm' registration undoubtedly makes it all the more desirable. Sensibly the gTLD MoU makes provision for such eventualities by reserving itself the right to create further gTLDs in the future based on experience gained from the first set ( IAHC, 1997 , section 3.2.2).

8. The US Government Green Paper

However the future of this system was recently thrown into jeopardy by the issue of a US Government Green Paper on Domain Name Regulation ( US Dept of Commerce, 1998 ). This latest proposal was produced independently of the gTLD MoU and unfortunately threatens to undo much of the benefit the latter would have achieved. The plan envisages the creation of 5 new Registries, each of which would have sole responsibility for a new gTLD. Not only would this herald an unwelcome return to the monopolistic style of registry practice conducted by InterNIC, it directly contradicts the Government's expressed goal of injecting competition into domain name registration. To add insult to injury, it is further suggested that Registries operate for profit and that NSI's contract be renewed preserving its monopoly on the original gTLDs. Finally, the Plan indicates that each Registry would be free to establish its own dispute resolution mechanism. This would lead to gross inconsistencies throughout the system and create an absolute nightmare for parties attempting to defend their trade mark rights[ 21 ].

The second major criticism of the Green Paper is that it fails to recognise the international nature of the Internet. It is highly dubious whether the US Government has authority to make regulations affecting the global community as a whole. Outsiders are likely to view it as an attempt to gain control of the Net, or worse still, as a deliberate slight to the many non-US entities who have also made significant contributions to its development.[ 22 ] Ironically though, one of the principal aims of the Green Paper is to end Government involvement in the Internet. Yet as Alan Hanson, Chairman of the Executive Committee of CORE, points out 'it proposes a plethora of regulations, requirements and mechanisms that make it more deeply involved than ever before'( CORE, 1998(b), p1).

Consequently, the Green Paper delays the transition towards self-governance ( CORE, 1998(a), p1) and ignores the valuable work that has already been carried out under the gTLD MoU. Its recommendations are the result of extensive consultation with both experts in the field[ 23 ] and members of the general public ( IAHC, 1997 , section 1.1). They can therefore be considered to represent a 'rough consensus' ( IAHC, 1997 , section 1.1) on the most suitable way to improve the Domain Name System. The US Government's Plan, on the other hand, is distinctly lacking from any such stamp of public approval. Accordingly it is hoped that the Administration will abandon its proposal in favour of the gTLD MoU model ( CORE, 1998(a), p2) which the Internet Community has worked so hard to achieve.

9. Conclusion

Plagued by the hijacking and overcrowding problems outlined above, there can be no doubt that NSI's 14 year old system has now reached the end of its shelf life. Regrettably though there is uncertainty about what will happen next. Until recently it was assumed that the regime developed under the gTLD MoU would go ahead. Yet its future now hangs in the balance due the US Government Plan for Domain Name Regulation issued in January of this year. My view is that the gTLD MoU is by far the better approach. Built on the experience gained from difficulties within the old system, it would, if implemented go a long way towards alleviating them. The Green Paper Plan however, with its numerous undesirable features, presents a grave danger of producing a Domain Name System that is even worse than the original. I would therefore urge the Government to leave well enough alone by allowing the gTLD MoU to continue with 'the natural evolution that is already underway' ( CORE, 1998(b), p1).

10. Addendum

Since the writing of this essay there have been a number of interesting developments in the Domain Name System which should help to avert some of the risks outlined above. The US Department of Commerce, for example, have invited public comments on the future expansion and administration of the '.us' country code. This is to be welcomed for consistent underuse of the '.us' domain space has undoubtedly exacerbated overcrowding in the generic top level domains. In addition, consultation with the public will provide a level of public endorsement that was lacking in the Green Paper proposals. Also worthy of note is the international process announced by the World Intellectual Property Organisation for resolving intellectual property issues associated with Domain Names. It therefore seems that at last a system may be developed that will respect the basic principles of trademark law and make domain name collisions rather more the exception than the norm. Finally, Canada, France Japan and the European Commission have all issued proposals for the future of the Domain Name System. It is hoped that there will be a sufficient level of co-operation between these parties to enable a global solution to be achieved. Thus no single country (particularly the USA) will be able to obtain a stranglehold on the organisation of the system. Whether or not the eventual solution proves ideal remains to be seen but set against this background the chances of success have never looked better ( gTLD-MoU, 1997 ).

Cases

BT and Others v One in a Million, The Times, 2 December 1997.

Clue Computing v Network Solutions Inc, Case No. 96-CV694, Division 5 (Boulder County District Court, Colorado, filed June 13, 1996).

Data Concepts Inc. v Digital Consulting Inc. & Network Solutions Inc, No.3-96-0429 (M.D. Tenn. filed May 8, 1996).

Lockheed Martin Corp.v Network Solutions Inc. No. CV 96-7438 DDP (Anx) (C.D. Cal. filed October 22, 1996).

Pike et al v Network Solutions Inc.et al, Case 96-CV-4256 (N.D. Cal., filed November 25, 1996).

Pitman Training Ltd & PTC Oxford Ltd v Nominet UK Ltd & Pearson Professional Ltd, (High Ct ChD 22 May 1997).

Prince PLC. v Prince Sportswear Group .[No further information].

The Princeton Review Management Corp. v Stanley H. Kaplan Educational Center Ltd, 94 Civ. 1604 (MGC) (S.D.N.Y. filed March 9, 1994).

Roadrunner Computer Systems Inc. v Network Solutions Inc, Civil Docket No. 96-413-A (E.D. Va., filed March 26, 1996).

References

Abel, S.M. and Ellerbach, C.L. (1997) 'Trademark Issues in Cyberspace' < http://www.fenwick.com/pub/trademark_issues_in_cyberspace.htm >.

Author Unknown (1996-97) 'Recent Cases' SCL Electronic Magazine Dec96/Jan97 Vol.7 Issue 5, < http://www.scl.org/> [Registration at SCL site is required].

Bainbridge, D. (1996) Intellectual Property Pitman Publishing, London, Hong Kong, Johannesburg, Melbourne, Sydney, Washington D.C.

Brunel, A. (1996) 'Trademark Protection for Internet Domain Names' < http://cla.org/RuhBook/chp3.htm >.

CORE (1998)(a) 'Internet Council of Registrars Says Draft Green Paper Provides Basic Steps in the Right Direction, but Perpetuates Current Monopoly, Delays Transition to Self Governance' < http://www.gtld-mou.org/press/core-4.html >.

CORE (1998)(b) 'CORE Submits Response to US Government Green Paper Plan for Domain Name Regulation' < http://www.gtld-mou.org/press/core-5.html >.

Dooley, S.Q. (1997) 'Profits in a Name' SCL Electronic Magazine Feb/Mar 1997 Vol.7 Iss.6, < http://www.scl.org/scl/emag/emagazine/vol7/iss6/vol7-iss6-stephen-dooley-art.htm >[Registration at the SCL site is required].

gTLD MoU (1997) 'Establishment of A Memorandum of Understanding On the Generic Top Level Domain Name Space of the Internet Domain Name System (gTLD MoU) < http://www.gtld-mou.org/gTLD-MoU.html >.

International Ad Hoc Committee (1997) 'Final Report of the International Ad Hoc Committee: Recommendations for Administration and Management of gTLDs' < http://www.iahc.org/draft-iahc-recommend-00.html >.

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Footnotes

1 . Nicholas Negroponte, Director of MIT's Media Lab as cited in: Yee, 1997 p.2.

2 . This potential has been highlighted by the US Federal Trade Commission who believe that the value of sales over the Internet will expand to tens to hundreds of billions of dollars in the next decade ('Fiscal Notes', March 1996 as cited in: Lloyd, 1997 p.466).

3 . It should be noted however that InterNIC's lack of resources has been viewed with scepticism since its introduction of registration fees. To this effect see: Shaw, 1996 p.6.

4 . There are a total of 42 such classes in the UK established by s 34 of the Trade Marks Act 1994.

5 . Who unfortunately did not appear in court to submit an argument in defence.

6 . This decision has been criticised by some commentators who believe that mere registration is not enough to justify granting such an injunction. (see Whyatt, 1997-98 p.40.) The recent US case of Lockheed Martin Corp. v Network Solutions Inc . certainly supports this view. But as Whatt points out, the BT case is already being cited as authority in pre-trial motions and will likely continue to be until a UK court rules otherwise.

7 . e.g. the $10,000 reputedly paid by Microsoft for 'slate.com'.

8 . It was introduced in July 1995 with Revision 01 coming in November 1995, Revision 02 in September 1996 and Revision 03 in February 1998.

9 . The earliest version of the DND also required the registrant to certify that he or she would use the name regularly. Had this requirement not been deleted the Defendants in BT and Others v One in a Million who had simply registered the names and not used them would most certainly have been in breach of their registration obligations. This would have given the Registry the right to revoke their registration on 30 days' notice (Article 15, Revision 03) and litigation could possibly have been avoided.

10 . This aspect was introduced by Revision 02.

11 . As required by its Dispute Policy.

12 . Although in a subsequent case, Clue Computing v Network Solutions Inc . of which the facts were broadly similar to those in Roadrunner , the plaintiffs successfully obtained an injunction preventing NSI from suspending use of the domain name until the case had been decided on its merits.

13 . See para. 9(c) of Revision 03.

14 . Assigned by the International Assigned Numbers Authority (IANA) in South California.

15 . Thus disputes such as that in Prince PLC. v Prince Sportswear Group in which the classes of goods and their geographical markets were different could in future be avoided.

16 . Including representatives from the World Intellectual Property Organisation (WIPO), the International Telecommunications Union (ITU), the Internet Society (ISOC), the Internet Architect Board (IAB), the Internet Assigned Numbers Authority (IANA) and the National Science Foundation (NSF).

17 . By setting low enough selection criteria IAHC enabled companies from developing countries as well as small venture capital backed companies to compete with global multinationals in the lottery process. (See Section 4 IAHC, 1997 .)

18 . These were established by the World Intellectual Property Organisation (WIPO) and the maximum permitted number of Registries in each is 4.

19 . Challenges initiated within 60 days of registration of the domain name would be on a 'fast track' and concluded within 30 days. Proposed decisions would also be made available for comment on the Internet prior to a final decision being taken. (See Section 7 IAHC, 1997 .)

20 . i.e.The administrator responsible for the US country code.

21 . To this effect see the discussion in: Policy Advisory Body, 1998 .

22 . To this effect see the reaction of the gTLD MoU Policy Oversight Committee, 1998 .

23 . Including representatives from the World Intellectual Property Organisation (WIPO), the International Telecommunications Union (ITU), the Internet Society (ISOC), the Internet Architect Board (IAB), the Internet Assigned Numbers Authority (IANA) and the National Science Foundation (NSF).

This is a Commentary published on 29 October 1999.

Citation: Orange A, 'Developments in the Domain Name System:For Better or for Worse?', Commentary 1999 (3) The Journal of Information, Law and Technology (JILT). <http://elj.warwick.ac.uk/jilt/99-3/orange.html>. New citation as at 1/1/04: < http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1999_3/orange/>