The Name Is Not Always the Same
| Jurisdiction | United States,Federal |
| Citation | Vol. 20 No. 03 |
| Publication year | 1997 |
In Medieval times, British craftsmen who were members of guilds placed a mark on their goods to indicate the source and quality. Thus was born the first trademark.(fn1) The principles of trademark law, first established when goods moved slowly by oxcart and sailing ship, persist today as marks fly through cyberspace(fn2) in nanoseconds. Presently, an average of 1,700 domain names(fn3) are registered every day with InterNIC, the principal North American domain registry.(fn4)
Beginning in 1994 the Internet entered widespread commercial use.(fn5) The system of addressing(fn6) on the Internet, sufficient when mostly just educational institutions were on-line, became wholly inadequate as tens of thousands of commercial enterprises sought to conduct business on the Internet.
This Article explores the present Internet addressing system, the history of trademark disputes on the Internet, and proposals for resolving these disputes. Part I provides a brief history of the Internet, discusses its addressing system, and explains the use of domain names as identifiers for companies on the Internet. Part II introduces the current system for registering Internet domain names and the problems associated with its structure. Part III gives a brief background of trademark law and tracks the evolution of disputes that have arisen as a result of the intersection of the Internet and trademark law. Finally, Part IV offers alternative proposals to remedy the increasing dissatisfaction with the current address registration system.
I. The Present Internet Addressing Scheme
"The roots of the Internet lie in a collection of computer networks that were developed in the 1970s. They started with a network called Arpanet that was sponsored by the United States Department of Defense. . . . [T]oday its descendants form the global backbone of what we call the Internet."(fn7)
The network, a product of the Cold War, was designed to provide a method of communication among computers and computer networks owned by the military, defense contractors, and university laboratories conducting defense-related research.(fn8) It evolved into a network that allowed researchers throughout the country to have direct access to extremely powerful supercomputers maintained by the largest research institutions.(fn9) As the network evolved far beyond its research origins to include universities, corporations, and people around the world, the ARPANET became known as DARPA Internet, and finally just the Internet.(fn10)
Through the 1970s and 1980s, the Internet remained almost the exclusive province of academics and researchers. In 1981, there were only 300 host computers linked to the Internet.(fn11) By 1989, the number had grown to 90,000.(fn12) Soon after, the rest of the world began to discover the Internet. By mid-1996, there were 13,000,000 host computers connected to the Internet. The number is projected to reach 100,000,000 by the end of the century.(fn13) Academics and researchers, who at first resented the commercial intrusion into the Internet, eventually gave up.(fn14)
By 1995, the last vestiges of government funding for the Internet disappeared. The National Science Foundation (NSF), which had provided funding for the Internet "backbone," the high capacity trunk lines that link computers together, withdrew in 1995.(fn15) Today the backbone is operated by private common carriers such as MCI and Sprint.
Here is how it works.
Internet addresses are not unlike those assigned by the U.S. Post Office. Each is unique. For example, co-author Neal J. Friedman's e-mail address on the Internet is: .(fn16) Pepper and Corazzini's address on the World Wide Web is
The technical limitations of the Internet and existing domain name conventions are part of the problem. Companies could not use capitalization or fanciful designs to distinguish themselves.(fn24) The current maximum length of twenty-four letters for domain names further restricts the number of possible addresses, as companies with longer names abbreviate or use acronyms that may conflict with the mark of another organization.(fn25) When Computer Economics, Inc., a California newsletter publisher, established the Internet Business Marketing Association, it sought to obtain the shorter ibma.com domain until International Business Machines, which owns the ibm.com domain, objected.(fn26)
One observer has appropriately described domain names as "kind of like postal addresses, vanity license plates and billboards, all rolled up into one digital enchilada."(fn27) The ".com" top-level domain is the big enchilada. With such growth and demand for commercial domains, disputes inevitably arose. The next section describes the numerous attempts to develop a policy to resolve these burgeoning disputes.
II. The Present Regime
The Internet "has no president, no chief executive officer, no Pope."(fn28) Indeed, it has often been said of the Internet that its best and worst quality is that it is an anarchy. There is, however, some governance. As early as 1978, the Internet Assigned Number Authority (IANA) was created to assign unique addresses to each participating network on the fledgling Internet utilizing the same TCP/IP version 4.0 protocol in use today.(fn29)
In January 1993, the National Science Foundation created the Network Information Center (InterNIC).(fn30) It contracted with three private firms to perform specific functions: ATandT to provide directory services, General Atomics to provide information services, and Network Solutions, Inc. (NSI)(fn31) to provide registration of domain names following policies set by IANA.(fn32) The Internet Society (ISOC), a nonprofit corporation originally formed as a group of large telecommunications and computing companies, also provides a measure of governance to the Internet as well as sets technical standards.(fn33) Among all of these organizations, only NSI has generated any controversy as it struggled, without much success, to navigate the uncharted waters of commercial domain names.
As early as 1994, InterNIC publicly admitted problems.(fn34) Scott Williamson, an InterNIC manager, conceded the domain registry was ill-equipped to deal with trademark issues:
Initially, InterNIC failed to adopt a legal position beyond informing registrants that "[Registering a domain does not confer any legal rights to that name, and any disputes between parties over the rights to use a particular name are to be settled between contending parties using normal legal methods."(fn37)
As skirmishes over domain names became more common, the International Trademark Association (INTA) formed a task force in January 1995 to examine the problems of "protecting corporate identities on the Internet."(fn38) In September 1995, the INTA Board of Directors approved a resolution stating its view that domain names can function as trademarks and that domain name use can result in infringement of trademark rights.(fn39) For its part, however, InterNIC refused to follow INTA's warning that it must "come to grips with legal issues."(fn40)
In July 1995, InterNIC announced the first of several policies on domain name registrations.(fn41) The policy was changed in November 1995(fn42) and again in August 1996.(fn43) The November 1995 policy closed a loophole that allowed a domain name registrant to obtain a trademark in any country in the world, including nations that do not subscribe to international treaties, and thereby permitted virtual overnight registrations without regard to the rights of foreign entities with valid...
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