September 19, 1995
WHEREAS, the finding of the Internet Task Force reveals that the assignment of domain names as addresses on the Internet is taking place without sufficient regard for the rights of trademark owners; and
WHEREAS, it is in the interest of INTA members to be able to protect their trademark rights from potential infringement and confusion resulting from the assignment of domain names;
BE IT RESOLVED, that the International Trademark Association endorses the principle that domain names as addresses on the Internet, are capable of functioning as trademarks;
BE IT FURTHER RESOLVED, that the assignment of domain names and use of domain names without sufficient regard to the rights of trademark owners can result in the infringement of trademark and trade name rights; and
BE IT FURTHER RESOLVED, that it is the position of the International Trademark Association that the Internet Society, its affiliated organizations and the parties operating under contract with them should make available to the public complete lists of the domain names in a database format that is accessible through existing commercial or private computer search techniques.
The Internet was established about twenty-five years ago. It was initially designed to provide a telecommunications system for the U.S. government in the event of a national emergency such as a military attack. Today, the Internet is a world-wide communications system serving governments, schools and businesses. Millions of persons daily communicate across the Internet, sending email, documents, pictures, etc. Companies have established World Wide Web pages (also referred to as homepages) wherein their customers, or potential customers, can find out about products marketed by the company and may even place orders for goods or services. The World Wide Web (Web) is a system of interlinked information that lets you work with the written word, graphics, video and sound. Without a doubt, the Internet has become a new channel of commerce.
To send mail, or visit a Web page, one has to know the address where they want to go. In Internet parlance, there are two components: an actual address consisting of numbers such as 192.200.298.148 or a domain name such as "inta.org" or "harvard.edu". The domain name is simply an easier method for remembering and reaching another Internet site than typing the numeric address. It is the domain names that are causing trademark problems.
The Domain Name System (DNS) names computers via a hierarchy of names. "Top-level domain names" (TLDs), those with world-wide recognition, are mostly issued by Network Solutions, Inc. (NSI) in Virginia under provisions of a grant funded by the National Science Foundation. TLDs ending with ".com", ".edu", ".gov", ".org", and ".net" are issued by Network Solutions (the extensions represent commercial, educational, governmental, organizational and network respectively). Once issued a TLD, the TLD owner has control over, and responsibility for addresses and in some cases third or lower level domain names that are established under the top level name. For instance, INTA has established an address called "membership @inta.org". Although NSI had responsibility for the issuance of "inta.org", it has no control over the assignment of "membership" as an address. Similar situations arise on public systems such as Prodigy. Although Prodigy owns "prodigy.com", subscribers to their service can select their own addresses, allowing usages ranging from "060651 @prodigy.com" to "cadillac @prodigy.com". To complicate matters, in many countries one can register a domain name with a country code, thus allowing the registration of "inta.uk" or "inta.au". The country code domains are each organized by an administrator for that country. These administrators are performing a public service on behalf of the Internet community. Such country registrations, although not processed through NSI, can be reached throughout the Net as if they were ".com" or ".org" names.
Whether knowingly or not, third parties have been registering famous trademarks as domain names. This blocks the legitimate trademark owner from using their trademark on the Internet. Numerous articles have been written about this problem. Last fall, INTA decided to establish a task force to investigate this problem and to make recommendations to the INTA Board of Directors.
The Task Force brought together persons from a variety of perspectives. After a few months of orientation and fact gathering, the Task Force divided itself into three groups, one addressing international issues, one addressing legislative issues, and the third addressing the present domain name application process. The findings of the Task Force, which are attached, were presented to the International Committee's Steering Council in July, 1995. The Task Force has met with many persons, including Vinton Cerf, considered by many to be the father of the Internet and the past President of the Internet Society. Task Force members have participated in panel discussions at Internet Society meetings. Members also have met and maintained frequent communication with the counsel for NSI and its parent company, SAIC. The Task Force will be assisting in several INTA roundtables this fall to address Internet domain name issues.
Since the preparation of the Internet Task Force Report of July 1995, there have been further developments that have a significant impact on the issue of trademarks and domain names:
- NSI has adopted a new policy regarding domain names. According to NSI's press release of July 28, 1995, "The new policy recognizes that an Internet domain name may conflict with an existing trademark or service mark, but that the trademark or service mark holder may not have the exclusive right to use that name on the Internet." Under the new policy, if a domain name is assigned to a party that is not the trademark owner, the owner of a registered mark can request that NSI suspend use of the domain name until a court determines which party is entitled to use of the domain name. If the original domain name applicant also has a registration (e.g., one of several owners of "ACME" for different goods and services), the original applicant can continue to use the domain name. If, however, the original applicant does not have a U.S. federal registration, NSI will suspend use of the domain name pending the outcome of court proceedings. As a condition of NSI's taking such action, the parties must indemnify and hold NSI harmless against all legal costs.
- INTA's Internet Task Force has corresponded with counsel for NSI, pointing out that the new policy does not address most of the trademark issues discussed in the July 1995 Report, although the policy's recognition that the assignment of domain names does involve trademark issues is a welcome step in the right direction.
The Task Force is ready to move forward and to take a more active role in Internet policy development regarding domain names. It cannot proceed further without a more formal sanctioning of its activities and position by INTA's Board of Directors. The Task Force unanimously supports both resolutions and urges the Board to vote accordingly.
This report was prepared by the INTA Internet Task Force, consisting of Robert Frank and David Maher (Co-Chairs) and members Sally Abel, Susan Anthony Lisa Cristal, Alex Brkich, Stephen Feingold, Neal Greenfield, Peter Harter, Jeffrey Kaufman, Bruce Keller, Kathleen Klesh, Carl Middlehurst, Kimbley L. Muller, John P. Rynkiewicz and Huey Tan.