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Stanford Report, September 30, 1998

Debate on domain names: 9/30/98

Internet domain name issues spark spirited debate

BY ELAINE RAY

What's a company with "United" in its name to do when it comes to the Internet? Should United Air Lines, United Van Lines, United Parcel Service or United Fruit get first dibs in a search engine lineup? Should a "Full Monty" type dance group be able to take a domain name such as "Unitedmovers.com"? When is cybersquatting, the practice of adopting another's well-established trademark as a domain name, infringement of that trademark?


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These were the kinds of prickly questions raised during the first public hearings of the World Intellectual Property Organization (WIPO), hosted by the Law School on Sept. 23. At the hearing in the Medical School's Fairchild Auditorium, corporate counsels, Internet experts and observers voiced their concerns about the domain name system to a panel of a dozen WIPO experts from the United States, Canada, Singapore, South Africa, Mexico, and other nations and regions. Although attendance at the hearing fell far below expectations, the discussion was nonetheless lively.

John Barton, the George E. Osborne Professor of Law, who welcomed the 25 participants acknowledged that the event was sparsely attended, but was pleased with the insights offered by the presenters and others who were there.

"Instead of having 200 wrong people, we ended up with 25 right people, reflecting the real interest groups," Barton said. "I wouldn't be surprised if [the WIPO experts] came back here after they have a draft. This is clearly where a good chunk of the expertise exists."

For the past two years, WIPO has engaged in its own discussions about the organization and management of the domain name system. It recently opened up that process to take into account the views of those affected by the burgeoning system. Over the next several months, WIPO will conduct a series of hearings around the world. The recommendations made during those hearings will be submitted to a non-profit corporation being formed to administer the domain name system.

Among the participants who contributed comments were Shelley Hebert, director of business development at Stanford. In her remarks, Hebert noted that protecting the Stanford name has been a continual challenge. "In recent months, these responsibilities have increasingly included pursuing individuals and entities that have no relationship to the university but have registered Internet domain names that include the wordmark 'Stanford,' " Hebert said, adding that in the last month alone, alleged cybersquatters have registered domain names that include "stanfordalum.net"; "stanford-law.com," net or org "stanfordfootball.com"; "stanfordmba.com"; "stanfordmail.com" net or org, and many others. None have any affiliation with the university.

"When contacted by the university," Hebert said, "such registrants often indicate that they were 'surprised' at how easily they were able to do this. Part of their surprise seems to be based on the erroneous notion that the university should have been required to register every possible word in the English language that could be attached to 'Stanford.' "

Unlike trademarks, which are administered by a national or regional governmental authority, domain names are registered by a non-governmental authority on a first-come, first served basis, without regard to territorial boundaries or already established trademarks. Those entities wishing to protect their good names must go to great lengths to monitor domain name registration.

Stanford, Hebert said, has retained a domain name watch service to notify the university of such registrations. As the trademark owner, the university must then attempt to track down the registrants and file individual challenges with InterNIC, the network information center operated by Network Solutions Inc., the sole domestic registrar of domain names in the US. "The proliferation of these registrations means that staff time and legal costs required to pursue these infringements are growing exponentially, while the array of activities engaged in by infringers increases almost daily," Hebert said.

She recommended that a waiting period be established in which domain name applications are posted publicly and trademark owners are given an opportunity to file challenges before those names are adopted. Hebert also recommended that challenges to domain names recognize those that use a distinctive trademark such as "Stanford" but also tack on additional letters such as "stanfordteach.com."

Carol Smith, associate general counsel for Infoseek, said that her company insists that those who register on her search engine are required to follow strict guidelines about infringing on the trademarks of others. "If you want to be listed you have to abide by the rules of our service," Smith said, adding that when her company finds such violations it blocks the domain name and informs the registrant that it is in violation.

Others argued that that was not so simple, and expressed surprise that Infoseek had not been sued for violation of free speech. "Ms. Smith's position is extraordinarily responsible and extremely dangerous," one participant said. "You are an anomaly in this business. I applaud you, but the different corporations in this industry have different goals. One common one is survival."

Nils Montain, vice president, senior intellectual property counsel for Time-Warner, recommended that cybersquatters be prevented from using internationally famous trademarks. "Without an administrative process to resolve clear trademark violations, cybersquatters will be empowered to extort payments from trademark owners for their own established marks," Montain said. Time-Warner also recommended that a trademark holder be able to challenge an objection to a domain name within 30 days after a domain name application and that a dispute resolution policy allow for a provisional suspension of the domain name registration. For its part, the trademark holder would have to demonstrate a strong probability of success of the merits of its case, that irreparable injury could result if the suspension is not issued and that the balance of harm falls on the challenger.

WIPO hearing on the domain name system was held in Brussels on Sept. 29 and third is scheduled for Oct. 1 at Georgetown University in Washington, D.C. For more information about the domain name system, visit WIPO's website at http://wipo2.wipo.int. SR