After a few actual and threatened lawsuits over alleged trademark
infringement by domain names, in which (former monopoly
domain registrar) Network Solutions got threatened
with being dragged into the cases, the domain registration policy was modified from a
strictly first-come-first-served system to one where a domain
registration could be put on hold if another company showed it owned
the rights to a trademark on the same name.
Some thought this policy was discriminatory against
the "little guys" who might not have an official trademark to a name, but should still
have the legal right to use it in contexts that don't infringe on the trademark holder.
In fact, the policy did seem to be weighted heavily against the current
users of a domain name that's come under challenge, and in favor of a
corporate challenger with any sort of trademark claim (however tenuous),
since the current domain holder was compelled to show a trademark registration
of its own to the name, or else the domain would be put on hold so nobody could use it.
In a later (9 Aug 1996) revision of the policy, things were made not quite so weighted against
domain name holders, as a challenged domain holder no longer needed to sign an
indemnity agreement or post bond, as they were formerly required (a requirement
never imposed on the party challenging the domain). The new policy, however, still
didn't recognize any defense of continued domain name use other than a trademark
registration; common law usage rights were not good enough. They did pledge not to
suspend a domain when it was the subject of ongoing litigation in court, unless the
court so ordered.
The controversial Network Solutions domain dispute policy was replaced
on January 1, 2000 with a controversial ICANN domain dispute policy,
which I have a lot more to say about in my other pages.
- Lawsuits challenging the old Internic policy
(moot now that it's been superceded by the ICANN policy)
- Roadrunner Computer Systems, Inc. v.
Network Solutions, Inc. (roadrunner.com)
- Data Concepts v. Digital Consulting (dci.com)
- Giacalone v. NSI (ty.com)
- This case seems to have been resolved somehow, though I don't know
the details; at any rate, ty.com now belongs to the "Beanie Babies"
company that challenged Mr' Giacalone's domain, but I don't
know whether this transfer was through a voluntary settlement or
done by force.
- Clue Computing v. NSI (clue.com)
- Dynamic Information Systems Corp. v. NSI (disc.com)
- Regis McKenna Inc. v. Regis Corp. and NSI (regis.com)
- Juno Online Services v. Juno Lighting, Inc., et al (juno.com)
- Pike, et al v. Network Solutions, et al (pike.com)
- Database Consultants, Inc. vs. NSI (realworld.com)
- CD Solutions Inc v. Tooker, et al (cds.com)
- Virtual Works v. Volkswagen (vw.net)
- Domain Name Policy Documents
- Some sites discussing early domain disputes
- Various early domain conflicts:
- nina.com, the site of an adult-film actress,
is being threatened by a footwear company with a trademark to the name "Nina". (There
are no foot-fetishes on her site, as far as I know.)
- People Eating Tasty Animals used to be at peta.org
until the real PETA organization (People for the Ethical Treatment of Animals) forced the
domain to be suspended by InterNIC under the
anti-trademark-infringement policy. Later on, quite ironically, PETA registered its own
"infringing" domain -- www.ringlingbrothers.com --
with criticisms of that circus's animal policies, and was sued by Ringling
Bros. & Barnum & Bailey over it. Read
more details. When they objected to the bogus peta.org, they attacked the site's
creator for stooping so low as to "steal" PETA's name... obviously, they feel differently
when they appropriate another name for the purpose of fulfilling their own
agenda. (Incidentally, the creator of the "Tasty Animals" site seems to have lost interest
in it; it hasn't been updated in a long time.)
- Pokey.Org is a site owned by a 12-year-old that
was challenged by the corporation owning the trademark rights to Gumby and Pokey (though the site in question
has nothing whatsoever to do with the Pokey character; it's named after a nickname of the
12-year-old who runs it). The company seemed to be acting in a bullying manner, showing
less flexibility than its trademarked characters. However, there's a happy ending;
the creator of Gumby intervened and called off the lawyers, letting the kid keep his
- Porsche v. NSI -- The first
suit by a trademark owner against NSI since its 1995 policy went into effect supposedly to
stop such suits. In this case, Porsche (the car-maker) is unsatisfied with InterNic's action
of simply suspending the porsche.com domain; it wants to use that domain itself, and
so it's suing to demand it be turned over to them.
- Esq.Wire was sued by
the publishers of Esquire magazine for trademark infringement,
and they've also filed a challenge to that domain with InterNIC.
- The 'Lectric Law Library
had a dispute with an organization called InterLaw Limited over their
former inter-law.com domain, and ultimately reached a settlement.
- Spam.Net, a humorous site with
anecdotes about technical support problems, had its domain name put on
on hold due to alleged infringement with Hormel's food product trademark.
Eventually, Hormel ended up owning the domain, which is bizarre given that
InterNIC's own policy says that domains on hold aren't available to anyone
until the underlying dispute is either settled or resolved in court. The
original registrant has no idea how the transfer to Hormel took place.
(My guess is that perhaps they didn't pay the renewal fee, and InterNIC deleted
it, allowing others to register it; I think they still insist on getting their
annual fee from all domain owners, even those whose domains are on hold.)
Anyway, the site is up now under the address spamm.net,
and it's being regularly updated once again after a long hiatus.
- Wired article
by the person who registered mcdonalds.com.
- DomainsAtRisk.Com documents the site
author's fight with the NFL to retain some domains containing football team names.
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This page was first created 14 Mar 2001, and was last modified 04 Jun 2006.
Copyright © 2001-2011 by Daniel R. Tobias. All rights reserved.