Dan's Domain Site

Conflicts: Pre-ICANN

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.

Links

Lawsuits challenging the old Internic policy (moot now that it's been superceded by the ICANN policy)
1. Roadrunner Computer Systems, Inc. v. Network Solutions, Inc. (roadrunner.com)
  - Patents.Com article describing the case, with related links.
  - Information Law Alert article
  - They seem to have eventually sold out to Time Warner, which then named its broadband Internet service "Roadrunner".
2. Data Concepts v. Digital Consulting (dci.com)
3. 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.
4. Clue Computing v. NSI (clue.com)
5. Dynamic Information Systems Corp. v. NSI (disc.com)
6. Regis McKenna Inc. v. Regis Corp. and NSI (regis.com)
7. Juno Online Services v. Juno Lighting, Inc., et al (juno.com)
8. Pike, et al v. Network Solutions, et al (pike.com)
9. Database Consultants, Inc. vs. NSI (realworld.com)
10. CD Solutions Inc v. Tooker, et al (cds.com)
  - Pacer Record
11. Virtual Works v. Volkswagen (vw.net)
Domain Name Policy Documents
Some sites discussing early domain disputes
- Patent Law Site with lots of discussions of intellectual property laws regarding the net.
- Patents.Com's Flawed Domain Policy Page
- Legal Issues Regarding Domain Names -- a set of links put up by a company that's involved in such a dispute itself.
- Yahoo's listing of sites related to domain name legal issues
- Open Directory: Domain Disputes
- New York Law Journal: 14 Feb 1995
- New York Law Journal: 08 Aug 1995
- New York Law Journal: 21 May 1996
- Information Law Alert article
- Whose Name Is This? A discussion of evolution in domain-name policy.
- Is the InterNIC's Dispute Policy Unconstitutional?
- Site in India about domain name conflicts
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 nicknamed domain.
- 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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