Intellectual Property Law

Domain Name Basics

By Martha L. Arias

We all surf the Web and use available Internet features. Yet, few folks really know what a domain name entails and where to resort when problems arise.   This article provides information about the basics of domain names and an increasingly common problem called domain name cyber piracy.

Domain names are addresses that help identify a person, corporation, or government agency and, for this purpose, interact with an Internet Protocol (IP) address. Each domain name is assigned a numerical address; although users actually see alphabetical addresses. The Internet Corporation for Assigned Names and Numbers (ICANN) is the organization that manages the global domain name system (DNS).  ICANN is a non-profit organization commissioned by the United States (U.S.) Department of Commerce.  Other international organizations assist ICANN.  Some of these organizations are the Internet Society, which establish technical standards; the International Ad Hoc Committee (IAHC), which help with the administration of top-level domain names; the Internet Assigned Numbers Authority (IANA), which maintain the administrative tables for Internet services; the Network Information Center (InterNIC), responsible for the registration of domain names; Network Solutions, Inc (NSI), which process domain name applications. The Global DNS is simply an international directory of domain names and IP addresses that mostly control Internet e-mail services. 

A domain name has two elements: (1) a top-level domain (TLD) designation. This designation may be generic (gTLD) and country code (ccTLD); and (2) a second-level domain. This is a secondary identifier for the Internet address.  There are specific authorized gTLDs; they are divided in two categories: restricted and unrestricted. The restricted gTLDs require proof of specific qualifications; they are the following

.edu - for four-year degree granting colleges and universities;

.gov - for the United States federal agencies;

.int - for international organizations;

.mil - for the military of the United States.      

The unrestricted gTLDs are open to the public in general; they are the following,

.aero - for airline groups

.biz - for businesses or firms

.cat - for sites related to Catalan language and culture

.com - for commercial entities

.coop - for business cooperatives

.jobs - for employment sites

.info - for information services companies

.mobi - for mobile device sites

.museum - for museums

.name - for personal web sites

.net - for gateways and Internet administrative hosts

.org - for non-for-profit organizations.

.pro - for professionals

.tel - for internet communications

.travel - for travel related businesses

Country code TLD (ccTLD) is the code used by countries other than the U.S.  Each country may administer its ccTLD. They may use the unrestricted gTLD and add the country code after the gTLD. 

Domain name cyber piracy is an increasing problem being addressed by those engaged in the management of domain names. Cyber piracy is the bad faith use of a trademark or a public figure name when registering a domain name. Although the general rule regarding registration of domain names is first-come-first served, international and United States laws prohibit bad faith registration of domain names when individuals are seeking a profit from the trademark owner or the public figure.  Those trying to prevent others from the use of their trademark or public name in domain names must prove bad faith to success in their claim.  Usually, bad faith is proven when the registrant of the domain name request payment to return the domain name to the trademark holder or public figure. The U.S. enacted the Anticybersquatting Consumer Protection Act (ACPA) to protect trademark holder and others from bad faith registration of domain names. ACPA amended the Lanham Act (the U.S. trademark law) and expressly states that ?(a) person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that-- (1) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (2) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (iii) is a trademark, word, or name protected by reason of § 706 of Title 18, or § 220506 of Title 36.?

A trademark holder may seek transfer of its domain name in court proceedings -in rem action. The domain name registrar, domain name registry, or domain name authority cannot transfer, suspend or modify the domain name without a court order. Also, ICANN adopted the Uniform Dispute Resolution Policy (UDRP) in 1999. This is an agreement entered into by ICANN-certified registrars that requires submission of any dispute to arbitration.  The arbitration process starts by filing a complaint with an approved dispute resolution service provider.  The approved dispute resolution service providers are (1) the WIPO Arbitration and Mediation Center (Geneva); the National  (2) the National Arbitration Forum (Minneapolis); (3) the eResolution/Disputes org Consortium (Amherst, Massachusetts and Montreal, Canada); and (4) the CPR Institute for Dispute Resolution (New York). These providers may adjudicate disputes involving gTLDs.   

Full post as published by IBLS Internet Law Blog on December 23, 2009 (boomark / email).