Domain Name Disputes

Nature of Disputes Between Domain Name Owners and Trademark Holders

The resolution of disputes over domain names has been one of the most controversial issues to emerge from the explosion of the internet as a commercial entity. The boundless nature of the internet directly conflicts with the very territorial nature of trademark law. The global aspect of the internet makes it very difficult to blindly apply trademark law because trademark laws vary so much from country to country. Given this fundamental difference, a strife has emerged between domain name holders and trademark holders. (1)

To trademark owners, the internet is just another medium, like radio, television, or billboards, and therefore, domain names should be covered by trademark protection. This contingency makes the claim that domain names are synonymous with trademarks. In contrast, domain name holders firmly support the "first-come, first-served" basis of registry. This contingency feels that their seniority should protect them from having to relinquish these names to a trademark owner. (1)

The confrontation between these two factions has resulted in numerous disputes. Classic cases of this kind are characterized by trademark owners suing for infringement, dilution, unfair competition, or related causes of action. Domain name owners argue that there is no law that determines domain names are synonymous with trademarks, and further, trademarks are inherently territorial whereas the internet is just the opposite. (1)

NSI's Dispute Resolution Policy

Given the absence of legal precedence in this arena, there is no definitive recourse for either party to deal with these issues in a standardized fashion. Thus, in order to alleviate some of this conflict, the NSI developed a Dispute Policy in 1995 which was an effort to appease both sides of this debate while simultaneously maintaining its neutral position. NSI requires that every domain name holder who has registered a domain name with Network Solutions to agree to this policy. Essentially this Dispute Policy is supposed to provide an administrative avenue for trademark owners to deal with domain name holders. At the same time, this policy frames five alternatives for domain name holders and time to consider these possibilities, while leaving NSI out of the conflict. It should be noted though, that NSI does have the authority to "suspend" a domain name if this policy fails. (1)

INTA's Reaction to Policy

This policy is not without criticism, and in fact, the International Trademark Association (INTA) feels that more protection is necessary for trademark owners. Their argument is based on the premise that trademarks are necessary to create a stable commercial environment and thus must be extended to the internet in all cases. They further this on behalf of customers who rely on domain names being equal to trademarks for efficient searching. (2)

Emergence of Two types of Cases

INTA's position makes it clear that many, in opposition to NSI, seek alternative modes of resolution, namely through the legal system. The legal debate continues, and perhaps most important in shaping this debate are the results of cases that have come forth in this arena. The types of cases that have emerged are typically categorized in two types:

  • Cases where a third party "has purposefully chosen a domain name that is confusingly similar to a trademark clearly belonging to another party" and
  • Cases where" it is not clear that the domain owner registered a particular name or mark to trade off a trademark owner's goodwill." (3)


The first type of cases have cited "cybersquatters" as the culprits of registering these deliberately misleading domain names. Some common examples of these include www.aircanda.com, www.anheimstadium.com, www.deltaairlines.com, www.australia.com, www.eddiedbauer.com, www.neimanmarcus.com, and www.ussteeel.com. The first type of case also includes instances in which a party registers for a domain name that is a well known trademark. For example, Internet Entertainment Group, Ltd. registered the site www.candyland.com for their sexually explicit web pages. The owners of the Candy Land trademark, Hasbro, filed a suit against the Internet Entertainment Group in which the court deemed that there had been dilution of the trademark. A last example of this type of case is the famous incident in which Princeton Review Management Corp. bought the domain name, www.kaplan.com, which they used to reference negative reviews of their competitor, Kaplan Educational Center, Ltd. These examples exemplify some of the problems which have arisen as a result of the current domain name situation. (2)

Same Name Conflict

The second type of cases are perhaps more difficult to approach. This type of case includes the resulting conflict between two different entities with the same or very similar names, for instance, United Airlines versus United Van Lines. Who has the right to www.united.com? This is where perhaps the crux of the difficulties have come about in this controversy because there is no clear argument that one company is more entitled than the next to a given site. (2)

Future of Dispute Resolution

ICANN is considering proposals from WIPO that entail setting up and online dispute system. This system outlines an entire process to deal with disputes starting at the registration phase. First of all, new names would only be accepted after recognition of the dispute system. ICANN would enforce this system in which the rulings would be obligatory. Additionally, this registration system would require accurate and complete contact information upon registration. Lastly, the proposal includes an online arbitration process which would ideally alleviate some of the hassle involved with dispute resolution.(3)


  1. Gabriel A. Battista, "Internet Domain Name - Trademark Protection," Congressional Testimony, 5 November 1997
  2. Anne Chasser, "Future of the Domain Name System," Congressional Testimony, 10 June 1998
  3. Lisa Cristal, "Domain Dilemmas," American Journalism Review, September 1997, p.48
  4. Reuters, "Domain Plan Gets Positive Response," ZDNN Tech News Now, 14 January 1999.