Legal strategies in resolving domain name disputes

Pages332-338
Date01 July 2003
Publication Date01 July 2003
DOIhttps://doi.org/10.1108/02635570310477389
AuthorThomas M. Apke
SubjectEconomics,Information & knowledge management,Management science & operations
Legal strategies in resolving domain name disputes
Thomas M. Apke
Department of Management, College of Business and Economics,
California State University, Fullerton, California, USA
Introduction
The Internet has become an effective
marketing tool for both small and large firms
in the global business environment (Palumbo
and Herbig, 1998). Managers are rapidly
embracing the Internet, recognizing its use
provides a distinct competitive advantage
(Prescott, 1997). It is estimated that online
buying has now reached over $12b in sales
(Hsieh and Lin, 1998) with millions of people
making use of the Internet not only for
e-commerce but also for electronic mail
communication, access to databases, viewing
photographs and videos and finding any and
all information imaginable (Granger and
Schroeder, 1994).
The Internet revolution has created a wide
range of legal issues including the
enforceability of contracts online,
intellectual property concerns, defamation,
pornography and privacy rights, with one of
the more contentious being domain name
disputes. Domain names identify host
computers for e-mail and Web site addresses
and enable companies worldwide to conduct
business over the Internet. Many companies
with valuable trademarks did not act
promptly in the 1990s to reserve the domain
name equivalent of their trademarks.
Invariably other individuals and firms
stepped in and reserved domain names that
were identical or similar to an owner's
existing trademark. In many cases these
registrants attempted to traffic in domain
names for the purpose of selling the rights to
the domain name to the trademark owner for
a substantial fee, a practice commonly
known as cybersquatting. In other instances
the domain name registrant obtained the
name for legitimate business pursuits.
Conflicts arose as to who should have
ownership of the domain name, the
registrant or the trademark owner. These
disputes have increased to the point that they
are now one of the most common civil
disputes in terms of number of lawsuits filed,
arbitrations submitted and informal
settlements (Ballon, 2001).
Consequently, it is important for
trademark owners to know and understand
what remedies are available in order to select
the strategy that best serves the owner's
interests in resolving a domain name dispute
with the registrant. Each remedy has its own
unique requirements with corresponding
advantages and disadvantages. This paper
discusses and compares the remedies
available and strategies in selecting the
approach that most suits the objectives of the
mark owner. These strategies or remedies
include using the dispute resolution offered
by the Internet Corporation for Assigned
Names and Numbers (ICANN), or litigation
based upon trademark infringement, dilution
under the Federal Trademark Dilution Act
or cybersquatting under the
Anti-Cybersquatting Consumer Protection
Act (ACPA). Each of these strategies and
remedies are discussed below.
Uniform domain name dispute
resolution policy
Introduction
ICANN, the international non-profit
organization now in charge of domain name
registration worldwide, implemented and
manages a process known as the Uniform
Domain Name Dispute Resolution Policy
(ICANN, 1999). This policy applies to all
companies around the world that are
accredited by ICANN as domain name
registrars such as Network Solutions.
ICANN requires registrants who want to
register in the .com, .org or .net domains to
The Emerald Research Register for this journal is available at
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The current issue and full text archive of this journal is available at
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[ 332 ]
Industrial Management &
Data Systems
103/5 [2003] 332-338
#MCB UP Limited
[ISSN 0263-5577]
[DOI 10.1108/02635570310477389]
Keywords
Trade marks, Disputes, Internet
Abstract
Describes how the Internet
revolution has created a wide
range of legal issues, with one of
the more contentious being
domain name disputes. Stresses
that it is important for trademark
owners to know and understand
what remedies are available in
order to select the strategy that
best serves the owner's interests
in resolving a domain name
dispute with the registrant.
Discusses and compares the
remedies available and strategies
in selecting the approach that
most suits the objectives of the
mark owner.

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