Non-US domain names and Internet Trademark Protection

By Owen Smigelski, Esq.

© 2001-2003, All rights reserved.

This Comment is provided as educational material, and should not be utilized as legal advice. Reproduction is authorized with proper citation to this original source. For a free trademark consultation, please contact the author.

1. Preface
2. Introduction
3. Overview of Trademark Law
4. Overview of the Internet
   1. Internet History
   2. TCP/IP
   3. Domain Name System (DNS)
5. Internet Trademark Law
6. The non-US domains
   1. Introduction/Background
   2. Repurposed ccTLDs not currently accepting new registrations
   3. Repurposed ccTLDs with no trademark protection or dispute resolution procedure
   4. Repurposed ccTLDs with dispute resolution procedures based on old NSI examples
   5. Repurposed ccTLDs with dispute resolution procedures identical to ICANN's UDRP
7. Jurisdictional concerns with non-US domain names
8. Conclusion

V.       The non-US domains

A.        Introduction/Background

            It has been suggested that instead of expanding the hierarchy of gTLDs, the focus should be on registration within the existing geographic TLD structure.[121]  There are currently 243 gTLDs, [122] and there is no functional difference between a ccTLD and a gTLD.[123]  The majority of courts have declined to differentiate between the different gTLDs (such as dot-com and dot-net) when analyzing trademark dilution or infringement.[124]  Instead of expanding cross-border domain names, the focus should be on domain structures that remain within territorial limits.  This is in harmony with the trademark principle of territoriality, and also allows for a clearly defined jurisdiction to pursue domain name disputes.[125]  One would be able to pursue actions in Germany for dot-de domain disputes, the Netherlands for dot-ne disputes, and so on.  These large industrial countries listed as examples in these articles are signatories to the Paris Convention for the Protection of Industrial Property (Paris Convention).[126]  As signatories, these countries recognize, protect and enforce registered trademarks.[127]  However, these advocates did not foresee the apparition of ccTLDs being marketed essentially as gTLDs.  None of the countries whose ccTLD is being marketed outside its borders are signatories to the Paris Convention.[128]  Trademarks registered on an international level through the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) are recognized in member countries.[129] Only two of the countries discussed in this Comment are signatories to the Madrid Protocol, both former Soviet Republics that have signed since 1991.[130]  The trademark protection afforded in those countries is suspect, and as with all of the countries analyzed in the scope of this Comment are either lesser developed, remote, or both, ascertaining their trademark law, if it exists at all, would be difficult.

            While any ccTLD can potentially be used or marketed as an alternative to gTLDs, there are eleven ccTLDs that are readily identifiable, easily recognizable, or could reasonably pose as a gTLD.[131]  These mostly unknown ccTLDs, of which the two letter country code nor the country names themselves are not familiar to most Internet users, are not readily associated with their respective countries.  In contrast, most Internet users know that dot-fr is associated with France or readily recognize that dot-jp refers to Japan.

            NetNames contracted with the government of Turkmenistan to sell the dot-tm domain name, which was touted as standing for “trademark.”[132]  Dot-to, of the island nation of Tonga, has been marketed as “to,” as in “www.takeme.to/owens_webpage.”  Dot-nu, of the island of Niue, has been used as “new” and “nu” (nude in French).  Dot-am, of Armenia, and dot-fm, for the Federation of Micronesia in the South Pacific, have been touted as radio-friendly alternatives to dot-com.[133] The island nation of Tuvalu will earn $50 million over ten years[134] from the sale of dot-tv domain names, and recently was admitted to the United Nations[135] and is planning to pay its United Nations dues with the money it will receive from the sale of dot-tv domain names.[136]  The ccTLD of the island of Mauritius, dot-mu, is “geared towards the rock'n'roll crowd.”[137]  The same entrepreneur marketing the dot-mu domain name also has an agreement to sell the dot-cc domain of the Cocos Islands, and plans to introduce three more ccTLDs early in 2001.[138]  Dot-cc is currently touting itself as “The Universal Internet Address.”[139]  Western Samoa's ccTLD, dot-ws, is being marketed by the company Website.ws.[140]  Domain registrars such as Register.com refer to dot-ws ccTLDs as “dot-website.”[141]  The Republic of Moldova's TLD, dot-md, claims to be the “only worldwide Internet Domain built exclusively for healthcare industry.”[142]  Finally, British Indian Ocean Territories, represented by the dot-io ccTLD, is publicizing itself as “INternet ONE”[143] [sic], which is a “special ‘directory' for Companies, Trademarks and Business names.”[144]  An Internet user who goes to the domain “www.discman.io” will be automatically sent to Sony's web site.

            The increase in marketing of ccTLDs has left trademark owners and domain name registrants with four main areas of concern: (1) an increase in international conflicts over domain names; (2) an increase in the need to police obscure ccTLDs; (3) a potential increase in international litigation; and (4) whether new registrars will be sufficiently accountable in performing the quasi-governmental duty of registering domain names, resolving conflicts over domain names, and preventing potential conflicts over domain names.[145]  This Comment will analyze the eleven ccTLDs in terms of their dispute resolution process, or lack thereof.

B.         Repurposed ccTLDs not currently accepting new registrations

            The domain for the Federal State of Micronesia, dot-fm,[146] is not currently accepting registrations from non-domiciles.  An extensive search of the “Web Site Name,” the registrar of dot-fm, provided no evidence of a registration service.  No dispute resolution procedure was posted on the web site.  Several links to web sites of businesses in Micronesia were presented on web site.[147] 

            The registrar for the country of Turkmenistan, .TM NIC, which controls registration for the dot-tm ccTLD, is currently no longer accepting registration.[148]  Due to concerns that names were being registered that were considered legally obscene in Turkmenistan, the country suspended the registration process in April of 1998.  Exactly what constitutes obscenity under Turkmenistan law remains unclear, according to Robert Hibbitt, a sales manager at NetNames, the registrar of dot-tm domain names.  Stated Hibbitt, “They raised eyebrows at pizza.tm and girls.tm.”[149]  The dispute resolution process of the dot-tm web site is not accessible, as the only information on .TM NIC's web site is the current suspension of registration and information about renewal of current existing registered dot-tm domain names.[150]

C.        Repurposed ccTLDs with no trademark protection or dispute resolution procedure

            The registrar for dot-am, located at www.amnic.net, provides a very limited warning regarding registration of trademarks, furthermore it does not provide for any dispute resolution process.  As stated in the AM TLD Policy, “[a]pplications for ‘too generic' domain names may be refused. Widely known trademarks or names may be registered by their owners only.”[151]  Regarding disputes that arise over trademarks that are registered, no legal right to a name is conferred by registering a domain name, and any disputes between parties over the use of a particular name “are to be settled between the contending parties using normal legal methods.”[152]  Furthermore, and somewhat of a deterrent to enforcing intellectual property rights, the exclusive place of jurisdiction under the agreement governing registration of domain names is the city of Yerevan, Republic of Armenia.[153]

            A small sample of famous trademarks indicates that for the most part, the holders of the trademarks have registered their dot-am domain name.[154]  However, not all trademarks have been protected as stipulated in the AM TLD Policy.  A whois[155] search indicates that coke.am is registered to Thompson Hayner of Massachusetts,[156] and cocacola.am is registered to O,Tong-Kyu of Seoul, South Korea.[157]  As of April 20, 2001, neither of these web sites were active.  While the registration of these domain names may not pose that much of a threat to the Coca-Cola Company,[158] it is interesting to note that the other sampled famous mark trademark holders found it valuable enough to register their trademarks, and leave those web addresses inactive.[159]  As will be explained later in this Comment,[160] Coca-Cola will be able to pursue the registrant of “cocacola.am” from Massachusetts in the United States.  Coca-Cola has several trademarks registered in the United States.[161]  As South Korea is a signatory to Paris Convention, Coca-Cola's trademarks can be protected under Korean law through the Paris Convention.[162]

            The registrar for the dot-mu domain, of the island nation of Mauritius, is the self-proclaimed “Domain that Rocks.”[163]  It also claims that it is the “Global MUsic [sic] Domain.”[164]  Furthermore, the site explains that:

            Most of the good names have already been taken. Now, with the introduction of .mu, you have a second chance to reserve domain names that are short, memorable and could possibly be worth as much as .com names someday soon.[165]

            A listing of recent registrations includes eTrade.mu, TupakShakur.mu, and amazon.mu.  All three direct the user to the corresponding dot-com (e.g. eTrade.com) web site.[166]

            While the dot-mu domain is self-promoting itself as the premium domain of the future,[167] it does not currently afford any apparent trademark protection.  In the site's Frequently Asked Questions page, it offers this response to the question of whether someone should register a trademark or famous name:

            No, not unless the trademark or the famous name is owned by you in the first place. Why would you want to register something that does not belong to you when there are so many great domains available? Please consult with an attorney regarding such matters. Remember we do not determine the legality of the domain name registration. We do not evaluate or investigate whether registration of the domain name or any use of the domain name may infringe upon the rights of a third party.[168]

            It is this type of hand-off approach at NSI that first drew criticism before implementing its dispute resolution policy in 1995.  While it appear that trademarks improperly registered within the dot-mu TLD would be difficult to enforce, the dot-mu site indicates that any disputes over domain names are subject to California jurisdiction and laws.[169]  However, this information is provided in the “Legal Notice and Disclaimer” page, which is accessible only through a small link located at the lower-most portion of each web page.  It is conceivable that many registrants, or trademark holders investigating a potential dot-mu domain, may not even view this page.  At the bottom of one of the pages in the registration process, and email address is provided for anyone who is a “'famous name' or ‘trademark holder' [that] … [believes his or her] intellectual property rights have been violated by a domain registrant.”[170]  Furthermore, the dot-mu registrar's DNS servers and core databases are managed by an American company.[171]  The primary servers are located in California,[172] which may make any domain name disputes enforceable under Lanham Act §43(d)(2).[173]

            The domain names in the TLD for the island of Tonga, dot-to, were first sold to the world in June 1997.  Tonic (Tonga Network Information Center) Corporation, with its servers located in the Tongan consulate in San Francisco, exists physically in the United States, but are technically on Tongan territory.[174]  The Tonic registrar does not have a dispute resolution process.[175]  The company has reserved a number of names.  If one attempts to register a name that has been reserved, there is an email address to contact to address specific questions or needs.  Except for reserved names, “all names are available on a first-come, first-served basis.”[176]  According to one article, Tonic classified the names of all of the Fortune 1000 companies as reserved.  This was done because those companies would be the most likely to complain about trademarks being improperly registered.[177]  Enforcement of trademark disputes arising under the dot-to ccTLD will be difficult, as states Eric Lyons, a shareholding consultant to Tonic, “[t]hese [domain] names are the property of the kingdom of Tonga, and the names are granted in accordance with Tongan trademark law, of which there is essentially none.”[178]  Tonic provides a Pt. San Quentin, CA post office box address for customers to pay registration fees via check on its FAQ page, which may establish enough minimum contacts to enjoin Tonic in any trademark disputes arising out of the dot-to domain.[179]  This PO Box is different than the address of the Tonga Consulate General, which is located in San Francisco.[180]

D.        Repurposed ccTLDs with dispute resolution procedures based on old NSI examples

            The registrar for the dot-cc ccTLD, eNIC, has registered approximately 400,000 domain names within the dot-cc ccTLD, of which almost 300,000 are registrants within the United States.[181]  Its CEO claims that such acceptance, both in the United States and around the world, shows that dot-cc “is quite different from the widespread perception that correlates ‘country code top level domain.'”[182]  Not surprisingly, Mr. Cartmell expressed dissatisfaction with ICANN, its current structure, and the recent selection of gTLDs.[183]  Dot-cc is touted as “The Universal Internet Address,”[184] and provides customer testimonials such as, “[e]veryone has a dot-com and everyone pays close attention when you emphasize CC.”[185] 

            eNIC provides a dispute resolution procedure that is akin to an early version of NSI's dispute resolution procedure.  It states that eNIC does not screen or review any registrations, that eNIC is not liable for any infringing domains, that any infringing registrant shall indemnify eNIC for any damages arising out of any disputes, and that eNIC will comply with any valid state or federal court order regarding any disputed domain.[186]  Unlike later version of NSI's dispute resolution procedure, eNIC explicitly states that it will not suspend a Domain, transfer registration of a Domain, nor place a Domain on hold without a court order so directing, or the Registrant's voluntary relinquishment or transfer of the Domain.[187]

            INternet ONE (IN ONE), is the top level domain registry for dot-io, the ccTLD of the British Indian Ocean Territory (BIOT), with its mailing address located on the island of Diego Garcia.[188]  The welcome page to the registry, located at www.nic.io, provides two types of registration services.  The first, is a link for residents of BIOT, who can apply for domain names under a gTLD system under the ccTLD, such as “.com.io” and “.org.io.”[189]  BIOT residents are instructed to fill out and mail a text application.[190]  The welcome page also provides a link for non-BIOT residents that touts that domain names are available “on a first come, first-served basis.”[191]  Non-BIOT residents are able to register domain names within the dot-io domain through an automated online process.[192]  Registrants of domain names through IN ONE are required to abide by their Dispute Policy.[193]

            The Dispute Resolution Policy for Domain Names registered with INternet ONE [sic] is located at www.io.io/dres.html.  To view this document, an applicant first has to completely fill out a form to register the domain, including supplying a credit card number.[194]  To finish the application process, the applicant clicks an “Apply for Domain” button, located at the bottom of the application page.  Directly above this button is printed “By Applying for an IN ONE Domain, I agree to be bound by the Terms and Conditions of INternet ONE.”[195]  The words “Terms and Conditions” provide a link to a 22-section document,[196] which further provides a link to the dispute resolution process.  This dispute resolution process mirrors NSI's dispute resolution procedure, stating that

            IN ONE shall not act as arbiter of disputes between the Applicant and a third party arising out of or in connection with the registration or use of a domain name or any other listing information.[197]

            IN ONE also state that it will not review or verify any information submitted to it, and that IN ONE shall not participate in any legal proceedings arising from any disputes regarding dot-io domain names, except for implementing court orders.  IN ONE also provides a section stating that any third party may pursue arbitration through the World Intellectual Property Organization, and also provides that any disputes arising over any dot-io domains shall be brought under the non-exclusive jurisdiction of the English courts, a right that cannot be waived by an applicant.[198]

E.        Repurposed ccTLDs with dispute resolution procedures identical to ICANN's UDRP

            The Internet community, save some minor criticism,[199] has been generally accepted ICANN's UDRP.[200]  The UDRP was written utilizing generic nouns, with “we” and “our” referring to the registrar, and “you” and “your” referring to the domain name holder.[201]  The registrars of dot-md, dot-nu, dot-tv, and dot-ws have adopted the UDRP as their dispute resolution procedure, perhaps to gain an air of credibility associated with the gTLDs, where trademarks are offered greater protection and an efficient dispute resolution process.

            The registry for the ccTLD for Moldova, dot-md, is operated by dotMD,[202] a company that provides an Atlanta, GA mailing address on their web site.  The registrar has a trademarked slogan prominently displayed throughout its web site that it is “[t]he Internet Domain for Healthcare.”[203]  The dispute resolution policy for dotMD is prominently linked in several locations on their web site.[204]  It is titled “Uniform Domain Name Dispute Resolution Policy,” and notes that it in the form approved by ICANN on October 24, 1999.  Except for an introductory paragraph, the dotMD policy is identical to ICANN's UDRP, however it does not include the introductory notes provided by ICANN before its UDRP.  In its introductory paragraph, dotMD notes that this process was adopted by ICANN, and “encourages”[205] parties to domain disputes involving dot-md domain names to utilize the process described in the process.  Also in their introductory paragraph, dotMD explicitly refers registrants to sections 6 and 7 of the policy, which dictate their limited involvement, and their right to not be named a party in any proceeding.  The final section of the UDRP, number 9, is also included.  This section starts by stating “[w]e [dotMD] reserve the right to modify this Policy at any time with the permission of ICANN,”[206] and shall post any modifications thirty calendar days prior to the effective date of any modifications.  While there is no active notice clause provided, it is interesting to note that dotMD states that they have to receive permission from ICANN to modify their dispute resolution process.  Acceptance of this section 9 by dotMD and the other registries of ccTLDs indicate a trend toward cross-jurisdictional acceptance of this policy, and perhaps show that the Internet can have an effective worldwide decision-making and policy setting body through ICANN.

            The registry for the Island of Niue's ccTLD, dot-nu refers to itself collectively as WorldNames, Inc., the .NU Registry, and .NU Domain, Ltd. (“Dot-nu Registry”).[207]  It refers to the dot-nu domain as the “un.com domain name.”[208]  Disputes over domain names registered in the dot-nu ccTLD are subject to a UDRP-like process,[209] with one major exception.  Unlike dotMD, the final section 9 of dot-nu's UDRP allows the registrar to modify its UDRP on its own, without having to receive permission from ICANN.[210]

            The registrar for the dot-tv ccTLD (the island of Tuvalu), The .tv Corporation, registered 100,000 dot-tv domain names within its first six months of existence.[211]  Dot-tv has aggressively marketed its domain name through radio commercials,[212] as well as television commercials.  The television commercials referred to items certain items as “cool” and “uncool,” finishing with a dot-tv domain name as “cool.”[213]  Dot-tv provides premium registrations, such as offering to sell “free.tv” for $100,000[214]  Dot-tv generally registers domain names on a “first-come, first-served”[215] basis, with certain names reserved as “Premium Names”[216] that are more expensive.  Dot-tv utilizes a UDRP that is identical to ICANN's model UDRP.[217]  In several introductory paragraphs, dot-tv states that it does not review names registered, advises that trademark holders should contact alleged infringers directly, will facilitate communication between parties, and recommends utilizing the arbitration procedure provided in the UDRP.[218]  Like dot-md, dot-tv states in section 9 that it will not modify its UDRP without the prior permission of ICANN.[219]

            The main page for the registrar of TLDs within the dot-ws ccTLD (Western Samoa), ask users if they “Missed out on the .com race?”[220]   Dot-ws has registered over 100,000 as of December, 2000,[221] and claims to have customers in 182 countries worldwide as of April, 2001.[222]  Register.com, which allows users to register SLDs within the dot-com, dot-org, and dot-net gTLDs, also will register domains within dot-cc, dot-tv, and dot-ws.  No explanation is provided for dot-cc and dot-tv, however dot-ws is featured as “.WS (WebSite)”[223]  Dot-ws's Policies web page contains a Trademark and Name Dispute section, which in part requires the registrant to declare that they are not violating any trademarks, that dot-ws is not responsible for verifying ownership rights of trademarks, and that dot-ws will only involvement in a dispute will be to provide registrant contact information.[224]  Dot-ws provides a dispute resolution process identical to ICANN's UDRP,[225] which contains the same section 9 that provides that dot-ws will not modify its dispute resolution process without prior permission of ICANN.[226] 

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