Legal Regulation of Internet Domain Names in North America

Abstract

In the early days of the Internet domain name system, there was little to no regulation in North America (or indeed any common law countries) specifically to address disputes that rapidly arose between trademark holders and domain name registrants. The earliest disputes, in the mid to late 1990s, typically involved domain name registrants who registered domain names corresponding with others’ trademarks in the hopes of either extorting money to sell the names (to the markholder or a competitor) or of using the domain to host a criticism, commentary or gripe site.

Other uses also rapidly developed, including unauthorized fansites and political commentary sites. Without a clear set of regulatory principles to deal with these scenarios, it fell to trademark law to operate as the main regulatory matrix for resolving these online disputes. In some senses traditional trademark actions (for trademark infringement and dilution) were an obvious and well-suited regulatory avenue because the aim of trademark law is to protect valuable marks against activities likely to cause consumer confusion (infringement) or to blur or tarnish the mark (dilution). However, trademark law was not necessarily well suited to all types of domain name disputes, including situations where the domain name was not, strictly speaking, a trademark. Cases involving personal names and culturally/geographically significant terms were obvious examples.

In 1999, the U.S. Congress enacted the Anti-Cybersquatting Consumer Protection Act (the ACPA), and the Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) to deal with cases of cybersquatting—registering a domain name corresponding with another’s trademark with a bad faith intent to profit. However, like trademark law, both of these initiatives were premised on the existence of a valid trademark as the basis of a complaint. Thus, the law of domain names in North America, as at the ICANN level, is really more or less traditional trademark law with the addition of sui generis anti-cybersquatting provisions, also, for the most part, premised on the protection of trademarks. This chapter outlines these regulations and identifies particular kinds of domain name disputes which are not particularly effectively addressed under the current regulatory paradigm.

Keywords: domain name, Internet, gTLD, .sucks, trademark law, trademark infringement, trademark dilution, ACPA, UDRP

JEL Classification: K11, K19, K39, K40, K41, O34