So Shall They Put My Name

by Andy Oram
October 29, 1999

What would Amazon.com be without its domain name? In the emerging world of digital communications, your domain name determines your very existence.

But registering a domain name and making it a household word does not end one’s troubles. Amazon.com is angry to find that other companies are capitalizing on its marketing success by offering similar services through the domain names Amazom.com (note the M) and Amazon.gr. Amusingly enough, when I last visited the knock-off site Amazom.com it featured an ad from Network Solutions encouraging people to register their names “before someone else does.” But intellectual property lawyers, who don’t respond to the same types of humor as the rest of us, have filed suit on behalf of the original Amazon.com against the other sites.

Correction on Amazom.com: I heard from a reader that Amazom.com is not a all a "knock-off site" for Amazon.com. It was a legitimate site for a different business and was actually an affiliate of Amazon.com. However, Amazon.com still worried about confusion and sued the owner, so she gave the domain name to Amazon.com.

But one must not base policy merely on intellectual property interests, who operate from the premise that every dispute represents a threat to the good name of the company holding a trademark. The very term “cyber-squatting” embodies unfair negative connotations. (One should use the more neutral term “domain name speculation” or “abusive registration”.;) In many parts of the world poor people become squatters as a protest against unfair land distribution. And on the Internet, many respectable commentators reject the onus placed on domain name speculation. They see the registration of beaniebaby.com (the target of another lawsuit) as no worse than hoarding Beanie Babies.

Here are a few common categories of domain name disputes:

All these examples were taken from the invaluable list rigorously maintained by Ellen Rony, Internet activist and co-author of The Domain Name Handbook Each case is unique, of course, and features special circumstances. And that’s why Rony, along with many others, opposes the Uniform Domain Name Dispute Resolution Policy (UDRP) that ICANN is putting in place. The UDRP will let any trademark holder challenge any domain-name holder’s right to a name, and an Administrative Panel of unspecified make-up will act as judge, jury, and executioner. Congress is also rushing to update trademark law to deal with domain names. By the time this article is published, a Trademark Cyberpiracy Prevention Act will probably be signed into law despite strong criticism from public interest representatives. The current language is vague enough to make the possession of domain names dangerous for legitimate, noncommercial people and organizations. Penalties for people found to be in violation of the law are also so high that they encourage trademark holders to bring suits.

How has the legal system handled domain-name disputes up to now? I find a trend in U.S. courts toward ruling on the trademark owner’s side in cases of domain name speculation, deliberate confusion, criticism or parody, and dilution. Only in the case of coincidental resemblance has the domain-name holder been protected against the trademark holder.

But why shouldn’t critics be able to use a name? The courts ruled that jewsforjesus.org and ringlingbrothers.com could be shut down because they were “deceptive.” But unlike Amazom.com, anybody visiting jewsforjesus.org or ringlingbrothers.com could see right away they were not endorsed by those organizations. Go to Amazon.com for a couple minutes and do a search for books on “International Business Machines,” “United Fruit,” or “International Monetary Fund.” In all those cases (and many others) you can find books that criticize those organizations but have titles containing their names.

Trademark law has never made the mere use of a name infringement. One must always carefully examine the context in which it is used to determine whether deception, dilution, etc. take place. That is why critics of the ICANN UDRP want rulings to stay in the courts, which have the resources for thorough examinations of that sort. Under the UDRP, trademark holders can win a quick and cheap victory, leaving the burden on the other individual or organization (who probably can muster far less resources) to go to court in order to get the name back.

More pressure was put on domain names when the World Intellectual Property Organization got involved, receiving the blessing of the U.S. Commerce Department at the same time that it set up ICANN to administer Internet names and numbers. As an international forum for intellectual property interests, WIPO did just what it was expected to do, producing a document that many considered insensitive to the needs of small domain-holders and weighted toward making things easy for trademark holders.

The WIPO proposal received widespread criticism, including a reply I wrote for CPSR and several other public-interest groups. WIPO acceded to criticism and considerably narrowed the scope of the disputes covered in its final report. Although ICANN’s acceptance of the WIPO proposal seemed at first to be a foregone conclusion, ICANN deferred a decision at its last meeting in Santiago and adopted instead some considerations closer to those recommended by advocates for small domain names. Although most observers predict that ICANN will eventually adopt the WIPO proposal, the scaling-down WIPO’s final report as well as the delay at Santiago shows that protesters and critics should not give up their efforts.


Andy Oram is an editor at O’Reilly Media. This article represents his views only. It was originally published in the online magazine Web Review.