InfoLaw Alert http://www.infolawalert.com Article by Mark Voorhees Redistributed with permission NETWORK SOLUTIONS TO REWORK POLICY GOVERNING INTERNET DOMAIN NAMES Much-maligned attempt to resolve name dispute under review 4/19/96 Network Solutions, the government-funded registry of Internet domain names, is once again revising its policy governing name fights. The company stands in the messy intersection of trademarks and domain names. These are unique electronic addresses, like abc.com, assigned to computers connected to the Internet. Last summer, Network Solutions revised its first-come, first-serve, no-questions-asked policy regarding name assignment. The purpose was to shield itself from suit and to try to protect trademark owners from rogue entrepreneurs who would register popular trademarks and try to ransom them off to their owners. The policy has not pleased many people. The trademark community is upset that it recognizes only federally registered marks but not common law or state marks, no matter how strong or long-lasting they may be. "Coke," for example, was an unregistered mark for a long time. Others are upset that Network Solutions requires indemnification from suit when it is the entity responsible for handing out the names. There is little in the policy that prevents unscrupulous actors from obtaining a domain name; it's just a little easier to get rid of them now, although the threat or fact of a suit has scared most rogues out of the name grab business, even before the imposition of the policy. And then there is the grand conspiracy/paranoia crowd that sees mischief in the fact that Network Solutions' parent, SAIC, is a defense contractor, with ties to the intelligence community. But we digress. There is a limit to Network Solutions' abilities to satisfy Internet users, especially businesses, no matter how many times its policy is amended. Most commercial enterprises want to be in the *.com top-level domain, an international category signifying that the owner is engaged in commerce. The category simply can't accommodate all the U.S. registered trademarks-let alone the state and common law marks, let alone foreign marks. ABC Carpets and ABC, the network, can share a similar trademark because they are in different businesses but not the same domain name. One longer-range solution is to create additional top-level domains and to appoint additional registries. The creation of, for example, biz, market, and finance domains would help-but not eliminate-the scarcity of unique domain names. Competition among registrars could encourage them to do more research into the trademark status of names they hand out and assume greater risk. The Internet governance community is currently discussing creating competing top-level domains and registries, but a ready-to-wear proposal is still a ways off, says Jon Postel, who heads the Internet Assigned Numbers Authority. ON-THE-JOB EXPERIENCE Mark Radcliffe, Network Solutions' outside counsel, won't reveal specifically what changes are in store except that they will reflect the registry's experiences navigating difficult waters. "You learn about situations you did not anticipate," he says. The recent suit filed against Network Solutions by Roadrunner Computer System of Sante Fe, New Mexico, has proven to be such a learning experience. Warner Brothers, the movie studio, informed Roadrunner, an Internet service provider, last year that it owned a federal registration for the "Road Runner" mark and wanted the roadrunner.com domain. Under a quick reading of the policy, Roadrunner would be obligated to relinquish the name since it did not own a federal registration and hadn't begun to use the mark before Warner Brothers. Roadrunner's counsel, Carl Oppedahl, a Westchester County, New York, patent lawyer, carefully read Network Solutions' policy and discovered a loophole. If he could quickly grab a federal registration-any country would do-the name would not be taken away from his client. The U.S. Patent and Trademark Office was out of the question, because it takes a year or longer to issue a mark. But Tunisia provides literally overnight service. On March 7, Roadrunner applied for a Tunisian mark, and it was awarded the next day. What prompted the suit was that Network Solutions' refusal to accept the Tunisian mark because Roadrunner had not produced it within 30 days, as the policy requires. Warner Brothers, however, had granted Roadrunner several extensions, all with NSI's consent. HARD AT WORK Network Solutions began working on the policy revisions three months ago, long before the Tunisian intrigue began. But it is these situations the policy is meant to address. "I don't think what [Roadrunner] did is consistent with the policy," Radcliffe said. The first set of policy revisions, which took effect last November, tinkered here or there-clarifying that federally registered trademarks had priority; extending indemnification to the Internet Architecture Board and Internet Society, two entities that oversee the naming policy; and trying to establish guidelines over when the first use of a mark would prevail. While the changes were not quite tantamount to rearranging the deck chairs on the Titanic, they don't address the fundamental problem of too many companies chasing too few names. David Maher, a partner at Sonnenschein, Nath & Rosenthal, says the changes, whatever they may be, won't reduce Network Solutions' potential liability for arbitrarily conditioning commercial access to the Internet. Maher is cohead of a task force of the International Trademark Association attempting to find ways for trademarks to find their home on the Internet. One problem is there are vast communication and understanding gaps among the affected parties. Network Solutions receives funding from and is accountable to the National Science Foundation on at least a financial level. The Internet Assigned Numbers Authority has authority over top-level domains, but the source of that authority rests in the opaque structure of Internet governance; if you have to ask about the relationship among IANA, the Internet Engineering Task Force, the Internet Architecture Board, and the Internet Society, you don't want to know the answer. Trademark lawyers often walk away from their first encounter with the Internet with a severe migraine. Many of the engineers that comprise the core of the Internet technical community enjoy the antics of lawyers as much as they enjoy hearing pocket-protector -and slide-rule-on -the-belt jokes. Suffice it to say that engineers and lawyers aren't always on the same page, despite the best efforts-and there have been many-of members of both professions to bridge the gap. email:mark@infolawalert.com Copyright Mark Voorhees 1996