Network Solutions Inc, the Domain name registrar for the InterNIC, once again tried to remove confusion over conflict between domain name and trademark holders last week. But no sooner was the new policy announced than it came under attack from trademark attorneys and others who told our sister publication OnLine Reporter the new policy fails to fix the problems in the existing policy. NSI’s aim is very simple: it wants to prevent itself as far as possible from becoming embroiled in legal actions between trademark and domain name holders. So far it has found itself as co-defendant in six such suits. Whether the new policy will succeed in that aim is highly debatable. The main change under the new policy is that domain name holders are no longer able to defend themselves by getting a quickie trademark from countries such as Tunisia after the trademark has been challenged. The NSI has also made it explicit that the trademark owner must give unequivocal and specific notice to the domain name registrant of a violation before running to the NSI. Furthermore NSI has removed the controversial clause that allowed it to demand an up-front, unlimited bond from a domain name holder to cover any NSI legal costs. Finally it clarifies that the only evidence NSI will consider is the trademark owner’s certified copy of a federal registration certificate. Trademark lawyer Carl Opendahl, who has defended domain name holders in a number of cases, is critical of the new policy, saying that NSI has set its own quasi-judicial system when it should be left to the courts. Just because a domain name is the same as a trademark doesn’t necessarily mean that the trademark is being infringed, he argues. It is cruelly unfair because in normal court [domain name holders] wouldn’t need a trademark registration to protect themselves; mere non-infringing conduct would suffice. NSI’s policy should simply be that domain names are issued on a first-come first-served basis, that if some one doesn’t like it they can go to court, and that NSI will abide by any order of a competent court, he told Online Reporter. But Davis Graves, NSI Internet Business Manager, said the company said it couldn’t simply stand aloof, but had to take act ion if notified of a possible trademark infringement. It is our feeling that if we do nothing we could be accused of contributing to the trademark infringement… and expose ourselves legally, he said. The problem appears to be that NSI has set itself up to be dragged into court anyway – it says it won’t cut off domain names where the domain was registered prior to a trademark being taken out by someone else. In this case NSI is setting itself up to will defend the position of a domain name holder despite the fact that there is a prima facie trademark infringement. Oppendahl is not the only one with concerns. I am really flabbergasted that they would put a band-aid on what to me looks like a gaping wound, David Maher, co-chair of the International Trademark Association’s Internet issues committee told Reuters. He added, it gives all the rights to the entity that has a U.S. or foreign trademark registration, totally ignoring common-law trademark rights. This one will run and run since trademark and domain name rules are fundamentally incompatible – names in the .com heirarchy are assigned internationally, whereas trademarks are national affairs. Whether abc.com belongs to the American Broadcasting Company, or the Australian Broadcasting Company, is simply unresolvable until this changes.
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