Attorney Mark Radcliffe -- a partner in the Palo Alto, Calif., law firm of Gray Cary Ware & Freidenrich -- is the author of the policy governing the issuing and rescinding of Internet domain names, a policy that has thrust him and his client, Network Solutions Inc. (NSI) of Herndon, Va., into an uncomfortably intense spotlight.
NSI has been responsible for registering Internet domain names since 1993 under an exclusive contract with the National Science Foundation. It is collecting millions of dollars annually from that service, charging $50 a year to register and retain a name. Business from the nearly 500,000 registered names has proved to be so lucrative for NSI that it is now planning to become a publicly traded corporation.
But NSI and Radcliffe have a problem. There's a conflict between domain names and trademarks, both of which are jealously and strenuously protected by their owners. Radcliffe, a specialist in trademark, patent and copyright law, decided that NSI should recognize trademark owners' claims to certain domain names, even though under trademark law domain names may not be violating a trademark. The policy, initiated in July 1995 and revised for the third time in September, has incensed domain name owners and ironically resulted in the very nightmare NSI was trying to avoid -- being named in numerous lawsuits.
Domain names essentially tell Internet users where an individual or company is located in cyberspace. There are two methods for categorizing the addresses -- one by geography, and the other by organization. The latter are the ones in demand, because they are shorter, which means they're easier to remember and faster to type into a computer. Those names generally are a combination of the owner's business designation, such as Government Technology or SourceLaw, followed by a period (called a dot in Internet parlance) and three letters -- govtech.net or sourcelaw.com.
The three letters signal what kind of organization it is -- "com" for commercial entities, "gov" for government, "edu" for educational institutions, "mil" for military, "org" for nonprofit organizations and "net" for groups that don't fit into the other categories. But "com" is where the trademark battle is being waged because the Internet, which began 27 years ago as a cooperative effort between the military and its university researchers, is in the midst of excited commercialization. Companies and corporations, large and small, are rushing to NSI to register domain names, usually their own trademarked name, often to find that someone already has it.
BASIS OF CONFLICT
"Essentially there aren't enough domain names," said Radcliffe, adding that he feels a recent recommendation by the Internet Assigned Numbers Authority (IANA) -- that companies other than NSI begin issuing domain names -- is a good idea, and he supports it. IANA is the official coordinator for the assignment of Internet protocols and domain names. "IANA has recognized it as a problem for a number of months," he said.
IANA, NSI, Radcliffe and nearly everyone else has recognized the problem, although there's bitter debate over who caused the trouble, and whether IANA's suggestion will fix it. "The new NSI policy continues NSI's role, unique in modern commerce, as a parallel quasi-judicial system," said Carl Oppedahl of Oppedahl & Larson, a New York intellectual property lawyer who has sued NSI over its policy. "In all other aspects of trademark law, a trademark owner gets its remedies from a court or not at all.
"NSI offers itself as a sort of hired gun," Oppedahl said, "providing free legal services to trademark owners, giving them two choices where preliminary relief regarding domain names is concerned -- the normal court and NSI's quasi-court. In normal court, to avoid losing a domain name, one need merely avoid infringing any trademarks. In NSI's quasi-court, lack of infringement is no defense."
G. Gervaise Davis of Davis & Schroeder