One of the most notorious ways of getting rich quickly online is to register a domain name which is similar or identical to that of a famous trademark and then sell that name for a considerable amount of money. This route to riches will become more difficult in the future.
The recent English case of British Telecommunications plc & ors v One in a Million Ltd makes it clear that the courts will protect a trademark owner if somebody registers their name as a domain name and then tries to sell it to them. Another English Court of Appeal decision, Zockall v Mercury Communications, suggests that registries themselves may be able to prevent stockpiling of domain names.
These decisions are of no more than academic interest for Irish web-users, as the Irish .ie domain registry rules are quite restrictive. This may change with the recent introduction of the Electronic Commerce Bill 2000, which will allow the Minister for Public Enterprise to control the rules governing domain name registration in Ireland.
The impetus for this sort of change may well come from the introduction of a US Federal law, the intimidatingly titled Anti-cybersquatting Consumer Protection Act 1999. This Act is primarily directed towards what it terms "cyberpiracy" and to this end it provides that the holder of an American trademark may sue a person who has "with bad faith" registered, trafficked or used a domain name which is "identical or confusingly similar to a trademark". This provision may well mean that in a conflict between a trademark owner and another entitled user, such as somebody who uses a business name but has not registered it, the trademark owner will succeed.
The Act should also go a long way towards ending any debate over whether domain names are a new form of intellectual property, since it makes it clear that the registration of a domain name confers few, if any, real rights on those who do so. The Act actually goes beyond this, providing that one of the indicators of "bad faith" is whether or not a person has offered "to transfer, sell or otherwise assign the domain name . . . for financial gain".
Another provision of the US Anti-cybersquatting Act may make it more difficult for Irish people to hold generic domain names such as .com and .net. The Act provides that trademark owners can file an "in rem" civil action in the US courts against an individual domain name. This means that the trademark owner will not need to sue the person who has registered the domain name in person.
This may be done where the US courts hold that the domain name violates a US trademark and the owner of the trademark has sent a notice of the court action to the email and postal address contained in the domain name register. So anybody who has registered a domain name in the .com, .net, or .org registries should be sure to keep their register details updated and pay attention to all mail which they receive in connection with the name.
Of course, if an Irish person does get a letter of this type, they may well prefer to concede rather than face the expense and inconvenience of contesting an action in the American courts. This may mean that the Anti-cybersquatting Act will force the "Americanisation" of the .com, .org and .net domains.
For those who do not want to go through the courts, the domain name dispute resolution policy recently introduced by the ICANN (the Internet Corporation for Assigned Names and Numbers) is incorporated into registration agreements for domain names. Again, the complainant will have to show that the domain name has been registered in bad faith. This process has advantages such as speed and cost over the courts but again it is only available to trademark owners, and the only way of defending yourself in such a process is to have registered a trademark yourself.
Denis Kelleher (deniskelleher@ireland.com www.ncirl.ie/itlaw) is a practising barrister and co-author with Karen Murray BL of IT Law in the European Union, (Sweet & Maxwell, London, 1999)