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Shakespeare claimed, in a romantic moment, “that which we call a rose by any other name would smell as sweet.” In dealing with the Internet, however, the more pragmatic Hubert H. Humphrey may have come closer to the mark. “In real life, unlike in Shakespeare, the sweetness of the rose depends upon the name it bears,” he wrote. “Things are not only what they are. They are, in very important respects, what they seem to be.” Names are, after all, the only way to make intuitive sense of the billions of pages on the Internet. A major breakthrough in ease of using the Internet occurred when plain-language names could be substituted for numeric entries. For information on roses, regardless of their scent, consumers now may enter www.rose.org rather than a string of numbers. Simple enough, but what happens when more people and companies wish to use a name than can register it? DOMAIN NAME LITIGATION IS GROWING EXPONENTIALLY Litigation involving Internet domain names, the use of names in “metatags,” and other name-related conflicts is growing at an exponential rate. Recently, for example, Nintendo of America filed suit against the owners of some 55 Web sites using its “Pokemon” brand. Recent anti-cybersquatting legislation and new administrative dispute-resolution procedures are setting new standards for how these conflicts can be resolved. But although the law has evolved to provide mechanisms for dealing with these disputes, the number of issues that must be considered continues to grow. One of the hottest areas of litigation brings trademark and cybersquatting law directly into conflict with the First Amendment. A domain name is simply the word address that is given to a Web site by its owner, such as www.nlj.com for The National Law Journal’sonline presence. To obtain the right to use a particular domain name, that name must be registered by the potential user. The authority to register domain names now is administered by the Internet Corporation for Assigned Names and Numbers, or ICANN. To register a particular name, a Web site owner must contact one of the registrars authorized by ICANN. These registrars do not, in the first instance, resolve any conflicts between nearly identical domain names or require proof that the Web site owner is, in fact, authorized to use the requested name. Not surprisingly, many registrants sought to capitalize on the Internet gold rush of the late 1990s by registering popular trademarks as Internet domain names. Trademark owners, often in a rush to acquire a suitable Internet presence, often acceded to demands for payment from these “cybersquatters” to free up their domain names. Congress enacted the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. 1125, to help bring rationality to the use of Internet domain names. To state a claim under the ACPA, a plaintiff must establish that its mark is distinctive or famous; that the defendant’s domain name is identical or confusingly similar; and that the defendant used, registered or trafficked in the domain name with a bad-faith intent to profit from the sale of the name. The ACPA now has been in place long enough for courts to have dealt with some of the thornier issues lurking in each of these elements. In Northland Insurance Co. v. Blaylock, No. 00-308 DSD/JMM, the U.S. District Court for the District of Minnesota confronted the ever-popular and difficult issue of “sound-alike” domain names used for criticism of an established company. The defendant, Patrick Blaylock, insured his yacht with Northland Insurance Companies. He filed a claim that, in Blaylock’s opinion, was allegedly mishandled. Blaylock then registered the domain name “northlandinsurance.com” and created a Web site that criticized the company. A visitor to the site may suspect that the site does not belong to the insurance company when greeted by large type stating, “If you feel you have been abused at the hands of Northland Insurance, please click the link below. You are not alone!” Following the link leads to a page where Northland’s behavior is described as “abusive, dirty dealing, and heavy handed.” Northland alleged that Blaylock’s use of its name violated trademark law and the ACPA; Blaylock replied that he had a First Amendment right to criticize the company. On Sept. 25, the court denied Northland’s motion for a preliminary injunction. It found that Northland was not likely to prevail on a trademark infringement claim because visitors to the Web site would be unlikely to be confused between Northland’s official Web site and Blaylock’s protest site. It similarly found that Northland would not be likely to succeed on its ACPA claim because Blaylock did not “fit the ‘classic’ cybersquatter profile” of one wishing to profit from his or her use of Northland’s name. Interestingly, Blaylock’s general bad faith toward Northland was not seen by the court as relevant to his intent to profit from the domain name: “While evidence indicates that the defendant has perhaps exhibited bad intent in setting up this web site to criticize plaintiff’s business practices, his ‘intent to profit’ is not sufficiently discernible at this stage and presents an issue that seems best resolved by the trier of fact.” Perhaps uncomfortably for Northland, Blaylock’s site continues to be available to the public as the lawsuit moves forward. THE NET DOES NOT LIVE BY DOMAIN NAMES ALONE Domain names are not, of course, the only names that matter on the Internet. Search engines often rely on “metatags,” invisible words coded at the outset of a Web page, to “rank” pages in response to a search request. For example, if a consumer enters “rose” in a search engine, among the first sites to be listed likely would be www.ars.org, the home of the American Rose Society. This would be at least partly because the coder of that site embedded invisibly some 40 phrases relating to roses on that site. The viewer cannot see the code, but the search engine does. Reliance on such “metatags” provides some search engines with a way to rank the thousands of pages that can be responsive to a request. So does the use of another company’s name as a metatag constitute trademark infringement or cybersquatting? In Bihari v. Gross, 00 Civ. 1664 (SAS), the U.S. District Court for the Southern District of New York became the first court to hold that the ACPA does not apply to megatags. As in Northland, the case involves a company and a disgruntled customer. The defendants, former customers of interior designer Marianne Bihari, registered four domain names using Bihari’s name and business identity, and posted information critical of her. Embedded in the code for the sites were metatags using Bihari’s name. As a consequence, searches for Bihari’s business might turn up the critical sites before turning up her official site. The court found that the complaint failed to state a claim under ACPA because the defendant took down sites that actually used Bihari’s name and service mark. The remaining sites did not use the marks in the domain names, but continued to use them in metatags. The plain language of the statute, the court held, precluded a finding that the use of the marks as metatags — and not domain names — constituted cybersquatting. WHEN METATAGS CAN LEADTO TRADEMARK INFRINGEMENT But that did not, of course, end the inquiry. The use of marks as metatags can give rise to a claim for trademark infringement. For example, in Playboy Enterprises Inc. v. Wells, 7 F. Supp. 1098 (S.D. Cal. 1998), Playboy Enterprises claimed that the use of the word “playboy” as a metatag in a Web site run by a former playmate of the year infringed its trademark. The court in Bihariended up with a result that was quite similar to that of the Playboycourt, however, and denied liability. The Biharicourt found that the use of the marks was a “fair use” because it was “the only way Gross can get his message to the public.” The metatags were used to “fairly identify the content of his web sites” rather than to mislead consumers into going to a Web site that competed commercially with Bihari’s business. As in Northland, the court found that the “mean-spirited and vindictive” nature of the content of the protest Web site did not have any relevance to the inquiry. Domain name disputes have even reached the most vaunted embodiment of free expression — political speech. On Sept. 25, the ICANN dispute resolution forum for Canada resolved a complaint by Anne McLellan, a Canadian member of Parliament, minister of justice and attorney general of Canada (AF-0303a, AF-0303b). The complaint said that annemclellan.com and annemclellan.org were registered to one smartcanuk.com. ICANN’s procedures for resolving such a complaint are similar to those of the ACPA, but the final element requires only that the “domain name has been used and registered in bad faith.” Bad faith can be proved under ICANN rules by demonstrating an intent to prevent the owner of the mark from “reflecting the mark in a corresponding domain name.” The forum found that element had been met because the domain name led to a site with a banner ad and a link to the defendant’s Web site, which “reflects Respondent’s intent to drive traffic from annemclellan.com to its web site for commercial gain.” In a more high-profile case, the opposition party in the South Australian government alleged on Oct. 11 that a junior policy officer in the government had registered mikerann.com to prevent opposition leader Mike Rann from launching a Web site. The allegation became public after a leading figure in the government came out against cybersquatting and said that it must be stopped. FREE EXPRESSION IS NOT ALWAYS A SURE WINNER Free expression does not always prevail in disputes over Internet names. For example, the U.S. District Court for the District of New Hampshire dismissed a case claiming that the former domain name registrar had violated the First Amendment by refusing to register some 30 domain names using variations on the theme of the “seven dirty words” that were the subject of Federal Communications Commission v. Pacifica Foundation, 438 U.S. 726 (1978). In National A-1 Advertising Inc. v. Network Solutions Inc., No. 99-033-M, the court found that there was no state action in the domain name registrar adopting rules against using indecent words in domain names. The court traced the lineage of Network Solutions — a company founded by the National Science Foundation, and at the time, the only domain name registrar in the world — and found that its action was not so intertwined with the government as to make it a state actor. In a perhaps more important and enduring portion of its decision, the court found that a second-level domain (such as the “nlj” in www.nlj.com) is not a public forum to which the First Amendment would attach. The Internet itself has, of course, numerous public forums for the discussion of issues that deserve full First Amendment protection. The court found that “that does not, however, compel the conclusion that all conceivable means of communication associated with the Internet necessarily constitute ‘fora’ for protected speech.” The domain name system is a labeling hierarchy, the court held, and not a forum for the dissemination of ideas or debate; that occurs in the Web pages and chat rooms to which the domain names direct viewers. This conclusion follows Name.Space Inc. v. Network Solutions Inc., 202 F.3d 573 (2d Cir. 2000). The court held in Name.Spacethat a domain name could be subject to First Amendment protection depending on “the intentions of the registrant, the contents of the web site, and the technical protocols that govern the [domain name system].” Name.Space dealt with top-level domains: “.com,” “.org” and the like. In National A-1, the court found it impossible to determine whether First Amendment protection could attach to the names sought to be protected as second-level domains because there was no content associated with those names (an argument that is somewhat circular given that no content could be transmitted via those names if the defendant refused to register them). Perhaps Shakespeare was right after all, but in a different play. In a less romantic moment, he wrote, “[H]e who filches from me my good name robs me of that which not enriches him and makes me poor indeed.” The difference between Shakespeare’s day and online life, of course, is that the filched name can, in fact, enrich the one who appropriated it. In life and on the Internet, the value of a name cannot be underestimated. Kurt A. Wimmer is a partner at Washington, D.C.’s Covington & Burling, concentrating his practice on Internet, telecommunications and media law. He can be reached at [email protected]

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