Re: DNS: DNS litigation Issues

Re: DNS: DNS litigation Issues

From: Carl Oppedahl <carl§>
Date: Mon, 09 Dec 1996 02:02:07 -0500
At 04:53 PM 12/09/96 +1100, John Hilvert wrote:

>At 02:11 PM 09-12-96 +1000, Geoff Huston wrote:

>>Here's a draft - comments welcome

>>Internet Domain Names

>The paper raises a number of issues but it seems to me your key reform is at
>the last par:

>>This does require some form of public instrument to effect this critical
>>change in recognising the authenticity of the Internet Domain Name
>>environment as a public name authority in its own right. It is noted that
>>such public recognition of the activity may be accompanied by operation of
>>the process by a duly created operating entity as a component of government
>>administration, or it may be accompanied by a process of more formal
>>delegation the responsibility for the operation to duly authorised bodies.
>>Either approach would be a significant step forward in preserving the value
>>and utility of the ".au" name domain over the current situation, as it
>>would add a visible line of derivation of authority within a process where

Keep in mind that Network Solutions, Inc, the temporary administrator of COM
under a five-year contract, has asked for similar relief.  See

>I am not opposed to regulation, especially where it can make a market more
>The four questions I wonder about are:
>a) Who benefits from such moves? Can you spell out what you mean by the
>"ultimate functionality of the Internet domain name system"? Are you arguing
>for some legal shield for the naming authorities? 

The legal shield, which I don't feel to be absolutely necessary (see
"Analysis and Suggestions Regarding NSI Domain Name Trademark Dispute
Policy" at <>) should be quite carefully
crafted if it is to be implemented.

Mt. Huston's suggestion, as I understand it, is directed to the narrow issue
of whether an angry trademark owner who dislikes that someone has registered
a domain name, can take out its anger against the domain name registration
authority and collect money from it, or whether the trademark owner will
have to content itself with mere injunctive relief with respect to the
registration authority, and collect monetary damages (if at all) from the
domain name owner.

In the US, at least, it is virtually unheard-of to collect monetary damages
in trademark cases generally.  The relief one obtains is nearly always only
injunctive relief.  This is one reason that domain name registration
authorities don't really need such an immunity, it seems to me.  What's
more, trademark owners (in the US at least) don't generally ask the court
for an award of monetary damages against the registration authority, but at
most they ask for injunctive remedies.  In any event, no domain name
registration authority anywhere in the world (so far as I know) has ever
been held liable by a court for monetary damages arising out of registering
a domain name.

When people fight over telephone numbers or stock exchange ticker symbols,
it is unheard-of for the administrators (phone companies and stock
exchanges) to be monetarily liable.

What we have seen on several occasions (see <>
is a domain name registration authority wrongfully cutting off domain names
in cases where no trademark infringement was taking place.  That sort of
wrongfully cutting-off has resulted in numerous lawsuits against NSI by
domain name owners, all of which have prevailed (they got to keep their
domain names).  In several such cases it remains to be seen whether the
court will award monetary damages to the domain name owner against NSI for
wrongfully cutting off (or threatening to cut off) the domain name.

It is important that the behavior of the registration authority be
reviewable in the courts.  It is also important that the registration
authority be subject to the jurisdiction of the courts for the purposes of
executing changes regarding domain names, to comply with injunctions.  If a
registration authority were to cut off a domain name without good cause, it
is important that the domain name owner be able to seek a court order to
stay the hand of the registration authority, and for the domain name owner
to be able to seek monetary damages in the event of a wrongful cutoff.

So if an immunity should be granted, it should be directed narrowly to the
special area of monetary damages arising out of trademark law, for
registering a domain name.

As I understand Mr. Huston's posting, I am suggesting no more nor less than
what he is suggesting.

>By creating a new right of
>ownership to a domain name, what responsibilities, if any, follow?

No, Mr. Huston's posting, as I understand it, is not "creating a new right
of ownership".  It would leave the existing rights of ownership unchanged.
A trademark owner who has a gripe would assert that gripe by whatever means
it would have griped about a toothpaste package or brand name, e.g. in the
courts.  And the gripe would be chiefly asserted against the domain name
owner, the registration authority only involved in the limited sense that if
the court decides the domain name should be cut off, it's the registration
authority that would have to carry out the decision in compliance with court

>b) What role is there for conventional contract (between a naming authority
>and the applicant, for example), intellectual property laws as well as
>markets generally in this proposed scheme? 

As I understand Mr. Huston's proposed scheme, existing intellectual property
laws have the same role they did before.

Conventional contract can't ever, by itself, deal with domain name trademark
squabbles, for the simple reason that the trademark owner is generally not
party to any contracts with any of the other parties.  By comparison, the
trademark owner who doesn't like someone else's toothpaste package generally
has no preexisting contract relationship with the toothpaste maker nor with
the company that printed its package.

>Just because there is legal
>backing for a naming process does not mean it can't or won't be challenged
>in the courts. 

Of course.  The only point (as I understand it) made by Mr. Huston is that
if a challenge is raised, the awards of monetary damages should be made
against the domain name owner, not the registration authority.

>c) How does this fit in with how other countries are attacking the issue of
>contested domain names? Given that certain domain names have value, if
>Australia led in this area, can we rule out opportunism from overseas
>applicants for example. 

The assumption is that each registration authority will make clear to the
public which courts it will obey (presumably the courts in the place where
its offices are).  Anyone with a gripe would either figure out where to sue
the domain name owner directly, or if nothing else works would sue the
registration authority in its designated court.  The registration authority
would then give notice to the domain name owner that its domain name is in
dispute, and would "interplead" (if there is such a thing in Australia) the
domain name (tender it to the court).  If the domain name owner failed to
defend its position, the result might be a default in which the court orders
the domain name cut off, etc.

>d) Because the DNS seems connected to many other aspects of Net
>administration such as routing tables and the like, how great a risk is
>there of trading off creeping red tape for all for the occasional and
>inevitable litigatory snarls of the future?

Little, I would guess, so long as the registration authority avoids the
stupid mistakes of NSI.

>In short, why do you believe the litigation risk has become so great and so
>uncertain that we need The Government to sort it out?

If any government action is needed, it would be limited to the narrow
immunity discussed above.  The motive for granting such (narrow) immunity is
merely to reassure the registration authority that it won't have to pay out
money in cases where an angry trademark owner was unable to collect damages
from the domain name owner.
Received on Mon Dec 09 1996 - 19:09:59 UTC

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