(c) 2001 Philip Green, Green & Green
Nature of a Domain Name
nIntellectual Property?
nNot Capable of Being Converted: Kremen v. Cohen, 99 F.Supp.2d 1168 (N.D.Cal. May 30, 2000) where the Domain Name “sex.com” was fraudulently stolen but not converted. Can be legally retrieved as if it were intellectual property.
nMere contractual right?
nNSI Agreement  Domain Name Transferable in tm
nNew: conflict registration services.
nVa Court – No garnishment Virginia courts say Domain Name is not garnishable.  Network Solutions Inc vs. Umbro International Va. S. Court 4/21/00 No 991168, suggests a URL “is or permits a service” and not garnishable under Virginia’s garnishment laws.
nYet ACPA allows courts to order the Domain Name register to turn over a URL to a trademark owner in an IN REM action.  This may remain a conflict for some time.
nGeneric “T M.COMs”  May gain secondary meaning like Amazon.com.
n
•NEW  things can change with technology and other formats such as XML and streaming, combined with ASPs and other such services, and broadband expansion  will lend themselves to creative contracting in the future.
•IT IS IMPORTANT TO MONITOR Domain Names and have clients appoint a person to monthly scan for new and potentially infringing Domain Names.
•Sometimes neither NSI Nor ICANN nor the rule of law can deliver a Domain Name when someone has a legitimate albeit smaller right to have it.  In Strick corp. vs. Strickland Judge Kauffman of USDC E Dist PA held that Mr. Strickland has a right to use his Domain Name “strick.com.”  Strick Corp is a tractor-trailer manufacturer that tried to buy the Domain Name but Mr. “Strick” would not sell.  They got the name on hold for 3 years until NSI changed their policy.  Then ICANN’s National Arbitration Center ruled the hold was off and the judge agreed based on ACPA.  Strickland was not a cybersquatter but a person whose nick-name became a Domain Name, and who has legitimate rights to keep using it.
•NOR could AOL get WIPO to grant it “nudescape.com” even though it might seem to be similar to “netscape.com” which AOL owns.  It was able to get back “aolfind.com” – reasoning: “Nude” and “scape” is common ENGLISH, the mark (Netscape) is different in meaning from nude- and the adult site has a legitimate use. –Clive Eliot sole panelist