H.  Explosion in Internet Domain Names Gives Rise to First Amendment Issues 

    The Internet Domain Name System (DNS) -- the system for registering and utilizing Internet addresses -- operated for approximately 12 years without creating any significant policy issues.  See generally Milton Mueller, “Technological and institutional innovation: Internet domain names,” International Journal of Communications Law and Policy (Summer 2000), at 7.  But the growth and commercialization of the Internet, along with the advent of the World Wide Web, spawned a variety of difficult policy and First Amendment issues.

Background

    Some of the issues naturally resulted from the fact that the growth in Internet usage outstripped the ability of the government contractors who managed the DNS under largely informal arrangements to keep up.  Between 1992 and late 1995, the number of new domain registrations mushroomed from 300 per month to 45,000 per month.  Id. at 8.  By the spring of 1999 more than 7 million domain names had been registered worldwide.  Final Report of the World Intellectual Property Organization, The Management of Internet Names and Addresses: Intellectual Property Issues (April 30, 1999) http://ecommerce.wipo.int/domains/eng/final/FinalReport_1.html (“WIPO Final Report”), at Sec. 45. 

    This, among other things, led to the creation in 1999 of the Internet Corporation for Assigned Names and Numbers (ICANN) as part of an attempt to “privatize” the DNS.  But the sheer complexity of the administrative task coupled with the transition to a new system of DNS governance were not the only issues with broad policy implications.  A number of policy issues arise from the fact that Internet addresses tend to be more communicative than older means of telecommunication.  Unlike media that enable connectivity using anonymous strings of numbers (e.g., telephone or FAX numbers), a domain name can serve the dual functions of addressing and identification.  Accordingly, some domain name registrations and uses have led to trademark and other disputes.  Although this phenomenon is small compared to the total domain name space -- less than one-half of 1 percent of all DNS registrations lead to potential trademark disputes -- this small percentage has had a substantial impact on the administration of the system.  See Mueller, supra at 21. 

    The WIPO Final Report noted that “[i]t has become apparent to all that a considerable amount of tension has unwittingly been created between, on the one hand, addresses on the Internet in a human-friendly form which carry the power of connotation and identification, and, on the other hand, the recognized rights of identification in the real world, consisting of trademarks and other rights of business identification, the developing field of personality rights, whether attaching to real or fictional characters, and geographical indications.”  WIPO Final Report, at Sec. 22.  This and other policy issues have presented courts with the question of whether there is a First Amendment right to use a particular domain name.

Free Speech v. Intellectual Property

    The inherent tension between trademark law and the free use of domain names was underscored by the implementation last year of the Anticybersquatting Consumer Protection Act (ACPA).  The ACPA amended the Trademark Act of 1946, creating a specific federal remedy for “cybersquatting.”  The law defines a cybersquatter as a person who “has a bad faith intent to profit from [a trademark that is not registered to the person], including a personal name which is protected as a mark.”  15 U.S.C. 1125(d)(1)(A).  In particular, the ACPA provides that a person shall be liable in a civil action by the owner of a mark, including a personal name that is protected as a mark under this section, if, without regard to the goods or services of the parties, that person:

(1) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(2) registers, traffics in, or uses a domain name that (a) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; or (b) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to, or dilutive of, that mark.

     The ACPA empowers courts to order the registrar to cancel the domain name or transfer it to the trademark owner.  The court may also order either actual damages to the mark owner or, in lieu of actual damages and prior to the final judgment by the court, the mark owner may ask the court to designate an award of statutory damages from $1,000 to $100,000 per domain name.  15 U.S.C. 1117(d).  Under the “Cyberpiracy Protections for Individuals” section of the Act, the court may order the “forfeiture or cancellation of the domain name or the transfer of the domain name” to the complainant, and, in its discretion, may also award costs and attorney fees to the prevailing party.     Although the thrust of the ACPA is to limit the free use of domain names, it also recognizes the “bona fide noncommercial or fair use of [a] mark in a site accessible under the domain name,” and courts have found a First Amendment interest in certain uses of trade names in the DNS.  Generally, an intention to provide consumer criticism of a business through the use of a trademark as a domain name is a strong factor militating against a finding of infringement. 

    In Northland Insurance Cos. v. Blaylock, 115 F. Supp. 2d 1108 (D. Minn. 2000), for example, the court denied a request to enjoin the use of a trademark, noting that “the right of the defendant to openly express his viewpoint should ... not be curtailed absent a clearer demonstration that the claims against him have merit.”  Id. at 1125.  The court pointed out that injunctions should be used only in extraordinary circumstances, especially where such an order would “potentially chill a person’s right to free speech, no matter how disagreeable that speech might be.”  Id.  This holding echoes a pre-ACPA case in which the U.S. District Court for the Central District of California held that a noncommercial Web site entitled “Bally’s Sucks” did not infringe the Bally trademark and was protected by the First Amendment as consumer commentary.  Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998).     While an intention to provide consumer criticism of a business is a strong factor militating against a finding of trademark infringement, one court has held that there is not a per se First Amendment defense for obtaining a domain name that features a company name followed by “sucks.com.”  Lucent Technologies, Inc. v. Johnson, 56 U.S.P.Q.2d 1637 (C.D. Cal. 2000).  Where a trademark is not used for purposes of commentary but is intended to cause confusion, it is unlikely to be protected, as earlier cases have held.  See, for example, Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) (use of “www.plannedparenthood.com” by an anti-abortion activist to transmit information contrary to the message of Planned Parenthood Federation of America was intended to cause confusion with the trademark and was not protected by the First Amendment).

Additional First Amendment Issues

     Other cases have arisen from claims that there is a First Amendment right either to establish new Internet domains or to register particular domain names.  In Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573 (2d Cir. 2000), the U.S. Court of Appeals for the Second Circuit rejected First Amendment claims that a refusal to approve new generic top-level domains (e.g., “.com,” “.net,” or “.org”) constitutes a prior restraint, or that the required use of existing top-level domains constitutes compelled speech. 

    The district court in that case declined to recognize any constitutional issue at all, finding that “Internet alphanumeric addresses are not speech but are ‘rather like a telephone number.’”  PGMedia, Inc. v. Network Solutions, Inc., 51 F. Supp. 2d 389, 407 (S.D.N.Y. 1999), quoting Reno v. ACLU, 521 U.S. 844, 852 (1997).  In addition, the court found that freedom of speech was not infringed because parties were free to use the name of their choice as the second-level domain name (e.g., “.forpresident”) if not the top-level domain (e.g., “.com”). 

    Although the court of appeals affirmed this holding, it disagreed with the broad proposition that domain names are akin to telephone numbers, noting that “the nature of domain names is not susceptible to such a uniform, monolithic characterization.”  Name.Space, Inc., 202 F.3d at 585.  As the number of top-level domains eventually is expanded (as occurred in late 2000 with the addition of “.name,” “.biz,” “.info,” “.pro,” “.coop,” “.aero,” and “.museum”), the court anticipated that “longer and more contentful TLDs ... may constitute protected speech.”  Id.      In other cases, courts have rejected First Amendment claims based on a registrar’s refusal to register sexually oriented domain names.  The courts have held, among other things, that the domain name system is administered by private entities, not the government, and that constitutional claims fail for a lack of state action.  See National A-1 Advertising, Inc. v. Network Solutions, Inc., 121 F. Supp. 2d 156, 167-68 (D.N.H. 2000); Island Online, Inc. v. Network Solutions, Inc., 119 F. Supp. 289, 304-07 (E.D.N.Y. 2000).  However, the extensive involvement of the U.S. government in the DNS and its governance has led some commentators to dispute findings of an absence of state action.  See, for example, A. Michael Froomkin, “Wrong turn in cyberspace: Using ICANN to route around the APA and the Constitution,” 50 Duke Law J. 17 (October 2000).