THE BELTWAY AND BEYOND
Content is the name of cybersquatting game
Stephen M. Ryan
Suppose a child seeking information from, say, the Army Web site accidentally typed in www.army.com instead of www.army.mil? At the moment, nothing. But suppose someone maliciously linked army.com to a pornographic site?
Or suppose some person or group out in cyberspace, to satisfy a vendetta against your agency, registered a .com version of the agency name to which he or she added 'sucks.'
Agencies have used the law to take steps to protect themselves in cyberspace.
Commercial trademark holders face a similar challenge to protect their marks on the Internet, and now they are backing legislation that would help them. Companies as diverse as Hertz Corp. and MCI WorldCom Inc. went to register themselves in the .com domain and found cybersquatters or competitors had beaten them to it. In some cases, cybersquatters have made extortionate returns by being the first to register a famous trademark'for $50'and then selling it back to the company that has an interest in the trademark.
But the real concern for trademark holders'or any organization concerned with how and by whom its name will be used'is the multiplicity of potential registries where a name can go. Currently there are about 240 registries. In other words, beyond the popular .com, .net and .org are dozens more registries where a trademark holder's name might be registered. This number includes approximately 80 registries that will sign up a name even if the registrant doesn't live in the host country, as long as the application fee is paid.
So, to fully protect its trademark, a company such as Hertz may need to register at .uk and the many other open registries.
Owners of famous trademarks have sought judicial relief arguing trademark dilution and other theories. These owners also are seeking legislative relief. Adding new top-level domains will be linked to granting greater trademark protection on the Web.
The Senate Judiciary Committee is busily working on a bill that would protect trademark owners against cybersquatting. The bill would permit trademark owners to recover a statutory measure of damages if they could prove that a trademarked name was registered in bad faith'in essence, by someone who did not seek to use it but merely to profit from its sale. The bill would permit the cancellation of the domain name if the person seeking it used an alias or if the person could not be found. Software and content giants are pushing for these changes.
But there are legitimate and sometimes salaciously funny disagreements. Someone named McKay, MacDougall or the like could legitimately beat McDonald's Corp. to bigmac.com and contend that the use of the nickname is not cybersquatting.
Lawyers, of course, are enjoying a boom in business as cybersquatting presents novel issues. Another of the interesting and repetitive occurrences is a famous trademark name with the word 'sucks' tacked onto it. Because many people who live in cyberspace have no other life, it seems, sites created by critics thus using the names of companies have proliferated. In a case last year, Bally Total Fitness Holding Corp. sued a defendant who owned a 'Bally Sucks' Web site containing that thoughtful phrase superimposed over the familiar Bally logo.
Free speech battles trademark deletion, and free speech usually wins, except when a protected site is linked to a pornographic site. Even Playboy Enterprises Inc. sued and won damages from an outfit that had linked playboy.com to pornographic material not owned by Playboy.Sit on it
It seems that cybersquatting and hacking, whether directed against commercial or government sites, always comes down to salacious material. And there's evidence that as the market for registration services grows more competitive, standards for what Web sites can be called are dropping. At least one new domain name registrar coming aboard has chosen to accept as site names the 'seven dirty words''made famous by comedian George Carlin that can't be uttered on television.
Trademark policy debates illustrate that content is king, and that brands and names remain as important in cyberspace as they were in 1950s America. Anyone who pits themselves against the trademark owners politically will find this out.Stephen M. Ryan is a partner in the Washington law firm of Brand, Lowell & Ryan. He has long experience in federal information technology issues. E-mail him at [email protected].