It will be illegal to register a domain name in bad faith if it
is identical or confusingly similar to the real names of other
people, living or dead. The office of Californian Governor Gray
Davis said yesterday that the new law will provide individuals with
a higher level of protection against internet fraud and will make
it easier for consumers to navigate the web by reducing the number
of fraudulently registered names.
However, Andrew McLaughlin, an official of the Internet
Corporation for Assigned Names and Numbers (ICANN) is reported as
saying yesterday that: “In general, we don’t think it’s a good idea
for governments to contribute potentially contradictory laws” to
the existing policies on domain name registration.
ICANN is a not-for-profit organisation that manages the
addressing system of the internet. Its Uniform Dispute Resolution
Policy, introduced last year to help trade mark owners win back
names from cybersquatters, has been increasingly popular. It has
been put to use in the Arbitration and Mediation Centre of the
World Intellectual Property Organisation (WIPO), a UN organisation
based in Geneva. As at the end of last month, the Centre has had
904 cases filed. Since its first hearings were decided this year,
it has ordered the transfer of 297 domain names.
ICANN officials had been disappointed last year when federal law
was introduced in the US to give trade mark owners a legal cause to
sue cybersquatters who misappropriated their trade marked names or
words. Under this US law, unlike the ICANN procedure, damages can
be claimed from the cybersquatter. In one case under this Act that
settled between the parties before the court’s decision,
cybersquatters paid $25,000 to a trade mark owner.
In the UK, there is no specific law against cybersquatting.
However, businesses have succeeded in UK courts by showing trade
mark infringement and what is known as passing off. Such law gives
the potential for a claim in damages against the cybersquatter,
although many UK parties now prefer to take their cases before the
WIPO tribunal.
The Californian law means that residents of the state now have
three distinct choices of action against cybersquatters. The main
distinction of the Californian law passed on Tuesday this week from
the ICANN rules and the US federal law is that the others focus on
trade marked names; the Californian law applies to individual
names, which usually are not registered as trade marks. The ICANN
rules were recently used by WIPO to justify giving British author
Jeanette Winterson and actress Julia Roberts the rights to their
dot.com names, despite having no registered trade marks; however,
if their names were not famous, the ICANN rules would not have
worked for the individuals.
Under the Californian law, a court may consider “fair use” of a
name for satirical or other purposes, when deciding whether it was
registered as a domain name in bad faith.
