Global Issues in Domain Name Dispute

The Internet is worldwide. While the United States currently has the greatest share of the market, the rest of the world is rapidly catching up. Due to the increasing number of new web sites around the world, the pressure to provide “good” original domain names is at an unprecedented high. This pressure exerted on the market has caused domain name infringement issues to become a major concern for the Internet. As seen in the previous section, cybersquatting and trademark infringement are major national issues. Because of expanding global boundaries, the national problems are becoming increasingly more complex due to the influence of foreign court systems.

International Domain Name Control


Domain names themselves are in jeopardy from unscrupulous and/or unknowing competitors. Virtual pirates will knowingly take a domain name and make it their own. For example, the company, MacHost.com had its domain name stolen, its web page copied, and its business model duplicated to the point that the new company is a mirror image of the original (Wheeler, 2000). All this is possible because the usurper was from another country. In order for the new company to be established, the new company must simply add the country’s suffix onto the end of the domain name (www.machost.com.au). This new e-business has stolen a “tried and true” business plan ready to take orders and process them. One drawback however, is that the “.au” suffix will have a quarantine effect on the new company and the only business conducted will be that which is done in Australia. The owners of the original MacHost feel that their Australian counterpart is stealing their market and they want it back. Serious issues will arise for the original holder of MacHost, when he tries to take back control of the domain name from the usurper, MacHost / Australia.


The problem of retaining global control of the MacHost domain name, is that it is registered only in the United States, and while they registered their domain name on Feb. 10, 1997, more than two years before MacHost / Australia, the Australian counterpart of MacHost has the legal registration in Australia (2000).


The above is an excellent example of cybersquatting with an international flair. This would seem to be an application for ICANN and it’s use of the UDRP. If the two companies were in the United States, ICANN would determine that the MacHost / Australia was using a confusingly similar domain name and was rerouting business from the legitimate website to it’s own. That would then be determined to be a bad faith use of the domain name and the domain name rights would be returned to the original user. However, the ICANN / UDRP has no authority in a country which has not signed an agreement with them. So far, the ICANN has had little success in convincing other countries to cooperate with them to bring order and fairness to the Internet. The only attempt at recourse that MacHost has is through the Australian court system, and that outcome is questionable at best. Trademark law is protective of the citizens of their host country and the courts usually will not return domain name rights to the original owner no matter when the original domain name was registered. Furthermore, at present, the only way to protect a domain name is to register it in every country where that company wants to do business. These registrations can be very expensive, but not as expensive as fighting to get the domain rights back or losing that market share to a cybersquatter.


One concern that trademark owners have is that with the new registration TLDs (Top Level Domains), there will be rash of international domain name piracy. In the United States, there is security in that the U.S. Patent and Trademark Office (PTO) does not recognize any difference materially between a trademark and a change in the TLD, therefore, the trademark and it’s corresponding domain name will be protected (Auslander & Royce, 2000).


Unfortunately, this is not the case when dealing on a global level. The best protection against those who would duplicate a domain name is for the original domain name holder to register its domain name and trademarks in the country where they intend to do business. They should also register those domain names and trademarks in the language of that country. Another protection device would be to have all licenses, contracts, or click-through agreements translated into the local language of the country where the domain name is being registered.