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.