As the Internet becomes increasingly critical to businesses, domain names are getting more valuable and disputes relating to those names are becoming more common. These are no longer centred on "cyber-squatting", where an individual registers a prominent trademark or business name in order to sell it to the legitimate user. The law which prevents one person "passing-off" goods, services or a website as belonging to another applies in this situation, as was shown by the decision of the English Court of Appeal in British Telecom-v One in a Million Ltd. The defendants in this case had registered domain names such as bt.org which they offered to sell to the plaintiffs for £4,700. The court ordered this domain name and others to be transferred to the rightful owners.
Controversy now centres on the reality that many companies and individuals may be legitimately entitled to use the same domain name. There are a numerous potential claimants - from detergent manufacturers to individuals - to the domain name sun.com but only one (the IT company) gets to use it. The person or company that registers a particular domain name may not be the most prominent user of that name, but that does not mean that anything illegal is going on. In the US case of Gateway 2000 -v Gateway.com the computer manufacturer was refused an injunction against a computer consultant who legitimately used the domain name gateway.com for his business. Disputes of this kind may become less common when more generic domains such as .firm or .web are available, but efforts to implement these domains have been stymied by a dispute between the EU and the US.
The Irish domain .ie has obvious attractions for any Irish person or business. The Irish domain name registry is currently managed by UCD, although it is proposed that it will become independent shortly. The rules for registering an Irish domain names have several interesting features, including that the "first come, first served rule" applies only in a limited way. This is the pragmatic rule that the first person to apply to register a domain name (or a trademark, or a patent) is the person entitled to use it. It was endorsed by the High Court in Zockall -v Telecom Eireann which related to the registration of alphanumeric phone numbers such as 1-800-FLOWERS. The first to apply for this particular number was an English company but Telecom Eireann felt that an American should get the number. The High Court held that the "first come, first served rule" applied and the English company got 1-800-FLOWERS and some 270 other numbers.
In contrast, the Irish domain name registry states that if it is likely that a proposed domain name will be claimed by somebody else then another domain name must be chosen. The problem here is that often the most useful and striking domain names are precisely those that will be claimed by several different (and legally entitled) users. The most interesting feature of the rules is the way in which they treat individuals. A complete trademark, company or business name can be registered as a domain name, but an individual can register only initials followed by a number. So I cannot register the obvious deniskelleher.ie but must instead register the cryptic dk01.ie. This is a provision which is not explained by the Trademark Act 1996, in which section 15 says that the owner of a trademark may not prevent an individual from using his name or address. This suggests that an individual who registered his or her own name as a domain could not be displaced by a trademark owner who wished to register the same name. This suggestion would receive some support from the English Court of Appeal in One in a Million. More significantly, the Irish Constitution guarantees equal treatment to all citizens - individuals, companies and trademark owners alike. A particularly noteworthy example of unequal treatment is that a politician can register a personal name, such as danascallon.ie, but a mere voter must be satisfied with ds01.ie. It should also be remembered that the Constitution guarantees to protect the good name of Irish citizens.
There is a variety of other legislation which may be applied to the rules. One example is the Right of Establishment contained in European law, which allows a French or a German person to set up a business in Ireland. This might run counter to the registry's rule that only Irish citizens can register domain names as individuals. The question of whether or not the registry has a dominant position in the Irish market for domain names is an issue for economists as opposed to lawyers. But if it is in such a position then it might be argued that the rules amount to an abuse of that dominant position, which is prohibited by section 4 of the Competition Act 1991. Section 5 of that Act suggests situations which may amount to abuse of dominant position, such as: imposing unfair prices or other unfair conditions; limiting markets or technical development to the prejudice of consumers; applying dissimilar conditions to equivalent transactions; and, making the conclusion of contracts subject to supplemental obligations.
The rules for registration may change if the Department of Public Enterprise's proposals on electronic signatures, contracts and certification service provision are introduced into law. Under Section 18 of the current proposals the Minister for Public Enterprise will have the power to introduce regulations to provide for: the designation of registration authorities; the general form in which domain names can be registered; provisions for renewing registrations; the circumstances and manner in which applications to register a domain name may be granted or refused; appeals from such decisions; and the fees which may be charged.
One of the most important questions in an Irish context is whether or not a domain name can be defined as "property". If domain names are property then the rights of their owners are protected by the Constitution. A particular point of interest is who ultimately owns the database which contains the Irish register of domain names.
If it is privately owned, then any attempt by the Government to regulate the registry's activities might be viewed as an "unjust attack" on the property rights of the registry's owners. The US government has made it clear that the equivalent US databases are publicly owned. Similarly, Irish phone numbers are now administered by the Office of the Director of Telecommunications Regulation and not by Eircom. It is essential that the Department of Public Enterprise should assert the public ownership of this database as soon as possible.
Denis Kelleher BL (www.ncirl.ie/itlaw) is a practising barrister and co-author with Karen Murray BL of Information Technology Law in Ireland and IT Law in the European Union