Lots in a name

At least 14 of the top 500 US companies are reported to have lost the right to use their name on the Internet. And around 50 per cent of these companies have yet to register company names. Even the likes of Microsoft have been caught; a student in Utah operated an Internet site called "Windows95" without Microsoft's permission.

Instances of name stealing on the Internet are increasing. As no two addresses can be identical, the first to register an Internet address, called a "domain name", is generally given that name. The domain name is crucial as it is the base address for email and acts as the Web site or 'shop window' for a company on the Internet. Once the name is registered, the unscrupulous demand money for the name from its rightful owner.

A typical Internet address would look like dac@daclondon.co.uk. The characters to the left of the @ symbol are the user's ID and the characters to the right are the organisation's domain name. Domain names are subdivided into sub-domains and may end "com" where the name will be globally unique. ".com" indicates that this domain name is a commercial entity; other entities can include "edu" for education and "gov" for government bodies. Each entity grouping is handled by a different registration authority.

The "co.uk" sub-domain shows the domain is unique within the UK only. UK sub-domains are handled by EUnet GB and generally via your Internet service provider. "Com" domains are handled by a body called InterNic, a non-profit organisation based in Virginia.

The best domain name is the one that the company is already known by so potential site users can guess and remember it easily, for example "BurgerKing" or "CommercialUnion".

But what if another company chooses your name? Many US organisations have been registering their domains as "com" so they are registered world-wide, purely as a defensive measure. Finding that someone else has already registered your name can mean that email may go missing, including confidential messages, and business may be routed to the wrong company. The "Windows95" site is reported to have attracted one million visits a day.

Although the organisations that register domain names are demanding more information from an applicant to justify its choice of name, they do not have the resources to sift through all applications for conflicts. Applicants must certify that the use of their name will not violate trade mark or other statutes.

However, pirates and pranksters ignore this. Well known victims have included McDonalds "ronald@mcdonalds.com" and Coca-Cola "coke.com". These domain names are reported to have had no legitimate connection with McDonalds and Coca-Cola.

By submitting an application to InterNic or one of the other regional registries, the applicant is agreeing to a dispute resolution procedure and to any future changes in this procedure. In the US, if a company can prove it already holds a trade mark registration identical to a domain someone else has registered, the trade mark owner can seek reassignment of the domain name via InterNic or another registration authority. In the absence of proof of ownership by the domain name holder, the domain name should be deregistered. However this new disputes procedure is only available in the US.

UK courts could have the power to resolve a name dispute if the domain name holder is trading. But if the domain name pirate does not intend to trade using the name, just to prevent the rightful holder from using the name, there is little UK courts can do yet. Potential causes of action in the UK would be trade mark infringement, passing off and interference with contractual relations.

Where two companies use the same brand or name in different countries, territory can be divided between the two companies so that each registers for those countries in which it trades. Neither company should be entitled to the global sub-domain "com". This is, of course, dependant on the companies being aware of each other and neither getting a "com" registration to preclude the other. InterNic should be able to force the "com" holder to surrender in return for the sub-domain "uk" or wherever the company can prove it has trade mark registrations.

A few ways to protect names from the pirates include:

conduct an Internet search under the more obvious names for the company;

have protective registrations of the company's trading names and brands as domain names;

register the company's trading names and brands as trade marks and possibly seek additional registration for on-line services.

To see if a name is registered, check InterNic on http://www. sunvan.net/support/whois.html or EUnet GB on http://www. britain.eu.net/namingco/whois- form.html. Registrations were running at 400 per month in 1993 and by the end of 1995, it was expected to rise to 20,000 per month. If anything, the increase in registrations is going to lead to more disputes.