Archived Domain Name Disputes
NOTE: The content provided on this page is archived from 1998.
The Whole Story, Told in Sequence It’s always enlightening to place information in context of time. This is an effort to construct a chronological history of domain name disputes, using all possible on-line documentation and resources. I’ve kept my own commentary to a severe minimum (so far!).
Most of the links generally lead to the same information as those on the disputes-by-category page but they’re in chronological order; also this page includes relevant policies and is overall much more inclusive of documentary details.
- At the moment, every entry is a link to another site. Later, copyrights permitting, I will try to include as much material as possible on the domains.org site, and I’ll also add notes at their appropriate dates, for significant events and materials for which I have found no online document.
- Entries are categorized as POLICY, LEGAL DOCUMENT, ARTICLE, ANALYSIS, etc. in color-coded capitals before each one.
- Where you see numbers in brackets , , etc., the numbers link to the same document at different locations.
- Entries are usually followed by parentheses containing the domain names or issues to which the article or document refers. Using your browser’s “Find” function to locate “dci.com” will therefore lead to most of the entries which touch upon that subject.
“This memorandum is intended to stimulate discussion, not simulate it.” RFC 799
PROPOSED POLICY: September 1981: RFC 799: Internet Name Domains by D. L. Mills “In the long run, it will not be practicable for every internet host to include all internet hosts in its name-address tables. Even now, with over four hundred names and nicknames in the combined ARPANET-DCNET tables, this has become awkward. Some sort of hierarchical name-space partitioning can easily be devised to deal with this problem; however, it has been wickedly difficult to find one compatible with the known mail systems throughout the community. The one proposed here is the product of several discussions and meetings and is believed both compatible with existing systems and extensible for future systems involving thousands of hosts.” [This is probably the original introduction of the idea of domain names as they now exist. – DL]
“The need for domain names As applications grow to span multiple hosts, then networks, and finally internets, these applications must also span multiple administrative boundaries and related methods of operation (protocols, data formats, etc.). The number of resources (for example mailboxes), the number of locations for resources, and the diversity of such an environment cause formidable problems when we wish to create consistent methods for referencing particular resources that are similar but scattered throughout the environment.” RFC 882
POLICY: November 1983: RFC 881: The Domain Names Plan and Schedule by J. Postel “Domain style names are being introduced in the Internet to allow a controlled delegation of the authority and responsibility for adding hosts to the system. This also allows a subdivision of the task of maintaining information about hosts.”POLICY: November 1983: RFC 882: Domain Names: Concepts and Facilities “This RFC introduces domain style names, their use for ARPA Internet mail and host address support, and the protocols and servers used to implement domain name facilities. This memo describes the conceptual framework of the domain system and some uses, but it omits many uses, fields, and implementation details. A complete specification of formats, timeouts, etc. is presented in RFC 883, “Domain Names – Implementation and Specification”. That RFC assumes that the reader is familiar with the concepts discussed in this memo.”
POLICY: November 1983: RFC 883: Domain Names – Implementation and Specification “This memo discusses the implementation of domain name servers and resolvers, specifies the format of transactions, and discusses the use of domain names in the context of existing mail systems and other network software.”
“The Purpose of Domains: Domains are administrative entities. The purpose and expected use of domains is to divide the name management required of a central administration and assign it to sub-administrations. RFC 920
POLICY: October 1984: RFC 920: Domain Requirements by J. Postel and J. Reynolds “Status of this Memo: This memo is a policy statement on the requirements of establishing a new domain in the ARPA-Internet and the DARPA research community. This is an official policy statement of the IAB and the DARPA. Distribution of this memo is unlimited. Introduction: This memo restates and refines the requirements on establishing a Domain first described in RFC-881 . It adds considerable detail to that discussion, and introduces the limited set of top level domains.”
“These guidelines haven’t changed any of the flexibility of the system.” RFC 973
POLICY: January 1986: RFC 973: Domain System Changes and Observations “This RFC documents updates to Domain Name System specifications RFC-882  and RFC-883 , suggests some operational guidelines, and discusses some experiences and problem areas in the present system. Distribution of this memo is unlimited. This document includes all changes to the Domain System through January, 1986.”
“… However, the domain system is intentionally extensible. Researchers are continuously proposing, implementing and experimenting with new data types, query types, classes, functions, etc. Thus while the components of the official protocol are expected to stay essentially unchanged and operate as a production service, experimental behavior should always be expected in extensions beyond the official protocol.” RFC 1034
ARTICLE: (undated) 1987: Introduction to the Internet Protocols: Keeping track of names and information: the domain system by Charles L. HedrickPOLICY: November 1987: RFC 1034: Domain Names – Concepts and Facilities “Obsoletes: RFCs 882, 883, 973 … This RFC is an introduction to the Domain Name System (DNS), and omits many details which can be found in a companion RFC, “Domain Names – Implementation and Specification” [RFC-1035]. That RFC assumes that the reader is familiar with the concepts discussed in this memo.”
POLICY: November 1987: RFC 1035: Domain Names – Implementation and Specification “This RFC describes the details of the domain system and protocol, and assumes that the reader is familiar with the concepts discussed in a companion RFC, “Domain Names – Concepts and Facilities” [RFC-1034].”
POLICY: 1 January 1993: NSF Cooperative Agreement No. NCR-9218742 This was the original contract between the U.S. Government (NSF) and NSI: “This agreement is entered into between the United States of America, Hereinafter called the Government, represented by the National Science Foundation, hereinafter called the Foundation or NSF, and Network Solutions, Incorporated, hereinafter called the Awardee. ” … G. Possible future changes in the registration services provided under this Agreement may include, but shall not be limited to, the use of alternate registration/numbering systems or schemes and the imposition of a user based fee structure. However, in no case shall any user based fee structure be imposed or changed without the express direction/approval of the NSF Program Official. “POLICY: March 1993: RFC 1400: Transition and Modernization of the Internet Registration Service (InterNIC/NSI)
LEGAL DOCUMENT: 9 December 1993: Playboy v. Frena: Order An early case which established trademark infringement on a bulletin board system.
“The InterNIC has facilitated the illegal use of the Marks by first allowing, and then refusing to reassign the domain name, ‘knowledgenet.com.'” Amended Complaint
POLICY: March 1994: RFC 1591: Domain Name System Structure and Delegation by J. Postel    LEGAL DOCUMENT: 28 March 1994: Sega Enterprises v. Maphia, et al: Findings in Support of Seizure and Preliminary Injunction Another early case which established trademark infringement on a bulletin board system.
POLICY: 1 April 1994 thru 31 March 1995: NSF Cooperative Agreement No. NCR-9218742, Amendment 1 “This amendment increases the funds available under Cooperative Agreement No. NCR-9218742 by $1,258,457.”
LEGAL DOCUMENT: 12 December 1994: KnowledgeNet Inc. v. Boone, NSI, Digital Express: Amended Complaint (knowledgenet.com) This lawsuit was the first to name NSI in a trademark-related complaint and influenced NSI’s adoption of its controversial domain name dispute policy which gave inordinate precedence to trademark claims.
“A related but distinct area of potential conflict arises when there is a domain name in which no one has any particular accumulated goodwill, and starts to use it. Examples might be flowers.com or attorney.com. One can assume that there will sooner or later be squabbles between people who want to exclude other people from using similar domain names (e.g. flower.com or attorneys.com) on the grounds that it will lead to confusion.” Carl Oppedahl, February 1995 New York Law Journal: Internet Domain Names that Infringe Trademarks
POLICY: 4 January 1995: NSF Cooperative Agreement No. NCR-9218742, Amendment 2(Personnel changes.)
POLICY: 1 April 1995 thru 31 March 1996: NSF Cooperative Agreement No. NCR-9218742, Amendment 3 “The Cooperative Agreement, as amended, is further amended as follows: “Under Article 8.B1., delete $2,420,702, and substitute $4,369,334, of which [ Proprietary Figure Omitted ]”Under Article 8.C., delete $2,420,702 and substitute $4,369,334. By this amendment, $1,948,632 covers performance through September 30, 1995. “It is understood that funding for Awardees performance beyond September 30, 1995 will require either the allotment of additional funds or NSF approval to initiate fees for registration services in accordance with Article 3.G. of the Cooperative Agreement. “ (“Proprietary Figure Omitted”??? – DL)
POLICY: 13 September 1995: Re: NSF Cooperative Agreement No. NCR-9218742, Amendment 4, Response to Mitchell “SUBJECT: Imposition of Fees for Second Level Domain Name Registrations”
POLICY: 13 September 1995: NSF Cooperative Agreement No. NCR-9218742, Amendment 4 “The purpose of this amendment is to modify the agreement to allow for the collection of user fees for registration services and establish the provisions for the use, disbursement and accountability of Program Income generated by such fees.”
POLICY: 15 November 1995: The InterNIC Guardian by J.Singh and M.Kosters “1. Introduction This document proposes a model to authorize changes made to the Objects (Domains, Networks, Autonomous System Numbers, and Hosts) registered with the InterNIC. The registration activity at the InterNIC has increased exponentially with the rapid growth of the Internet. In the absence of a formal authorization model, the likelihood of making malicious changes to the registered Objects has also increased and could have serious consequences at the affected sites. For example, an unauthorized update could lead a commercial organization to lose its presence on the Internet until that update is reversed.”
“Network Solutions was sued by a disgruntled applicant and registered trademark owner, KnowledgeNet, Inc., when it discovered that knowledgenet.com had already been taken by a consultant in Virginia. Partly in response to that suit, Network Solutions adopted a policy on domain names that has two central themes. It requires applicants to indemnify Network Solutions, and it gives preference to the owners of federally registered trademarks in disputes over domain names.” Mark Vorhees, March 1996 InfoLawAlert: Internet Name Policy Draws Suit it was Intended to Avoid
“Trademarks are registered in a system that permits many companies to share a name legitimately without interfering with each other, such as Sun Photo, Sun Oil and Sun Microsystems. Domain names only permit one user of a name; there is only one sun.com, which Sun Microsystems registered first. Neither lawyers nor governments can make ten pounds of names fit into a one-pound bag. “Like trademarks, Internet names have traditionally been assigned first come, first served. Users of these names must be permitted to use any unassigned name unless they use it in a way that actually infringes on a trademark. If roadrunner.com sells cartoons or Acme Anvils, it is in trouble; if it sells computers, Warner Brothers has no legitimate complaint. Network Solutions Incorporated (NSI) has shown itself poor at adjudicating such complaints. That is a job for the courts, which have procedural protections for the innocent as well as proper punishments for the guilty.” John Gilmore July 1996Letter to The Economist
POLICY: 12 February 1996: U.S. Patent and Trademark Office: Registration of Domain Names in the Trademark Office [The USPTO no longer provides this document on its website, and indicates it is under revision – 27 March 1997]
LEGAL DOCUMENT: 26 March 1996: Roadrunner v. NSI: Complaint (roadrunner.com)  
LEGAL DOCUMENT: 12 April 1996: Listing of Federal “Roadrunner” Trademarks (roadrunner.com)Provided to the court by Carl Oppedahl.
LEGAL DOCUMENT: 1 May 1996: Roadrunner v. NSI: Scheduling Order (roadrunner.com)
LEGAL DOCUMENT: 15 May 1996: Hearst v. Ari Goldberger: Complaint (esqwire.com)
LEGAL DOCUMENT: 30 May 1996: Giacalone v. NSI and Ty, Inc.: Complaint (ty.com)   
LEGAL DOCUMENT: 12 June 1996: Clue Computing Inc. v. NSI: Complaint (clue.com)
LEGAL DOCUMENT: 1 July 1996 (effective date): State of Georgia HB1630: Computer or Telephone Network; Transmitting Misleading Data Part of this controversial law refers to trademarks and may have impact upon domain names.
LEGAL DOCUMENT: 3 July 1996: Letter to InterNIC from Hearst Corp. (esqwire.com)
LEGAL DOCUMENT: 9 Sept 1996: Bensusan Restaurant v. Richard B. King d/b/a The Blue Note: Dismissal of Complaint (thebluenote.com) For an analysis, see http://cla.org/CaseDevlps/2cir.n22.htm, subheading No Jurisdiction In New York Courts Over Missouri Web Site.
LEGAL DOCUMENT: 25 September 1996: Hearst Corp. v. Ari Goldberger: Defendant’s Memorandum In Reply To Plaintiff’s Memorandum In Opposition To Defendant’s Motions To Dismiss For Lack Of Personal Jurisdiction, Improper Venue, Failure To State A Claim Or, Alternatively To Transfer Venue; And In Opposition To Plaintiff’s Alternative Cross-Motion For A Continuance Pursuant To Federal Rule 56(F) (esqwire.com) (Say that real fast three times. – DL)
ARTICLE: 22 October 1996: New York Law Journal: Remedies in Internet Domain Name Trademark Lawsuits by Carl Oppedahl (actmedia.com) (intermatic.com) (americanstandard.com) (panavision.com) (avon.com)  
LEGAL DOCUMENT: 1 November 1996: Panavision International v. Toeppen and NSI: (1) Order Granting In Part And Denying In Part Plaintiff Panavision’s Motion For Summary Judgment; (2) Order Granting In Part And Denying In Part Defendant Toeppen’s Motion For Summary Judgment: (panavision.com)
LEGAL DOCUMENT: 25 November 1996: Pike v. NSI and FSPEC: Complaint (pike.com)
PROPOSED POLICY: 4 December 1996: INTA: Proposed Domain Name Registry Policy
“A draft proposal published last month aimed to vastly increase the number of Internet domain names and make it easier and cheaper to register them. … In addition, the proposals would force users to wait 60 days for a requested domain name to allow for a trademark search: A temporary name could be used in the interim. However, critics argue that the wait is pointless, since such a move will not prevent trademark-related lawsuits.” Kenneth Cukier February 1997 Communications Week: Internet row prompts major shake-up
POLICY: 6 January 1997: NSF Cooperative Agreement No. NCR-9218742, Amendment 5 “… The Foundation hereby approves payment of the Awardee’s invoice covering litigation costs with Knowledgenet, Inc. in the (reduced) amount of $74,617. This amount includes only the actual cost of the litigation and associated fee amount. …” (Yes, that’s right, NSI’s litigation was paid-for with public funds. – DL)
PROPOSED POLICY: 14 January 1997: NSI Response to IAHC Draft Proposal
ANALYSIS: 13 February 1997: Remedies in Domain Name Lawsuits: How is a domain name like a cow? by Carl Oppedahl (This is a masterful piece which discusses the character of domain names as they relate to trademark legalities. – DL)
DOCKET: The Hearst Corporation v. Ari Goldberger (esqwire.com) (Last entry 7 March 1997 at last check.)
LEGAL DOCUMENT: 24 March 1997: Image Online Design v. IANA, et al: (Amended, Includes additional causes of action beyond the 27 February complaint above) Complaint (.web TLD) (competitive domain registration)