GeoPublishers.Com Legal Talk

Running any business means, occasionally, you bump into legal problems. For website owners, and especially it seems for geodomainers, there are more legal pitfalls out there than you might have imagined. Over the next few weeks, on the member-only pages, we will be discussing these in more detail. Feedback is welcome, in fact it’s essential, because sharing your thoughts and experiences will help all members to be better informed in these increasingly litigious days. While we won’t be providing legal advice, we will tell you what’s happening in the courts and what you need to do to stay safe.

Andrew Martin
Executive Director

Domain names are “property”

No surprise there, you might think. But this is in fact a very recent pronouncement and it has major implications for owners of domain names. This case involved a dispute over who owned a particular .com name. That piece of the puzzle is yet to be resolved. What has been decided, though, is that domestic courts can, depending on the local legislation, be the correct body to hear these disputes. Specifically, because Ontario (Canada) law gives Ontario courts jurisdiction over “intangible personal property” then if a domain name is registered in the province by a registrar also located there, ownership disputes can be tried in those courts. This is significant on at least three levels:

· domain names have a clear legal status, which may increase their value and which may enable them to be used as assets for collateral and security
· in legal systems with similar provisions, it will be possible to pursue ownership and other disputes through the courts, rather than the WIPO Uniform Domain Name Dispute Resolution Policy which can be less extensive in the evidence it allows and less likely to be able to enforce its decisions than a court
· it could and probably should influence the country/state/province of registration, although it doesn’t mean that local courts will be anything other than objective because there are still guidelines and rules that will shape the eventual outcome

Can governments claim or challenge the ownership and use of domain names?

The reflexive answer may be “hell, no”, but it isn’t that simple. There are several disputes we’re aware of, in the US and Europe.

First, to the Tourist Office of Verbier, In Switzerland, which is challenging a local businessman’s registration and use of verbier.com as an information and destination site. The Office, which operates verbier.ch and claims that this is the only official site for the town, has rolled out several arguments. They claim that there is confusion among both local people and tourists over who is the proper provider of information on (by way of examples) exchange rates and snowfall. They also say that as they have the larger marketing and promotion budget, they are not just the appropriate and more reliable source of this and other information, but that to suggest that verbier.com is the largest local online service is “tantamount to false advertising”. And they finish up by saying that they will not tolerate cybersquatting, that local EU and Swiss courts have asserted jurisdiction over such disputes, and that while they will permit longtail domain names based on “verbier”, they will “not allow the usurping of (their) proper name”.

Unlike the first case, discussed above, this could get messy. Depending on where verbier.com is registered, the Swiss courts may have jurisdiction. But the core issue here isn’t actually ownership, but the use of a domain name in a way that allegedly causes confusion. The Tourist Office isn’t demanding surrender of verbier.com (although there are hints that it could ask a court to do that) but it is insisting that it not be used.

Elements of this are playing out in Texas, where galveston.com is owned not by the city or any city agency, but by a company that holds marketing contracts for the Galveston Park Board. The dispute there revolves around multiple domain name registrations that, it’s being claimed, block local businesses from registering their own names. This could branch out into trademark issues, as some of the domain names are almost identical to the names and activities of some of those businesses, which leads to another variation on this theme, because in some countries the trademark legislation does in fact allow the national or local government to prevent businesses from using certain names and symbols. For instance, the Canadian trademark law has been used to control the use of images connected with a children’s story closely identified with that province. It is generally accepted that this would extend to challenging any domain name registrations that touched on any related trademarks.

And, in the US at least and probably most other countries, domain names can be “seized” if they are used for fraudulent activities that include trademark counterfeiting and copyright infringement.

Intermediary liability

You allow user-generated content on your site, and someone screams libel, or copyright infringement. What next? Well, the answer used to be “it depends”, but increasingly it’s getting more certain. The answers vary to some extent in different countries and at different levels of the court system. There is an emerging degree of consensus, though, and it says that site owners will not be liable if they merely flow posted content through. This isn’t a total cop out. If you or your staff are the authors, you will still be liable. That will also likely be the case if you moderate a site because moderating brings with it some responsibility to weed out the bad stuff. And even with an unmoderated site, you may need to take down content that you’ve been told is offensive or infringing. Mostly, though, courts and especially the higher courts are saying that the Internet can’t work if site owners and operators are liable for content posted on forums, blogs, chat rooms and the like. In a recent case, the Canadian Supreme Court (and it was echoing decisions in other countries) ruled that a site owner can’t be liable for hyperlinks to defamatory material because they aren’t actually publishing the content and have no way of knowing what’s at the end of the link. Granted, the vast majority of what flows across a geodomain site is completely innocuous but the cases that ended up in court were almost all involving content posted unasked by visitors. We will be looking at this in more detail, to try and identify rules to keep the risk at zero.