INTERACTIVE: CONGRESS EXAMINES SELECTION OF DOMAIN NAMES: TRADEMARK HOLDERS AND WEB PIONEERS CLASH OVER REGISTRATION

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The growth of the Internet as a commercial medium is forcing Congress to look at the unfettered registration of Internet domain names that may infringe on trademarks.

However, while marketers and some Web coalitions are urging Congress to act, even they admit that decisions will take time.

At a hearing earlier this month, the House Judiciary Committee's Subcommittee on Courts & Intellectual Property examined the collision between marketers finding their trademarks in use on the Web and companies who legally registered domain names when the Internet was young.

While so-called "cyber-squatters" -- individuals who purposely register well-known marketer trademarks in the hope of exacting a ransom -- were mentioned, most of the real problems concerned competing name claims.

John Wood, senior Internet consultant for U.K. technology company Prince plc, described how his company registered for the site www.prince.com in 1995. Two years later, the company found itself spending $100,000 to defend itself from Prince Sports Group's challenge to its use of the domain name.

Prince Sports Group, a maker of tennis rackets, claimed Prince plc infringed on its trademark. It eventually dropped the challenge.

Gabriel Battista, CEO of Network Solutions, which assigns domain names, testified that the Internet was created as a scientific network with no consideration of domain names as trademarks.

FEW SOLUTIONS

As commerce hit the Web, trademark issues became obvious.

Mr. Wood noted there is no clear venue to resolve disputes from a Web that reaches 170 countries, all exercising different trademark rules, with additional trademarks coming from state or local registrations and common law use.

Even determining which courts have jurisdiction can be difficult, with costly implications, he said. He noted that in his case, Prince plc is a U.K. company, yet Prince Sports Group, a U.S. company, challenged in the U.S.

While Mr. Battista said Network Solutions has started a procedure to resolve complaints, Michael Kirk, executive director of the American Intellectual Property Law Association, said much needs to be done, especially for international disputes.

U.S. SHOULD BE LEADING POLICY

"The government of the U.S. should take a lead in developing a policy," he said. "An international framework should be established with the presence of government as quickly as possible."

Bruce Lehman, assistant secretary of commerce and commissioner of patents and trademarks, said various international groups are studying the issues and some have made recommendations, but the U.S. has yet to commit to any solution. He noted that some of the problems over domain names may be alleviated with the addition of new suffixes such as .store and .biz, which will complement the existing .com, .org and other domain name suffixes.

However, Doug Wood, an attorney for the Coalition for Advertising Supported Information & Entertainment, warned that the new names could help cybersquatters. He urged the panel and the government to proceed slowly, and recommended that a new procedure be adopted that provides notice of registrations and gives the opportunity for challenges.

Subcommittee Chairman Howard Coble (R., N.C.) said he expects to hold another

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