RE: [gnso-raa-b] Is there any revision to the US supreme court ruling of 2000 that "Internet domain names are a new form of intellectual property"?

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

Good discussion. Some additional random thoughts:

  *   I believe that when the Umbro decision came down ten years ago NSI still 
ran .com, prior to its acquisition by VeriSign. At any rate, VeriSign now runs 
the .com registry, and VS is a Delaware Corporation headquartered in Mountain 
View, CA. So if VS were sued over a .com domain nowadays the suit would likely 
be brought in CA (9th Circuit), or perhaps (but less likely) in DE. In any 
event, Umbro would not control and the decision could easily go the other way.
  *   While property rights are created in the U.S. by state law, the fact that 
the federal Anticybersquatting Consumer Protection Act (ACPA) provides for in 
rem jurisdiction for a domain (over the thing, not the person) could be read by 
a court as indicating a Congressional belief that a domain is a form of 
property, since in rem jurisdiction generally applies only to property.
  *   Regardless of whether a domain is intellectual property, it is still an 
intangible asset that has property-like attributes -- a bundle of rights attach 
to the domain, and the registrant has the right to exclude others from using 
the domain.
  *   Domains are treated in the secondary market as very valuable assets, with 
some selling for $millions -- a value that would not likely be accorded to a 
mere contract right/address. Courts would like to how society at large treats a 
new type of asset in determining its status.
  *   I don't see any reason why the NSI contract clause cited below wouldn't 
be able to be exercised even if a domain is property, as it just provides that 
NSI can withdraw its registrar services from a domain under certain 
circumstances (it does not transfer ultimate control of the domain away from 
the registrant, who is free to seek transfer to another registrar). The real 
additional liability for registrars is that, if domains are property, their 
liability might be greater if their mis- or malfeasance results in a domain 
being stolen or otherwise misappropriated.

Overall, my guess would  be that the U.S. Supreme Court, if ever presented with 
the question, would find domains to be a form of property.





Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

________________________________
From: owner-gnso-raa-b@xxxxxxxxx [owner-gnso-raa-b@xxxxxxxxx] on behalf of 
Trachtenberg, Marc H. [MTrachtenberg@xxxxxxxxxxx]
Sent: Thursday, August 19, 2010 6:19 PM
To: Hammock, Statton; Sivasubramanian M; gnso-raa-b@xxxxxxxxx
Subject: RE: [gnso-raa-b] Is there any revision to the US supreme court ruling 
of 2000 that "Internet domain names are a new form of intellectual property"?

Statton,

Kremin, v. Cohen, which held that domain names are property was a 9th Circuit 
decision.  The 9th Circuit includes more than just California.  It also 
includes Washington, Oregon, Montana, Idaho, Nevada, and Arizona. Accordingly, 
this is the law not only in California, but in these other states as well.

Best regards,

Marc H. Trachtenberg

Winston & Strawn LLP
35 W. Wacker Drive
Chicago, IL 60601-9703

D: +1 (312) 558-7964

M: +1 (773) 677-3305

F: +1 (312) 558-5700

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[Winston & Strawn LLP]
From: Hammock, Statton [mailto:shammock@xxxxxxxxxxxxxxxxxxxx]
Sent: Thursday, August 19, 2010 4:51 PM
To: Trachtenberg, Marc H.; Sivasubramanian M; gnso-raa-b@xxxxxxxxx
Subject: RE: [gnso-raa-b] Is there any revision to the US supreme court ruling 
of 2000 that "Internet domain names are a new form of intellectual property"?

Marc and Mike,

Thanks for adding your comments.

I am aware of these cases and the fact that courts in California have fashioned 
a different line of caselaw that edge domains closer to a property interest in 
under certain contexts (bankruptcy, for example). Nonetheless, the Umbro line 
is what applies in Virginia and in many other jurisdictions and Ifelt it
appropriate to cite it since Siva was inquiring about the application of the 
Network Solutions Service Agreement.

Best,

Statton

 Statton Hammock
 Sr. Director, Law, Policy & Business Affairs
[http://www.networksolutionsretail.com/signature/netsollogo09.gif]

P 703-668-5515  M 703-624-5031 
www.networksolutions.com<http://www.networksolutions.com>



From: Trachtenberg, Marc H. [mailto:MTrachtenberg@xxxxxxxxxxx]
Sent: Thursday, August 19, 2010 5:41 PM
To: Hammock, Statton; Sivasubramanian M; gnso-raa-b@xxxxxxxxx
Subject: RE: [gnso-raa-b] Is there any revision to the US supreme court ruling 
of 2000 that "Internet domain names are a new form of intellectual property"?

Statton,

While that interpretation is certainly the most favorable to registrars, I do 
not think that it is supported in the case law.  There are a number of cases 
after the cases you cited that you conveniently left out, such as:

Kremin v. Cohen, 325 F.3d 1035 (9th Cir. 2003) – The Ninth Circuit Court of 
Appeals definitively answered that a domain name was property and therefore 
could support a claim for conversion.

 Office Depot, Inc. v. Zuccarini, 621 F. Supp. 2d 773 (N.D. Cal. 2007) – 
District Court for the Northern District of California holds that domain names 
are property subject to levying to satisfy a judgment under California state 
law and are located  in the location of both the registrar and the registry

Bosh v. Zavala, C.D. Cal., No. 2:08-cv-04851 – central District of California 
rules that domain names are personal property subject to California’s turnover 
law, located in the ND of CA and can be levied to satisfy a judgment, and 
orders transfer of almost 800 domain names to NBA superstar Chris Bosh to 
satisfy judgment against squatter who registered chrisbosh.com in violation of 
ACPA.*

*disclaimer – this was my case.

Best regards,

Marc H. Trachtenberg

Winston & Strawn LLP
35 W. Wacker Drive
Chicago, IL 60601-9703

D: +1 (312) 558-7964

M: +1 (773) 677-3305

F: +1 (312) 558-5700

Bio<http://www.winston.com/index.cfm?contentID=24&itemID=15281> | 
VCard<http://www.winston.com/sitefiles/wsvcard/15281.vcf> | 
Email<mailto:mtrachtenberg@xxxxxxxxxxx> | 
www.winston.com<http://www.winston.com>

Follow us on Twitter twitter.com/winstonadlaw<http://twitter.com/winstonadlaw>

[Winston & Strawn LLP]
From: owner-gnso-raa-b@xxxxxxxxx [mailto:owner-gnso-raa-b@xxxxxxxxx] On Behalf 
Of Hammock, Statton
Sent: Thursday, August 19, 2010 4:16 PM
To: Sivasubramanian M; gnso-raa-b@xxxxxxxxx
Subject: RE: [gnso-raa-b] Is there any revision to the US supreme court ruling 
of 2000 that "Internet domain names are a new form of intellectual property"?

Siva,

I’ll try to answer your question.

A domain name is not property of any sort – it is a contract right that does 
not exist separate and apart from the services performed by a registrar.  
Wornow v. Register.com, Inc., 2004 N.Y. Slip. Op. 04776 (App. Div., June 8, 
2004) (citing Network Solutions, Inc. v. Umbro Int’l, Inc., 259 Va. 759, 770, 
529 S.E.2d 80, 86 (2000)).  Other court decisions have held that a domain name 
is simply an address.  It is valueless apart from the content or goodwill to 
which it is attached.  A domain name that is not a trademark entails only 
contract, not property rights.  Thus, a domain name registration is the product 
of a contract for services between the registrar and registrant.  Dorer v. 
Arel, 60 F. Supp. 2d 558, 561 (E.D. Va. 1999).  When the contract between a 
registrar and registrant expires or terminates, the domain name ceases to 
exist.  Property, on the other hand, does not cease to exist merely because 
services associated with the property come to an end.

            Because a domain name is a product of a contract for services, the 
disposition of the domain name is a function of the terms of the contract.  For 
instance, Network Solutions’ current Service Agreement with registrants 
provides:

10. TERMINATION.

a. By You. You may terminate this Agreement upon at least thirty (30) days 
written notice to Network Solutions for any reason.

b. By Us. We may terminate this Agreement or any part of the Network Solutions 
services at any time in the event you breach any obligation hereunder, fail to 
respond within ten (10) calendar days to an inquiry from us concerning the 
accuracy or completeness of the information referred to in Section 4 of this 
Agreement, if we determine in our sole discretion that you have violated the 
Network Solutions Acceptable Use Policy, which is located on our Website at 
http://www.networksolutions.com/legal/aup.jsp and is incorporated herein and 
made part of this Agreement by reference, or upon thirty (30) days prior 
written notice if we terminate or significantly alter a product or service 
offering.

Thus, Network Solutions has the power and authority to terminate its 
registration services, under some circumstances, as provided in its Service 
Agreement.

The language from the Network Solutions agreement you cited is more than ten 
years old and is very much out of date.

I hope this is helpful.

 Statton Hammock
 Sr. Director, Law, Policy & Business Affairs
[http://www.networksolutionsretail.com/signature/netsollogo09.gif]

P 703-668-5515  M 703-624-5031 
www.networksolutions.com<http://www.networksolutions.com>



From: owner-gnso-raa-b@xxxxxxxxx [mailto:owner-gnso-raa-b@xxxxxxxxx] On Behalf 
Of Sivasubramanian M
Sent: Thursday, August 19, 2010 4:34 PM
To: gnso-raa-b@xxxxxxxxx
Subject: [gnso-raa-b] Is there any revision to the US supreme court ruling of 
2000 that "Internet domain names are a new form of intellectual property"?

Hello

There is a very old report at page http://news.cnet.com/2010-1071-281311.html 
that says that in the year 2000, the US supreme court reversed a 1999 circuit 
court ruling that "Internet domain names are a new form of intellectual 
property".

1)  Is there any revision on this US supreme court ruling that domain names are 
not intellectual property ? Is ICANN's position on ownership of a domain name 
entirely governed by the US Supreme Court decision of 2000 or later, if revised?

2) This report also says that Network Solutions revised its Domain Registration 
Agreement (based on the Supreme Court ruling ??? ) in Nov 1999 which gave the 
company sweeping rights such as. The agreement states:

• NSI may terminate "domain name registration services" if the registrant uses 
them for "any improper purpose, as determined in our sole discretion." The term 
"improper" is left open for NSI to interpret.

Ten years later, in 2010, is this power to terminate a domain name with the 
Registrar, Registry or with ICANN ?

Sivasubramanian M
http://www.isocmadras.com
facebook: http://is.gd/x8Sh
LinkedIn: http://is.gd/x8U6
Twitter: http://is.gd/x8Vz


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The contents of this message may be privileged and confidential. Therefore, if 
this message has been received in error, please delete it without reading it. 
Your receipt of this message is not intended to waive any applicable privilege. 
Please do not disseminate this message without the permission of the author.
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