Oppedahl & Larson v. Network Solutions, Inc., Civ.A. 97 N 1496.

• Decision Date: 16 April 1998
• Docket Number: No. Civ.A. 97 N 1496.,No. Civ.A. 97 N 2456.,Civ.A. 97 N 1496.,Civ.A. 97 N 2456.
• Parties: OPPEDAHL & LARSON, Plaintiff, v. NETWORK SOLUTIONS, INC., Defendant.
• Court: U.S. District Court — District of Colorado

3 F.Supp.2d 1147

OPPEDAHL & LARSON, Plaintiff, v. NETWORK SOLUTIONS, INC., Defendant.

No. Civ.A. 97 N 1496.

No. Civ.A. 97 N 2456.

United States District Court, D. Colorado.

April 16, 1998.

Carl Oppedahl, Oppedahl & Larson, Frisco, CO, for Plaintiff.

Kenneth W. Lund, Lawrence M. Zavadil, Holm Roberts & Owen, Denver, CO, for Defendant.

ORDER AND MEMORANDUM OF DECISION

NOTTINGHAM, District Judge.

This is a contract dispute. Plaintiff Oppedahl & Larson asserts five claims against Defendant Network Solutions, Inc. [hereinafter "NSI"], including (1) breach of contract of which Oppedahl & Larson is a third party beneficiary, (2) detrimental reliance, (3) breach of contract to which Oppedahl & Larson is a party, and (4) interference with prospective business relations.¹ Oppedahl &amp Larson also seeks a declaratory judgment determining the legal relationship of the parties. The matter is before the court on (1) Oppedahl & Larson's "Motion for Summary Judgment" filed November 17, 1997, (2) NSI's "Motion to Consolidate" filed November 21, 1997, and (3) NSI's "Motion for Summary Judgment" filed November 25, 1997. Jurisdiction is based on 28 U.S.C.A. §§ 1331 and 1332 (West 1993 & Supp.1998).

FACTS

Beginning April 1, 1993, NSI, pursuant to a Cooperative Agreement with the National Science Foundation ("NSF"), became the registrar of second-level domain names for the .com top-level domain on the Internet.² (Br. in Supp. of Mot. for Summ. J., Statement of Undisputed Material Facts ¶ 1 [filed Nov. 25, 1997] [hereinafter "Def.'s Summ. J. Br."]; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 1.) A domain name is essentially an electronic address at which Internet communications may be received. An example of a second-level domain name in the top-level .com domain is the "patents" in patents.com. (Id., Statement of Undisputed Material Facts ¶ 2; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 2.)

From April 1, 1993, the effective date of the Cooperative Agreement, until September 1995, NSI provided second-level domain name registration services to the general public pursuant to an arrangement whereby the NSF paid NSI on the basis of a cost reimbursement plus fixed fee for registering domain names. (Id., Statement of Undisputed Material Facts ¶ 3; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 3.) NSI received compensation in excess of $4,219,339 under the Cooperative Agreement. (Br. in Supp. of Mot. for Summ. J., Statement of Undisputed Material Facts ¶ 2 [filed Nov. 17, 1997] [hereinafter "Pl.'s Summ. J. Br."]; admitted at Def.'s Opp'n to Pl.'s Mot. for Summ. J., Resp. to Statement of Undisputed Material Facts ¶ 2 [filed Dec. 8, 1997] [hereinafter "Def.'s Resp."].) NSI is the only registrar for the .com domain. (Id., Statement of Undisputed Material Facts ¶ 3; admitted at Def.'s Resp., Resp. to Statement of Undisputed Material Facts ¶ 3.) The .com domain is intended for use by commercial entities, as opposed to, for example, government entities which use the .gov domain and educational institutions which use the .edu domain. (Id., Statement of Undisputed Material Facts ¶ 4; admitted at Def.'s Resp., Resp. to Statement of Undisputed Material Facts ¶ 4.)

Between April 1, 1993, and September 1995, persons who wanted to register second-level domain names with NSI had to request registration of the desired name and provide NSI with relevant technical and administrative information. (Def.'s Summ. J. Br., Statement of Undisputed Material Facts ¶ 4; admitted in pertinent part at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 4.) When NSI began registering second-level domain names, it did so, free of charge to the registrant, on a first-come, first-served basis. (Pl.'s Summ. J. Br., Statement of Undisputed Material Facts ¶ 6; admitted at Def.'s Resp., Resp. to Statement of Undisputed Material Facts ¶ 6.) When NSI received a registration request, it determined whether the requested name had previously been registered. If someone else already held the registration for the requested name, NSI notified the potential registrant and invited an application for an alternative name. The potential registrant either submitted an available domain name — i.e., one that was not already registered by another party — or withdrew the application. (Def.'s Summ. J. Br., Statement of Undisputed Material Facts ¶ 5; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 5.) The process of domain name registration was and is done electronically and automatically, with limited human intervention. (Id., Statement of Undisputed Material Facts ¶ 5; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 5.) If the potential registrant submitted an available name and provided the requested technical and administrative information, NSI entered the requested name and the relevant information into the domain name database. (Id., Statement of Undisputed Material Facts ¶ 6; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 6.)

NSI contends that it did not require nor expect any thing of value or other consideration from the registrant in exchange for performing this name registration service. The NSF paid NSI to register the names on a cost plus fixed-fee basis. According to NSI, the registration application used during the period from April 1, 1993, until September 1995, "[was] purely an administrative form, devoid of any language indicating any expectation of a quid pro quo." (Id., Statement of Undisputed Material Facts ¶¶ 6-7; admitted in pertinent part at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶¶ 6-7.) Oppedahl & Larson does not dispute the content of the registration form, but contends that NSI "received the benefit of having added one more customer to its customer base, which strengthened its position in seeking permission from the NSF to charge annual fees and strengthened its position with respect to its initial public offering of stock." (Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶¶ 6-7.)

On June 7, 1994, Oppedahl & Larson submitted to NSI, via the Internet, its application to register patents.com. Oppedahl & Larson applied, using the standard administrative form NSI used to accept name registrations during the period from April 1, 1993, until September 1995. On June 21, 1994, NSI registered Oppedahl & Larson's requested domain name. (Id., Statement of Undisputed Material Facts ¶¶ 8-9; admitted at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶¶ 8-9; see Ex. H [Oppedahl & Larson's Application], Ex. I [Registration Confirmation from NSI to Oppedahl & Larson].) Oppedahl & Larson paid nothing to NSI to register the patents.com name. (Id., Statement of Undisputed Material Facts ¶ 10; admitted in pertinent part at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 10.) After Oppedahl & Larson registered patents.com, it began use thereof for electronic mail (e-mail) and as a web site providing information about intellectual property law to interested persons who visited the web site. (Pl.'s Summ. J. Br., Statement of Undisputed Material Facts ¶ 9; admitted at Def.'s Resp., Resp. to Statement of Undisputed Material Facts ¶ 9.)³

NSI contends that, at the time Oppedahl & Larson registered patents.com, NSI did not have a dispute policy which would govern if a trademark owner claimed that a domain name assigned to a registrant violated the trademark owner's trademark rights.⁴ (Def.'s Summ. J. Br., Statement of Undisputed Material Facts ¶ 10, Ex. 1 [Graves Aff. ¶¶ 31-32].) Oppedahl & Larson claims that a public document, known as RFC 1591, was located on NSI's web site and set forth its dispute policy.⁵ (Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 10, Attach. [Oppedahl Aff. ¶ 11].) NSI explains that RFC 1591 is a public document, which, although it may have been available on NSI's web site, was not created by NSI.⁶ (Def.'s Reply ¶ 10, Ex. 2 [Oppedahl Dep. at 119-20, 130].)

In July 1995, NSI adopted a Domain Name Dispute Policy [hereinafter "Dispute Policy"]. (Def.'s Summ. J. Br., Statement of Undisputed Material Facts ¶¶ 12-13; admitted in pertinent part at Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶¶ 12-13.) According to NSI, it adopted the Dispute Policy, with the NSF's approval, to "provide for actions [NSI] may take when presented with prima facie evidence of trademark infringement as a result of the registration of a domain name." (Id., Statement of Undisputed Material Facts ¶¶ 12-13, Ex. 1 [Graves Aff. ¶¶ 31-31], Ex. E [Dispute Policy of 7/95].) According to Oppedahl & Larson, the NSF did not approve retroactive application of the Dispute Policy to existing registrants. (Pl.'s Resp., Resp. to NSI's Statement of Undisputed Material Facts ¶ 12, Attach. [Affirmation of Carl Oppedahl ¶ 8, Ex. E (letter from Leslie Crawford, Freedom of Information Act Officer for the NSF to Carl Oppedahl of 7/29/96 [attaching correspondence between NSI and the NSF discussing adoption of the Dispute Policy])].) Examination of the record suggests that discussions between the NSF and NSI regarding adoption of the Dispute Policy did not specifically provide for or prohibit retroactive application of the Dispute Policy.⁷

As the parties agree, the Dispute Policy provides that, if an owner of a federally registered trademark provides to NSI a certified copy of its "valid and subsisting" federally registered trademark, and that trademark is identical to a registered domain name, then NSI may send a letter to the domain name registrant offering the registrant certain options. As one option, the registrant may provide NSI with a certified copy of its own trademark registration, in which event the registrant may continue to use the domain...