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Introduction
With the globalization and commercialization of the Internet, domain names have
taken on a new significance as business identifiers. When the Internet was in
its infancy, domain names were created to serve as useful mnemonic means of
locating specific computers on the Internet. Domain names are now highly visible
in "real space" as well - showing up on television commercials, billboards,
magazine ads, and even the sides of buses.
The very basis of Internet is Internet Protocol (IP) used for inter computer /
inter server communication, each computer / server having its own unique all
numeric IP address. The fact that these addresses are not catchy and are
difficult to remember has had a major role to play in the development of the DNS
and the emergence of domain names as corporate assets. Thus, a domain name is a
popular substitute for the all numeric IP address of a particular server. To
make an Internet address more user friendly, a unique numeric address may be
matched with a mnemonic domain name (such as ‘mcdonalds.com’). This
systematization of recognition of proxy names is categorized as the
‘Domain Name
System’.
Domain names are simply the addresses of the Internet. E-mail is sent and web
pages are found through the use of domain names. For example, the web address
for the Microsoft web site is www.microsoft.com, while Bill Gates might have an
e-mail address such as bill@microsoft.com (both using the "microsoft.com" domain
name). Without the domain name, a computer would have no idea where to look for
a web page, and e-mail routers would not be able to send e-mail. Of course,
domain names are more than just addresses, since they can be selected by the
"addressee" and are usually closely associated with a particular service or
product.
Generic & Geographic Top-Level Domain Names
Domain names are divided into hierarchies. The top-level of the hierarchy
appears after the last dot ('.') in a domain name. In "microsoft.com", the top
level domain name is .COM. The .COM name is the most common top-level domain
name, and is used to indicate that the domain name is owned by a commercial
enterprise. Other common top-level domain names include .ORG (for non-profit
organizations), .NET (for network and Internet related organizations), .EDU (for
four-year colleges and universities), and .GOV (for government entities).
In addition to these generic domain names, each country has been given a unique
top-level domain name. For instance, .CA indicates a domain in Canada, and .IE
indicates an Irish domain. Although there is a .US top-level domain name, most
organizations in the United States outside of state and local governments opt
for one of the generic names (i.e., .COM, .ORG, .NET), which are available to
entities in any country. For several years there have been proposals to add new
generic top-level names, such as .FIRM, .STORE, and .WEB.
The disputes that arise over domain names involve
"second level" domain names.
The second level name is the name directly to the left of the top-level domain
name in an Internet address. For instance, in the address "www.microsoft.com",
the second level domain name is Microsoft.
Two identical second level domain names cannot coexist under the same top level
domain. In these new guises, they sometimes conflict with trademarks and other
traditional business identifiers. Two factors exacerbate this conflict. Firstly,
domain names are global and must be unique - a particular string of letters can
link to only one site - while trademarks may overlap in different industries or
different geographical locations. Secondly, it is common practice for many
Internet users to guess at domain names. Users often seek to guess the domain
name of a prominent company. For example, an Internet user interested in
discussing a recent skydiving expedition with the Editors of
‘SKY DIVERS’, might
try "sd.com," "skydive.com," or skydivers.com" to locate this magazine's
address. Thus domain names based on intuition become valuable corporate assets.
How assigned
In order to register a second level domain name under a top-level domain, a
request must be made to the organization that has the power to assign names for
that top-level domain. For instance, The US Domain Registry administers the
registration of second level domain names under the .US top-level domain.
Prior to December 1999, a company called Network Solutions Inc. ("NSI") was
almost solely responsible for the registration of second level domain names for
the most popular top-level domains, including .COM, .NET, and .ORG. Since the
vast majority of domain names are under one of these top-level domains (the most
common being .COM domain names), Network Solutions had a great deal of control
over how domain names were registered, and how disputes would be resolved. To
avoid having to be the arbitrator between two parties who both desire the same
domain name, NSI decided to simply adopt a first come, first serve arrangement
with respect to domain names. Under this scheme, NSI would not question an
applicant's right to have a particular domain name. If the domain name was
available, the applicant was given the name.
Under this much maligned policy, NSI created a procedure under which a
third-party can challenge the right of a domain name owner to use a particular
domain name. If the challenge were successful, the domain name would be
suspended. This policy only protected parties that had a nationally registered
trademark identical to another party's second level domain name (i.e., Microsoft
in "www.microsoft.com"). An owner of an unregistered trademark could not
initiate an action under this policy, nor could an owner of a trademark that was
confusingly similar (but not identical). If the date that the trademark was
first registered predated the domain name registration, the domain name owner
had to supply their own trademark registration for the second-level domain name.
If the domain name owner could not provide such a trademark registration, NSI
would suspend all use of the domain name. This is true even if the challenging
party could not properly prove a claim of trademark infringement
Post - December 1999, the ability to register .COM, .NET, and .ORG domain names
was spread out among many registrars. These registrars are accredited by The
Internet Corporation for Assigned Names and Numbers (or "ICANN"), a non-profit
corporation formed specifically to control Internet domain name management and
similar functions. NSI continues to assign domain names, but now they are just
one of many domain name registrars. Following NSI's precedence, all of these
registrars assign names on a first-come, first-serve basis, and do not do any
checking before assigning a new domain name.
Domain Grabbing: Sphere of conflict
The rapid growth of the Internet and the use of web sites has generated a
growing set of disputes between firms asserting traditional trademark
entitlements and the registrants of identical or confusingly similar domain
names. The trademark owner may demand that the domain-name registrant cease
using the name and/or relinquish it to the trademark owner. Disputes of this
sort have been progressing through the litigation system since 1994. These
clashes are challenging the law and the Internet community to develop new
procedures and legal rules that adequately address the equities involved.
A company wishing to acquire a domain name must file an application with the
appropriate agency. Before doing so, a search is done to see if their desired
domain name is already taken. A good site for doing such a search is provided by
Network Solutions. When a company finds that the domain name corresponding to
their corporate name or product trademark is owned by someone else, the company
can either choose a different name or fight to get the domain name back from its
current owners.
One of the most visible areas of trademark
use on the Internet is in domain names. Many companies register a domain name
for every trademark they own, so that users of the associated products can
easily find more information on it. However, when that domain name is owned by
someone else, the company may miss those visitors. In the past, several people
have registered domain names for other people's trademarks, in the hopes that
they could sell those to the owners once those realized the importance of the
Internet. Needless to say, few trademark owners were pleased by this, and some
took action by suing the domain name owners for trademark misuse
If you need to pick a name for your Website domain, ensure that it is
sufficiently different from all other sites which offer similar services.
Otherwise, you will cause confusion amongst visitors and you may expose yourself
to lawsuits and conflicts with the owners of those other sites.
Domain Name Disputes
Companies have realized that having a domain name that is the same as their
company name or the name of one of their products can be an extremely valuable
part of establishing an Internet presence.
Some of the hugely publicized illustrations of these disputes are:
candyland.com: Both Hasbro and an adult entertainment provider desired the
candyland.com domain name. Hasbro was too late to register the name itself, but
it is never too late to sue. The domain name is now safely in the hands of
Hasbro.
Mcdonalds.com: This domain name was taken by an author from Wired magazine who
was writing a story on the value of domain names. In his article, the author
requested that people contact him at ronald@mcdonalds.com with suggestions of
what to do with the domain name. In exchange for returning the domain name to
McDonalds, the author convinced the company to make a charitable contribution.
micros0ft.com: The company Zero Micro Software obtained a registration for
micros0ft.com (with a zero in place of the second 'o'), but the registration was
suspended after Microsoft filed a protest. When the domain name went abandoned
for non-payment of fees, the domain name was picked up by someone else: Vision
Enterprises of Roanoke, TX
Case laws regarding trademarks dispute over Internet Domain Names
1. Princeton Review v. Kaplan
Princeton Review, Inc. ("Princeton Review"), a test preparation service,
obtained the domain name "kaplan.com," which contains the trademark of its
commercial rival, Stanley H. Kaplan Educational Centers, Ltd. ("Kaplan"). In
what is believed to be the first ruling on this issue, a mutually agreed three
person arbitration panel recently required Princeton Review to relinquish the "kaplan.com"
domain name to Kaplan.
The first key fact is that the panel had to assume that Internet addresses can
in fact act as trademarks. This is not surprising given the true nature of
Internet addresses. Although the name "addresses" conjures up the post office
addresses of real-world places, this is only part of the purpose of Internet
addresses.
As summarized in the colorful prose of the McDonald's pirate himself: "Domain
names are to the Internet what addresses are to the Postal Service. They're more
than that, really, since your domain name can tell the on-line world something
about who you are. Domain names are kind of like postal addresses, vanity
license plates and billboards, all rolled into one digital enchilada.”
The second key fact about the "kaplan.com" case confirms the ability of domain
names to serve as trademarks. To quote the McDonald's pirate again: "If you
logged into kaplan.com, you could read a Q&A comparing the programs offered by
[Princeton Review and Kaplan]. Which one do you think came out looking better?"
Internet users, unaware that Princeton Review was the real owner of this
address, would no doubt think that Kaplan was the owner of this address and the
source of the information located there.
In short, Princeton Review's registration of the domain name "kaplan.com" very
likely not only produced confusion among Internet users over the source of the
information located at this address, but real damage to Kaplan's goodwill.
The third important fact is that the President of the Princeton Review, John
Katzman, admitted they had registered the domain name "kaplan.com"
"in part just
to irritate [Kaplan] . . . Clearly, we've done that." This equity "unclean
hands" aspect of the "kaplan.com" case may be applicable to many other "domain
grabbing" cases likely to arise from the current gold rush. Assuming that this
factor played a role in the panel's decision, they most likely followed
traditional trademark law regarding bad intent. Under traditional trademark law,
intent to adopt a mark to derive a benefit from the reputation of another is one
of several factors in evaluating whether the infringing use is likely to cause
confusion in the market.
2. MTV Networks v. Curry
A former MTV video jockey, Adam Curry, registered the Internet domain name "mtv.com"
while working for MTV Networks ("MTVN"). Internet users connected to the "mtv.com"
address could find the posting of "MTV's Top Ten Music List," outtakes from MTV
Networks ("MTVN") programming, a printout of the text of a dialog between MTVN
characters Beavis and Butt-head, and a giveaway of MTV-logo T-shirts to
subscribers. Promptly after Curry's departure from MTV Networks, he was sued by
MTV Networks for trademark infringement, among other things, because he refused
to stop using the "mtv.com" Internet address. Although the court only addressed
pre-trial motions before the case settled, two significant points may be gleaned
from the court's initial decision.
The first is that Curry never argued that the Internet was exempt from trademark
law. Instead, Curry argued that the domain name "mtv.com" was not going to be
used in a confusing manner. The issue, claimed Curry, was whether MTV Networks
has "'some inherent right in mtv.com.'"
The second important point is the clue provided by the MTV Networks v. Curry
court about how it might rule on the key issue succinctly stated by Curry. In a
footnote, the court explains Internet domain names and analogizes them to
"telephone number mnemonics." The analogy is apt because, as noted above, the
Internet domain names are in fact mnemonics for the true, but unwieldy, initial
section of a numerical address.
Although the MTV Networks v. Curry court did not address the scope of trademark
protection for Internet domain names, its telephone number mnemonics analogy
suggests a fruitful line of analysis.
4. Wired v. WIRE
The last case that has arisen recently regarding claims of trademark
infringement based on an Internet domain name found the cutting-edge cyberspace
magazine entitled Wired complaining about the domain name used by WIRE, a
computer network devoted to women's issues. Wired used "wired.com" as its domain
name; WIRE used "wire.net." Rather than litigating the issues, WIRE decided that
as a start-up company it could not afford legal wrangling and had to focus on
its business instead. The parties settled with WIRE agreeing to change its name
to Women's Wire and its domain name to "wwire.net." In return, Wired agreed to
pay half the cost of the name change expenses, such as redoing on-line graphics
and identity materials.
Although the Wired case never even advanced as far as a cease-and-desist letter,
it does illustrate two interesting issues. The first is that Wired demanded that
WIRE change not only its Internet domain name, but its business name too. Given
the fairly close similarity between "wire" and "wired," requiring WIRE to also
change its business name to WOMEN'S WIRE helps to minimize - in the context in
which these Internet addresses are used - any likelihood of confusion. The
second interesting issue is that domain names, for purely technical reasons,
preclude parties from distinguishing themselves by capitalization, stylized
formats, or designs. Companies often use capitalization of letters in their
marks as part of the mark itself. WIRE obviously sought to do this, but was
technically precluded from including this additional information in its domain
name. For the same reason, special stylized formats and designs are also
excluded from domain names. As a result, companies will find it even more
difficult to keep their domain name distinguishable from other domain names
because there are fewer ways to make domain names distinctive.
Remedies: Dispute Resolution Policies
Prior to November 1999, domain name disputes in the United States were decided
by courts under three primary theories of trademark law. The first claim is
traditional trademark infringement, which requires that the allegedly infringing
use cause a likelihood of consumer confusion. The second cause of action, which
has been most successfully used, is the assertion that a domain name
"dilutes"
the value of a trademark. Finally, unfair competition, a claim similar to
trademark infringement, may be used in cases where the trademark is not
federally registered. In November 1999, Congress added a new cause of action to
the Lanham Act ["Anti-cyber squatting Consumer Protection Act"] expressly
designed to prevent cyber squatting. This new legislation is likely to change
significantly the way domain name disputes are handled and litigated.
In order to provide an alternative to the court system, ICANN - the organization
responsible for domain name management - recently implemented a uniform dispute
resolution procedure (UDRP) that will govern certain domain name disputes.
Effective January 3, 2000, trademark holders can invoke the UDRP as an
alternative to litigation in domain name disputes where the registrant has acted
in "bad faith."
Thus, Cyber squatting and cyber piracy are the common terms for the bad-faith
registration of another's name or mark by the registrant of a second-level
domain name.
ICANN Uniform Domain Name Dispute Resolution Policy
On October 24, 1999, a new Uniform Domain Name Dispute Resolution Policy was
promulgated by ICANN, a California not-for-profit corporation that has assumed
some of the duties of administration of the DNS. ICANN operates under close
supervision by the U.S. Department of Commerce. NSI, the largest domain-name
registrar, adopted the ICANN policy shortly thereafter, and in November 1999 NSI
ceased processing disputes under its old policy. Domain names that were placed
on hold under the old NSI policy are now being reactivated, and parties may seek
relief under either the new ICANN policy or the new Anti-cyber squatting
Consumer Protection Act. The ICANN policy differs from the prior NSI
policy-which had been in effect since 1996-in three key respects. Under the new
ICANN policy: the trademark holder is not required to own a trademark
registration for the mark that has been incorporated in the domain name to which
the trademark owner objects.
The domain name will not be suspended pending resolution of the dispute, the way
the NSI policy provided; rather, the status quo will remain until resolution.
The policy will result in an administrative decision that is final by its terms,
rather than in suspension of a domain name pending outside resolution. (However,
an ICANN administrative decision is final only if neither of the parties brings
an action in court.)
The ICANN policy forbids registration of a domain name if (1) the domain name is
identical or confusingly similar to another's trademark, (2) the entity
registering the domain name has no legitimate right to it, or (3) the domain
name was registered and used in bad faith.
Disputes under the ICANN rules are referred to a one- or three-member
administrative panel that decides the dispute promptly and publishes the
decision. The administrative decision is final and binding on the registries and
registrars subject to ICANN control, but it can be superseded by court action.
The proceeding is intended to be fast and inexpensive, to be conducted by e-mail
with no personal appearances, and to require minimal production of documents
(unless voluntarily offered by the parties or requested by the panel). The
policy also offers some protection to the domain-name holder, who may have
legitimate rights to a domain name. The policy permits the panel to rule that
the complaint was brought in bad faith to "reverse hijack" the domain name or to
harass the domain-name holder. Relief for such conduct is limited to a
declaration of abuse of the administrative proceeding.
The first dispute under the ICANN policy was decided on January 14, 2000, and
has been published by the World Intellectual Property Organization (WIPO), which
provided the single panelist. In World Wrestling Federation Entertainment, Inc.
v. Michael Bosman, the domain name at issue-"worldwrestlingfederation.com"- was
registered by Bosman through an Australian domain-name registrar. The panel
found bad faith under the relevant factors in light of Bosman's own statement
that his primary purpose in registering the domain name was to sell it to the
WWF. Although Bosman had not established a Web site under the disputed domain
name, the panel found "use" in Bosman's offer to sell the domain name to the WWF.
The decision required transfer of the domain-name registration to the WWF.
One limitation on the usefulness of the ICANN policy is that it is a hybrid of
mediation and arbitration. By the terms of the policy, neither party to a
proceeding is barred, at any time, from resort to litigation in any court of
competent jurisdiction. Any final judgment by such a court will supersede any
ruling by an ICANN dispute-resolution service provider.
Hurdle to be crossed
Neither the Anti-cyber squatting Consumer Protection Act nor the ICANN policy
addresses the trickiest situations on the Internet, which arise when there are
two legitimate claimants for a particular domain name, such as geographically
remote users of the same name or companies selling entirely different types of
goods or services. It remains to be seen whether the new law or policy will be
stretched to accommodate such scenarios in some fashion.
Conclusion
This is a rapidly changing area of law, and additional remedies may become
available in the near future. Some U.S. state legislatures are considering state
remedies, and there is the remote possibility that ICANN may acquire
jurisdiction over ccTLD registrations, with the result of broader imposition of
the ICANN policy.
In general, the advantages of the ICANN policy are clearly its speed, its low
cost, and its ability to resolve cross-border disputes. If a remedy is available
under the Lanham Act, as amended by the Anti-cyber squatting Consumer Protection
Act, the advantages are final adjudication and the availability of damages
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The author can be reached at :
rohanbagai@legalserviceindia.com
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Trademark
Disputes over Domain Names
