® InfoJur.ufsc.br
© Copyright 1996 Lloyd L. Rich
The expanded usage of the Internet for
commercial purposes has resulted in greater importance and significance of name
recognition on the Internet. An identifying address on the Internet, the
"domain name", creates an expectation about who and what is located
at that address. Because a domain name may suggest identity, quality and
content, it may be closely related to or function as a trademark.
The Internet domain name registration policy of
first come/first served has resulted in hundreds of controversies surrounding
ownership of a particular name, including a number of well-known instances
where individuals have registered names based on a corporation's trademark or
where corporations have registered names based upon a competitor's trademark.
This article focuses on the expanded commercial use of the Internet, conflicts
between trademarks and domain names on the Internet, and the policies currently
in place to resolve such conflicts.
What is the Internet?
The Internet is a global network consisting of
individual government, educational, military, corporate, and local computer
networks. This "network of networks" connects local systems to regional
systems to national systems to international systems through technical
protocols that insure the interoperability of all the networks.
Internet usage is decentralized from a
technical and management standpoint; each computer acts autonomously and is
responsible only to its own systems administrator. There is no central
authority from which an individual/entity obtains permission to join a network,
or to which an individual/entity can complain if things go wrong.
Communication on the Internet
Communication on the Internet requires each
computer and user to be distinguished in some manner. Network Solutions, Inc.
("NSI"), a private company that also is referred to as InterNIC,
provides each identifying address. NSI also is responsible for the registration
of each domain name.
The heirarchy of domain names is illustrated by
the following example: "rjones@gm.com". The first heirarchy level,
located to the far right, is a standardized abbreviation representing the type
of entity and it is the top-level domain name (such as ".com" for
commercial entities, ".edu" for educational institutions, and
".gov" for government entities. The second level, directly to the
left of the type of entity, "gm," is a unique domain name. NSI will
register this name; once registered, it cannot be registered by another party.
The third level, located to the far left, is the "user name".
Therefore,"rjones@gm.com" identifies Richard Jones, located at
General Motors, a commercial entity.
Commercial Use of the Internet
Numerous factors have fostered the commercial
potential and increased commercial use of the Internet. (1) the development of
World Wide Web ("WWW") technology that enables audiovisual material
to be transmitted along with text; (2) the development of less-complicated
browser software that permits non- technical users to locate and display
information more easily; (3) the relaxation of restrictions upon commercial
uses; (4) improved security measures that facilitate the completion of business
the transactions over the Internet; and (5) the relatively inexpensive cost for
a business to develop its own location on the WWW, known as a "home
page" for advertising its products and services.
Trademarks and the Internet
NSI will register a domain name without any traditional
trademark analysis regarding the registrant's rights to the domain name. Such
registration, coupled with possible conflicts resulting from the world-wide
nature of the Internet and the technical restrictions of domain names, have
created problems for trademark owners because their marks may be taken by
others on a first come/first served basis.
Controversy and confusion result especially
where well-known trademarks have been registered by unrelated third parties for
the purpose of re-selling them to the rightful owner or using them for their
own purposes. Furthermore, the same second-level domain name can be assigned to
".com" and ".net"(that is, "ibm.com" and
"ibm.net"), creating even more confusion and conflict.
The "New" NSI Registration Policy
NSI, in an attempt to reduce controversy and
confusion and to forestall litigation, revised its domain name registration
procedures in 1995. The new policy does not replace the first come/first served
registration procedure, but instead places the burden on the applicant to act
in good faith in obtaining a domain name. The applicant must warrant that the
domain name it desires to register does not infringe the trademark of a third
party.
Although NSI has stated that it will not make
the final determination in a dispute concerning the use of a particular domain
name -- this will be left to a court or arbitration panel -- it has established
dispute resolution procedures. The essential terms of NSI's dispute resolution
policy are as follows:
If the registrant of a domain name fails to use
the domain name for ninety or more days, NSI may request that the registrant
allow the name to be registered by another party.
NSI may withdraw a domain name from
registration, upon thirty days written notice, if NSI receives an order from a
court or arbitration panel indicating that the domain name belongs to someone
other than the registrant.
If evidence is presented to NSI that a domain
name is identical to a trademark (this requires submission of a certified copy
of the trademark registration) NSI will determine priority of use by comparing
the activation date of the domain name with the date of first use or
registration date of the mark. In the event the owner of the trademark has
priority of use, NSI will request proof of ownership of a registered trademark
by the domain name registrant. NSI will permit the domain name registrant to
continue to use the domain name upon the submission of such proof, or if a
court order or arbitration panel order is received to the contrary. If the
registrant fails to provide such proof within ninety days, the domain name will
be placed on "hold" status -- meaning no one will be permitted to use
it -- until a court or arbitration panel has resolved the dispute. On the other
hand, if the domain name registrant's activation date has priority of use
compared to the registered trademark owner's date of first use or registration
the domain name registrant will be permitted to continue to use the domain name,
unless a court order or arbitration panel order is received to the contrary.
In the case where NSI receives evidence that a
domain name is identical to a trademark, but does not receive a certified copy
of trademark registration from the trademark owner, NSI will not take any
action unless it receives a court or arbitration order.
Where Do We Go From Here?
Even though NSI has established a dispute
resolution policy, the particulars of the policy still require clarification
and interpretation. Issues that remain unresolved include the following: (1)
whether the trademark registration be the "exact" term as the domain
name registration; (2) whether the goods and services that are set forth in the
trademark registration important; (3) whether a U.S. trademark registration has
any effect for the domain name registration of an identical name, but for
different goods or services, in a foreign country; and (4) who is the rightful
holder of a domain name for a well-known acronym such as "ABA" -- the
American Bar Association or the American Banking Association?
Possible solutions that may help resolve some
these problems include changing the domain name structure by establishing new
top-level domains that (1) further identify the type of organization, such as
".corp" for corporation, or (2) have no particular significance, such
as ".aaa" or ".xxx", or permit traditional trademark law to
resolve the ownership and rights in a domain name in such a manner that it will
preclude the likelihood of confusion. Meanwhile, NSI has recently found itself
enmeshed in four law suits that involve NSI's dispute resolution policy. In
each law suit NSI had notified a domain name registrant that it had to cease
using their registered domain name in thirty days because it infringed a
third-party registered trademark . In each case the domain name registrant sued
to prevent the loss of its domain name.
To confuse matters further several states have
initiatives that attempt to prevent the unauthorized electronic use of
trademarks by imposing civil liability on any party who uses "another's
registered trademark or trade name as a domain name, electronic mail address,
or user identification," or criminal liability for the "transmission
of misleading data over computer networks".
Conclusion
It will take some time before the domain
name/trademark controversy is resolved as it concerns the Internet. The
ultimate solution will undoubtedly require a domain name registration policy
that better accommodates the economic realities of the marketplace.