Trademark Protection on the Internet in for Non Top-Level Domains Used as Top-level Domains

By Owen Smigelski, Esq.

© 2001-2003, All rights reserved.

This Comment is provided as educational material, and should not be utilized as legal advice. Reproduction is authorized with proper citation to this original source. For a free trademark consultation, please contact the author.

Contents

1. Preface
2. Introduction
3. Overview of Trademark Law
4. Overview of the Internet
   1. Internet History
   2. TCP/IP
   3. Domain Name System (DNS)
5. Internet Trademark Law
6. The non-US domains
   1. Introduction/Background
   2. Repurposed ccTLDs not currently accepting new registrations
   3. Repurposed ccTLDs with no trademark protection or dispute resolution procedure
   4. Repurposed ccTLDs with dispute resolution procedures based on old NSI examples
   5. Repurposed ccTLDs with dispute resolution procedures identical to ICANN's UDRP
7. Jurisdictional concerns with non-US domain names
8. Conclusion

            The Internet revolution rolls on.  Despite recent downturns in the technology sector, Internet growth, and the growth of Internet commerce, continues at an astounding pace.[1]  As several Internet pioneers described it, “[t]he Internet is at once a world-wide broadcasting capability, a mechanism for information dissemination, and a medium for collaboration and interaction between individuals and their computers without regard for geographic location.”[2]  Now, more than ever, companies necessitate a presence on the Internet.  Traditionally, companies have been located on the Internet by their “dot-com” address, such as yahoo.com.[3]  With the finite number of dot-com addresses dwindling rapidly, businesses have sought to register their trademarks as non dot-com names, such as yahoo.tv.[4]  Along with legitimate trademark holders, others have registered domains to which they do not possess the intellectual property rights.  With many of these alternative domain names dealing with countries not located in the United States, the potential exists for gross trademark infringement, from cybersquatting to actual confusion, increases greatly.  This Comment will explore the issues relating to registering trademarks in non-dot-com domains, and the avenues of protection afforded to trademark holders in defending their intellectual property rights.  It will illustrate the dispute resolution procedures provided by these alternative top-level domains, and argue that trademark disputes arising from the registration of trademarks within these top-level domains are actionable within the United States under the Lanham Act.

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