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

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

I.          Introduction

            The Internet is driving a revolution that has been compared to the Industrial Revolution.  It is revolutionizing many facets of our daily lives, including commerce communication, entertainment, and accessing information.[5]  The World Wide Web (WWW), which began in 1990 as a research tool for physicists at CERN, the European Particle Physics Laboratory,[6] has been a significant factor in the growth of the Internet.  The number of computers with Internet addresses has grown from 1.3 million in 1993 to more than 93 million in 2000.  The number of Internet users increased by roughly 423 million people over the same time period.[7]  It is estimated that business-to-consumer (B2C) electronic commerce (e-commerce)[8] will total $61 billion or more for 2000.[9]  It is also estimated that business- to-business (B2B) e-commerce will exceed $184 billion in 2000.  E-commerce will be a significant factor in economic growth in the twenty-first century.[10]  B2C e-commerce could increase to between $75 billion and $144 billion in 2003, while B2B e-commerce could reach between $634 billion and $3.9 trillion.  By 2003 some 80 percent of all B2B transaction could occur online.[11]  Today, over 160 million Americans log into the Internet,[12] with the worldwide total number of users over 400 million.[13] 

            In order to survive and compete in the twenty-first century, many businesses will have to have a presence on the Internet.  Without a Web address that is easy to locate, Internet users will not be able to locate the company easily.  Generally, Internet users type the company's name or trademark followed by “.com” (“dot-com”) to locate a particular company's web site.[14]  Web surfers also locate web sites through search engines.  Search engines collect databases of information about web sites.  The search engine allows the user to look for certain words in the database, and lists the results that contain the search term.  Search engines often rank the documents that match a search, with the search software showing what it has determined to be the closest matches.[15]

            Of the over 30 million domain names that have been registered, over 21 million have been registered as dot-com names.[16]  The availability of remaining unique domain names is diminishing rapidly, and most coveted domain names have already been purchased.[17]  The Internet Corporation for Assigned Names and Numbers (ICANN), which is the Internet's managing authority,[18] recently named seven new gTLDs[19] to alleviate the lack of available domain names within the top-level domains.  The Domain Name System (DNS) has not had new generic top-level domains (TLDs) since the mid-1980s, when dot-net, dot-com, and dot-org were added.[20]  The current generic TLDs (gTLDs) are dot-com (for commercial organizations), dot-edu (for educational organizations), dot-gov (for non-military governmental organizations), dot-mil (military), dot-org (other organizations), and dot-net (network resources).[21] 

            As the Internet became an international network, two letter country codes were assigned.  These country code top-level domains (ccTLDs), such as dot-fr for France, dot-ca for Canada, and dot-us for the United States, were designated as the TLD for those countries.[22] The initial impetus was to allow the registration of domain names that would associate that domain name with the country in which it was registered.  The French television station TF1 would utilize a domain in the .fr ccTLD, www.tf1.fr.  However, in the United States, the dot-com TLD acquired a strong presence in the public perception as the only legitimate domain for business registrations.  Few registrants of domain names in the United States utilized the dot-us ccTLD, instead opting for the more global dot-com.[23]  Many registrants outside of the United States found that the dot-com TLD[24] “acquired a desirable mystique,”[25] and have registered dot-com address along with, or in lieu of, a domain name within their ccTLD.  For example, TF1's web site can also be reached at www.tf1.com.  ICANN recently named seven new gTLDs, in an attempt to provide an alternative to dot-com domain names.  However, the process has been slow[26], and currently is being reviewed by Congress and is subject to at least one lawsuit.[27]  It is unclear whether the new gTLDs will solve the problem of registration of trademarks as domain names.[28]

            The creation of new gTLDs is currently hanging in the balance and plagued by delays.[29]  ICANN's entire procedure for establishing new gTLDs has drawn fire from opponents, who testified before Congress that their rights were affected by a lack of due process.[30]  ICANN's selection process was called “flawed,”[31] and such issues remain to be resolved before the new gTLDs can be implemented.  Several countries have attempted to convert the status of some ccTLDs to that of the more widely recognized gTLDs.[32]  These two letter country codes are offered as alternatives with value-added features.[33] 

            All domain names registered in the dot-com, dot-net and dot-org TLDs must follow ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP).[34]  All registrars of gTLDs have adopted the UDRP.[35]  Anyone registering a domain name in the dot-com, dot-net, or dot-org TLD must agree to bound by the administrative procedure specified in the UDRP under three circumstances:

(i) your [the registrant] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.[36]

            The UDRP specifies a mandatory arbitration procedure, in which the registrar will not participate in the administration or conduct of the process, nor will the registrar be liable as a result of any of the decisions.[37]  Parties to a domain dispute are able to pursue legal action outside the arbitration procedure, however the registrar shall not be a party to any disputes.[38]  Registrars will not modify or suspend the usage of any disputed domain names pending the outcome of arbitration or through a court order.[39]  The first dispute resolution proceeding was commenced in December 9, 1999,[40] and as of February 26, 2001, over 3000 proceedings involving over 5500 domain names have been the subject of arbitration under the UDRP.[41]  Some 2200 proceedings have been resolved for the party bringing the action, with around 400, or just under twenty percent, holding for the respondent.[42] 

            Domain names in the ccTLDs are not subject to ICANN's UDRP.  Several of the registrars for the ccTLDs have adopted ICANN's UDRP as their method of dispute resolution regarding domain name disputes.[43]  While the dispute resolution process of the UDRP has been successful when utilized for ICANN-controlled domains, it is still unknown whether the mandatory arbitration procedure specified in these procedures will be effective for other ccTLDs.  Registrars for other ccTLDs have adopted dispute resolution procedures that resemble former procedures that have been widely criticized.[44]  Several ccTLDs, including ones that have been heavily marketed, do not have dispute resolution processes.[45] Several ccTLDs that have been marketed in the past are no longer accepting new registrations, so the level of protection afforded to intellectual property rights within those ccTLDs is unknown at this time.[46]

            While the ccTLDs are for countries other than the United States, often an American-based entrepreneur or company is partnered with the holder of the ccTLD in registering domain names.  This, along with the fact that many registrants of those domain names may be located in the United States, may provide an avenue for trademark enforcement through the U.S. legal system.  This Comment will explore the trademark issues involving domain names arising from the blurring of geographic TLDs and gTLDs, also known as “repurposed ccTLDs”.[47]  Section II will provide an overview of trademark law.[48]  Section III will provide an explanation of pertinent aspects of the Internet.[49]  Section IV of this Comment will discuss trademark law on the Internet.[50]  Section V will provide an analysis of the trademark protection afforded by the repurposed ccTLDs that are the subject of this Comment.[51]  Section VI will argue that most of domains registered through these repurposed ccTLDs, in addition to any dispute resolution procedures and trademark protection specified through the registrar, are also subject to jurisdiction of United States courts through the Lanham Act.[52]

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