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

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

II.         Overview of Trademark law

            A trademark[53] is a designation used “to identify and distinguish”[54] the goods or services of a person.[55]  There are four general functions that trademarks perform.  The first is to identify a seller's goods, and to distinguish them from goods sold by others.  The second is to identify all goods with the same trademark as originating from or controlled by the same source.  Third, it signifies that all goods bearing the same trademark of equal quality.  Forth, trademarks act as a prime instrument in advertising and selling the goods.[56]  Goodwill is also readily identifiable with good's trademark.[57]  As Justice Frankfruter wrote, “The protection of trademarks is the law's recognition of the psychological function of symbols. … Whatever the means employed, the aim is the same—to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears.”[58]  Simply put, a trademark essentially answers the question, “Who are you?”[59]

            Most importantly, a trademark allows the owner the right to utilize that mark.  On a practical level, is ensures that the owner of a trademark maintains the “exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment.”[60]  There also is an economic basis for trademarks.  Trademarks promote initiative by rewarding trademark holders with recognition and profit.  Trademarks also serve to discourage unfair competition, such as counterfeiters, who market inferior or different products associated with distinctive trademark.[61]  Trademarks facilitate effective competition in a “complex, impersonal marketplace,”[62] allowing consumers to identify goods they prefer and in turn reward the producer of those goods.  Without an effective system of product identification such as trademarks, informed consumer choice, and thus beneficial competition in quality, could not exist.[63]

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