Internet Trademark Law and Internet Trademark Protection in Non-US domain names

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.

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

IV.       Internet Trademark Law

            The territoriality of trademark rights is cornerstone of trademark law.  Except for famous marks,[99] use or registration in one jurisdiction does not grant rights or liabilities elsewhere.  The Internet does not have territorial boundaries.  Traditional trademark law also allows identical marks to be utilized simultaneously not only in different territories, but also by two or more non-competing entities within a country, except where there is likelihood of confusion.[100]  For example, the word “Apple” can be trademark for both a computer and a record company at the same time.  However, a domain name must be unique.  A domain name serves as an address, and must always lead to the computer or group of computers that correspond to that domain name. [101]  Thus, on the Internet, there can be only one “apple.com.” 

            There are essentially three types of disputes that can arise out of domain names.[102]  The first involves trademark infringement, which is unauthorized use of a trademark with the intent to confuse consumers.[103]  There are occasionally cases based upon trademark infringement that arise where there is an unintentional conflict between legitimate applicants for a domain name, such as the Blue Note jazz club in New York and Blue Note club in Columbia, Missouri both desiring the domain name “thebluenote.com.”[104]   The second involve cases where there is “name speculation,”[105] for example, gaining control of a domain name to resell it to another organization.[106] This is also known as “cybersquatting,” which has been described as an attempt “to profit from the Internet by reserving and later reselling or licensing domain names back to the companies that spent millions of dollars developing the goodwill of the trademark.”[107]  The third involves a type of trademark dilution, in which a registrant obtains a domain name with a trademark of another with the intent to illegitimately capitalize on its value.  This can be either through deceptively attracting visitors to its site, or by defaming the legitimate holder of the trademark.[108]

            Without a dispute resolution procedure, the preferred method of resolving a dispute arising over the registration of domain names has been through the courts.  Prior to 1994, trademark infringement arising from the registration and use of a domain name was not a serious matter.  That was before the popularity of graphical Internet software became popular and drove the growth of commercial activity on the Internet.[109]  Lawsuits over domain names began to appear in 1994,[110] and increased dramatically over the next few years.[111]

            Prior to 1995, NSI did not have a dispute resolution policy.[112]  It adopted a “first-come, first served”[113] attitude that placed the burden of responsibility on the domain name registrant to ensure that its domain name did not infringe upon any trademark rights. In 1995, NSI instituted a formal dispute resolution process and allowed trademark holders the opportunity to challenge the registration of domain names upon presentation of evidence to NSI.  It still followed the first-come, first served registration process.  NSI later amended its dispute resolution process to allow a trademark holder to have a domain name suspended pending resolution of the dispute.[114]   NSI's dispute resolution process was described as “inadequate.”[115]  The policy and process was criticized by both trademark owners and domain names holders.[116] 

            The World Intellectual Property Organization (WIPO) recommended to ICANN on April 30, 1999 that it adopt a mandatory uniform dispute resolution procedure that would be utilized for the resolution of disputes arising under the registration of trademarks as domain names.[117]  ICANN's UDRP was approved on October 24, 1999. [118]  The UDRP has been described as “a unique experiment.”[119]  It represents the first truly global system of intellectual property law.  Furthermore, the UDRP is a world-wide cross-jurisdictional dispute resolution process, whose genesis is in global consensus and contract, as opposed to governmental enactment and coercion.[120] 

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