The Future of Domain Names
WWW vs. Trademark on the Web Part 2
© 1997 Green & Green All Rights Reserved
Things are rapidly changing on the trademark scene here and internationally. These changes are brought about by the inevitable increases in Net traffic and the resulting clogging that occurs. Remember when the old alphanumeric phone prefixes were replaced by numeric ones to make more room? That was long ago, yet we face the same problems on the Net today.
New Domain Names, URLs (universal resource locators), are registered by the U.S. entity, the InterNIC. The agreement between InterNIC and the National Science Foundation, under which the InterNIC registers URLs, expires at the end of 1998. Whether the InterNIC will actually cease has yet to be seen; others in Europe and elsewhere are ready to take up the job and it will definitely be a shared one on a huge scale. See the article on Trademark vs. Domain Names on the World Wide Web.
European pressure seems to be geared towards the notion that the U.S. InterNIC may not be the only entity capable of a registration of URLs. President Clinton hears this and issued in March of 1998 a Green Paper on the state of the registration of URLs. This quite rightly has as its premise that government ought not be involved in this regulation and that it must be an international effort. There may be a vacuum created by the end of InterNIC's agreement. It might be renegotiated or it might expire, and whatever the course of that agreement, WIPO (the World Intellectual Property Organization), an arm of the U.N. is looking to the world for more room. Not only will bandwidth need to rise in the future; there will be many more people and businesses on the Net than we now imagine. Perhaps cable modems will increase traffic many fold.
One reason for the increase is that the U.N. and charitable organizations, such as SofTECH in Northern California, are making computers available to libraries, schools, "subsidized" communities, and the like. These organizations also teach the use of this donated hardware and get generations to surf the Net together. The result is we will have MORE URLs, more Business opportunities, more possibilities.
Anti-Dilution Law: As if the foregoing were not enough, there is another set of newer laws that create protection for certain trademarks; the Anti-Dilution law. Born of this very problem, this law in various forms has been in place in many states for years; California has one of the broadest versions. Effective on January 16, 1996, it is possible to infringe a "famous mark" without proof of "public confusion". The infringing use need not be in the same market, need not sell the same type or similar goods or provide similar services to the other. If the marks are similar and one is "famous", they could infringe. The California law differs from traditional trademark law in that it calls an infringement, "...Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered ..., or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services." [14330 Bus. & Prof Code]
The new federal law is a boon to those whose trademarks are being infringed, since proof of public confusion does not enter into the formula. So, if someone owns a URL the same as or similar to another's mark, even if the two are addressing different markets, there could be "dilution." A detailed analysis of dilution law is the subject of a future article. The 9th Circuit just released an opinion on April 20, 1998 and holds that a URL registered in order to obtain money,that infringes a famous mark, is subject to the Act. (Panavision vs. Toeppen 98 Daily Journal D.A.R. 3929).
NEW URL TOP LEVEL NAMES (TLDs) will help take up the slack. No matter which of the many debated plans are finally agreed upon, the world's URL registrations will add some top level names to the short present list. Presently are: ".COM" for a commercial account (the great majority of names), ".ORG" for charitable, museum and other eleemosynary organizations, ".GOV" for government sites, ".NET" though not commonly used, it is the top level name for a network.
The new proposed names, as stated in the Final Report of the International Ad Hoc Committee (IAHC) Recommendation for Administration of TLDs are: ".firm" for businesses or firms, ".store" for businesses offering goods to purchase, ".web" for businesses doing WWW related business, ".arts" for those entities emphasizing cultural activities, ".rec" for recreation and entertainment activities, ".info" for information providers, and ".nom" for those, "wishing individual or personal nomenclature."
The decisions will take a long time to really work through, and the new domain names should be available by the end of 1998. It is likely that this new naming technology will be widely available and that it may allow a filtering, will certainly allow more names and more duplication. It is also expected to create other conflicts with trademarks in the future.