Trademark Law vs. Domain Names
on the World Wide Web
Copyright, 1996, 1997, 1998, 1999 Philip R. Green all rights reserved
1. Registration of a URL may be an inexpensive but enthralling step for some to enhance their presence in the media.
- For less than $100, it can relatively inexpensively bring publishing, presence, branding and penache.
- It can, however, lead to liability and be a trademark infringement unless precautions are taken.
- Registration of a Domain name with Network Solutions, Inc (the "InterNIC"), ICANN or any of the other world wide registers, of a word or series of words meant to be a second level URL, or domain name" may become a trademark.
- The gTLD or "generic top level domain is the part generally to the right of the DOT, as in "SAMPLE.COM" where the "sample" is the second level domain name and the ".COM" is he gTLD or top level domain name. However whether this use can qualify as a trademark as such depends on how it is used.
- The mere registration of the name does not a real trademark use make.
- Depending on the use that mark is put to on the Global Computer Network (as the PTO calls the Internet),there may be a "use in commerce" or not. The PTO recently issued regulations regarding their examination of trademarks and domain names. See the Links to the PTO.
To "use" a trademark for example in the electronic goods (software, hardware) class (09) one must be selling the goods through a process whereby the buyer buys them generally retail. Online class 09 goods can be sold by being bought by e-cash or charge online and in the same session transfer or download the software to the buyer while online. Any "mere" advertising of the goods without that online completed transaction tends to be in the "services" class 035 or "business services." See the Links page > U.S. Government > Patent & Trademark Office for the newest policy.
2. The URL or Universal Resource Locator consists of two main parts:
- The "top level" domain name >>> xxxx.com, .org, .gov etc. This is referred to as the gTLD, or Generic Top Level Domain
- The "lower level" name, so that: >>> myname.xxx This is the part of the name that can present an issue.
in "myname.com" the "myname" is the lower level and the ".com" is the basic type or high level name. The "name" actually symbolizes a series of numerals, separated by a dot. Thus "greenandgreen.com" means 123.456.789.14, and links via a DNS the user to our home page. As in non-cyber space trade, it possesses all the attributes of a trademark IF used on a website to provide the type of goods and or services in the desired class. You will not soon see, for example, "McDonald's registered in the food class if it stopped having restaurants and thought it cold download food via a DNS. If you want this attribute, add "TM" or "SM" to it and use it to identify the goods or services of people and companies on the Internet and to distinguish them from the goods and services of others. This is really the essence of branding and is considered in the "advertising" class, 35. The fact that these names are searchable can and may prove to be a challenge, since the use of a name that can be searched (assuming it is on a database) may be deemed to be a willful infringement subject to penalties, or perhaps a case of "presumed" knowledge.
3. Registration and use of a can be a potential infringement of a trademark where the name is also a trademark or word mark in use by another.
- It has recently been stated that traditional trademark principals cannot be made to apply to the Internet. This author disagrees with such statements. Trademark law applies as well here as it did in ancient times, when Greek artists "signed" or etched their names in their pottery to identify it from other, inferior brands.
- Courts are consistently applying general trademark infringement law to claims of Trademark users against some "domain name" owners whose names are also trademarks of companies.
- This means that one could be liable for infringing another's trademark by using a domain name.
- The test is, "whether the infringing URL might cause "public confusion." In other words, if the URL bottom level domain name is the same or very similar to a famous, known or used trademark, the trademark owner might have a claim based on:
- >Whether the domain name as an address might lead customers to the web site in the expectation that certain desired goods or services would be found at the site. Does the domain name cause public confusion or might it?
- The proof is expensive and extensive since a public survey may have to be done to prove such a claim. The trademark owner might obtain a court injunction to stop a domain name if the mark is similar to a domain name and it is strong, registered and not generic or descriptive. Claims may be held to be infringements, and whether willful or not this can cause cancellation of a "domain name", criminal liability, civil liability and punitive damages and seizure of goods or shut down of a site could occur. The InterNIC has been the subject of a litigation over these and other similar issues. No doubt this will be the situation with ICANN.
4. Whether the Domain Name Register can settle Disputes:
- To attempt to offset claims, Network Solutions has a second new policy to suspend or remove all potentially infringing marks IF a few things have been done: (1) the mark must be registered (in some country), (2) it must be the SAME as the URL and (3) the mark will only be removed (rather than suspended) if a court orders InterNIC to do so. This policy is not set by government, nor perhaps should it be, however regulation could appear if we do not police our marks.
- The policy is not totally accepted by the industry and there are conflicts within the
legal world, so the law on this subject is in a state of flux. It is likely that this is
one of the major potential sources for much future litigation, appeals and perhaps the
Supreme Court will speak on it. See the related article on the Future
of Domain Names.
- POLICY OF NETWORK SOLUTIONS, Inc. If a third party claims ownership in domain name and complains to N.S.I., but has a valid trademark registration, NSI and other registers will listen to them and might put a domain name on hold. If you have no valid registered trademark, the domain name remains unless a court says otherwise:
- If the third party presents certified copy of valid Patent and Trademark Office trademark registration of a mark identical to the domain name, and if the date of domain name activation is earlier than either date of first use or registration of the domain name owner, the domain name stands unless a court orders otherwise.
- However, the domain name may be put on hold if complainant has: a Certified copy of valid a registration from any country of an identical mark ---and the Domain name was activated later than date of first use or trademark registration of the mark, then the Domain name user will get 90 days to select a new name or it is put on hold.
- A hold might last until a court orders it to be removed, and litigation will most likely get to the appeals courts and possibly the Supreme Court, in this author's opinion, soon. There are many Intellectual Property and Information Technology industry arguments why this private policy is inadequate.
5. Federal Trademark law generally provides that if someone is the first to use a trademark (or service mark) in "interstate commerce" (that congress regulates), (a "first use in commerce") they may register the trademark as their exclusive property.
- Use, not only registration, gives one the right to stop others from infringing,
- Registration secures the ownership. Registration puts it on the record that the "applicant" is the exclusive user. If later, a person registers his "domain name" with one of the domain name registers, he is using that name in interstate commerce. If the "first user" wishes to they could sue the conflicting domain name owner in federal court. This does not "mesh" well with the policies of service providers on the WWW who want free access to names to please their clients, however that is the state of the law. It is also one of the gray areas.
- Don't forget: a domain name is an address. See the article on Trademark Law Basics.
6. We must protect owners of valid trademarks and prevent public confusion as to the origin of goods and services on the one hand, yet we must allow freedom of expression and foster this medium on the other. Congress hears argument from the various points of view and might act to regulate this area of Internet before long.--stay tuned!
- REMEMBER: Trademarks are not registrable if they are confusingly similar to another registered mark. They do not serve as a trademark if they are "descriptive" of the goods/services, rather than being "fanciful." A mark may not function as a trademark if it is generic or may be the "use" of a dictionary word (one may not have a monopoly on the use of everyday words) among other reasons. THE BOTTOM LINE IS: REGISTRATION OF TRADEMARKS and pre-registration use and pre-registration searches of the PATENT & TRADEMARK OFFICE and online registers are even more necessary now.
See part 2 of this article to look into the future, The Future of Domain Names
See the article on Trademark Registration to find out how to protect YOUR mark.