Domain Names & Trade-marks 101 – An Introduction
By Nathaly J. Vermette – August 20th, 2009
Internet domain names – a relatively recent breed of commercial identifiers – have become so pervasive in the realm of business that pressing questions have been raised as to their legal nature and status. As businesses world-wide embrace the cyber marketplace and participate in e-commerce, the use of domain names gives rise to an ever-greater number of conflicts.
What is a domain name?
No matter how high-tech and fast the internet may be, it cannot escape the common denominator of any communication system – every system must have designating co-ordinates enabling users to address a message to a given recipient. To make the system practical, these identifying co-ordinates must be easily remembered. On the internet, these identifying co-ordinates are called “domain names”.
A domain name is an electronic address on the Internet where a web site or page can be readily found.
Domain names are the distinctive part of an electronic address that correspond to a unique numeric address that computers can read and by which they identify themselves. These addresses are the gateways to internet sites and allow people to visit a site with a particular address. Each computer or server has a unique identifying address called an Internet Protocol (IP) address.
An IP address is a long string of numbers such as “105.154.98.452”, and are similar to a telephone number. These numeric addresses have no particular significance other than their function as an addresses and, as a result, they are difficult to remember. Domain names are words that are assigned to these numbers (or IP addresses) and translate these numbers into more easily remembered names or words that are used to get from site to site, and make the Internet more user-friendly.
For this translation system to work, it was necessary to co-ordinate and organize the conversions of the numeric addresses into names or words. For example the numeric address “105.154.98.452” was transformed into “microsoft.com”. A registration and administration system was therefore created.
It is important to note that since each computer has a unique numeric address, the attribution of a word corresponding to such address must also be unique. At this point, we begin to see the first sign of a conflict with trade-marks.
The name attribution system is structured according to a hierarchy. At the summit are the generic top level domain names (“gTLD’s”) and the country code top level domain name (“ccTLD”). A few examples of gTLD’s are:
.edu = educational institution
By Nathaly J. Vermette – August 20th, 2009
Internet domain names – a relatively recent breed of commercial identifiers – have become so pervasive in the realm of business that pressing questions have been raised as to their legal nature and status. As businesses world-wide embrace the cyber marketplace and participate in e-commerce, the use of domain names gives rise to an ever-greater number of conflicts.
What is a domain name?
No matter how high-tech and fast the internet may be, it cannot escape the common denominator of any communication system – every system must have designating co-ordinates enabling users to address a message to a given recipient. To make the system practical, these identifying co-ordinates must be easily remembered. On the internet, these identifying co-ordinates are called “domain names”.
A domain name is an electronic address on the Internet where a web site or page can be readily found.
Domain names are the distinctive part of an electronic address that correspond to a unique numeric address that computers can read and by which they identify themselves. These addresses are the gateways to internet sites and allow people to visit a site with a particular address. Each computer or server has a unique identifying address called an Internet Protocol (IP) address.
An IP address is a long string of numbers such as “105.154.98.452”, and are similar to a telephone number. These numeric addresses have no particular significance other than their function as an addresses and, as a result, they are difficult to remember. Domain names are words that are assigned to these numbers (or IP addresses) and translate these numbers into more easily remembered names or words that are used to get from site to site, and make the Internet more user-friendly.
For this translation system to work, it was necessary to co-ordinate and organize the conversions of the numeric addresses into names or words. For example the numeric address “105.154.98.452” was transformed into “microsoft.com”. A registration and administration system was therefore created.
It is important to note that since each computer has a unique numeric address, the attribution of a word corresponding to such address must also be unique. At this point, we begin to see the first sign of a conflict with trade-marks.
The name attribution system is structured according to a hierarchy. At the summit are the generic top level domain names (“gTLD’s”) and the country code top level domain name (“ccTLD”). A few examples of gTLD’s are:
.edu = educational institution
.gov = U.S. government office
.mil = U.S. military forces
.mil = U.S. military forces
.com = commercial organization
.net = internet service provider
.net = internet service provider
.org = non profit organization
.int = international organization
.int = international organization
.biz = businesses
.tel = communication coordinates information
Each country has its own code, and the registration of names with these codes is relegated to an authority appointed by each country. Some examples of country codes are:
.au = Australia
Each country has its own code, and the registration of names with these codes is relegated to an authority appointed by each country. Some examples of country codes are:
.au = Australia
.ca = Canada
.ch - China
.eg = Egypt
.gr = Germany
.gr = Germany
.ie = Ireland
.il = Israel
.jp = Japan
.jp = Japan
.nz = New Zealand
.us = United States
It is the individual domain name, with up to twenty-two characters, that poses the most fundamental problem with respect to trademarks, as it is this part of the domain name that is arbitrarily chosen by the person registering it.
Because each computer has a unique numeric address, the name chosen to replace the numeric address must also be unique. Nobody else can use that word in the given top-level domain name. A problem arises when someone registers a word as a domain name that is someone else’s trademark. The trademark holder is thereafter blocked from registering a domain name which corresponds to his trademark.
This conflict is possible because the choice and registration of domain names is not subject to any formal regulation. The “right” to a domain name is established on a first-come first-served basis by a simple registration process. However, contrary to statutory trademarks, the mere registration of a domain name does not vest the registrant with legal rights to that name except perhaps common law rights. As such, common law and statutory trademark rights are established through use, registration being necessary to create a presumption of use and to obtain enhanced statutory protection in a given legislative territory. This raises the issue as to whether the use of a domain name constitutes use for the purposes of trademark protection.
Conflicts between domain names and pre-existing trademark rights arise from the combination of the similarities and differences in their respective functions. The similarities pertain to the fact that they are both a point of visibility for a business entity; one in the physical world, the other in cyberspace.
When a trademark holder wishes to establish himself on the internet, s/he is sometimes confronted with the fact that someone has registered a domain name using his mark. Sometimes the registration is deliberately made to try to take advantage of an established goodwill; other times, the domain name holder has a legitimate right and claim to the name.
A domain name holder will have a legitimate claim either because s/he too holds or uses a similar mark for a product or service in a totally different sector of business, and/or because their trademark is registered or used in a different legislative territory. The latter type of conflict occurs more frequently within “international” or generic top level domains and especially the “.com” TLD which has no geographic limitations. Hence, the holder of a U.S. trademark may be confronted with the fact that his valid American trademark has been registered as a “.com” domain name by a holder of an equally valid Canadian trademark. In cases like this, practical business solutions must be found as the law provides none.
One possible legal solution that currently exists relates to the notion of the “famous trademark” found in the international trademark protection treaties and anti-dilution legislation and common law principles. If a mark is famous, other countries party to the treaty agree to prevent registration or use of the mark in their jurisdiction. This may be a potential solution for the future, but unless an international consensus of what constitutes a famous mark is reached and an agreement as to the sanctions and remedies is established, this notion is of little help to us at the moment.
The conflicts between trademarks and domain names began with the first-come-first-served registration process of domain names. At first, there was no formal international pre-registration verification process for domain names. Now, there are Sunrise periods where trademark owners can pre-register domain names corresponding to their trademarks provided they file evidence of their trademarks rights.
In the March of 2009, ICANN formed the Implementation Recommendation Team (the ‘”IRT”) to “(...) seek solutions for potential risks to trademark holders in the implementation of new gTLD’s. The IRT tabled a report in July 2009 with several recommendations, namely:
The creation of an centralized IP Clearinghouse where prior to registering a domain name, all registrars would have to clear the new domain name against a list of intellectual property rights registered by trademarks owners directly before authorizing the registration of the domain name;
The creation of a Globally Protected Marks List (GPML) to protect trademarks that are considered to be global registrations (according to criteria yet to be set);
Top Level Rights Protection Mechanisms (RPM) that would cross reference the GPML with domain name registration applications for identical or confusingly similar trademarks
Second Level Rights Protection Mechanisms that would extend protection to the second level
Standard Sunrise Registration Processes that would allow an owner of a nationally registered trademark to preregister a domain name before the process is opened to the public.
Draft Uniform Rapid Suspension System (URS) that would require new
How can I obtain a domain name?
Domain names are usually assigned on a first-come, first-serve basis and are registered with an accredited registrar for the domain name you want. The registrar will then conduct a domain name search to see if the name sought is already taken through a “WHOIS” search. Such searches can be conducted at http://networksolutions.com/whois/index.jsp, or at any accredited registrar’s web site.
Prior to 1999, Network Solutions, Inc. (NSI) was the sole registrar for domain names. Today, there are numerous registrars, all of whom work with the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a non-profit entity that manages and coordinates domain name registration to ensure that every address is unique and that all domain names map to the correct IP address.
It is the individual domain name, with up to twenty-two characters, that poses the most fundamental problem with respect to trademarks, as it is this part of the domain name that is arbitrarily chosen by the person registering it.
Because each computer has a unique numeric address, the name chosen to replace the numeric address must also be unique. Nobody else can use that word in the given top-level domain name. A problem arises when someone registers a word as a domain name that is someone else’s trademark. The trademark holder is thereafter blocked from registering a domain name which corresponds to his trademark.
This conflict is possible because the choice and registration of domain names is not subject to any formal regulation. The “right” to a domain name is established on a first-come first-served basis by a simple registration process. However, contrary to statutory trademarks, the mere registration of a domain name does not vest the registrant with legal rights to that name except perhaps common law rights. As such, common law and statutory trademark rights are established through use, registration being necessary to create a presumption of use and to obtain enhanced statutory protection in a given legislative territory. This raises the issue as to whether the use of a domain name constitutes use for the purposes of trademark protection.
Conflicts between domain names and pre-existing trademark rights arise from the combination of the similarities and differences in their respective functions. The similarities pertain to the fact that they are both a point of visibility for a business entity; one in the physical world, the other in cyberspace.
When a trademark holder wishes to establish himself on the internet, s/he is sometimes confronted with the fact that someone has registered a domain name using his mark. Sometimes the registration is deliberately made to try to take advantage of an established goodwill; other times, the domain name holder has a legitimate right and claim to the name.
A domain name holder will have a legitimate claim either because s/he too holds or uses a similar mark for a product or service in a totally different sector of business, and/or because their trademark is registered or used in a different legislative territory. The latter type of conflict occurs more frequently within “international” or generic top level domains and especially the “.com” TLD which has no geographic limitations. Hence, the holder of a U.S. trademark may be confronted with the fact that his valid American trademark has been registered as a “.com” domain name by a holder of an equally valid Canadian trademark. In cases like this, practical business solutions must be found as the law provides none.
One possible legal solution that currently exists relates to the notion of the “famous trademark” found in the international trademark protection treaties and anti-dilution legislation and common law principles. If a mark is famous, other countries party to the treaty agree to prevent registration or use of the mark in their jurisdiction. This may be a potential solution for the future, but unless an international consensus of what constitutes a famous mark is reached and an agreement as to the sanctions and remedies is established, this notion is of little help to us at the moment.
The conflicts between trademarks and domain names began with the first-come-first-served registration process of domain names. At first, there was no formal international pre-registration verification process for domain names. Now, there are Sunrise periods where trademark owners can pre-register domain names corresponding to their trademarks provided they file evidence of their trademarks rights.
In the March of 2009, ICANN formed the Implementation Recommendation Team (the ‘”IRT”) to “(...) seek solutions for potential risks to trademark holders in the implementation of new gTLD’s. The IRT tabled a report in July 2009 with several recommendations, namely:
The creation of an centralized IP Clearinghouse where prior to registering a domain name, all registrars would have to clear the new domain name against a list of intellectual property rights registered by trademarks owners directly before authorizing the registration of the domain name;
The creation of a Globally Protected Marks List (GPML) to protect trademarks that are considered to be global registrations (according to criteria yet to be set);
Top Level Rights Protection Mechanisms (RPM) that would cross reference the GPML with domain name registration applications for identical or confusingly similar trademarks
Second Level Rights Protection Mechanisms that would extend protection to the second level
Standard Sunrise Registration Processes that would allow an owner of a nationally registered trademark to preregister a domain name before the process is opened to the public.
Draft Uniform Rapid Suspension System (URS) that would require new
How can I obtain a domain name?
Domain names are usually assigned on a first-come, first-serve basis and are registered with an accredited registrar for the domain name you want. The registrar will then conduct a domain name search to see if the name sought is already taken through a “WHOIS” search. Such searches can be conducted at http://networksolutions.com/whois/index.jsp, or at any accredited registrar’s web site.
Prior to 1999, Network Solutions, Inc. (NSI) was the sole registrar for domain names. Today, there are numerous registrars, all of whom work with the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a non-profit entity that manages and coordinates domain name registration to ensure that every address is unique and that all domain names map to the correct IP address.
Stay tuned for the next posts on:
"DOT TEL" and
What to do if your domain name is taken.
Nathaly J. Vermette, LL.B., LL.M.
Attorney & Trade-mark Agent
njv@vermettelaw.com
1550 Metcalfe, Suite 800
Montréal, Québec
H3A 1X6
Canada
Direct telephone: (514) 499-7444
http://www.vermettelaw.com/
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