Charlotte Waelde1
The clash between ownership and use of domain names in cyberspace and trade marks in the terrestrial world is one of the areas of dispute currently at the forefront of legal debate in relation to the Internet. The issues that arise illustrate the struggle being played out between commercial users of the Internet as they lock horns in an effort to mould the unstructured web of cyberspace into a form that more closely resembles the rules of engagement with which they are familiar. Traditional terrestrial rules of trade mark law are being employed to resolve clashes over domain names with some extraordinary results. In response, those currently charged with a supervisory role in relation to the allocation of domain names have formulated their own policies to deal with the clashes. These policies have in their turn led to yet more disputes, and resulted in international efforts to resolve the clashes, which in their turn have led to further criticism. The result is something akin to chaos. Despite this, the Internet continues to function, and indeed to grow at a phenomenal rate.
The purpose of this paper is firstly to examine and to comment on the basic issues of trade mark law and domain names in this area; secondly to look at the trends in the case law in the UK and the US and to highlight a number of the issues that flow, and in particular, to comment on whether the analyses of the disputes to date have been sufficient; and thirdly to explain the policies of the regulatory bodies and suggest how these policies could be improved.
What is a domain name?
Every resource on the Internet, such as a web page or a file of information has its own address - or Uniform Resource Locator (URL). A domain name is part of this address which is assigned to each computer or service on the Internet2
An example of a domain name is "ibm.greenock.com". Reading this from left to right, "ibm" is the name of the hostcomputer; "greenock" is the second level domain name, and is registered by the organisation or entity who wants to use the particular address. The last item "com" is the top level domain name and often describes the purpose of the organisation or entity who owns the second level domain name. The InterNic Registry in the United States3 handles applications for registration under a number of well known top level domain names. These are ".com" used by commercial entities"; ".gov" for US governmental organisations; ".edu" for certain educational establishments; ".org" for other non-profit organisations who do not fall easily into the other categories; ".net" for the network providers and ".int" for organisations established by international treaties
There are also registries in other countries around the world administered by other network information centres such as RIPE-NIC in Amsterdam and AP-NIC in Tokyo. These registries co-ordinate IP addresses with the domain names registered on the basis of geographical location. For example ".uk" for the United Kingdom and ".fr" for France. A company in the UK can register in the ".com" top level domain or it can register in the ".uk" top level domain. Because the top level domains administered by InterNic do not include a geographical location, they are viewed as having international connotations, thus making them attractive to those businesses who like to view their activities as having international appeal.
The domain name system maps names to a series of numbers or IP address - such as "198.41.0.5". These numbers are then linked with an easily read and remembered address - the domain name. The domain name need not change if the computer or service changes, whereas the series of numbers will. The domain name is intended to be more meaningful to human beings than the series of numbers. The numbers referred to above are linked with the domain name "rs.internic.net". People who are using the domain name can therefore choose an easily remembered, and importantly, easily recognisable names in cyberspace.
There are a number of factors that have brought the domain name system into opposition with the law of trade marks. It is argued that a domain name functions as a trade mark, and therefore any use of a domain name by a person not entitled to the trade mark, amounts to infringement. Interestingly, and importantly, most of the disputes to date have been in relation to the ".com" top level domain name. There are a number of reason for this: firstly, it is one of the oldest - in terms of original top level domains; secondly, it is a naming system which might utilise only two names, such as "Harrods.com", thus making the address easily and instantly recognisable. By contrast, under one of the country domains, the name would be "Harrods.co.uk". Thirdly, its association with commercial organisations is also important in that it is attractive to a commercial entity seeking to set up a web site; and finally, as mentioned above, the name has international connotations.
Another factor that has contributed to the controversies surrounding domain names is the development of browsers and search engines which make finding specific locations on the Internet relatively simple. Most browsers now allow a surfer to find the web site of a company by simply typing in the company name. If a browser such as Netscape is used, the surfer need only type in the word "apple", and the browser will add the rest of the URL; i.e., in this case "http://www.apple.com", in order to take the surfer directly to the home page of Apple computers. Prior to the development of these browsers, the surfer would have had to work much harder to find a particular address and the web page located at that address. Search engines, such as Infoseek, AltaVista and Yahoo! have also simplified the task of the surfer, allowing information to be found using only one key word, often a word that is used as part of a trade mark by a business.
The problems that arise with this system of domain names
No two domain names can be identical. There can only be one "harrods.com". The word "Harrods" could however be registered under one of the country domains. Thus along with "harrods.com", "harrods.co.uk" can also be used as a domain name. In addition, variations on the name "harrods.com" can be registered, for example "harr0ds.com" or harrods1.com. The permutations are limited only by the imagination.
There may be a number of people or entities who consider themselves to be "entitled" in the loose sense of the term to a particular domain name. Let us take the example of the name "Fellowes". In the UK, "Fellowes" may be the registered trade mark for office stationery, it may be the name of a regular street market in London, and of an art gallery in Aberdeen; there may be a solicitors firm named "Fellowes", it may be the unregistered mark for "Fellowes" kitchen utensils, and be registered for garden seed and other equipment. And indeed you may have different entities equally entitled to the same mark in other countries around the world, whether they operate within the same sphere of business or not. Trade mark law is, after all, territorial. Only one of these organisations will be able to register the name "Fellowes.com". The controversy is over who gets that domain name and why.
The ways in which disputes have arisen.
One way in which disputes have arisen is where a third party intentionally registers a domain name in the knowledge that someone else will want it, such as "windows95.com". This domain name was registered by a student in Utah. The intention may be to hold the company or business who wants to use the domain name to ransom, and demand financial reward for giving up the domain name. Another example is where "Mcdonalds.com" was registered by a journalist, Mr Quittner in 1994. To secure return of the name, McDonalds were forced to make a donation for computer equipment for a primary school
A second way in which disputes arise is where a domain name is registered by someone who knows it is the same as a trade mark belonging to someone else, or very similar to such a trade mark, but intends to use it for their own purposes. Visitors to the site may be surprised to find that the goods or services which are advertised are not those they would normally have associated with the mark that they know and understand. Teubner & Associates, a high technology software company found themselves in just such a position. A competitor of Teubner's registered the name "tuebner.com", which is a common misspelling of Teubner. "Tuebner.com", after negotiation, has been reassigned to Teubner & Associates.
Thirdly, disputes can arise over "innocent" registrations. This is where registration is made of what would be a logical choice of a domain name. Our example of "Fellowes" above provides one such scenario. The winner of the race to the register for the domain name "Fellowes.com" could be the stationery company. Imagine the surprise of the computer literate clients of the firm of solicitors, or devotees of Fellowes grass seed when they access the home page and find out it is totally unrelated to the products or services that they associate with the name.
The permutations are endless, as are the potential grounds for dispute. Interlaw Ltd, an international legal organisation, registered the domain name "interlaw.org". Interlaw Ltd complained about the registration of the domain name "inter-law.com" by the "Lectric Law library, a popular legal site. Someone else has registered the domain name "interlaw.com"; and yet someone else "Electric-Library.com".
Most of the litigation to date has involved instances where there has been intentional pirating of domain names, as in the cases of "Tuebner.com" and "McDonalds.com".
Reported disputes and decided cases
Rumours and stories of domain name and trade mark controversies are rife. A number of cases have reached court, particularly in the US4. Three cases have been heard in court in the UK. Unfortunately, however, due to their specific facts, they have not contributed to the development of a UK jurisprudence in relation to the domain name/trade mark controversy.
The basis on which actions for infringement of trade marks by the use of domain names have been brought in the US to date rest on two main grounds, that of confusion, and that of dilution. This article will look first at the question of confusion. During this discussion, one of the themes that will be highlighted is that there is a distinction to be drawn between the domain name and the underlying goods and services that are offered at the address, and that this distinction needs to be taken into account in trade mark and domain name disputes.
Confusion in the US
A trademark in the US is defined in the Lanham Act 1984 as "any word name, symbol, or device or any combination used or intended to be used to indicate the source of the goods". The touchstone of liability under this Act is that of confusion5. Liability for infringement of a trade mark is strict. In other words, there is no need for intent or negligence. Liability arises when the infringer uses a mark which may be confused with the trade mark of the infringed party, when used in conjunction with similar goods or services.
Trade mark confusion and similar domain names was considered in the case of Maritz Inc. v Cybergold Inc.6 Maritz alleged trade mark infringement against CyberGold. Maritz used the unregistered "GoldMail" name in conjunction with its GoldMail service. This service, provided on the Internet, was designed to provide financial incentives and rewards for reading electronic mail. Their URL was ".goldmail.com". CyberGold were developing a similar Internet service, using the domain name "cybermail.com". The court was prepared to consider the matter of confusion between the marks, "GoldMail" and "CyberMail", stressing that the use of the allegedly infringing mark must "create a likelihood of confusion, deception or mistake among an appreciable number of ordinary buyers as to the source of or association between the two names"7. In addition there must be the "likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or simply confused as to the source of the goods in question"8. Factors pertinent to a finding of confusion included: the strength of the trade mark; the similarity between the marks; the competitive proximity of the products; the intent to confuse the public; evidence of actual confusion and the degree of care reasonably expected of customers 9.
The court found that it was not shown that the use of the "CyberMail" mark created a likelihood of confusion, deception or mistake among an appreciable number of ordinary buyers as to the source or association of the Internet services offered by the two companies.
This case dealt with different names, "GoldMail" and "CyberMail". Subsequent cases in the US have dealt with names that were the same and have based themselves on dilution rather than on confusion, an argument that is only possible if the marks that have allegedly been infringed are famous within the meaning of the US Trade Mark Dilution Act 1995 which came into force on 16 January 1996.
Confusion in the UK
There have been three cases on domain names that have reached court so far in the UK. One dealt with domain names, trade marks and passing off, the second looked at domain names and passing off only as neither party had a registered trade mark, and the third had an international flavour as it concerned a dispute between a company in the States and a company in England. Because of their particular circumstances the cases have not contributed much to our understanding of confusion in trade mark law and domain names.
The first case was Harrods Ltd v UK Network Services Ltd and Others10 where the domain name 'harrods.com' was registered by Michael Lawrie. Harrods, the famous department store in London wanted this domain name to advertise themselves and their wares on the Internet. Michael Lawrie was ordered by the court to hand the domain name over to Harrods, on the grounds that his potential use of the domain name constituted "trade mark infringement and passing off". Sadly, as Michael Lawrie did not turn up in court, the arguments to support this contention were not outlined and discussed in full.
The second dispute was that of Pitman Training Limited and PTC Oxford Ltd v Nominet UK Ltd and Pearson Professional Ltd.11 which was based on the common law tort of passing off as neither party had a registered trade mark. The dispute was over the domain name 'pitman.co.uk' which was claimed by Pearsons plc who operate a publishing business, and Pitman Training Limited who operate a training and correspondence course business. Both were equally entitled to use the trading name 'Pitman' in the UK within their respective spheres of business. Nominet, the body in the UK responsible for allocating domain names under the top level domain 'co.uk' originally allocated the name to Pearsons plc. For some unknown reason, when Pitman Training Limited asked Nominet to register the same domain name several months later, it was duly allocated to them, thus depriving Pearsons plc of their registration. Pitman Training Limited proceeded to set up a web site and email service using the domain name, and it was only a period of months later, when Pearsons were ready to go "live" with their web site that they discovered that they no longer had the registration. After much correspondence between the various parties, Nominet re-allocated the domain name to Pearsons plc. On application for interlocutory injunction, the court ordered that it should revert to Pitman Training Limited, pending the full hearing. At the full hearing, Pitman Training Limited argued that because they had used the domain name for a period of months, the general public would associate that name with their business, and should it revert to Pearsons plc, that would constitute passing off. The court disagreed that a case of passing off had been established on the rather thin evidence presented (two e-mail messages had been sent to Pitman Training Limited during the months that the site had been in operation) and ordered that the domain name should be allocated to Pearsons plc on the basis that they had registered it first with Nominet.
While the case does not contribute to our knowledge of the trade mark and domain name controversy, it is interesting for a number of factors. Firstly because, in distinction to many other cases, it dealt with .co.uk domain rather than the ".com" domain. Secondly, it could have been argued that Nominet were negligent in their procedures in re-allocating the domain name to Pitman Training Limited when it had already been allocated to Pearsons plc. Nominet operate a first come first served policy on the registration of domain names. However, suing Nominet for damages would not have been a sufficient remedy for either party as what they wanted was the domain name rather than monetary compensation. Thirdly, it is notable that the court upheld Nominet's policy on first come first served registrations.
The third casse was Prince plc v Prince Sportswear Group Inc. (Prince)12. Prince plc is an IT company registered in the UK. For the past two years it has operated a web site under the domain name "prince.com". Prince Sportswear Group Inc., a company registered in the US, notified InterNic that it was the owner of the Federal trade mark "Prince" and that the use of the domain name "prince.com" by Prince plc was a dilution of its famous mark. As with Nominet, InterNic operates a domain name allocation policy on a first come, first served basis13. However, if a second person is able to come forward and show that they are the owner of a registered trade mark pertaining to that name, then the first person who has registered the domain name loses that registration. Such a loss of registration can be put on hold if the first party can either prove that they have a trade mark registration, or have commenced proceedings in a US court to protect that domain name. When InterNic wrote to Prince plc intimating that that they were about to re-allocate the domain name, Prince plc could neither show they owned a trade mark, nor confirm that they had commenced proceedings in a US Court, and so were in danger of losing the domain name in favour of Prince Sportswear Group Inc. However, at the last minute, Prince plc filed suit in the High Court in London, alleging that the statements made by Prince Sportswear Group Inc. that Prince plc were "infringing and diluting their trade mark rights" constituted groundless threats in terms of section 21 of the UK Trade Marks Act 1994. Although InterNic domain name policy refers to an action being raised in a US court, they have applied this flexibly, and have said, at least for the time being, that an action before any court will suffice. How long this policy will be operated in this way remains to be seen. When heard, the court found that the allegations of groundless threats were proved and issued a permanent injunction requring Prince Sportswear Group Inc. to cease making such threats. Prince Sportswear Inc. then raised an action in the States against Prince requiring the doamin name to be assigned to them. This was refused on the basis that Internic operated a first come first served policy. The domain name thus remains with Prince plc. What is particularly interesting in this case is the international flavour it is bringing to this area. US cases have dealt mainly with litigants in the US. The two UK cases have involved litigants in the UK. This one had litigants on either side of the Atlantic each equally entitled to use the same mark, albeit, in this instance, in different spheres of business.
Despite the fact that UK trade mark law has not yet been analysed in detail in connection with these disputes, there are interesting developments dealing with terrestrial trade mark rights which may well prove useful in the battle in cyberspace. Under the UK Trade Marks Act 1994, s 10(2), the question of confusion and similarity of goods was considered in British Sugar v James Robertson14. Six factors were taken as important in establishing similarity of the goods and services: the users of the goods and services; the uses of the goods and services; the physical nature of the goods or acts of service; the trade channels through which the goods or services reach the market; whether in self service stores the goods are found together or apart; the extent to which the goods or services are competitive. Similar considerations are likely to arise in assessing the similarity of the services or goods offered on the Internet. Clearly the most pertinent factor is the respective channels through which the goods or services reach the market.
If the goods and/or services are similar, then the second test to find infringement is that there must be a likelihood of public confusion between the trade marks which are appended to the goods and services used, which includes a likelihood of association.
This was considered in Wagamama Limited v City Centre Restaurants plc and others15. Wagamama owned the WAGAMAMA trade mark which was registered for restaurants. City Centre Restaurants decided to open a restaurant under the name Rajamama. Wagamama sued for infringement of trade mark and passing off. It was held that there had been infringement and that a case of passing off had been made out. In the judgement much discussion revolved around the phrase 'likelihood of association'. It was argued that the inclusion of the words in the section meant that there could be infringement of the trade mark even if there was no confusion in the minds of the public. The effect of this argument was to say that the grounds on which a case of infringement could be established under this section had been extended, such that, if there was an association between the marks in the mind of the public, this was sufficient for infringement, and that there was no need to show confusion. In other words, the function of a trade mark was not just to indicate origin, but included non-origin association, a much wider test, the effect of which would be to give the trade mark proprietor a much wider monopoly in the trade mark. This argument as to likelihood of association was dismissed. The court found that the wording of the section clearly states that there must exist a likelihood of confusion in the minds of the public, and included in, but not separate to that test, was a likelihood of association. Nevertheless, in this case the court concluded that there did exist confusion in the minds of the public as to the origin of the trade mark in that it was shown that the public thought that the Rajamama restaurant might be connected with WAGAMAMA.
The finding in this case re-inforces the view that the prime function of a trade mark is the "origin function", in other words, the function of a trade mark is to signify origin of goods and services; the touchstone of liability is that of confusion.
So, for goods and services provided on the Internet, is a surfer likely to be confused if the name "Fellowes.com" is chosen as the domain name for the company supplying office stationery if in fact she is a client of the law firm of the same name? This will depend on whether the domain name is viewed as associated with the web site only, or the underlying goods and services. And this is where a fundamental problem lies in associating domain names with trade marks. A domain name is an address used to call up a specific location on the Internet such as a Web page. Until you access the Web page, the domain name has no associations relating to the underlying goods or services. There is nothing in traditional trade mark law to prevent a business from using the same mark as that belonging to someone else, but using it for dissimilar goods and services so long as it is not likely to cause confusion. Does the domain name refer to the Web page, or to the underlying goods and services? If it is regarded as a trade mark (or an infringement of a trade mark), where is the point of confusion? At the point of access to the Web page? Or at the point of finding out what goods and services are being offered at that site? If the latter, then arguably confusion is unlikely to occur.
Perhaps an analogy could be drawn with those non-Internet related cases on trade marks and passing off which deal with the question as to the point at which confusion arises. These cases generally view post sale confusion as irrelevant; in other words, confusion must be present at the time at which the customer is making up his or her mind as to what to purchase before there is infringement of a trade mark. In Bostik v Sellotape16 the court found it irrelevant that a customer might find the colours of the "blu-tack" offered by competing brands confusing after they had torn open the packets, because that confusion would only arise after the sale was made. The problem with domain names is almost the inverse of this; there may be confusion at the point of accessing the address, but once the relevant page is accessed, there need not be any confusion thereafter.
In Reckitt & Colman Products Ltd v Bordman Inc. & Ors17, the "Jif" lemon case which concerned the similarity of packaging of two products comprising lemon juice packaged in a plastic lemon, the court held that the crucial point of reference for a shopper who wishes to purchase a lemon is the shape of the lemon itself: "Virtually no, if any attention is paid to the label which that lemon bears"; when the shopper gets home, the label is taken off as it "performs no useful function and is easily detachable, so that it is not thereafter any part of the purchased product". Can an analogy be drawn here with the function of a domain name? Once the Web site is accessed the domain name is discarded; what matters is the mark at the point of sale. Where is the equivalent of the point of sale on the Internet? Not at the point at which you log on, but rather the point at which you actually reach the Web site and make your decisions as a purchaser.
Taking this approach to the question of confusion, it would be perfectly legitimate to register any number of domain names using the key phrase "Fellowes", under different top level domains, such as ".com"; ".plc.uk"; ".ltd.uk"; and so on. The underlying goods and services are different, and there is no question of confusion once accessed.
However, this argument will fail if registration of a domain name as a trade mark is made in class 38 of the UK Register of Trade Marks. There have apparently been a number of applications filed for registration of domain names in the UK in this class, although it is not clear as to whether they have actually been registered as yet. Class 38 covers Telecommunications, specifically services allowing communication including the transmission of messages to one another. If the application is made in this class, then there can only be one mark, and the registration of a very close mark is going to be disallowed on the basis of similarity of services. However, if the registration is allowed, but relates rather to the underlying goods or services, then registration of similar domain names in different classes should pose no problem.
Trade mark dilution in the US.
The second main ground on which trade mark and domain name infringement actions have been pursued, is on the grounds of trade mark dilution. The anti-dilution doctrine seeks to enable the trade mark proprietor to protect his mark against the sorts of use where public confusion is absent. The doctrine does not seek to protect ideas of origin, but rather the quality which the trade mark embodies. For example, if the mark "Rolls-Royce" which is associated with quality cars were to be used in association with low grade safety pins, the quality associated with the mark would be diluted.
Prior to January 1996, only 25 US States had dilution laws, defining dilution as "the blurring of a marks product identification or the tarnishment of the affirmative associations a mark has come to convey"18. Dilution protection was extended to federal marks on January 16 1996 by virtue of the Federal Trademark Dilution Act of 1995. This Act created a federal cause of action for the owners of well known or famous marks, and did away with the requirement that a likelihood of confusion be established. There are a number of different scenarios in which dilution of trade marks by domain names has been considered by the courts.
Firstly, there is the use of a domain name which impacts on the underlying goods. In Hasbro Inc. v Internet Entertainment Group Inc.19 the court granted a preliminary injunction preventing Internet Entertainment Group from using the domain "candyland.com" for its Web site which featured sexually explicit materials. Hasbro produces a game Candy Land for young children, and the court was persuaded that 94% of mothers were aware of this game. The court found that the name "Candy Land" was being diluted by use by the Internet Entertainment Group. The court may well have been influenced in this case by the sexually explicit nature of the materials.
Other cases on dilution have dealt with names of companies which serve as trade marks indicating the origin of the goods or services offered under the mark.
In Panavision International LP v Toeppen20 , Dennis Toeppen registered the domain name "panavision.com". Panavision sued for dilution of its trade mark. The court found that Panavision's mark was a famous mark and that Toeppen had made commercial use of the mark by attempting to sell the domain name to Panavision. The court did much to limit the effect of its judgement by stating that it did not give trademark owners pre-emptive rights in domain names but held that registering a famous mark as a domain name merely for the purpose of trading on the value of the mark by selling the name to the trademark owner violated dilution statues, a point which also emphasis the need for some trading activity for a finding of dilution. This case was decided on November 21 1996.
The judgement in a previous case concerning the same defendant, that of Intermatic Inc. v Dennis Toeppen21, decided on 3 October 1996, was very much wider. Toeppen had registered the domain name "intermatic.com". The court found that Intermatic were entitled to summary judgement on the issue of dilution because "Toeppen's action lessens the capacity of a famous mark "Intermatic" to identify and distinguish goods or services as a matter of law". It was found that the Intermatic mark was famous within the meaning of the Federal Trade Mark Dilution Act 1995; Toeppens' use of that mark was commercial, evidenced by his intention to resell or license the domain name; and that the use of the name in connection with the Internet constituted "commerce" under the Act (thus fulfilling the requirement that there be some trading activity). By attempting to licence or sell the mark Toeppen caused dilution of the distinctive quality of the mark by lessening Intermatic's capacity to identify its goods to potential customers and destroying the mark's advertising value. This reasoning would suggest that the courts in the US would find that there was dilution of a trade mark in all cases where there was an intention by the person who registered a domain name resembling a famous trade mark to sell that domain name for financial reward.
Trade mark dilution in the UK.
It may be difficult to argue that a trade mark has been infringed by dilution where there is no element of confusion under s 10(2) of the UK Trade Marks Act 1994 given the stance taken by Laddie J in Wagamama discussed above.
However, if the notion of dilution is raised in an action concerning the hi-jacking of a company name by a third party seeking to make a profit from selling it on, then those carrying out such activities may find that a court has very little sympathy for them. In Direct Line Group Ltd v Direct Line Estate Agency22 , a trade mark infringement action was brought against the directors of a number of companies with names such as YSL Limited; Virgin Jeans Limited; and the Nike Clothing Company Limited. Direct Line Group Limited objected to the registration of the names Direct Line Estate Agency Limited and Direct Line Estates Limited. Laddie J took a robust approach to the defendants' line of business remarking: "[the directors] have a track record of taking or being associated with the taking of famous trade marks belonging to third parties, either for the purpose of carrying on business which siphons off the goodwill belonging to other traders, or for the purpose of offering those marks back to their rightful proprietors, no doubt as a profit". He went on to say "I think it only right to say that this court will view with extreme displeasure any attempt by traders to embark upon a scam designed to make illegitimate use of other companies" trade marks".
Such a robust approach would dispose of a number of complaints of the type that have reached courts in the US, such as those lodged against Dennis Toeppen. This would then leave open the door for a proper examination of the more difficult issues in relation to trade mark/domain name disputes, such as where a number of businesses are entitled to use the same mark, whether within one country or world wide. How should those problems should be resolved?
Famous marks and domain names
The US cases on dilution discussed above concern "famous names" within the meaning of the Federal Trade Mark Dilution Act 1996. There is also provision in the UK Trade Marks Act 1994 concerning the protection of "famous names" which may be of significant value to trade mark owners in their domain name fight, in particular given the international nature of the Internet.
Section 56 of the Trade Marks Act 1994 incorporates Article 6bis of the Paris International Convention into UK law. In terms of this section, if a person can show that his mark is "well known" (in the Paris Convention sense) then irrespective of whether he carries on business or has goodwill in the UK, he may stop a third party using a similar mark in relation to identical or similar goods, where that use is likely to cause confusion. The section is subject to the limitation that the mark must be well known in this country, and that needs proof of a substantial degree of recognition. What standard of proof this will require is not known, although Cornish suggests that the German methodical approach requiring 80 percent recognition may set the standard23 . Cornish uses an interesting example concerning the store "Macy's" situated in New York. The name Macy's will be "well-known" (subject to sufficient evidence) in UK for the goods that the store sells. Therefore, a British applicant could not register "Macy's" as a trade mark for department store goods. The question for the Internet then is whether "Macy's" could be used as a domain name by a UK business selling different goods or services?
Under the Trade Marks Act 1994, Macy's could object to the use of the name "Macy's" in connection with dissimilar goods or services, such as services provided on the Internet, if they could show the name Macy's had a reputation in the UK, and that the use of the name by a third party took unfair advantage of, or caused detriment to their own mark24 . There is no requirement for confusion under this section, but rather it embodies the doctrine of dilution. What is in contemplation is the use of a mark which has been registered and/or used in another country, where the reputation of that mark has spread to the UK as a result of, for example, advertising in newspapers, or publicity on television, radio or in films. In these circumstances, the mere fact that the famous name is adopted as a domain name could amount to taking unfair advantage of, or causing detriment to, Macy's, even if the business using it was selling dissimilar goods.
Thus, it would appear that there may a similar remedy on the grounds of dilution of a famous mark in the UK as is found in the US. However, this theory is as yet untested and will have to overcome judicial reluctance to embrace the notion of dilution in UK trade mark law if confusion is not present25.
Conclusion on UK law and domain names and trade marks
If the matters that have so far troubled this question of domain names and trade marks are teased out, the question of using recognised trade marks and company names as domain names becomes easy to deal with. Beyond that, if a domain name is seen as synonymous with a trade mark, then there appears no reason why actions for trade mark infringement should not succeed based on either confusion or dilution. The courts can then be left to analyse the far more tricky questions in this area, such as the distinction between the domain name and the underlying goods and services which are being promoted; how to reconcile conflicts where two or more parties are equally entitled to use the same trade mark in the terrestrial world, albeit for different goods and services; and the equally intractable problem of international conflicts where two or more parties are equally entitled to use the same trade mark for the same goods and services but are situated in different jurisdictions.
Allocation and regulation of domain names.
The ferocity of the storm in the US over the ownership of domain names has been caused by two main factors. The first factor, as discussed above, was the Trade Mark Dilution statute of 1996, which introduced Federal protection against dilution of famous marks. The second factor has been InterNic's registration policy. To investigate this further, we must briefly examine the institutional structures currently in place for regulation of Internet domain names.
The regulation of domain names: InterNic
The Internet Assigned Numbers Authority (IANA) acts under authority from the US Government and the Internet Society (ISOC) which is funded by the National Science Foundation (NSF). IANA allocates blocks of numeric IP addresses to Network Solutions Inc. (NSI), who have overall authority for IP addresses, domain names and other Internet parameters. As mentioned above, the function of allocating domain names is then further delegated by NSI to InterNic26. Several domain name allocation policies have been created by InterNic27. The latest includes the following provisions:
A registered trade mark from any authority is sufficient for InterNic as proof ownership of a registered trade mark. This has meant that where a dispute arises, the holder of the domain name, who has no registered trade mark, generally does all he can, at great speed to obtain a registration. A good example is Road Runner Computer Systems who offers Internet services. In December 1995, Warner Bros. owner of the registered trade mark "Road Runner" complained to InterNic about the registration and use of the domain name "roadrunner.com" by the computer company. InterNic informed Road Runner that it would place its domain name on hold. Road Runner then applied for, and got a trademark registration in Tunisia. However, in this instance InterNic still refused to allow Road Runner to keep the domain name. Tunisia, unlike most other countries, will register a trade mark within a matter of days.
It was this policy of re-allocating the domain names, to the registered trade mark owner that fanned the flames of the fire. The policy completely ignored any claims that prior unregistered mark owners may have, and also assumed that a domain name and a trade mark were synonymous. The policy is also unfair to non-US based businesses, as it is far more difficult for them to raise an action in the courts of the US. However, as mentioned above, InterNic are currently operating a flexible policy, indicating that the raising of an action in any court, US or otherwise, is sufficient to stay the action. How long this flexibility will continue remains to be seen given that InterNic itself may lose the right to allocate domain names in 1998. It is also noteworthy that part of the reason the first come first served policy to the allocation of domain names was adopted by InterNic was because they did not have the resources to carry out trade mark searches. This may also help to explain why priority was given to registered as opposed to unregistered trade marks - it does not cost InterNic anything simply to see a copy of a trade mark registration certificate.
Development of regulatory efforts
Over the past months, many developments have taken place in the domain naming system in a bid to reach solutions to the problems arising in courts in the US and elsewhere. One of the suggestions that has been on the cards for a while is the proposal to create many more generic top level domain names. The purpose would be to relieve the pressure on the ".com" top level domain, and to make room for every business to have its own generic top level domain, suited more closely to its particular function. Such generic top level domains may include ".reg" for registered trade marks, or ".biz" for unincorporated businesses. In this way every "Fellowes" could have a registered "commercial" address pertinent to their particular area of commerce for example "Fellowes.store" and Fellowes.firm"..
Until recently NSI who, because they were in place at the start of the great expansion of the commercial use of the Internet have enjoyed a near monopoly in the allocation of top level domains, have been unwilling to accede to this request. There is however no central authority that is responsible for the monitoring and provision of the Internet. Rather, governance of the Internet is largely based on consensus together with a need to adhere to the technical constraints that are required because of the need for the equipment used around the world to be able to communicate; the computers need to be able to "talk to each other". The "monopoly" enjoyed by InterNic in the provision of top level domains has largely been de-facto, partly because of these technical constraints, and partly because it has such a lead in the market. It also registers names in the ".com" domain, which is the one that is seen as so attractive to commercial business. Prima facie there appears to be no reason why other providers should not assign top level domains with ease. A company called "AlterNic" has challenged NSI's de facto monopoly by setting up and creating its own top level domains. The argument put forward by AlterNic is that if more top level domains were created, this would lessen the pressure on the ".com" domain and end the flurry of disputes. AlterNic has a series of servers to deal with the creation and management of these top level domains. In order to access AlterNic's servers and top level domain names, a few changes need to be made to the configuration of the browser and server software used to access Internet sites. Once done, then the browsers can recognise AlterNic's top level domains. Moreover, AlterNic's root servers will point towards NSI's root servers. In other words, if the correct configurations are made to the software, then your browser can recognise both AlterNic's and NSI's top level domain names. However, currently NSI's root servers will not point to AlterNic's top level domains thus limiting the utility of AlterNic's alternative naming system.
This approach of the creation of more top level domains is now being expanded. The International Ad Hoc Committee (IAHC) set up by a number of interested parties28 to try and find a solution to the domain name problem, announced an increase in the number of top level domain names. In May 1997 members signed a Memorandum of Understanding on Generic Top Level Domain Space of the Internet Domain Name System (MOU)29. This MOU sets up an Internet self-governance system pursuant to the plan for increasing and administering generic top level domains. Seven new generic Top Level Domains are to be created, and more firms around the world are to be allowed to act as registrars. The new top level domains will be ".firm" for businesses or firms; ".store" for businesses offering goods to purchase; ".web" for entities with web activities; ".arts" for entities in the cultural and entertainment activities; ".rec" for recreation and entertainment activities; ".info" for information services, and ".nom" for individual or personal nomenclature30. Twenty eight new registrars will be established to deal with the administration under these top level domains, and each will also be able to register second level domains.
A number of arguments suggest that the creation of these extra top level domains will not signal an end to the disputes, but do little more than create further "techno-anarchy" in cyberspace. First, a number of businesses argue that they may lose associated good will if they are not able to use the ".com" domain, such is the current fixation on the word ".com". Secondly, there are already over 230 top level domains throughout the world , including such country domains as ".uk" for the UK and ".de" for Germany. This has not alleviated the problem. Thirdly, there is no reason to suppose that some business will not simply register under all the top level domains. It is still difficult to imagine that the owners of certain names would be happy to see their marks used by others. Harrods of London may now have "harrods.com", but that would not stop them objecting to "harrods.firm", or "harrods.info" being registered by someone else. It is likely to be argued that confusion and dilution will still occur if the name is used by anyone other than Harrods of London.
Before the ink had dried on the page of the MOU, the proposals it contains have come under fire by no a lesser person than Madeleine Allbright, the US Secretary of State31, arguing that the strategy suggested is not in the best interests of US residents. In addition, a group calling itself the Open Internet Congress met in July 1997 to formulate a plan to try and stop implementation of the proposals by the IAHC arguing that it represents an "unauthorised attempt to take over the Internet"32.
The fundamental issues to be resolved
There is no doubt that there is currently a great deal of confusion surrounding the issue of trade marks and domain names. In this confusion there are a number of fundamental issues that have to be resolved concerning the interaction between the two.
At a very basic level, it is not at all clear why trade marks and domain names are necessarily seen as synonymous. A domain name is an address. We all have addresses, and there has never been any argument that a postal address should be seen as synonymous with a trade mark, no matter how similar the name is to a registered mark. However, it is true that on the Internet, a company's "address" (i.e. its URL) may raise a level of expectation as to the quality and origin of the goods that may be offered, or the information that may be offered in connection with that address. For example the name "next.clothes.com" may lead us to think that what we would be buying would be clothes and other goods from the store Next, a commercial entity, and that any merchandise would be of the quality expected from Next. Because these domain names may suggest quality, origin and identity, they may function as trade marks. However, careful consideration must be given to the separation of the domain name from the trade mark and the underlying goods and services, which should not automatically be seen as synonymous.
A further problem is over the use of the trade mark. Trade mark law is such that it permits multiple registrations of the same trade mark in different geographical locations, and for different goods and services where there is unlikely to be confusion. However, only one person can hold a particular domain name, and that is for world wide use. This question of competing international trade marks and domain names, mentioned only briefly above, must be rationally analysed to create an internationally workable policy.
Another fundamental problem revolves around the policy that InterNic has chosen to follow in giving priority in allocation of domain names to the holders of registered trade marks. Why should those who own registered trade marks have a superior claim to a domain name over those who use unregistered trade marks? Domain names can be of significant value to those who cannot obtain a registered trade mark. InterNic policy certainly fails to take account of the interests of the holders of unregistered marks.
Possible solutions
Initial relief from the courts
The hi-jacking of domain names by those intending to make a quick profit from selling them back to the true owner has been discussed above. If the courts continue to take the robust approach found in the Toeppen cases, then many of the types of disputes that have reached court to date will be solved with little problem.
However, there are, and will continue to be other circumstances which will need to be dealt with, such as when two or more entities are entitled to the same trade mark, whether based within the UK or abroad.
Self regulation and self restraint.
A first solution would be for InterNic to revert to the policy of registering domain names on a first come, first served basis, and to halt the practice of re-allocating on the basis of a registered trade mark. Users would then have to accept these were the grounds on which the system operates, and quite frankly stop getting so excited about "domain name hijacking". There are plenty of variations on a particular name that can be registered with a little imagination. It is unlikely, because of the registration fee that is charged by InterNic, that those entitled (in the loosest sense of the word) to register a domain name will register all the possible variations. If someone else has your preferred name first, then you have to settle for something else. In addition, a number of companies register second level domains under the top level domains which could easily be used by others. For example, Proctor & Gamble have registered "pampers.com" as one of their domain names, along with many other ".com" addresses featuring their products. How much preferable if they were to register "pampers.p-and-g.com", and similarly register all their products under the one second level domain of ".p-and-g" thus freeing up more names for others.
Is such self-restraint and self regulation likely? Unfortunately not! Further disputes are almost bound to get to court: the courts are then going to have to make decisions.
Creation of more top level domain names
As discussed above, the proposal to create seven more generic top level domains has come under heavy criticism, and it is not at all clear whether their creation will solve the problems that have arisen. Nonetheless, the solution remains on the cards.
Cease allocating domain names: allocate numbers instead.
As explained above, domain names are based on a series of underlying numbers. If the disputes over names do not cease, then users could simply be given a series of numbers, and no dispute over the name could arise. Clearly this solution would not be popular. Users of the Internet see value in having an easily recognisable and memorable name. Further, the domain name remains constant - for example, if the user changes service providers, then the underlying numbers change but the domain name remains constant. Therefore any change in service provider would entail consequent changes in corporate stationary and so on. But this is not a new problem. If a business moves, then stationery has to change; telephone numbers change, and again business information also has to change. The solution, however unpopular, would certainly not be impossible. Perhaps a better solution than tearing the Internet apart by litigation.
Create a global directory.
The explosive growth of the Web and the lack of a global directory have contributed significantly to the domain name problems. Indeed, the domain name service is becoming confused with a directory service, which it is not. The optimal solution would be to create a global database that would map the name of a company to its web page. All the user would have to do would be to type in the name of the business, and possibly the products they provide. The directory service would find the requested web site by looking up the IP address. The web search engines do, of course, already carry out this function, but in an unstructured way. To create a truly global database would require investment and co-operation, and appears it would be some time away. What is needed is a solution now.
Conclusion
To date it appears that the courts have been prepared to rush in to the domain name trade mark dispute with little examination of the fundamental issues.
The disputes over domain names and trade marks are not going to go away. However, with the increase in the number of top level domains available, education of the commercial Internet users that the ".com" domain is not the only solution to an Internet address, and self restraint, the problems can be overcome.
Back to IT and the Law Course Web Site