Introduction[edit | edit source]
The Internet is an enormous repository of information, contained on individual web pages, organized into websites. To locate a specific web page requires the use of an Internet Protocol number, which is like a telephone number or street address. These numbers consist of four groups of digits separated by periods (e.g., "18.104.22.168"). Because it would be extremely difficult for users to remember these sequences of numbers, the Domain Name System was developed to make it easier for users to locate web-based information.
Each domain name consist of a unique string of characters (letters, numbers and certain symbols), arranged so that reading from right to left, each part of the name points to a more localized area of the Internet. For example, in the domain name "iii.org.tw", the ".tw" is the country code, which means that the domain name is located on a computer in Taiwan, the ".org" is known as the top-level domain, reserved for educational institutions, while the "iii" specifies a second-level domain, a website owned by the Information Industry Institute. Figure 2 illustrates the hierarchical organization of domain names with examples, including a number of the original top-level domains and the country-code top-level domain for the United States.
If a user knows or can deduce the domain name associated with a website, the user can directly access the website by typing the domain name into a web browser, without having to conduct a time-consuming search. Because users often try to "guess" the domain name to avoid searching for the website, having an easy-to-remember domain name is a distinct advantage. Otherwise, the user may have to engage in a lengthy search to locate the desired website.
How the Domain Name System works[edit | edit source]
"The Domain Name System (DNS) is a global, distributed database and associated lookup protocol. DNS is used to map a piece of information (most commonly an IP address) to a human readable domain name.
|“||Before using a domain name to locate an Internet computer site in 'cyberspace,' a computer must match the domain name to the domain name’s Internet Protocol number. The match information is stored on various Internet-connected computers around the world known as domain name servers. The computer attempts to find the match information by sending out an address query. The goal of the address query is to find the particular domain name server containing the match information the user seeks.
When ordered to translate an unknown domain name into an Internet Protocol number, a computer will ask its Internet Service Provider's server if it knows the domain name and corresponding Internet Protocol number. If that server lacks the information, it will pass the query to a 'root server,' also called a 'root zone' file, the authoritative and highest level of the domain name system database. The root zone file directs the query to the proper top-level domain zone file, which contains the domain names in a given domain and their corresponding Internet Protocol numbers. In the case of someone searching for the 'bettyandnicks.com' home page, the root zone file sends the query to the top-level domain zone file with information about '.com' domain names. The '.com' zone file then refers the query to a second-level domain name file with all the second-level domain names under '.com.' This is where the 'bettyandnicks.com' query ends: the second-level domain name file has the information matching the domain name to its associated Internet Protocol number. With the Internet Protocol number, the user's computer can connect the user to the requested Internet site. The 'bettyandnicks.com' home page will appear, just as if the user had typed in the Internet Protocol number instead of the domain name."
Distinction between trademarks and domain names[edit | edit source]
There are several important distinctions between domain names and trademarks which should be noted.
- A domain name can be registered only if the identical domain name is not current registered to another; a trademark may be registered to multiple claimants, as long as there is no likelihood of confusion between them.
- Domain name registrars only reject identically spelled domain names; no attempt is made to determine whether two domain names which are not spelled alike may be likely to cause confusion because of how they are pronounced, have identical meanings in different languages, or otherwise would be rejected by a trademark examiner.
- A domain name has global usage and there can only be one user of a specific domain name in the world; trademark protection is national in scope, and different entities may own the same trademark in different countries.
- Registration of a term as a domain name does not necessarily give the registrant trademark rights in the term.
- Generic and descriptive marks may not be protectable as trademarks, but can be used as domain names.
|“||If the Internet were a technically ideal system for commercial exploitation, then every trademark owner would be able to have a domain name identical to its trademark. But the parts of the Internet that perform the critical addressing functions still operate on the 1960s and 1970s technologies that were adequate when the Internet's function was to facilitate academic and military research. Commerce has entered the Internet only recently. In response, the Internet's existing addressing systems will have to evolve to accommodate conflicts among holders of intellectual property rights, and conflicts between commercial and non-commercial users of the Internet. 'In the long run, the most appropriate technology to access Web sites and e-mail will be directories that point to the desired Internet address. Directory technology of the necessary scale and complexity is not yet available, but when it is developed it will relieve much of the pressure on domain names.' No doubt trademark owners would like to make the Internet safe for their intellectual property rights by reordering the allocation of existing domain names so that each trademark owner automatically owned the domain name corresponding to the owner's mark. Creating an exact match between Internet addresses and trademark will require overcoming the problem of concurrent uses of the same trademark in different classes of goods and geographical areas. Various solutions to this problem are being discussed, such as a graphically-based Internet directory that would allow the presentation of trademark in conjunction with distinguishing logos, new top-level domains for each class of goods, or a new top-level domain for trademarks only. The solution to the current difficulties faced by trademark owners on the Internet lies in this sort of technical innovation, not in attempts to assert trademark rights over legitimate non-trademark uses of this important new means of communication.||”|
Domain name litigation[edit | edit source]
During this time, there were a large number of lawsuits filed in the United States, with smaller numbers filed in Australia, Canada, England, France and Germany, over the right to use a particular domain name. They generally fell within one or more of the following categories:
- Competitors. There were a number of cases in which a commercial or political organization adopted a competitor's trademark or trade name as its domain name — either to confuse users looking for the legitimate trademark owner or to embarrass the competitor. Courts had little problem in finding such uses to be [[trademark infringement|infringing.
- Free riders. Some companies chose a domain name in an effort to play off of a famous mark. Courts also had little problem enjoining such uses.
- Cybersquatters. A number of individuals and organizations registered large numbers of trademarks as domain names with the expectation that they would be able to sell the domain names back to the trademark owners at a considerable profit. While some companies were willing to purchase the domain names, others went to court. Judges were not sympathetic to cybersquatter's claims, and in most of the reported cases, the cybersquatter lost. Cybersquatters have been held to violate trademark laws, even if the defendant did not use the domain name, but merely reserved it.
- Legitimate users. Companies in disparate industries can legally use and register identical marks without confusion (e.g., Delta Airlines, Delta Faucets, Delta Dental). However, when those companies go online, there may be confusion, since only one company can own a particular domain name (e.g., www.delta.com). Cases in this category must be decided by applying traditional trademark doctrines.
There are several possible claims that can be made in a domain name dispute. The most common under U.S. law are: federal trademark infringement, federal unfair competition, federal trademark dilution, and the Anticybersquatting Consumer Protection Act.
- Federal trademark infringement. Owners of federally registered trademarks can bring an action against a domain name holder if the use of the domain name is “likely to cause confusion” regarding the source of commercial goods or services. To determine likelihood of confusion, the court looks at eight factors:
- (1) the similarity of the two marks in appearance, sound, and meaning;
- (2) the strength of the owner’s mark;
- (3) the similarity of the products or services on which the marks appear;
- (4) the similarity of the marketing methods and distribution channels;
- (5) the sophistication of the target audience;
- (6) the existence of actual confusion;
- (7) the intent of the infringer; and
- (8) the likelihood that the parties will expand their line of goods or services into similar markets.
- Federal unfair competition. Owners of registered or unregistered trademarks can bring a claim under Section 43(a) of the Lanham Act if the use of the mark is likely to cause confusion as to the source of the goods or services, of if it misrepresents the nature or quality of the goods or services.
- Federal trademark dilution claim. The Federal Trademark Dilution Act of 1995 provides remedies for dilution of famous marks. The owner of a famous mark can pursue a claim if there has been a blurring or tarnishment of the mark. It is not necessary to show likelihood of confusion. This claim has been extremely useful in domain name disputes.
References[edit | edit source]
- The only country in which a country code is not required is the United States. A domain name without a country code will be assumed to have the '.us' country code.
- In some domain names, there may be additional strings of characters to the left of the second-level domain name, more narrowly defining the precise website sought.
- Thomas v. Network Solutions, Inc., 176 F.3d 500, 503-04 (D.C. Cir. 1999) (citations and footnotes omitted) (full-text).
- 985 F. Supp. 949, 967-68 (C.D. Cal. 1997) (citations omitted) (full-text).
- See, e.g., Planned Parenthood Federation v. Bucci, 1997 WL 133313, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997); MTV Networks v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1994) (full-text).
- See, e.g., Playboy Enters. v. Calvin Designer Label, 985 F. Supp. 1218 (N.D. Cal. 1997) (full-text); Toys "R" Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) (N.D. Cal. 1996).
- See, e.g., Panavision Int'l L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996) (full-text), aff'd, 141 F.3d 1316 (9th Cir. 1998) (full-text).
- See, e.g., Interstellar Starship Servs., Inc. v. Epix, Inc., 983 F. Supp. 1331 (D. Or. 1997) (full-text).
- 15 U.S.C. §1114.
- See, e.g., CardService Int'l v. McGee, 950 F. Supp. 737 (E.D. Va. 1997) (full-text); Planned Parenthood Federation v. Bucci, 1997 WL 133313, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997); Playboy Enterprises, Inc. v. Calvin Designer Label, 985 F. Supp. 1218 (N.D. Cal. 1997) (full-text). Cases in which there was a finding of no likelihood of confusion include: Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1338 (E.D. Mo. 1996) (full-text) ("goldmail.com" and "cybergold.com"); Interstellar Starship Servs., Inc. v. Epix, Inc., 983 F. Supp. 1331 (D. Or. 1997) (full-text) (“epix.com” and “EPIX” on different services).
- 15 U.S.C. §1125(a).
- 15 U.S.C. §1125(c).
- Blurring occurs "when a defendant uses a plaintiff's trademark to identify the defendant's goods or services, creating the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product." Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326 n.7 (9th Cir. 1998).
- Tarnishment occurs “when a famous mark is improperly associated with an inferior or offensive product or service." Id.
- See, e.g., Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d (BNA) 1479 (W.D. Wa. 1996); Toys "R" Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) (N.D. Cal. 1996); Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).
See also[edit | edit source]
- Domain name address
- Domain name administration
- Domain Name and Addressing System
- Domain name applicant
- Domain Name Association
- Domain name cancellation
- Domain name dispute
- Domain name industry
- Domain name owner
- Domain name registrar
- Domain name registrant
- Domain name registration
- Domain name slamming
- Domain name tasting
- Domain name transfer
- Domain name warehousing
- Internet domain name
- Internet Name Domains (RFC 799)
- Internet Domain Names: Background and Policy Issues
- Root domain
- Second-level domain
- Third-level domain
External resources[edit | edit source]
- RFC 1034, Domain Names — Concepts and Facilities, an Internet Protocol Standard.
- RFC 1035, Domain Names — Implementation and Specification, an Internet Protocol Standard.