SSRN-Id2045222-Conflicts Between Trademarks and Domain Names a Critical Analysis
Transcript of SSRN-Id2045222-Conflicts Between Trademarks and Domain Names a Critical Analysis
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Conflicts between Trademarks and
Domain Names:
A Critical Analysis
Compiled by:Snehlata Singh
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ACKNOWLDGEMENTS:
First of all, I would like to thank my Mother and my guru Shree Sainath for their blessings
throughout. I thank my supervisors Mr Howard Johnson and Dr Mike Adcock for their
valuable advice and support. I would also like to thank the module tutor Dr Jonathan
Mukwiri for helping me understand the basic concepts underlying the issue and finally, I
thank Durham University for giving me access to their library and databases.
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ABSTRACT:
The essay discusses the issue of conflicts between trademarks and domain names. It discusses
in detail the causes and kinds of the disputes and what the legal system has to offer to this
condition. As the essay proceeds, it is made apparent that the current legal system is
incapable of handling these issues effectively. The essay concludes with the same remark and
suggestions that might help in settling these disputes.
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LIST OF CONTENTS
Acknowledgements2Abstract ..................... 3List of Contents...... 4List of Figures 5List of Abbreviat ions. 6
Chapter 1: Introduction............................................................. 7
Chapter 2:Domain Names and Trademarks: An Overview.. 82.1. What is a Domain Name?....................................................................... 82.2. What is a Trademark?.............................................................................102.3. Domain Names vs. Trademarks..11
Chapter 3: The Kind of Disputes Between Trademarks and Domain Names...143.1. Cybersquatting143.2. Reverse Domain Name Hijacking...163.3. Typosquatting..17
Chapter 4: Protection of Domain Names: UK Trademark Law 194.1. Trademark Infringement. 19
4.1.a. Section 10(1) TMA 1994. 204.1.b. Section 10(2) TMA 1994. 214.1.c. Section 10(3) TMA 1994. 23
4.2. Domain Name and Passing Off.. 25Chapter 5: The Protection of Domain Names: International Law 27
5.1. The Need, Purpose and Creation of ICANN. 275.2. The UDRP. 28
Chapter 6: Analysis of ICANNs UDRP: Is UDRP the Required Solution.. 346.1. Critical Examination of Grounds Laid Down by UDRP for Initiating aClaim.. 346.2. Allegation of Being Biased Towards the Trademark Holders 366.3. General Criticisms....................................................................................38
Chapter 7: Conclusion and Siggestions......................................................................397.1. Conclusion ..............................................................................................397.2. Suggestions..............................................................................................39
Bibliography...............................................................................................................42
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LIST OF FIGURES
Figure 1...... 9Figure 2...... 10Figure 3...... 10Figure 4...... 10Figure 5...... 10Figure 6.......26
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LIST OF ABBREVIATIONS
IP Internet Protocol
SLD Second Level DomainTLD Top Level Domain
gTLD generic Top Level Domain
ccTLD country code Top Level Domain
DNS Domain Name System
ICANN Internet Corporation for Assigned Names and Numbers
IANA Internet Assigned Numbers Authority
US United StatesUDRP Uniform Dispute Resolution Policy
RDNH Reverse Domain Name Hijacking
DCI Digital Consulting Incorporation
Inc. Incorporation
NSI Network Services Incorporation
UK United Kingdom
TMA Trademarks Act 1994ECJ European Court of Justice
WIPO World Intellectual Property Organization
SCT Standing Committee on the Law of Trademarks
EU European Union
BT British Telecommunications
NAF National Arbitration Forum
CPR Conflict Prevention and Resolution
eRes eResolution
ADNDRC Asian Domain Dispute Resolution Centre
CAC Czech Arbitration Court
USA United States of America
INTA International Trademark Association
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CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES
A CRITICAL ANALYSIS
CHAPTER 1:
INTRODUCTION
The conflict between trademarks and domain names is a topic of intensive discussion
throughout the world. The essay analyses the conflicts and the contribution of the law
(domestic and international) to resolve those conflicts. A trademark distinguishes the goods
and services of one origin from the others. In this youth age of internet where e-commerce
is so popular, the owners would like their domain names to be distinctive and possess all
other characteristics as that of their trademark, which encourages them to use their trademarks as domain names. The essay is divided in further six chapters. The next chapter
introduces the trademarks, domain names and the reasons that have led to the conflicts among
the both. The third chapter lays down the kinds of conflicts that have arised (Cybersquatting,
typosquatting and reverse domain name hijacking). The fourth chapter details on the
provisions offered by the UK Trademark law for the purpose of protecting the domain names.
Further detailed is a chapter introducing the ICANN and UDRP and their motive to resolve
the issues arising out of domain names and trademarks. The sixth chapter criticises thegrounds laid down by UDRP and how it acts bias towards the complainants not leaving much
for the respondents. The ambiguity, non-uniformity and other drawbacks are discussed in
detail in this chapter. Finally, the essay comes to an end with conclusions and suggestions in
chapter seven. The entire analysis intends to show how the current legal system fails to deal
effectively with this problem. However, it cannot be denied that a fair attempt has been made
to do so. Apparently, much stringent laws are required to deal with the vast world of internet
and the conflicts therein.
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CHAPTER 2:
DOMAIN NAMES AND TRADEMARKS: AN OVERVIEW
2.1. What is a Domain Name?
The Internet can be defined as a vast global network that links millions of computers for the
purpose of communication and sharing information. 1 A huge number of websites and web
pages can be accessed via Internet. 2The websites are identified by their Internet Protocol (IP)
addresses which are in the form of four octets (numbers) separated by full stops. 3 For
example, 192.168.1.1 is the default IP address of Linksys Broadband Routers. Since these
numbers are extremely difficult to memorize and are not associated with the name of the
brand or the website, a corresponding and user-friendly alphanumeric address called domainnames is preferred. 4 A domain name identifies a website by using a unique name, which is
usually the brands name or the trademark. 5For example, www.debenhams.com is the website
for the department stores called Debenhams and its IP address is 129.35.75.202. So when the
user types a domain name, the computer locates the site with the help of the IP address and
thus provides access to the information. For example, when a user enters in
the search field, he will be directed to the homepage of the website of Debenhams.
Structure of the Domain Name System
A domain name is a unique identifier for a location on the internet. 6
1 Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Names and Trademark Rights (2007) Stanford's Center for Internet and Society Accessed 5 September 2011Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 3
2Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267
3Paul Todd, E-Commerce Law (Cavendish 2005) at Page 25
4Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 3
5Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267
6Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169
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www. debenhams . com
Figure 1
A Domain name is compiled of three parts (Figure 1)7
. Each of these parts is separated by adot . The first part fulfils the purpose of identifying the server. In the above example,
www identifies the World Wide Web Server. The second part is a very important part and
is called Second Level Domains (SLDs). It is the most important part because it identifies the
user/company. In the example above, it is easy to guess that the website belongs to the
Debenhams stores. The exclusivity of the SLDs is the sole criteria of registering a domain
name. For example, the SLD oxford was taken first by a consulting firm having website
www.oxford.com . Therefore, the University of Oxford had to use only ox as the SLD in
their website www.ox.ac.uk .Another similar example is the domain name of Kingfisher
Airlines. Since the domain name www.kingfisher.com was taken by some retail business
group, the popular group of airlines had to use flykingfisher as their SLD in their website
www.flykingfisher.com . Apparently, no two websites can possess the same SLD as it must be
distinctive. The third part of the domain name is called Top Level Domains (TLDs). It can
serve many purposes. One of them is that it helps in identifying the category of the user. To
name a few, the TLD .org is used by non-profit organizations ( www.watchtower.org ),
.int is used by international treaty based organizations ( www.wipo.int ), .com is used
bycommercial entities ( www.wwe.com ), .gov is used by governmental organizations
(www.direct.gov.uk ), .edu is used by educational institutions ( www.wwu.edu ).These are
called the generic Top Level Domains (gTLDs). The TLDs can also identify the origin
country of the company as they use the two letter ISO Country Code. For example,
www.argos.co.uk implies that the company is based in the UK. Similarly www.bsnl.co.in
7 Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution (1998-1999) 33 USFLRev 641
Identifies theServer
Top Level Domain Name(TLD)
Second Level Domain (SLD)
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implies that the company is based in India. This is called country code Top Level Domain
(ccTLD).
2.2. What is a Trademark?
Section 1(1) of The Trade Mark Act 1994 defines a trademark in the following words:
Any sign capable of being represented graphically which is capable of distinguishing goods
or services of one undertaking from those of other undertakings 8
A Trademark may be any sign that is distinctive. The distinctiveness of this mark is important
as the main purpose of a trademark is to help the consumers in identifying the unique source
of the product or services. In other words, a trademark portrays the authenticity of a business. 9
A trade mark may, in particular, consist of words (including personal names), designs,
letters, numerals or the shape of goods or their packaging. 10
A trademark could be any kind of unique representation as long as it is capable of being
distinctive. It may be a letter or combination of letters, a logo, a picture or a slogan, a sound
or a shape. Examples of some well known trademarks are given below:
Figure 2 Figure 3 Figure 4 Figure 5
Figures 2, 3, 4 and 5 represents the trademarks of the famous brands Apple Computers,
McDonalds restaurants, Coca Cola soft drink and Unilever Group respectively.
8Section 1 (1) of Trade Marks Act 1994
9 Accessed 1 September 2011
10Section 1(1) of the Trade Marks Act 1994
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2.3. Domain Names vs Trademarks
The system of domain names is one of the more important ways in which the internet is
humanised and made comprehensible to non specialists. 11
Electronic Commerce is rapidly gaining in popularity and taking an increasing proportion of
consumer transactions. Therefore, keeping the electronic trade and advertisements into
consideration, the brands choose domain names that often correspond wholly or in part to
their registered or unregistered trademarks. In the article Domain Name and Dispute
Resolution 12 , Ian Tollett lays down three major differences in the registration of domain
names and trademarks. Firstly, unlike trademarks, the concept of confusingly similar does
not exist in the domain names. 13 It is absolutely possible for two domain names to be
extremely closely similar. Say there is a possibility of existence of www.abcd.com and
www.ab-cd.com .In case of trademarks, even a little similarity may result in the refusal to
register the mark. For instance, a beverage manufacturing company could not register the
trademark Koka Kola as it resembles the well known trademark Coca Cola. 14Secondly,
unlike domain names, the registration of trademarks is subjected to the classification system
meaning identical trademarks that are used to identify different products and services can
exist. 15 A domain name can be owned by one person only irrespective of the goods and
services offered by the owner of the domain name. And thirdly, national boundaries are not
recognized by the domain name system. 16The gTLD could be registered and accessed from
any region. The ccTLD are registered in the country where the company operates but can be
accessed from any country. It is argued that the main reason for the disputes between
trademarks and domain names is that the trademark law is territorial, whereas the internet law
is global. 17
11Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2005) at Page 165
12Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169
13Ibid
14David V Radack, Likelihood of Confusion-The Basis for Trademark Infringement Accessed 4 September 2011
15Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169
16Ibid
17 Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 135
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The registration of domain names is based on the principle of First-Come-First-Served. The
Domain Name System (DNS) is managed by Internet Corporation for Assigned Names and
Numbers (ICANN). The gTLD must be registered with an ICANN Accredited Registrar. 18
(The list of all the registrars with an authority to register a gTLD under ICANN is available
on the website of ICANN) 19 The ccTLD are registered by the country code administrator of
each country. 20 These administrators get their authority of registration by Internet Assigned
Numbers Authority (IANA), which is operated by ICANN. 21
It is also important to note that there are fewer formalities with the domain registration
system than most trade mark systems and thus less inquiry into the validity of the registration.
It should also be noted that even if a company has not formally registered a trade mark they
may have common law rights based on actual use and which can be protected by the commonlaw tort of passing off at common law and unfair competition law in civil law systems. Many
actions involved both action for breach of a registered trade mark and passing-off.
All these reasons have the potential to lead to conflicts between owners of domain names and
registered trademarks. There are many cases dealing with this issue. In Pitman training Ltd v
Nominet UK 22 , dispute arose over the domain name pitman.co.uk as the same domain name
was allocated to two parties. As a result, the party who was allocated the domain name first
was given the ownership.
The most recent case involving the domain name and trademark controversy is British
Telecommunication plc v One in a Million Ltd. 23The defendant faced many legal suits against
him accusing him of infringement of trademarks by blocking the domain names of many
well-known trademarks. The defendant along with Mr Richard Conway (owner of Global
Media Communications) and Mr. Julian Nicholson (owner of Junic) reserved various
trademark-based domain names and called themselves dealers in internet domain names.The domain names blocked by them included cadburys.com, burger-king.com,
18 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267
19 Accessed 6 September 2011
20 Ian Tolett, Domain names and dispute resolution (2009) 23 World Patent Information 169
21 Accessed 6 September 2011
22[1997] EWHC Ch 367
23[1999] 4 All ER 476, [1999] RPC 1
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sainsbury.com, marksandspencer.com, macdonalds.com, buckinghampalace.org,
ladbrokes.com, spice-girls.net and cellnet.net (blocked by One in a Million) and virgin.org,
spicegirls.com, orange.net, leedsunited.com, itn.org and marksandspencer.co.uk (Blocked by
Global Media Communications) and the domain name spicegirls.org was blocked by Junic.
An attempt was made to sell the domain names of burger king and British Telecom for
25000 and 4700 respectively. The English Court of Appeal held the defendant liable, using
the common law civil wrong of passing off and confirmed that the intention of the
defendant was only to suck money from the trademark owners.
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CHAPTER 3:
THE KIND OF DISPUTES BETWEEN TRADEMARKS
AND DOMAIN NAMES
The previous chapter discussed in detail the reasons of conflicts arising between trademarks
and domain name owners. This chapter will discuss the types and purpose of conflicts that
arises between the two and some of the popular cases discussing the same issue.
It is a well proven fact that no crime is committed without a benefit. For the purpose of
commercial benefit, the following ways are often adopted; Cybersquatting, Reverse Domain
Name Hijacking and Typosquatting.
3.1.Cybersquatting
A cybersquatter is a party who possesses no legitimate interest in a trademark and attempts
to profit by registering the trademark as a domain name before the rightful trademark owner
can do so. 24
Apparently , cybersquatting (also called domain squatting) is a situation where a person
acquires a domain name in which he has no legal interest, with a mala-fide intention to gain
profit for selling or licensing it to the company to whom the domain name rightfully belongs.
It is a common practice for companies to use their trademarks as their domain names.
Cybersquatters beat a company to the punch by registering a domain name which they think
the company wants own for the purpose of online advertising and will be prepared to spend a
huge amount for acquiring the same. It is to note that a cybersquatter has no intention to use
the domain name or maintain an active website. The most popular defendant involved in
cybersquatting was Dennis Toeppen, who had blocked over hundred domain names that
corresponded to well-known trademarks and was successful in selling them to the companies
for prices as high as $15000. These trademarks-based-domain names included high profile
organizations such as Delta Airlines and Lufthansa. One of his victims, Panavision
International filed a law suit against him ( Panavision v Toeppen 25). The case along with some
of the landmark cybersquatting cases are discussed below:
24 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267
25141 F. 3d 1316 (9 th Cir. 1998)
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Panavision v Toeppen 26
In this US case, the plaintiff Panavision International held the ownership of marks
Panavision and Panaflex. The defendant Dennis Toeppen had registered the domain
names panavision.com and panaflex.com and demanded $13,000 when Panavision asked
him to relinquish the domain name. He had no interest in the domain name was proven by the
fact that he did not use the websites. The website panavision.com simply contained images
of Pana, Illinois and the website panaflex.com just contained one word HELLO. 27 The
District Court and the Appellate Court held that Toeppens act was clearly done with an
intention of arbitraging and was not benign as he blocked hundreds of domain names with the
mala-fide intent to profit from the goodwill of the trademark owners and "act[s] as a
'spoiler,' preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee." 28
Avery Denninson Corporation v Sumpton 29
The facts of this US case involved the defendant reserving 12,000 domain names that
correspond to common last names and licensing those names to be used as e-mail addresses.
The court held the defendant as a cybersquatter as he registered the domain name not for his
own use, but for preventing others from using them without his consent. 30This case raised avery interesting question. The defendant argued that licensing the domain name was his
business. Unexpectedly the courts did not held the alleged business...[was] a sham as a
matter of law 31 and the plaintiffs must pay a sum of $300 for each domain name avery.net
and dennison.net so that the defendants are not deprived of the appropriate profit of their
business.
Apart from the unfair sucking of money from the trademark owners, Cybersquatting is
capable of doing severe damage. Since online shopping is so popular these days ,
26 Ibid
27 Accessed 4 September 2011
28 Sam Tahmassebi, Panavision International v Toeppen (2001-2002) 12 J Contemp Legal Issues 513
29999 F. Supp.1337 (C.D.Cal.1998)
30Ibid at Page 1337
31 Jennifer Golinveaux, Whats in a Domain Name: Is Cybersquatting Trademark Dilution (1998-1999) 33 USFL Rev641
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cybersquatting might lead to the users on a fake website and enter their bank account or credit
card details, thus constituting another serious cyber crime called phishing. 32Sometimes
cybersquatting might have been committed not for the purpose of money but just for drawing
people to the website. In other words to draw on the magnetism that attaches to the
mark. 33Recently, the famous toy manufacturer company Lego recently made a comment
that Cybersquatters cant be beaten and trademark is helpless against infringement after
filing 275 UDRP complaints of cybersquatting. 34
Therefore, cybersquatting is an important issue which must be looked upon seriously.
3.2. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking (RDNH), also called reverse cybersquatting, involves the
trademark owner making a false claim in order to acquire a domain name. It is defined in
Rule 1 of the UDRP Rules as using the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name. 35Also the burden of proof lies on the respondent to
prove the presence of the element of bad faith and mala-fide intention of acquiring the
domain name. 36 Rule 15(e) further holds any complain made in bad faith, as an abuse of the
administrative process. 37
One recent instance of this type of conflicts is the case of Data Concepts Inc v Digital
Consulting Inc 38 . Digital Consulting Inc. registered the trademark DCI (in 1987) whereas
Data Concepts Inc had registered the domain name dci.com in 1993. Digital Consulting Inc
initiated a claim for the possession of the domain name and won in the NSI and Federal
District Court. However, in an appeal to the Sixth Circuit Court of Appeals, the earlier
32Reid Goldsborough, Cybersquatting and its possible remedies Business Journal (New York 18 September 2009) Accessed 3 September 2011
33Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 135
34 Accessed 6 September 2011
35Rule 1 of UDRP Policy
36Zinatul A Zainol , The Chronicles of Electronic Commerce: Reverse Domain Name Hijacking under the Uniform DisputeResolution Policy (2010) 16 European Law Journal 233 at Page 235
37Ibid, Rule 15 (e) of UDRP Policy
38150 F3d 620, 47 USPQ2d 1672 (6 th Cir. 1998)
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decisions were reversed saying that the petitioner was unaware of the trademark of the
defendant during the time of registration of its domain name and held that not all the
domain names function as trademarks. 39In this case, the trademark owner was even warned
by the court regarding weakening his trademark rights in future. 40
3.3. Typosquatting
Another way of gaining commercial benefit is by buying a domain name which is
confusingly similar to a well known existing domain name. There is only slight difference in
the domain name from the actual domain name so that in case the user ends up making a
typing error, they are automatically redirected to the replica website and get caught in
mousetrapping. In this scenario, the user gets barraged with advertisements. 41A domain
name which is strikingly similar to another domain name is considered to be registered in
bad faith according to the Article 4b(iv) of the UDRP. For instance, Microsoft had filed
more than 300 cases complaining the registration of misleading and confusingly similar
domain names. 42
The most popular case involving typosquatting is the US case of Shields v Zuccarini 43 , the
accused John Zuccarini registered the misspelled domain names of many popular websites
and when the user would be diverted to those websites, he was mousetrapped and will have toclick on the succession of advertising window in order to exit, which profited the accused
with ten to twenty-five cents a click. 44 The first claim against him was brought by the artist
owner of Joe Cartoon Joseph Shields and was made to pay a compensation of $10,000
along with a permanent injunction, but he continued with his activities. Afterwards came a
series of claims by individuals and corporations. It was then found that Zuccarini activities
extended to some popular brands and celebritys websites. Claims were also brought by the
Wall Street Journal, Encyclopaedia, Calvin Klien, Yahoo! and Britannica. The court imposed 39 Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking (1998-1999) 21 Hastings Comm &Ent LJ 535 at page 543
40Ibid at Page 544
41 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267 at page 275
42Accessed 6September 2011
4389 F.Supp. 2d 634 (E.D.Pa.200)
44 Regan Lane Williams, Trademark Law on the Internet-Mousetrapped-Shields v Zuccarini, 89 F Supp 2d ^34(E.D.Pa.2000) (2001-2002) 6 Computer L Rev & Tech J 329 at Page 329
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a total of $88,000 fine but he still did not stop. On further claims, he remained unavailable for
the hearings. The courts addressed him as a person who had discovered a simple, yet highly
lucrative moneymaking scheme. While never leaving his apartment, he could collect nearly a
million dollars a year in advertising royalties. 45
In another type of typosquatting, the typosquatter registers some trademarks and owns the
related domain names and publishes information on those websites which are contradictory to
the original trademark owners website. 46
45Ibid at Page 334
46 Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters, Their Changing Tactics, and How to Prevent PublicDeception and trademark Infringement (2003) 11 Wash UJL 267 at page 275
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CHAPTER 4:
PROTECTION OF DOMAIN NAMES: UK TRADEMARK LAW
The first two chapters discussed the trademarks, domain names, causes of disputes and kinds
of disputes that exist between them. This chapter deals in particular with what Trademark
Law in UK has to offer to the situation. UK law does not have any specific legislation dealing
with the domain names. Also there are very few cases that have been resolved in courts,
probably because litigation is not the first choice of the parties. 47 To name a few of the
popular cases dealt by UK courts ; Harrods Ltd v UK Network Services Ltd 48 , Pitman
Training Ltd v Nominet UK 49 and Prince plc v Prince Sports Group Inc 50 . However, these
cases did not succeed in providing a clear insight into the trademark issue surrounding these
conflicts. 51
A very important thing to keep in mind is that the trademark can be a domain name but it is
not necessary that the domain name is the trademark of the company. A domain name does
not function as a trademark. 52 In order to resolve the trademark-domain name disputes, the
court relies on two main legal grounds:
Trademark Infringement
Passing off
4.1. Trademark Infringement
In order to constitute infringement, the three conditions should meet:
Confusing similarity Bad faith
No rights and legitimate interests
47Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 136
48(Ch.D, unreported, 1996) (1997) 19 EIPR 401
49[1997] FSR 797
50[1998] FSR 21
51Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 136
52 Ibid at Page 137
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Apparently the domain names have been treated like trademarks that are capable of being
infringed. 53Section 10 (1), 10(2) and 10(3) of Trademarks Act 1994 (Hereinafter TMA) deals
with the issue of infringement of trademarks. The relationships of these sections with domain
names are discussed in detail below:
4.1.a. Section 10(1) TMA 1994
Section 10(1) of TMA 1994 says:
A person infringes a registered trade mark if he uses in the course of trade a sign which is
identical with the trade mark in relation to goods or services which are identical with those
for which it is registered 54
In order to establish infringement under this section, the domain name must satisfy the
following conditions:
It must be deceptively similar or substantially identical to the registered trademark. It must be used in relation to identical goods and services with respect to which the
trademark was registered.
It is to note that the likelihood of confusion condition need not be fulfilled to proveinfringement under this section. 55For the purpose of better understanding of this section, it is
important to know what the terms identical mark and identical goods or services mean.
Identical Mark: For the purpose of this section, it must be taken into account that in
order to prove infringement, the term identical does not mean absolutely
identical. 56For instance, in the case of Compass Publishing v Compass Logistics 57 ,
the Laddie J held that Compass Logistics could not be considered identical to
Compass and held that Identity exists where the marks look and sound identical
53Paul Todd, E-Commerce Law (Cavendish 2005) at Page 44
54Section 10(1) of TMA 1994
55Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education TechnologyAssociation (April 2006) at Page 17
56Ibid
57[2004] EWHC 520 (Ch)
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save to the eye or ear of an expert. Differences which ordinary members of the public
will not notice...can be ignored. 58
Identical Goods or Services: Not only the mark, but also the goods and services of the
alleged infringer must be identical, to be held liable under this section.
Avnet Inc v Isoact Limited 59
The case of Avnet Inc v Isoact Limited 60 can be seen as one of domain name envy. 61The
petitioners carried the business of advertising various manufacturers through catalogues and
were the owner of trademark Avnet. The defendants on the other hand registered
avnet.co.uk, a website which privileged the customers to display their own advertisements.
Avnet Inc. claimed that Isoact infringed their trademark under Section 10(1) TMA as the
mark was used in relation to identical goods and services. Jacob J however held that no such
infringement took place as Avnet was registered under Class 35 (advertising and promotional
services), whereas Isoact acted as an Internet Service Provider (Class 42). Hence, Isoact was
allowed to keep the domain name. This case clearly held that in order to constitute
infringement under Section 10(1) TMA, not only the name, but also the goods and services
rendered must be identical.
4.1.b. Section 10(2) TMA 1994
The section says that a registered trademark is infringed when :
...there exists a likelihood of confusion on the part of the public, which includes the
likelihood of association with the trade mark. 62
The section lays down the condition of likelihood of confusion along with extending the
identical to similar marks, goods and services. 63 Typosquatting would fall under this
58Ibid
59[1998] FSR 16
60Ibid
61 Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 138
62 Section 10(2 TMA 1994
63 Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK Jurisdictions? British and Irish Law Education TechnologyAssociation (April 2006)
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section as the main objective of the typosquatter is to create confusion in the mind of the
public.
For the purpose of analysing whether a domain name has constituted trademark infringement,
the below mentioned four steps are to be followed: 64
Whether the domain name is similar or identical to the mark? 65 Whether the domain name is used in course of trade? 66 Whether the goods and services provided by the domain name and registered
trademark are similar or identical? 67
And lastly, whether the public is likely to be confused with the trademarks and
domain names?68
In Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc 69 , the ECJ held that the distinctive
character of the mark and in particular its reputation plays the most important role in
determining whether the act had amounted to infringement under this section and said :
The more distinctive the mark and the greater its reputation, the wider the ambit of goods
and services which should be considered similar to those represented by the mark, which are
therefore more likely to give rise to a likelihood of confusion. Thus, a mark which isdistinctive and has a reputation will have protection over wide range of goods; a weak mark
will have protection over a narrow range of goods. 70
64Ibid
65 Ibid
66 Ibid
67 Ibid
68Ibid
69[1998] All ER (EC (934)Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 141
70Ibid
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Yahoo Inc v Akash Arora 71
In this case, the trademark and domain name owner of yahoo (yahoo.com) and was in the
process of registering itself in 69 countries. In the meantime, the defendant started offering
the same services as that of yahoo.com on the name of Yahoo India. Such a scenario would
be perfect to make the defendant liable under Section 10(2) TMA. (The case was decided in
India and the defendant was liable under the ground that the two domain names were capable
of creating confusion in the mind of an Internet user because of the similarity in names and
services.)
Also, in the case of Avnet Inc v Isoact Limited 72 (discussed above), the services of both
parties did not qualify to be identical but they were similar and thus, the infringement had
occurred under Section 10 (2) and not 10(1) of TMA as claimed. The confusion arises the
moment the search engine turn in hits and does not require accessing the website. 73
Therefore, when compared both the sections, it can be observed that s-10(1) is a lot narrower
and difficult to claim protection than s-10(2). 74
4.1.c. Section 10(3) TMA 1994
According to this section, a trademark is infringed when:
...where the trade mark has a reputation in the United Kingdom and the use of the sign,
being without due cause, takes unfair advantage of, or is detrimental to, the distinctive
character or the repute of the trade mark. 75
For the purpose of this section, the basic requirement is that the infringed trademark must be
a reputed mark in the UK and the domain name was used only to take advantage of the
reputation of the trademark. 76 In this case, the questions that arise are:
71 Anupama Y, Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi High Court) Accessed 5 September 2011
72[1998] FSR 16
73 Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 142
74Ibid
75Section 10(3) TMA 1994
76 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 57
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What is a reputed mark for the purpose of this section? What is meant by taking advantage of the reputation of a mark or dilution?
It appears that famous marks are those well known marks that are so famous that protection
is accorded in respect of dissimilar goods and services 77 whereas well known marks are
those which require protection against use in connection which with the same or similar
goods or services for which the well known mark is registered. 78
The Paris Convention, Article 6b talks about well-known marks and so does the Section 56
of TMA 1994. The term reputation is used in Trade Marks Directive as well as in the TMA.
So after several attempts to define these terms, the WIPO SCT (Standing Committee on the
Law of Trademarks, Industrial Design and Geographical Indications) laid down a list of criteria which would determine if the mark qualifies to be well-known. 79 The reputation of
the mark would result in high sales, thus benefitting person using the infringed mark, but is
also capable of harming the reputation of the mark via dilution. It is not necessary to prove
the occurrence of any confusion. 80
One of the recent cases illustrating Section 10 (3) is the case of LOreal S.A. v Bellure N.V
and others 81 where the defendant was involved in manufacturing and selling the perfumes
that smelled alike LOreal and were sold in packing that resembled LOreals packaging. The
Court held that the defendant was liable under Section 10(3) TMA as it has infringed
LOreals trademark and took unfair advantage of LOreals reputation.
77Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 144
78Ibid
79 1. The degree of knowledge or recognition of the mark in relevant sector of the public;2. The duration, extent and geographical area of any use of the mark;3. The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and
the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies.4. The duration and geographical area of any registrations, and/or applications for registration, of the mark, to the
extent that they reflect use or recognition of the mark;5. The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was
recognized as well known by courts or other competent authorities; and 6. The value associated with the mark.
80 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 63.
81[2010] EWCA Civ 535
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4.2. Domain Name And Passing Off
What is Passing-off?
Passing off is a tort developed at common law, with no statutory provisions or EU harmonisation initiatives 82 and it is based on the conduct of the defendant, rather than any
idea of a property right in the claimant. 83
When a party seeks to prevent the use of a domain name, but does not possess a registered
trademark, they may invoke the tort of passing off which has the capacity to protect
unregistered marks. In order to establish the tort of passing off, the five requirements laid
down by Lord Diplock in Erven Warnink BV v. J.Townsend & Sons (Hull) Ltd 84 must be
fulfilled:
A misrepresentation must have been made. The misrepresentation was been made in the course of business. The misrepresentation should was made to potential customers or to the ultimate
consumers of his goods and services.
The misrepresentation was calculated in order to injure the business or goodwill of
another trader. The misrepresentation had caused actual damage to the business or goodwill of the
trader who brought the action or is likely to do so.
Passing off requires the domain name to be confusingly similar to the mark. Cybersquatting
and typosquatting often amounts to passing off. For instance, in the case of Yahoo India
(Yahoo Inc v Akash Arora ) discussed above, although the domain names were not identical,
but they were sufficiently similar to give rise to confusion. Passing off against cybersquatting
initiated from BT v One in a Million & Others 85 . In the process of assessing whether the tort
of passing off is committed, factors like similarity in names, goodwill of the business,
82David I Bainbridge, Intellectual Property (5 th edn, Longman 2002) at Chapter 23, Paul Todd, E-Commerce Law(Cavendish 2005) at Page 64
83Paul Todd, E-Commerce Law (Cavendish 2005) at Page 40
84[1979] A.C. 731 at 742
85 [1999] 4 All ER 476, [1999] RPC 1
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intention of the defendant, type of trade and surrounding circumstances are taken into
consideration. 86
Rickett & Colman Products Ltd v Broden Inc and other 87 (The Jif Lemon Case)
The plaintiffs were involved in the business of selling lemon
juice in yellow coloured lemon shaped squeeze packets, with
Jif embossed and printed on it (Figure 6). For this reason, the
product was popularly known as Jif lemon. The defendants
also launched a similar product which was sold in similar bottle
with little differences in colours and quantity. The significance
of this case is that Lord Oliver laid down the classic trinity rule which means the claimant
must show that the below mentioned elements in order to establish a right of action: 88
The goods or services have a distinct get up that has become associated with the
product in the minds of substantial numbers of the purchasers.
Whether intentionally or unintentionally, there has been a misrepresentation of the
goods and services of the complainant, which have led the public to believe that the
origin of the product is the claimant.
The claimant might suffer from damages if the misrepresentation continues.
Agreeing that all the three conditions were fulfilled, the House of Lords issued a permanent
injunction on the defendants barring them from selling lemon juice in lemon shaped
containers.
86 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 65
87(1990) 1 WLR 491
88Ibid
Figure 6
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CHAPTER 5:
THE PROTECTION OF DOMAIN NAMES: INTERNATIONAL LAW(Global Solution to a Global Problem)
5.1. The need, purpose and creation of ICANN
The NSI (Network Solutions Inc) managed the allocation of domain names until 1998, but
received various criticisms. Some of the most common opinions were that due to lesser
competition and any no other means to register a domain name, the NSI had a very high
registration fees and a very bad customer service. 89 The worst criticism was received by the
policies adopted by NSI for settling the domain name disputes. Prior to 1995, the NSI did not
have any formal dispute resolution policy but allowed the first-come-first-servedregistration and kept the burden on the shoulder of domain name holder to ensure that the
domain name does not infringe any trademarks. In 1995, the NSI took a step further and
adopted a formal dispute resolution policy which privileged the trademark owners to
challenge a domain name any registration on valid grounds and evidence. 90 The new policy
adopted by NSI in 1998 further permitted the trademark owners to place the domain name
on hold till the settlement of the dispute. In all the policies, the basic principle of
registration was first-come-first-served.
The NSI was not appreciated by either domain name holders or trademark owners. It failed to
consider the requirement of likelihood of confusion for infringing a trademark and thus for
trademark owners, the policy was under-inclusive because it deprived them of invoking an
action if the domain name is a non-identical mark that is capable of creating likelihood of
confusion. On the other hand, the domain name holders found the policy overbroad since it
gave the right to keep a domain name on hold even if they have a weak claim and the domain
name bore no resemblance to the goods and services of the trademark user.
Responding to the criticisms, the Commerce Department expressed its views on domain
name system through issuing a White Paper 91. This White Paper demanded privatization of
89 Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 at Page 294
90Ibid, Page 295
91 United States Department of Commerce, Management of Internet Names and Addresses Accessed 3 September 2011
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technical coordination of the Domain Name System. 92A coalition of internets communities
formed ICANN in 1998, following the release of White Paper. 93 ICANN realised the increase
in competition and immediately started registering registrars who would offer domain name
registering services and also made an agreement with NSI where NSI recognised ICANNs
authority and operate according to ICANNs Registrar Accreditation Agreement. 94 In 1999,
ICANN came up with the first dispute resolution policy adapted from the WIPO proposal and
therefore, after a long wait and series of disappointments, finally came the UDRP.
5.2.The UDRP 95
As mentioned earlier, ICANN has been in charge of administration and regulation of domain
name since 1998. 96 The top level domain name within the countries is allocated by authorized
agencies. In the UK, it is allocated by Nominet (UK) since 1996. 97 In order to resolve the
disputes concerning domain names and trademarks and avoid any issues relating to the
jurisdiction of the domestic courts, ICANN adopted a dispute resolution process called
Uniform Domain Name Dispute Resolution Policy (UDRP). This regulation was
implemented by four of ICANN accredited organizations; WIPO (World Intellectual Property
Organization), NAF (National Arbitration Forum), CPR (CPR Institute for Dispute
Resolution) and eRes or DeC (eResolution). 98 The eRes was shut down in December 2001. 99
In February 2002 and January 2008, two new providers of UDRP Policy were approved
which are ADNDRC (Asian Domain Name Dispute Resolution Centre) and CAC (Czech
Arbitration Court) respectively. 100
92 Jason M Osborn, Effective and Complementry Solutions to Domain Name Disputes: ICANNs Uniform Domain NameDispute Resolution Policy and the Federal Anticybersquatting Consumer Protection Act of 1999 (2000-2001) 76 NotreDame L Rev 209
93 Ibid
94Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289 at Page 298
95 Accessed 5 September 2011
96Paul Todd, E-Commerce Law (Cavendish 2005) at Page 29
97Ibid
98 John G White, ICANNs Uniform Domain Name Dispute Resolution Policy in Action (2001) 16 Berk Tech LJ 229 atPage 232
99Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual PropertyReview 351
100Abida Chaudri, Internet Domain Names and the Interaction with Intellectual Property (2010) 26 Computer Law &Security Review 38 at Page 39
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Under the policy, most types of trademark-based domain-name disputes must be resolved by
agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a
domain name. 101
ICANN currently holds monopoly over the domain name system, which makes the UDRP
unavoidable. 102(Though in recent times attempts to make system more global and more
democratic and less dominated by USA). The UDRP stands applicable to registered as well
as unregistered marks. 103 According to UDRP rules 3(a), any person can initiate a claim by
simply submitting the hard copy and email with the complaint, to any forums or service
providers approved by ICANN. 104 The complaint must contain the choice of the complainant
of conducting the dispute by a three member panel or a single-member panel. UDRP rules
3(b) facilitates the complainant to choose the panellists of his choice. The complainant mustshow that all the grounds mentioned in the Rule 4 (a) are fulfilled. The registrant must
respond to the complaint within twenty days. Relying on its findings, the panel further
provides the remedy to the complainant. The remedies available to the complainant are
limited to cancellation and transfer of domain names.
The three-prong test set out in the Rule 4(a) of the UDRP for the purpose of continuing the
claim are:
101 Accessed 3 September 2011
102Zohar Efroni, Names as Domains, Names as Marks: Issues Concerning the Interface between Internet Domain Namesand Trademark Rights (2007) Stanford's Center for Internet and Society Accessed 5 September 2011
103Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 497
104 Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual PropertyReview 351
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If the domain name is identical or confusingly similar to the mark in which the
complainant has rights 105
WIPO lays down that the test for confusing similarity should be a comparison between the
trademark and the domain name to determine the likelihood of confusion 106 and also the
similarity in the content of the website stands irrelevant while determining the confusingly
similar factor. 107
The rules hold valid for registered as well as unregistered marks. First of all, if the domain
name is identical to the mark in question, the complainant need not prove the clause of
confusingly similar, but it is important to find out whether the domain name is merely
similar or actually identical. For this purpose, the gTLD suffix is not considered. 108Advocate
General Jacob held that A domain name may be regarded as identical to the complainants
mark if the only differences are minor variants such as hyphen between the
words. 109 Therefore, in cases involving the issue of identical or similar domain name, the
UDRP follows the traditional principles of trademark law. 110
If the registrant does not have any legitimate interests in the domain name in issue 111 ;
It is also mandatory to prove the registrant does not own any legal rights or interest in the
domain name (UDRP Policy 4(a)) and when the complainant succeeds in doing so, the
burden falls on the registrant to prove any of the circumstances mentioned in UDRP Policy
4(c) in order to prove their legitimate interest in the name. They are :
(i) before any notice to you of the dispute, your use of, or demonstrable preparations
to use, the domain name or a name corresponding to the domain name in
connection with a bona fide offering of goods or services; or
105Rule 4(a)(i) of UDRP Policy
106 H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 JTech l & Poly 301 at Page 329
107Ibid
108Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002) at Page 143
109 LTJ Diffusion v SADAS [2003] All ER (D) 297 (Mar)
110Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual PropertyReview 351
111Rule 4(a)(ii) of UDRP Policy
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(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trade mark or service
mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish
the trade mark or service mark at issue. 112
These grounds are not exhaustive and any other evidence proving the legitimate rights and
interests in the domain name is acceptable. 113
If the domain name is registered and used in bad faith. 114
The most important requirement to initiate any proceeding against a cyber crime is to show
that the registrant had acted in bad faith. Article 4 b of the UDRP lays down circumstances
which lead to the conclusion whether the act was done in bad faith or not. 115
If the motive of obtaining the name is to prevent the rightful owner from using it and
the party have had a previous record of doing the same.
The domain name was obtained with a motive of selling, licensing or transferring it
either to the owner of the trademark or to his competitor, in return for money. The domain name is registered with a motive to disrupt the business of the trademark
owner.
The domain name is used for the purpose of attracting users online by creating a
striking similar domain name as that of the true trademark owner.
It is to note that a mere registration of a domain name that resembles some registered
trademark does not constitute bad faith. A registered trademark does not provide with any
automatic rights in the domain name. 116 Neither does any attempt to sell the registered
112Rule 4 (c) of UDRP Policy
113 Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 352
114Rule 4(a)(iii) of UDRP Policy
115Rule 4 (b) of UDRP Policy
116 Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 163
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domain to the owner of the trademark amounts to abusive registration. 117 The burden to prove
the presence of bad faith always lies on the shoulders of the plaintiff.
The efforts by a respondent to sell a domain name tend to weigh in favour of finding bad
faith, but are not necessarily fatal. 118
The case of Car Toys Inc. v Informa Unlimited Inc. 119 laid down a very important principle.
It was held that merely carrying the business of buying and selling domain names does not
constitute abusive registration. It is mandatory that the act is done in bad faith. In this case,
the defendants Informa had registered the domain name cartoys.net and the plaintiff was the
owner of the trademark Car Toys. The Arbitrator found that the requirement of no
legitimate interest in the name, which is mandatory to prove bad faith, was not fulfilled by
the defendant and so they have the right to keep the domain name.
The UDRP process became very popular because of the advantages attached to it. The
process is faster, cheaper and provides much effective remedy than any other dispute
resolution process. 120It is private, international and predominantly online (Clause 13 of the
UDRP Rules) procedure. 121 According to UDRP Section 4 (k), the registrar must transfer the
domain name within 10 business days from the day of the panels decision. 122 The time
duration of UDRP cases never exceeds 47 to 57 days (or rather shorter if the registrar files hisresponse earlier than twenty days), which makes the process a perfect model for dispute
resolution. 123 Also, the rules are simple enough to be understood by a non-legal
practitioner. 124
117Car Toys Inc. v Informa Unlimited Inc. National Arbitration Forum File No FA 0002000093682
118 Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for Electronic Commerce (Hart 2000) atPage 163
119 Ibid at Page 164 National Arbitration Forum File No FA 0002000093682
120Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006) at Page 180
121Jacqueline D Lipton, Beyond Cybersquatting: Taking Domain Name Disputes Past Trademark Policy (2005) 40 WakeForest L Rev 1361 at Page 10
122Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25 European Intellectual PropertyReview 351
123Ibid
124Ibid
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Also UDRP had three major advantages over the NSI dispute resolution policy. Firstly, the
trademark owners no longer enjoyed the right of keeping the domain name on hold till the
settlement of the dispute. Secondly, the trademark owner does not have the right to invoke
the UDRP proceedings unless the domain name is held in bad faith and thirdly, ICANN will
not alter the status of the domain name without any settlement or conclusion reached by the
parties in the matter of traditional trademark infringement or dilution claims. 125
However, there have been some criticisms also. One of the main criticisms of the policy are
that any claim can be instituted very easily as it is very cheap. Also there is no penalty on a
false claim. 126 Also, although it succeeds in protecting the interests of the trademark owners,
but completely ignores other kinds of disputes which might have arisen in the same matter,
for instance, more than one legitimate trademark owners having interests in the disputed domain name. 127Moreover, the only remedy it offers is either transfer of the domain name to
the complainant or cancellation of the registrants domain name but no financial relief is
provided. 128 Some more criticisms and drawbacks will be discussed later in the next chapter.
125 Luke A Walker, ICANNs Uniform Domain Name Dispute Resolution Policy (2000) 15 Berk Tech LJ 289
126Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006) at Page 180
127Jacqueline D Lipton, A Winning Solution for Youtube and Utube? Corresponding Trademarks and Domain NameSharing (2008) 21 Harvard Journal of Law & Technology 509
128 Paul Todd, E-Commerce Law (Cavendish 2005) at Page 33
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CHAPTER 6:
ANALYSIS OF ICANNs UDRP: IS UDRP THE REQUIRED SOLUTION?
The UDRP, although came after many failed attempts to set a perfect dispute resolution
process, but still received criticisms. Instituting a claim under UDRP sounds easy,
inexpensive and does not involve any loss. However, this chapter discusses the shortcoming
of the procedure adapted by the UDRP.
6.1.Critical Examination of Grounds Laid Down by UDRP for Initiating a Claim
To begin with, a UDRP proceeding is triggered under the following three grounds:
Domain Name is identical or confusingly similar to the complainants mark.
The UDRP does not define the term confusingly similar, which raises ambiguity ad debate.
The question of relevancy of the website comes into picture only when the domain name in
question is confusingly similar to the trademark. It is to note that UDRP does not consider
geographical indications as trademarks. Trademarks are protected irrespective of their
location, but the trademarks that were registered automatically might enjoy lesser
protection. 129A domain name that is partly translated in some other language is considered to
be confusingly similar. On the other hand, a domain name with a negative term along with
the trademark constitutes confusing similarity is a debate. The Panel often find the situation
to be abusive registration as it believes that this situation might result in confusion in the
mind of people who do not speak very fluent English whereas some panellists believe that
domain name consisting of a trademark and a negative term is not confusingly similar
because internet users are not likely to associate the trademark holder with a domain name
consisting of the trademark and a negative term. 130
It is to note that the content of the website does not come into consideration while
determining the similarity of the domain name to the trademark. 131 So even if the content is
129 Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 351
130 H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 JTech l & Poly 301 at Page 329 at Page 330
131 Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 497
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absolutely different from the business of the trademark, it would be held for being
confusingly similar.
In order to assert unregistered trademark rights, the complainant needs to show that the name
had developed a secondary meaning and is a distinctive identifier for its goods or
services. 132 First of all, the ownership of a domain name can be challenged by comparing it
with any trademark in any country because the internet is accessible from anywhere in the
world. All this factors conclude that the condition is debatable and UDRP has been
inconsistent in its decisions.
Domain Name holder has no legitimate rights and interests in the mark.
Although the burden of proving this condition, like the other two, falls on the complainant
but in this case, the complainant is merely required to make a prima facie case accusing the
respondent of lacking any legal rights or interests in the domain name and then the burden
shifts to the respondent to prove otherwise. It is debatable whether using domain name for
criticising trademark is legal use or not. 133 Panel has shown confusion in this regard as on one
side, it decided that since the domain name is just an internet address, which is different from
trademark, using any name sans commercial benefit should not be a problem whereas on the
other side, it has also decided that the right to criticise a trademark does not impliedly givethe right to register a confusingly similar domain name.
The Domain Name has been registered in Bad Faith
The UDRP fails to provide any definition of Bad Faith but lays down some non-exhaustive
circumstances which helps in concluding whether the registration was made in bad faith or
not. They are mentioned in UDRP Policy Rule 4(b):
(i) circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner of
the trade mark or service mark or to a competitor of that complainant, for
132Ibid
133Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 352
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valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade
mark or service mark from reflecting the mark in a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainants mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product or service on your web site or location. 134
These conditions are both questionable and inconsistent to the Panel. Some Panels requires
any one of the four conditions to be fulfilled by the complainant whereas some requires any
one of the first three related to the registration and the fourth one related to the use of the
domain name. 135Some of the instances in which the UDRP has held that the domain name has
been registered in bad faith has raised question about the clarity of the concept to UDRP.
For example, even if the domain name was registered before the trademark or thecomplainant has got nothing to do with the domain name, UDRP has held the registration to
be done in bad faith. 136
6.2. Allegation of Being Biased Towards the Trademark Holders
The UDRP has been many a times accused of being biased towards the trademark
owners/complainants. In the report named A New Profile of Domain Name Trademark
Disputes under ICANNs UDRP, Dr Milton Mueller gave a statistical study reporting the bias nature of UDRP proceedings and raising concern about its independence. 137 The study
criticised WIPO and NAF for being biased towards the claimants and since they had obtained
134Rule 4(b) of UDRP Policy
135H Brian Holland, Tempest in a Teapot or Tidal Wave- Cybersquatting Rights and Remedies Run Amok (2005) 10 JTech l & Poly 301 at Page 329 at Page 332
136Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRP Questions (2005) 21 Computer Law & Security Report 496 at Page 498
137Dr. Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICANNs UDRP Accessed 4 September 2011
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the majority of the market shares by mostly making decision in favour of trademark
interests. 138 The WIPO obtained 61% and NAF obtained 31% of the market shares. When
calculated in percentage, 82% of the cases in WIPO and 81% of the cases in NAF were won
by the complainants. 139 It is apparent that the shares have been obtained by adapting more
complainant friendly ways. 140 However, Muellers study was criticised by INTA
(International Trademark Association) under the ground that it undermined the cost efficient
ways of UDRP and that Mullers assumption of achieving 50/50 result via a non-biased
procedure is not possible as the UDRP is designed for abusive cases. 141
Another criticism of UDRP is the provision which allows the complainant to choose the
dispute resolution service provider. Obviously, the complainant will choose the service
provider in which he has more chances of winning. As per the statistics discussed above,apparently WIPO and NAF are the first choices of the complainants. Further the
complainants get to choose the panellists also. Studies show that 778 out of 1379 cases in
NAF have been decided by six panellists and the winning rate of the complainants is
95.1%. 142 The complainants are also offered to choose whether the proceedings be decided by
a single member panel or three-member panel. Critics may argue that complainants often
choose one member panel because it is easier for one person to misinterpret the policy and
make incorrect decision rather than three persons doing it at the same time.143
This does notseem a right scenario especially when UDRP is often blamed to be favouring the
complainants.
Another factor that adds towards UDRPs decisions being mostly in favour of the
complainants is the fact that it goes on to make a decision even if the respondent fails to
respond to the complain before the prescribed time. It is also noted that 50-60% of the times,
138Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &Security Report 349 at Page 353
139Ibid
140Ibid
141Ibid
142John Magee, Domain Name Disputes: An Assessment of the UDRP as against Traditional Litigation (2003) U Ill JLTech & Poly 203
143Patrick D Kelley, Emerging Patterns in Arbitration under the Uniform Domain Name Dispute Resolution Policy (2002)17 Berkeley Tech LJ 181
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the respondent default occurs which contributes to the complainant being victorious nearly
80% times. 144
Three other flaws of UDRP that ends up acting in favour of the complainants are:
UDRP does not ensure that the domain name owner has received the notice disclosing
that a complaint has been filed against him. 145
Too much freedom is given to the service providers to add supplemental rules 146 and The maximum time limit provided to the respondent to respond to the claim i.e. twenty
days is not sufficient. 147
6.3. Some General Criticisms
Some other criticisms received by UDRP are:
The lack of uniformity in the decisions of the panel is inevitable. Although the panel
uses prior decisions in order to resolve a dispute, but they do not serve as binding
precedent irrespective of the similarity in the issue. 148
The only alternative available to the party that lost is to bring a suit to quash the
decision of the panel. Again the party just only has ten working days to file the suit. It
is often argued that this limited amount of time and jurisdictional obstacles often
result in no appeal against the UDRP decisions. 149
Low cost of complaints often encourages reverse domain name hijacking. 150
All of these criticisms fail to build a standard cluster of rules to be followed in order to
resolve the disputes between the trademark owners and the domain name holders and
demands a clearer picture of the grounds as well as rules set up by UDRP.
144Ibid
145Ibid
146Ibid
147Ibid
148Ibid
149Ibid
150 Juan Pablo Cortes Dieguez, An Analysis of the UDRP Experience Is it Time for Reform? (2008) 24 Computer Law &
Security Report 349 at Page 357
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CHAPTER 7:
CONCLUSION AND SUGGESTIONS
7.1. Conclusion
The essay discussed the conflicts between trademarks and domain names, their causes, kinds
and the attempts made to resolve the conflicts. The registration process of domain names
started with the first-come-first-served principle, which is still followed and can be
considered as the root cause of the conflicts. There is no specific law dealing with the domain
name. All that is required is exclusivity of SLDs. All these factors give rise to cybersquatting,
typosquatting and reverse domain name hijacking. UDRP was formed to handle to disputes,
but was criticised on various grounds. This has left the problem unanswered. If the present
scenario is considered, neither the trademark law nor the ICANN is capable of protecting the
domain names. Cases such as Shields v Zuccarini 151 makes one think of the extent to which
cyber criminals have gone to earn money via violating the laws governing domain names.
The question arises is why wouldnt an individual like to earn millions by just sitting at
home. Also, say he is caught and held liable, the maximum that he will have to do is transfer
the domain name or pay some small portion of his huge earnings as compensation. Another
drawback to the scenario is the fact that internet is accessed worldwide and any domain name
would resemble some trademark used in some corner of the world, and therefore is capable of
being challenged. The lack of stringent laws always makes the situation worst. The grounds
mentioned by the UDRP to initiate a claim are so ambiguous that it would be difficult for the
claim to sustain. Even if the claim sustains, the further criticisms laid down by critics
(mentioned in chapter 6) do not guarantee justice. Considering this scenario, it is hard to
imagine any improvement in the situation. It cannot be seen how UDRP can help
cybersquatting and other conflicts. Therefore, based on the present laws, the situation seems
impossible to deal with and the world is yet to see a stronger, effective and non biased law
with enough protection towards the trademark owners and domain name holders.
7.2. Suggestions
Clearly, the present laws are incapable of dealing with the issues of trademarks and domain
names. The very basic principle of first-come-first-served needs reform. It is practically
impossible to protect every trademark in the world and then approve of a domain name
151 89 F.Supp. 2d 634 (E.D.Pa.200)
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registration. I propose that like trademarks, even if not that strictly, but an attempt must be
made to prevent registration of domain names that resemble well known or famous
trademarks. This would, to a large extent prevent cybersquatting and infringement of well
known trademarks. Supposing that such a law existed, Microsoft would not have had to file
324 suits against cybersquatters. Another problem as discussed is the worldwide nature of
internet would give rise to the domain name being challenged by some trademark in some
corner of the world. This situation is practically possible 100% times. To this, I recommend
that every X, Y and Z trademark owner must NOT be allowed to initiate a claim against a
domain name. Suppose a domain name www.abc.com has been registered in Russia and
there exists a local business in California holding the trademark abc11, the question of
infringement of the trademark should not be entertained. Only a well known trademark must
be permitted to challenge a similar domain name in any part of the world. It should then not
matter whether the infringement occurred in a different country or not.
Another weakness of the system is that the complainant has nothing to lose even if he/she
initiates a false claim. Since there is a higher percentage of the complainant winning, he
might as well try his luck. In order to deal with this situation, criminal liability must be
imposed on the complainant if he is found to have initiated the claim in bad faith. Along with
the ownership of the domain name, some financial relief also must be granted to the trueholder of the domain name in case a false claim was proved. This might scare a cybersquatter
or a reverse domain name hijacker before committing the crime or initiating a false claim.
ICANNs UDRP has not succeeded in its purpose. Although UDRP became very popular
when it was introduced, it could not satisfy the requirement of an effective legal policy.
Therefore, some changes are inevitable. I propose the following changes be made to the
UDRP Rules:
The three grounds set under UDRP for initiating a claim should be made clearer. A
clear definition of terms like confusingly similar and bad faith must be given.
UDRP must maintain the uniformity in its policy and must follow its previous
decisions in similar matters.
The provision containing choosing the service provider and panellists must be stroked
off. An effective legal system must be laid down to decide the matters and non-biased
panellists must be appointed for the same.
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Like all the courts, the panel must make a decision only after listening to the
respondents and not without that.
The time limit prescribed for the respondent to respond to the notice of complaint
must be extended.
And finally, in order to deal with a cross border conflict, I would suggest formation of a
global convention like UN in order to ensure that the basic domain name protection is at least
enjoyed by the member states. The implementation of the protection can be ensured by the
domestic law.
In my opinion, if these suggestions are implemented, the conflict would at least look closer to
being resolved rather than the present condition which is not even close to be reaching asolution. Hopefully, we get to see the trademarks and domain names in the cyberspace with
no conflicts soon.
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BIBLIOGRAPHY
Books:
Simon Halberstam, Domain Names: A Practical Guide (Tolley 2002)
Paul Todd, E-Commerce Law (Cavendish 2005)
Steve Hedley, The Law of Electronic Commerce in the UK and Ireland (Cavendish 2006)
Lilian Edwards and Charlotte Waelde (eds), Law and the Internet: A Framework for
Electronic Commerce (Hart 2000)
David I Bainbridge, Intellectual Property (5th
edn, Longman 2002)
Legislation:
UK-Trade Marks Act 1994
Cases:
Pitman training Ltd v Nominet UK [1997] EWHC Ch 367
British Telecommunication plc v One in a Million Ltd [1999] 4 All ER 476, [1999] RPC 1
Panavision v Toeppen 141 F. 3d 1316 (9 th Cir. 1998)
Avery Denninson Corporation v Sumpton 999 F. Supp.1337 (C.D.Cal.1998)
Data Concepts Inc v Digital Consulting Inc 150 F3d 620, 47 USPQ2d 1672 (6 th Cir. 1998)
Shields v Zuccarini 89 F.Supp. 2d 634 (E.D.Pa.200)
Harrods Ltd v UK Network Services Ltd (Ch.D, unreported, 1996) (1997) 19 EIPR 401
Pitman Training Ltd v Nominet UK [1997] FSR 797
Prince plc v Prince Sports Group Inc [1998] FSR 21
Compass Publishing v Compass Logistics [2004] EWHC 520 (Ch)
Avnet Inc v Isoact Limited [1998] FSR 16
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Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] All ER (EC (934)
LOreal S.A. v Bellure N.V and others [2010] EWCA Civ 535
Erven Warnink BV v. J.Townsend & Sons (Hull) Ltd [1979] A.C. 731 at 742
BT v One in a Million & Others [1999] 4 All ER 476, [1999] RPC 1
Rickett & Colman Products Ltd v Broden Inc and other (1990) 1 WLR 491
Websites:
www.wipo.int
www.iana.org
www.managingip.com
www.domainnews.com
Conference Paper :
Mohammad S Al Ramahi, Internet Domain Names & Trademark Law: Does the Current
Legaal Scheme Provide and Adequate Protection to Domain Names under the US & the UK
Jurisdictions? British and Irish Law Education Technology Association (April 2006)
Accessed 5 September 2011
Policy Document :
United States Department of Commerce, Management of Internet Names and Addresses
Accessed 3 September 2011
Articles:
Abida Chaudri, Internet Domain Names and the Interaction with Intellectual Property(2010) 26 Computer Law & Security Review 38
Accessed 6September 2011
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A Michael Froomkin, Wrong Turn in Cyberspace: Using ICANN to Route around the APAand the Constitution (2000) 50 Duke Law Journal 17 Accessed 4 September 2011
Anri Enge, International domain name disputes: rules and practice of UDRP (2003) 25European Intellectual Property Review 351
Anupama Y, Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi HighCourt) Accessed 5 September 2011
Assafa Endeshaw, The Threat of Domain Names to the Trademark System (2005) 3 TheJournal of World Intellectual Property 323 Accessed 6 September 2011
Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking (1998-1999) 21 Hastings Comm & Ent LJ 535 Accessed 9 September 2011
Catherine Sevelle, Trade Mark Law: The Communitys Thinking Widens and Deepens(2004) 53 The International and Comparative Law Quarterly 1013 Accessed 6 September 2011
Chris Moran, Domain Names: Comments on WIPOs new Overview of Selected UDRPQuestions (2005) 21 Computer Law & Security Report 496 Accessed 4September 2011
Danielle Weinberg Swartz. The Limitations of Trademark Law in Addressing Domain NameDisputes (1997-1998) 45 UCLA L Rev 1487 Accessed 4 September 2011
David V Radack, Likelihood of Confusion-The Basis for Trademark Infringement Accessed 4 September 2011
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Dr. Milton Mueller, Success by Default: A New Profile of Domain Name Trademark Disputes under ICANNs UDRP Accessed 4 September 2011
Dr Assafa Endeshaw, WIPOs Proposals for the Resolution of Domain Name Disputes(2000) 16 Computer Law & Security Report 173 Accessed 5September 2011
Dara B Gilwit, The Latest Cybersquatting Trend:Typosquatters,