Domain names are trademarks. But when a domain name is brought into service on the virtual world of the Internet that conflicts with an existing hard-copy trademark in the real world, there are bound to be growing pains as the impatient and hip world of techies clashes with the plodding and conservative world of law.
To put the law's shortcomings in perspective and it's uncanny predilection to split hairs, there has actually been prolonged debate whether a domain name is property even though incorporeal (intangible) property has been recognized by law for centuries, the best example being all forms of intellectual property.
The Internet actually functions through Internet Protocol (IP) addresses but in order to humanize things, the network maps these numbers to word patterns called domain names. This all occurs unbeknown to most Internet users who simply seek, for example, duhaime.org. This much easy to work with then this site's current IP, 18.104.22.168.
Domain names work from widest to narrowest but reverse order to how you read them. The last part, or label, is called a top level domain (TLD) and often the property of countries such as .us for America and .ca for Canada. Recent changes allow for far more TLDs, some of which could include trademarks like .mac for Apple and .msn for Microsoft.
The second label (duhaime in duhaime.org) is a subdomain and issued by authorized registrars worldwide. It is in this part that most trademark issues arise. Any further levels, such as www., are arbitrarily administered by the domain owner. Domain names are significant corporate assets and serve as address not only for websites but also for email addresses.
A trademark is a word used to distinguish goods or services. Thus, any domain name is by definition a trademark. Establishing a trademark takes years and costs a fortune for those companies that have tams of lawyers registering their trademark in the various intellectual property repositories around the world. Nike™, Coke™, Microsoft™, Google™ and the list goes on - all trademarks and all backed up by teams of lawyers. Why? Because after time, a trademark is a strong credible beacon for clients.
Some would seek to leech onto that goodwill by opening a website which duplicates or is confusingly similar to suggest an affiliation with the trademark.
Domain name registration and trademark law makes for an uneasy marriage, one often left to the courts to manage.
According to the Canadian Encyclopedic Digest, 2009:
"A (domain name) applicant must satisfy a Canadian presence requirement in order to obtain registration of a.ca domain.
"An owner of a trademark registered under the trademarks Act, may satisfy a Canadian presence requirement even where not establishing conditions such as citizenship or residency, but would only be permitted, in such a case, to apply to register a.ca domain name consisting of or including the exact word component of that registered trademark.
"There is a fundamental conflict between trademark law which permits identical non-confusing trademarks owned by different traders to exist and the technical requirement for domain names that requires that each domain name constitute a unique address on the Internet. Where there are several possible claimants to a second level domain name, as in cases where there are owners of identical trademarks in different countries, it must be determined who is entitled to the sole, worldwide right to the unique domain name. Conflicts between domain name registrants and trademark owners may be resolved by recourse to trademark legal principles or to the domain name dispute resolution policy of the applicable domain name Registrar."
ICANN and CIRA
The Canadian Internet Registration Authority (CIRA) Dispute Resolution Policy recognizes a trademark if, prior to the date of domain name registration, the trademark is registered with the Canadian Intellectual Property Office or has been used in Canada or is distinctive in Canada of that person's wares, services or business.
A CIRA arbitration can be quick and relatively inexpensive but you may get what you pay for and have to correct a bad CIRA panel decision by instituting court proceedings with a strike against you. However, admittedly, it may be the only affordable recourse available to the trademark holder of ABC Lawyers who has been the victim of Internet robbery of ABCLawyers.com.
Internationally, many national internet registration authorities defer to the dispute policy of ICANN (Internet Corporation for Assigned Names and Numbers) called Uniform Domain Name Dispute Resolution Policy (UDRP) but the process, like CIRA's, is so short and dirty as to be all but ill-advised for trademark disputes, especially if the decision is to be final and binding. This, in spite of the fact that most administrative panels apply trademark tests when determining whether confusion exists.
In addition, §4.k of the UDRP rules suggest that the decision is not binding if any litigant seeks thereafter to initiate judicial proceedings. There are presently four arbitration agencies chosen to step into ICANN disputes; one is the World Intellectual Property Organization (WIPO).
The ICANN rules require that a prospective complainant affirm that the contested domain name is confusingly similar to the claimant's trademark; that the domain name registrant has no rights to the domain name; and that the domain name has been registered and is being used in bad faith. To be successful in domain name arbitration, a complainant must prove each of these three.
The UDRP allow a complainant to rely on a registered or common law (unregistered) trademark. Further, the mere pre-registration of an existing trademark does not automatically entitle the trademark holder to that domain name as a weak or dormant trademark, even if registered, will not defeat a domain name registration.
In BigStar Entertainment, the owner of the trademark BigStar and the domain bigstar.com was unsuccessful against the registrant of NextBigStar.com because the trademark's market penetration was weak, the court concluding that:
"Nextbigstar.com ... is neither identical to the BigStar marks in terms of sight, sound or meaning, nor one the ordinary, reasonably informed relevant purchaser could not regard as exactly the same.... Their marks and businesses are not sufficiently closely related."
In Brookfield, the court noted:
"Registration (of a domain name), however, does not in itself constitute "use" for purposes of acquiring trademark priority. The (law) Act grants trademark protection only to marks that are used to identify and to distinguish goods or services in commerce - which typically occurs when a mark is used in conjunction with the actual sales of goods or services. The purpose of a trademark is to help consumers identify the source, but a mark cannot serve a source-identifying function if the public has never seen the mark and thus is not meritorious of trademark protection until it is used in public in a manner that creates an association among consumers between the mark and the mark's owner."
To control against cyber-squatting, ICANN's Uniform Domain Name Dispute Resolution Policy gives the complainant a bit of an evidence advantage by suggesting that certain conduct will be enough to prove bad faith on the part of the domain name holder, the list not being exhaustive:
".... 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that a pattern of such conduct has been established on your part; or you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 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 Complainant's 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."
In Canada, where bad faith is not so readily presumed, the CIRA arbitration panel found bad faith in the domain name registration of a competitors common law trademark (DRN Commerce Inc. v REPO DEPO). At issue was the acronym DRN, long-used by DRN Commerce Inc., when suddenly, a competitor opened drn.ca, intentionally to lull potential clients to the apparent affiliation. The panel ordered the registrant to surrender the domain name to DRN Commerce.
In Jews for Jesus, a church operated jews-for-jesus.org. Steven Brodsky disagreed with the beliefs of Jews For Jesus and he obtained jewsforjesus.org (same name minus the hyphens). The church sued and Brodsky said that there was nothing commercial in his alleged infringement. Justice Lechner of the United States District Court disagreed:
"The conduct of the Defendant ... constitutes a commercial use of the mark ... because it is designed to harm the Plaintiff Organization commercially by disparaging it and preventing the Plaintiff Organization from exploiting the mark."
In Jews for Jesus, the Court also set out a list of factors when weighing the allegation of domain name confusion against an existing trademark:
"The degree of similarity between the owner's mark and the alleged infringing mark; the strength of owner's mark; the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; the length of time the defendant has used the mark without evidence of actual confusion arising; the intent of the defendant in adopting the mark; the evidence of actual confusion; whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; the extent to which the target of the parties' sales efforts are the same; the relationship of the goods in the minds of the public because of the similarity of function; (and) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market."
The Jews for Jesus decision has been re-iterated in Canada in the 2001 decision of BCAA and was consistent with the ruling in the 1997 American judgment in Planned Parenthood where Justice Wood noted the organization's website of ppfa.org, and ownership of a registered mark "planned parenthood". An anti-abortionist, Richard Bucci, registered plannedparenthood.com to espouse opposing views. Bucci's lawyers argued that there was no commercial edge to plannedparenthood.org. But Justice Wood found that there was a clear commercial aspect to the domain name and that because it was held to be confusing with Planned Parenthood, the organization, the court needed not to ask whether there was any bad faith. The fact of confusion was enough to shut Bucci down.
Since ICANN decisions do not preclude court action, litigants are well advised to be aware of traditional judicial remedies such as interlocutory relief. Where action is taken in, for example, Federal Court, the Court rules accommodate applications for exclusive use of a domain name pending final resolution of the litigation.
But occasionally, the reactions of registration organizations to legal proceedings can be just as effective as any court decision. In Molson Breweries, Molson beer company started Federal Court action and also complained to the registration agency about the registration, to a third-party, of the domain name molson.com and molsonbeer.com. The domains were instantly deactivated giving Molson what they wanted.
It's a wild and sometimes Wild West world for trademark holders that suddenly find their trademark being used in a domain name registered in Kazakhstan or Nigeria. Usually, the best response is a two-pronged combination of delicate legal tactics and the good ol' shotgun approach of concurrent proceedings through domain name registrants.
- Bally Total Fitness Holding Corp. v Faber (1998), 29 F.Supp.2d 1161 (U.S. C.D. Cal.), rerieved on August 31, 2009 from http://euro.ecom.cmu.edu/program/courses/tcr840/2003/bally_v_ballysucks.pdf
- BCAA v OPEIU 2001 BCSC 156
- BigStar Entertainment Inc. v Next Big Star Inc. 105 F. Supp.2d 185 (U.S. Dist. Ct. S.D. N.Y. 2000).
- Brookfield Communications Inc. v West Coast Entertainment Corp. 174 F.3d 1036 (USCA 9th Cir. 1999), retrieved on August 31, 2009 from www.laws.findlaw.com/9th/9856918.html. Also commented on at http://www.internetlibrary.com/cases/lib_case85.cfm
- Brookman, A., Trademark Law: Protection, Enforcement and Licensing (New York: Aspen Publishers, 1999).
- DRN Commerce Inc. v. REPO DEPO (TM), Park & Sell of Canada Ltd. 39 CPR 4th 424 (Canadian Internet Registration Authority, 2005)
- Duhaime, Lloyd, Intellectual Property Law
- Duhaime, Lloyd, trademark Law
- "Trade Marks and Industrial Designs", Canadian Encyclopedic Digest, Trade Marks and Industrial Designs
- ICANN at icann.org/udrp/udrp-rules-24oct99.htm
- Jews for Jesus v. Brodsky 993 F. Supp. 282 (U.S. D. N.J. 1988), affd. without opinion, 159 F.3d 1351 (U.S. C.A. 3rd Cir. 1988); retrieved from the Internet on August 31, 2009 from http://www.internetlibrary.com/pdf/Jews-for-Jesus-Brodsky-DNJ.pdf
- Molson Breweries v Kuettner (1999), 3 C.P.R. (4th) 479 (Fed. T.D.)
- Planned Parenthood Federation of America v. Bucci 42 USPQ 2d 1430 (U.S. Dist. Ct. S.D. N.Y. 1997), affd. 152 F.3d 920 (U.S. C.A. 2nd Cir. 1998), retrieved from the Internet on August 31, 2009 from http://cyber.law.harvard.edu/property/domain/ppfa.html
- Schwimmer, Martin, The Trademark Blog
The author wishes to acknowledge the assistance of world famous Internet techie Lance Long of Spry New Media for his invaluable assistance in putting together this article.