Conflict Between Trademarks & Domain Names

By Rami Olwan

E-Commerce Legal Consultant, AGIP

In the past decade, the rapid growth of the Internet in recent years and the

proliferation of Information Technologies (IT) are making a dramatic and profound

impact on the way humans communicate, conduct business, and sell their goods and

services. The new technology and techniques have transformed the business world,

have generated new commercial models, and have presented the world economy with

new challenges. Businesses, individuals and governments have all rushed to try to

gain from the potential profits that the Internet offers. Although this rush has slowed

down, after the burst of the (.Com) bubble enterprises, the endless possibilities are

still there. In a survey conducted by the Nua Internet in November 1, 2002, more than

600 million people have net access. It is expected that this figure will increase

dramatically. This growth will continue to have an indelible impact on trademark

owners who are facing daily trademark infringement threats from cybersquatters.

But to every day there is a night, and no blessing comes without a curse. The new

technology has and still is presenting us with daunting tasks to change with the

technology that is changing our world. Nowhere is that more obvious than in the

slowness, and in some cases paralysis, that the law, on both the local and international

levels, is dealing with these changes. Information technologies have affected the

world of law by posing difficult and complex questions related to this new medium of

communication. Many remain unanswered.

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Let us deal with the issue from the outset. To promote themselves through the new

medium, and (later) to conduct business online through e-commerce, companies

sought to register and reserve domain names that tend to be simple to remember. The

best example off such domain names would be their famous trademarks or brand

name of which customers are familiar with. So, the end result for most companies has

been (www.name.com).

And so, we had domain names that are user-friendly addresses and that facilitate

navigation of the World Wide Web. When domain names were developed their

function was purely technical and the economic value of domains names was not

recognized at that time. Soon, however, and as businesses started to use domain

names and establish websites, domain names performed an identifying function.

Soon enough, there was an unprecedented growing demand by the business

community to establish simple domain names and design attractive websites to

promote and sell products/services. Furthermore, the Internet facilitated

communication around the clock with their clients. This led cybersquatters and other

domain name pirates to rush to register and reserve famous trademarks and trade

names for a few dollars. Those cyber outlaws took advantage of the “first come first

serve” rule that domain name registrars tend to abide by. In essence, these cyber

outlaws would hijack a domain name and hold it for ransom, demanding a hefty sum

from famous companies for its return to the owner of the trade name or trademark. In

short, we find that there is no established international law to protect trademarks in

cyberspace, as is the case in the real world. This clearly shows that a new set of

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challenges to the established trademark system has risen as it collided with new

domain name system (DNS).

But why do these two system collide? There are many logical answers. The first is

that there are always criminals who will take advantage of any situation where a new

technology emerges. It happened to audio-tapes and CD’s. This conflict occurs

because of the philosophies of each system trademarks may be used by different

persons to distinguish different products or services in different countries. Each

domain name, however, is based on a real name and that name is unique to only one

person who is allowed to register it in cyberspace. This will raise a difficult question

about who is entitled to register the disputed domain names; Is it the person who has

registered it? Or is it the company that already owns the trademark or trade name

corresponding to the domain name? Conventional Trademark wisdom favors the

latter, while domain name practice gives priority for the domain name registrant.

As awareness of the problem increases, concerned parties have taken measures to

decrease Cybersquatting. The primary of counter-cybersquatting tool has been the

adoption of the Uniform Dispute Resolution Policy (UDRP) by Internet Corporation

for Assigned Names and numbers (ICANN). In other cases, WIPO and other dispute

resolution providers, such as the National Arbitration Forum (NAF), Institute for

Dispute Resolution (CPR), and Asian Domain Name Dispute Resolution Center

(ADNDRC) are resolving many of the clear-cut cases of cybersquatting.

Still new forms of cybersquatting has emerged and cyberpirates still found a way to

harass companies by registering the misspelled domain names, the derogatory domain

names that tend to harm severely not only trademarks associated with the products

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that the company produces but also reputation of the corporations depending on the

ease that anyone can browse the internet and find these websites.

Finally, the adoption of multilingual domain names or Internationalized Domain

Names (IDNs) has given rise to a new form of cybersquatting once again.

Multilingual cybersquatters have found another way of infringing trademarks and

harassing well-known firms by registering the translation and the transliterations of

their well- known famous trademarks as multi-lingual domain names.