THE INCREASING MONOPOLISTIC POWER OF TRADEMARKS AS DOMAIN NAMES
Pamela J. Smith Fulbright Professor of Intellectual Property & Cyberspace Law
smithpj@protecting-technology.com
U.S. TRADEMARKS: MULTIDIMENSIONAL SYSTEM OF SHARING
STATE versus FEDERAL LAW REGISTRATION VERSUS NOT GEOGRAPHIC LOCATIONS MARK/GOOD COMBINATION COUNTRY TO COUNTRY
E-COMMERCE AND DOMAIN NAMES
DOMAIN NAMES ARE THE ALPHANUMERIC LETTERS BEFORE .COM .NET .GOV .EDU .ORG DOMAINS ARE MONOPOLITISTIC: THERE CAN BE ONLY ONE
DOMAIN NAMES
PURPOSE: ALLOW CONSUMERS TO ACCESS INTERNET ADDRESSES WITHOUT MEMORIZING AN ACTUAL NUMERIC ADDRESS FOR A PARTICULAR COMPUTER.
E.G. 206.139.182.52 versus DOOPPLING.COM
TECHNOLOGY CREATES LIMITATIONS
PIRATES, CYBERSQUATTERS OR FIRST IN TIME ENTREPRENEURS
MOST OF THE CONTROVERSIES REGARDING THE USE OF DOMAIN NAMES AS TOP LEVEL DOMAIN (TLD) NAMES HAVE CENTERED ON THE .COM . . . THE COUNTRY-LESS TLD
THE CONTROVERSIES CONTINUE TO EXPAND AS LARGE MULTINATIONAL CORPORATIONS DEMAND GREATER PROTECTION FOR THEIR TRADEMARKS IN CYBERSPACE
PROTECTIONISM FOR LARGE CORPORATIONS?
CASE LAW: ANTI-CYBER ENTREPRENEURS OR PRO TRADEMARK HOLDER/BIG BUSINESS ANTI-DILUTION LEGISLATION DESIGNED TO PROTECT FAMOUS MARKS IS PRO BIG BUSINESS US LEGISLATION: THE CYBERPIRACY PREVENTION ACT IS ANTICYBER ENTREPRENEURS ICANN’S DISPUTE RESOLUTION IS PRO-TRADEMARK HOLDER. SO FAR OVER 70% OF ALL CASES WON BY TRADEMARK HOLDER
STATE OF DOMAIN NAME MONOPOLISTIC BEHAVIOR
SPELLING SQUATTING METATAGS NEW TLDs
INTERNAT'L TLDs
KEY WORDS
GENERIC DN
FROM .COM TO .NET
TYPO SQUATTING
SIMILARITY SQUATTING
SPELLING SQUATTING
E-cards.com sues ecards.com and wins $4m judgement for unfair competition. A - hyphen (and presumably the _ dash) is irrelevant. Should it be? But they are separate domains and e-cards is not a registered mark Further an e-card describes a generic electronic greeting card
METATAGS
METATAGS ARE WORDS INCLUDED IN KEYWORDS FIELDS OF A WEBSITE IN THE HTML, WHICH ARE INVISIBLE TO THE EYE OF THE USER UNLESS THE USER IS VIEWING THE SOURCE CODE
RESULT: USE OF ANOTHER’S TRADEMARK AS A METATAG IS AN INFRINGEMENT OF THE TRADEMARK
KEY WORDS
KEY WORDS ARE USED BY SEARCH ENGINES TO CREATE A SEARCHABLE INDEX OF SITED LISTED IN A PARTICULAR DATABASE. SEARCH ENGINES HAVE SOLD TRADEMARK KEYWORDS TO NON-TRADEMARK OWNERS. RESULT? PLAYBOY V. NETSCAPE (PLAYBOY AND PLAYMATE HAVE NON-TRADEMARK MEANINGS).
INTERNATIONAL TLDs PROCTOR & GAMBLE v. TIANDI
TIANDI Used Tide As Its English Name Since 1993 Does Not Sell Detergent. Sells Electronic Equipment Acquired Tide.com.cn In April 1998 Customers Refer To It As Tide Website Is Active And Loss of DN Will Cause A Business Loss
P&G Owns Tide® For Detergent (In China Since 1992) Owns Tide.com Did Not Attempt To Register Tide.com.cn Until After April 1998 Sued Tiandi In March 2000 Claiming That Tiandi’s Use Of Tide.com.cn Is Cybersquatting FIRST RULING: FOR P&G
INTERNATIONAL TLDs IMPACT ON DEVELOPING IT COUNRIES
Where there is international sharing of a word as a trademark, how should domain names be apportioned?
If the first to use the domain name in the popular .com or in the country designated TLDs (.com.lk) is given primary rights, then companies located in technologically developing countries may be effectively precluded from obtaining web sites under their own marks because they will have been previously claimed by multinational corporations.
GENERIC DNs
OWNERS OF GENERIC WORDS AS DOMAIN NAMES (e.g., Furniture.com, Loan.com, etc.) BEGIN TO DESIRE TRADEMARK RIGHTS FOR THESE GENERIC WORDS IN ORDER TO PROTECT REPUTATIONS CREATED ON THE INTERNET PTO: ADDING .COM TO A GENERIC WORD DOES NOT A TRADEMARK MARK . . . I.E. GENERIC OR DESCRIPTIVE WORDS (SOAP, LOAN, FURNITURE), WHICH EVERY BUSINESS CAN USE, DO NOT BECOME ELIGIBLE FOR TRADEMARK PROTECTION BECAUSE ONE ADDS .COM . . . YET?
CROSS DOMAIN OWNERSHIP FROM .com to .net
VOLKSWAGEN ENTITLED TO VW.COM and VW.NET
DUE TO THE STRENGTH OF ITS MARK RATHER THAN ITS ACTUAL BUSINESS) DOES THIS MEAN IT IS ENTITLED TO EVERY VW DOMAIN NAMES AS NEW TLDs ARE ADDED? IS THERE THEN NO REAL DISTINCTION BETWEEN .COM, .NET, ETC.? IS THE TLD MERE SURPLUSAGE?
NEW TLDs
.INFO .COOP .BIZ .AERO .PRO .MUSEUM
HOW LEGALLY DIFFERENT FROM .COM? DOES IT INCREASE/DECREASE THE PROBLEMS OF TRADEMARKS AS DOMAIN NAMES?
ARE THEY/SHOULD THESE NEW TLDs BE SUBJECT MATTER RESTRICTED?
TYPOSQUATTING?
AS OF SEPTEMBER 2000, A STUDENT HAS ACQUIRED COMMON MISSPELLINGS MADE BY TYPISTS OF POPULAR DOMAIN NAMES E.G., FOXMEWS.COM E.G., ABCMEWS.COM IS HE A CYBERSQUATTER? WHAT IF THEY OFFER TO BUY HIS DOMAIN NAMES? DOES FOX OR ABC OWN THE RIGHT TO A TYPO?
SIMILARITY SQUATTING
YAHOO WINS THE TRANSFER OF 37 ALLEGEDLY SIMILAR DOMAIN NAMES. FROM YHU.COM TO YAYOU.COM TO YOUHOO.COM TO YAOHH.COM NOTE: OTHERS HAVE LEGITIMATE TRADEMARK RIGHTS RIGHTS TO SIMILAR DERIVATIONS OF YAHOO, E.G., YOO-HOO CHOCOLATE CORP HAS 5 ® FOR YOO-HOO
MONOPOLY CHECKPOINT
SPELLING SQUATTING METATAGS NEW TLDs
INTERNAT'L TLDs
KEY WORDS
GENERIC DN
FROM .COM TO .NET
TYPO SQUATTING
SIMILARITY SQUATTING
E-COMMERCE & MONOPOLIES
HOW TO LIMIT THE MONOPOLIES?
TRADEMARK OWNER’S DUTIES IN CYBERSPACE
SHOULD THERE BE A DUTY TO PROTECT TRADE NAME AND TRADEMARKS (EVERY DERIVATION)? SHOULD THERE BE A DUTY TO ACQUIRE TRADEMARKS AND EVERY DERIVATION?
SHOULD THERE BE A DUTY TO REACT ON CYBERTIME?
THERE SHOULD BE A DUTY TO ACQUIRE AND PROTECT
EASY TO DO: NSI ALLOWS REGISTRANTS THE OPPORTUNITY TO REGISTER IN OTHER TLDs EASILY AND SENDS OUT ANNOUNCEMENTS. NSI ALSO GIVES .COM HOLDS THE OPPORTUNITY TO OBTAIN A DOMAIN NAMES IN ALL 192 COUNTRIES. SOFTWARE CAN HELP CREATE DERIVATIONS OF A COMPANY’S TRADEMARKS FOR ACQUISITION.
OTHER PROPOSED DUTIES
DUTY TO ACQUIRE BASED ON CYBERTIME (SIX MONTHS TO A YEAR OF NEW TLDs)
PENALTY FOR BAD FAITH OFFERS TO BUY (TRIGGERING CYBERSQUATING LEGALLY)
OTHER PROPOSED DUTIES CONT’D
DUTY TO ATTEMP TO RESOLVE THE LEGITIMATE USE ISSUES THROUGH NEGOTIATION OR SHARED WEB PORTALS, IN GOOD FAITH DUTY TO BRING DOMAIN NAME LITIGATION WITHIN A REASONABLE CYBERTIME PERIOD (STATUTE OF LIMITATIONS, E.G., 1 YEAR FROM DATE OTHER REGISTERS IT)
EQUITABLE DEFENSE FOR CYBER ENTREPRENEURS
DUTY TO TIMELY LITIGATION: LACHES: IF, AS IN THE TIDE CASE, THE JUNIOR USER HAS BEEN USING THE DOMAIN NAME FOR YEARS, RULE OF FIRST IN TIME SHOULD CONTROL.
THE CONVERSATION MUST BECOME MORE BALANCED
RESPONSIBILITIES OF CYBERSQUATTERS TO RECOGNIZE TRADEMARK LAW . . . PRIMARY LEGAL CONVERSATIONS
TIME TO DISCUSS THE DUTIES OF TRADEMARK HOLDERS TO PREVENT CORPORATE GREED BAD FAITH MONOPOLIES WITHOUT RESTRAINT
THANK YOU
SPECIAL APPRECIATION TO JAYANTHA FERNANDO AND THE DOMAIN REGISTRY OF SRI LANKA