CONTROVERSIES SURROUNDING DOMAIN NAMES

Kenny Wiston


Introduction

As stated in the last issue of this journal, a domain name is not actually a  name  but an address in the same way as a postal address. It allows messages to be sent to a computer user at that address on the Internet. However, in fact, even for  private users, not to mention commercial  users, domain names are labels. There is no doubt that a domain name can serve to identify the source of the services or goods provided by its owner and thereby even now names can acquire a secondary meaning. Conversely the use of a domain name may not  necessarily create trademark rights  because the owner of the domain name may  not necessarily provide any  goods  or services under that name. Similarly, incorporation itself does not confer the right to use the company name in a way which infringes existing trademark rights.

There are a number of factors that have brought the domain name system into opposition with the law of trademarks. Interestingly, and importantly, most of the disputes to date have been in relation to the ".com" top level domain name.

There are a number of reason for this: firstly, it is one of the oldest - in terms of original top level domains; secondly, it is a naming system which might utilise only two names, such as "Harrods.com", thus making the address easily and instantly recognisable. By contrast, under one of the country domains, the name would be "Harrods.co.uk". Thirdly, its association with commercial organisations is also important in that it is attractive to a commercial entity seeking to set up a web site; and finally, as mentioned above, the name has international connotations.

Another factor that has contributed to the controversies surrounding domain names is the development of browsers and search engines which make finding specific locations on the Internet relatively simple. Most browsers now allow a surfer to find the web site of a company by simply typing in the company name. If a browser such as Netscape is used, the surfer need only type in the word "apple", and the browser will add the rest of the URL; i.e., in this case "http://www.apple.com", in order to take the surfer directly to the home page of Apple computers. Prior to the development of these browsers, the surfer would have had to work much harder to find a particular address and the web page located at that address. Search engines, such as Infoseek, AltaVista and Yahoo have also simplified the task of the surfer, allowing information to be found using only one key word, often a word that is used as part of a trademark by a business.

No two domain names can be identical. There can only be one "harrods.com". The word "Harrods" could however be registered under one of the country domains. Thus along with "harrods.com", "harrods.co.uk" can also be used as a domain name. In addition, variations on the name "harrods.com" can be registered, for example "harr0ds.com" or "harrods1.com". The permutations are limited only by the imagination.
There may be a number of people or entities who consider themselves to be "entitled" in the loose sense of the term to a particular domain name. Let us take the example of the name "Drake" . In the UK, "Drake" may be the registered trademark for office stationery, it may be the name of a regular street market in London, and of an art gallery in Aberdeen; there may be a solicitors firm named "Drake", it may be the unregistered mark for "Drake" kitchen utensils, and be registered for garden seed and other equipment. And indeed you may have different entities equally entitled to the same mark in other countries around the world, whether they operate within the same sphere of business or not. Trade mark law is, after all, territorial. Only one of these organisations will be able to register the name "Drake.com". The controversy is over who gets that domain name and why.

Categorising Disputes

The domain names disputes that are publicly known have been listed and summarised by several commentators . Several distinctions may be drawn among the disputes such as uniqueness, presence or absence of commercial activity, presence or absence of allegedly offending conduct above and beyond mere possession of the domain name itself and presence or absence of a legitimate basis for use of the domain name . However, among the above mentioned categories, "cyber-squatting" and "competing legitimate claims" are the most developing areas of litigation.

Cyber-Squatting or Abusive Registrations

One way in which disputes have arisen is where a third party intentionally registers a domain name in the knowledge that someone else will want it, such as "windows95.com". This domain name was registered by a student in Utah. The intention may be to hold the company or business who wants to use the domain name to ransom, and demand financial reward for giving up the domain name. Another example is where "Mcdonalds.com" was registered by a journalist, Mr Quittner in 1994. To secure return of the name, McDonalds were forced to make a donation for computer equipment for a primary school.

In Marks & Spencer Plc v One in a Million Ltd,  and in British Telecommunications Plc v One in a Million Ltd,  the defendant, One in a Million Plc, a dealer in Internet domain names, registered domain names of trademarks of well-known commercial enterprises without the consent of those enterprises. The plaintiffs whose  names had been registered by the defendant in various forms applied for summary judgment in an action for passing off and trademark infringement.  The Court granted the application that the plaintiffs were entitled to a final injunction quia timet restraining the defendant from using or selling the names and compelling the defendant to assign registration  of the names to the plaintiffs.

A second way in which disputes arise is where a domain name is registered by someone who knows it is the same as a trademark belonging to someone else, or very similar to such a trademark, but intends to use it for their own purposes. Visitors to the site may be surprised to find that the goods or services which are advertised are not those they would normally have associated with the mark that they know and understand. Teubner & Associates, a high technology software company found themselves in just such a position. A competitor of Teubner's registered the name "tuebner.com", which is a common misspelling of Teubner. "Tuebner.com", after negotiation, has been reassigned to Teubner & Associates.

Competing Legitimate Claims

A third way in which disputes can arise is over "innocent" registrations.  This is where registration is made of what would be a logical choice of a domain name. The example of "Drake" above provides one such scenario. The winner of the race to the register for the domain name "Drake.com" could be the stationery company. Imagine the surprise of the computer literate clients of the firm of solicitors, or devotees of Drake grass seed when they access the home page and find out it is totally unrelated to the products or services that they associate with the name.

In Pitman Training Ltd v Nominet  UK,   Pitman Publishing, the second defendant, whose application bearing his second name to register pitman.co.uk and pitman.com as domain names for use by its publishing division in establishing a web site was accepted by Nominet UK, an Internet service provider. However, a franchisee of Pitman Training, the plaintiff, later successfully registered the same name. It was found that the name had been redelegated to the plaintiff . When the defendant realised what had happened, through its solicitors, the domain  name pitman.co.uk was successfully transferred back  to the defendant by Nominet UK. The plaintiff then initiated legal proceedings. The case is  unusual as the second named defendant and the plaintiff had originally been part of the same business. This made it difficult to raise a claim  that one party or the other  was engaging in passing off.  However, it was held that the Court  gave judgment for Nominet and the second defendant. There was no evidence to support the plaintiff's contention that use of the domain name by the second defendant amounted to  passing off, given the second defendant's long use of the name by way of its being successor in title to the  Pitman  name. The ruling judge, Sir Richard Scott V.C stated that interference with contract had not arisen as the plaintiff had contracted with a separate service provider, not directly with Nominet UK.

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