Causes of Action and Their Difficulties
There are several kinds of claim to be made in cases where using someone else's trademark leads to civil action. These include claims of trademark infringement, false designation of origin, false representation or advertising, dilution and unfair competition. However, by far the most common claim concerning trademarks and domain names are those of trademark infringement and passing off.
The basis on which actions for infringement of trade marks by the use of domain names have been brought to date rests on two main grounds, that of confusion, and that of dilution. Let us first have a look at the question of confusion. In Canon Kabushiki Kaisha v Metro Goldwyn Meyer, Inc , MGM applied for the registration of the word trademark "Cannon" for a very similar product to the earlier word trademark "Cannon" of Cannon Kabushiki Kaisha, and the public perceived that the goods or services originated from different places. In this case the German court sought a preliminary ruling from the ECJ on the interpretation of Council Directive 89/104 Art. 4(1)(b), and it was held that there would indeed be a likelihood of confusion as to the place of production and therefore the identity of the products would be confused.
In Harrods Ltd v UK Network Services Ltd and Others where the domain name 'harrods.com' was registered by Michael Lawrie, Harrods, the famous department store in London wanted this domain name to advertise themselves and their wares on the Internet. Michael Lawrie was ordered by the court to hand the domain name over to Harrods, on the grounds that his potential use of the domain name constituted "trademark infringement (that of public confusion) and passing off".
It is worth noting that in Sabel BV v Puma AG the German Court referred a question to the ECJ relating to the importance to be accorded to the semantic content of two marks, which was the depiction of a bounding feline, in determining the likelihood of confusion between the two marks. One of the marks included a textual element in addition to the depiction of the feline. The question for the ECJ amounted to whether the mere association between two marks, through the idea of a bounding feline, justified refusing protection of the later mark for products similar to those covered by the earlier mark. It was held, finding that the mere association alone was not enough to justify a finding of a likelihood of confusion, that (1) from the wording of Council Directive 89/104 Art.4(1)(b), the concept of likelihood of association was not an alternative to that of likelihood of confusion, but served to define its scope. The terms of the provision itself excluded its application where there was no likelihood of confusion; (2) the likelihood of confusion had to be appreciated globally, with the visual, aural or conceptual similarity of the marks being based on the overall impression given by the marks, bearing in mind in particular their distinctive and dominant components, and (3) the more distinctive the earlier mark, the greater the likelihood of confusion. It was therefore not impossible that the conceptual similarity resulting from the fact that the two marks used images with analogous semantic content might give rise to a likelihood of confusion where the earlier mark had a particularly distinctive character, either per se or because of its reputation. However, where, as in the instant case, the earlier mark was not especially well known and consisted of an image with little imaginative content, the mere fact that the two marks were conceptually similar was not sufficient to give rise to a likelihood of confusion.
So, for goods and services provided on the Internet, is a surfer likely to be confused if the name "Drake.com" is chosen as the domain name for the company supplying office stationery if in fact she is a client of the law firm of the same name? This will depend on whether the domain name is viewed as associated with the web site only, or the underlying goods and services. And this is where a fundamental problem lies in associating domain names with trademarks. A domain name is an address used to call up a specific location on the Internet such as a Web page. Until you access the Web page, the domain name has no associations relating to the underlying goods or services. There is nothing in traditional trademark law to prevent a business from using the same mark as that belonging to someone else, as long as they are using it for dissimilar goods and services and so long as it is not likely to cause confusion. Does the domain name refer to the Web page, or to the underlying goods and services? If it is regarded as a trademark (or an infringement of a trademark), where is the point of confusion? At the point of access to the Web page? Or at the point of finding out what goods and services are being offered at that site? If the latter, then arguably confusion is unlikely to occur.
Perhaps an analogy could be drawn with those non-Internet related cases on trademarks and passing off which deal with the question as to the point at which confusion arises. These cases generally view post sale confusion as irrelevant; in other words, confusion must be present at the time at which the customer is making up his or her mind as to what to purchase before there is infringement of a trademark. In Bostik v Sellotape the court found it irrelevant that a customer might find the colours of the "blu-tack" offered by competing brands confusing after they had torn open the packets, because that confusion would only arise after the sale was made. The problem with domain names is almost the inverse of this; there may be confusion at the point of accessing the address, but once the relevant page is accessed, there need not be any confusion thereafter.
In Reckitt & Colman Products Ltd v Bordman Inc. & Others , the "Jif" lemon case which concerned the similarity of packaging of two products comprising lemon juice packaged in a plastic lemon, the court held that the crucial point of reference for a shopper who wishes to purchase a lemon is the shape of the lemon itself: "Virtually no, if any attention is paid to the label which that lemon bears"; when the shopper gets home, the label is taken off as it "performs no useful function and is easily detachable, so that it is not thereafter any part of the purchased product". Can an analogy be drawn here with the function of a domain name? Once the Web site is accessed the domain name is discarded; what matters is the mark at the point of sale. Where is the equivalent of the point of sale on the Internet? Not at the point at which you log on, but rather the point at which you actually reach the Web site and make your decisions as a purchaser.
Taking this approach to the question of confusion, it would be perfectly legitimate to register any number of domain names using the key phrase "Drake", under different top level domains, such as ".com"; ".plc.uk"; ".ltd.uk"; and so on. The underlying goods and services are different, and there is no question of confusion once accessed.
However, this argument will fail if registration of a domain name as a trademark is made in class 38 of the UK Register of Trade Marks. There have apparently been a number of applications filed for registration of domain names in the UK in this class, although it is not clear as to whether they have actually been registered as yet. Class 38 covers Telecommunications, specifically services allowing communication including the transmission of messages to one another. If the application is made in this class, then there can only be one mark, and the registration of a very close mark is going to be disallowed on the basis of similarity of services. However, if the registration is allowed, but relates rather to the underlying goods or services, then registration of similar domain names in different classes should pose no problem.
The second main ground on which trade mark and domain name infringement actions have been pursued, is on the grounds of trade mark dilution. Dilution is defined in section 45 of the American Lanham Act as follows: "the term dilution means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception". In consequence, in the United States of America, the anti-dilution doctrine seeks to enable the trademark proprietor to protect his mark against the sorts of use where public confusion is absent. The doctrine does not seek to protect ideas of origin, but rather the quality which the trade mark embodies. For example, if the mark "Rolls-Royce" which is associated with quality cars were to be used in association with low grade safety pins, the quality associated with the mark would be diluted.
