The Distinction Between Famous and Well-Known Marks
It has often been suggested that a special category of well-known marks, i.e. famous marks be recognised. Famous marks are traditionally considered to have a higher degree of reputation than well-known marks and therefore deserve a broader scope of protection against unauthorised use on non-competing goods or services.
Andre R. Bertrand refers to the following distinction between well-known and famous marks:
(1) the well-known brand proper, which is a trade mark recognised by a large fraction of the circles concerned with the production, sale or use of the goods in question and which is clearly perceived as indicating a particular origin of these products; and
(2) the famous (renommé) or very famous (dehaute renommé) brand which would be a trademark known internationally or worldwide.
It should be noted that a highly precise, strict differentiation between famous and well-known marks is not possible as these concepts are relative. In fact, the terms famous and well-known are often used synonymously or conjunctively due to their similar underpinning.
Currently though, famous marks are recognised and protected in many countries only in accordance with the principles of unfair competition law or civil and tort liability law. In sum, a famous mark can be characterised as a mark that is known to a large section of the general public with a broad reputation that extends to various goods or services.
The Domain Name System
This is the system which allows users to navigate the Internet, with the aid of the domain name and its corresponding Internet Protocol (IP) number. A domain name is the human-friendly address of a computer that is usually in a form that is easy to remember or to identify, such as www.sheffield.edu. An IP number is the unique underlying numeric address, such as 192.91.247.53. Distributed databases contain the lists of domain names and their corresponding IP numeric addresses and perform the function of mapping the domain names to their IP numeric addresses for the purpose of directing requests to connect computers on the Internet. The DNS is structured in a hierarchical manner which allows for name-to-address mapping without a central administration. This has meant that new computers can be added to the Internet with no worries about their accurate name resolution. The current weekly volume of new registrations is about 880,000.
At the top of this hierarchical structure are the top-level domains, which are usually divided into two categories: the generic top-level domains (gTLDs) and the country code top-level domains (ccTLDs). Both these categories contain some names which are open to any user and some which are restricted. For example in the gTLDs, the open names are .com, .net and .org. The other four gTLDs are restricted, in the sense that only certain entities meeting certain criteria may register names in them. They are .int, which is restricted to use by international organisations; .edu, which is restricted to use by four-year, degree-granting colleges and universities; .gov, which is restricted to use by agencies of the federal government of the United States of America; and .mil, which is restricted to use by the military of the United States of America. However, these categories may vary from one registration authority to another.
The ccTLDs bear a two-letter country code derived from Standard 3166 of the International Organisation for Standardisation (IS0 3166). Currently there are 243. For example .au (Australia), .br (Brazil), .ca (Canada), .eg (Egypt), .fr (France), .jp (Japan) and .za (South Africa). Some of these domains are open, in the sense that there are no restrictions on the persons or entities who may register in them. Others are restricted, in that only persons or entities satisfying certain criteria (for example, domicile within the territory) may register names in them.
Nevertheless, functionally there is no distinction between the gTLDs and the ccTLDs. A domain name registered in a ccTLD provides exactly the same connectivity as a domain name registered in a gTLD.
The Interface Between the Domain Name System and Trade Marks
It could be said that the most effective, or easily located domain names are those that contain the name of a trademark or other particular feature of a company. This makes them easily identified with a product or a company. So, it is a good starting point, when searching for a company, to use such names, for example pitman.co.uk or prince.com . Therefore, domain names are much like trademarks in that they may create an expectation about the identity of a person or company , or indeed the nature of the product. With this in mind, we can see how easily the potential for "grabbing" or registering the mark of another person as a domain name has increased.
This grabbing potential is intensified where a company has registered its own domain name with a hyphen, as in burger-king.co.uk, but the standard convention for a domain name for a company name of more than a single word is to have no hyphens. This means that the most obvious first choice for an individual speculatively looking for a company's website would be to use no hyphen. Thus, in One in a Million case the defendants had tried to sell the domain name burgerking.co.uk for a sum of £125.000 + VAT. Burger King was understandably very eager to have this domain name under its control.
Domain names and trademarks have their similarities and differences, [for example "marksandspencer", as part of a domain name is not identical but is clearly similar to the trademark "Marks & Spencer"] but, because domain names are world-wide, trademark law alone cannot cover the scope of all domain names. While trademark law allows the same trademark to be used by different companies in different fields and geographic areas, a domain name can only be registered once so some problems obviously arise, if someone somewhere else has already registered a company's own mark as a domain name on the Internet.
However, it should be noted that mere registration of a deceptive company name or a deceptive Internet domain name without using it is not passing off, and therefore by itself is not trademark infringement. Generally speaking, in the US at least, one does not violate a trademark right without commercial use (and, absent a finding that the mark is famous, likelihood of confusion). On the other hand, two courts, one in the US and one in the UK, have held otherwise. They found that a person who made a practice of registering others' trademarks for potential resale was making commercial use of those trademarks. Assuming that these decisions are correct, which is itself controversial, I do not believe that the precedents would or should apply to persons who are not in the business of registering domains that contain trademarked terms for resale on a similar scale. But, as addressed in One in a Million, it is enough that the registration is calculated to infringe the Plaintiff's rights in the future. The name "marksandspencer" could only have been chosen because it was associated with the well-known retailing group and in order for the defendants to pass themselves off as part of that group or their products off as theirs. Thus the court granted a quia timet injunction in order to restrain a threatened rather than an actual tort.
A similar judgment can be seen in the first Italian decision on domain name hijacking, that of "lauraashley.com" which had been registered by a parma-based company, using a cover name, Edizioni Blu, whose principal business activity was the registration of well-known domain names. No Internet sites had been activated for any of these domain names. The court held that the defendants' registration of the said domain name was unlawful and that their offer for sale of the name constituted commercial use and infringement of Laura Ashley's trading name and registered trademark. Reasons for this included the fact that the name of a well-known company contained within a domain name is a distinguishing mark in that it facilitates an on-line search and recall of a web site and can therefore conflict with marks which are identical or similar. This falls under Article 1(c) of Italian Trade Mark Law. Another point was that the defendants had registered the mark in order to sell it and therefore take undue advantage from it (Laura Ashley would be forced to buy it if they wanted to set up a web site using their trading name).
