Thus, a certain tension has come about between the Internet addresses with their powers of identification and connotation and the recognised rights of identification in the real world. These are trademarks and other rights of business identification, the developing field of personality rights (for real or fictional characters) and geographical indications.
This tension can be understood when considering that the DNS is a system which is privately administered and accessible from anywhere in the world, having a global presence, whereas the intellectual property system is publicly administered on a territorial basis, so the rights are only exercisable within the territory concerned. Therefore, there is a very obvious clash between a global medium which operates without borders and territorially based systems which can only operate within that territory and depend upon the authority of the territory.
A domain name registration, whether in a gTLD or a ccTLD, gives rise to global presence. The domain name can, but does not necessarily, lead to consumer confusion and deception and can infringe the territorially limited intellectual property rights. Consequently, the territorially limited intellectual property rights can be jeopardised by activities originating under a domain name registration in another jurisdiction, which can create practical difficulties both in the sense of the assessment of whether the intellectual property rights are being violated and in the sense of the enforcement of the intellectual property rights against infringing activities.
Where restrictions apply to the persons or entities that can register in a TLD, those restrictions may provide means for reducing the tension between domain names and intellectual property rights. For example, if one of the restrictions that is applied is domicile in the territory to which a ccTLD relates, the enforcement of any pertinent intellectual property right that is infringed by the domain name can be facilitated by the connection to jurisdiction, and thus amenability to legal process, that the restriction of domicile imposes. Another example is if the restriction applicable to the gTLD defines carefully the type of entity that can register in the gTLD, such as the requirement in .int that the registrant be an international organisation, this restriction may operate to reduce the potential for conflict between the domain names and intellectual property rights, since it removes the possibility for commercial entities to register in the domain name.
Conversely, where there are no restrictions that apply on registrations in a TLD, the potential for conflict between domain names and intellectual property rights is heightened. Functionally, in such a case, whether the TLD is a gTLD or a ccTLD, registrations of domain names can give rise to the same sort of problems concerning the interface between domain names and intellectual property rights.
As a matter of fact, the Registry of domain names and its delegates do not concern themselves with trademark rights or such notions as confusing similarity. It seems that the Registry's only rules are that each organisation should receive only one domain name in order to reduce trafficking and to ensure an on going supply of domain names and that the user has an Internet server active prior to submitting the domain name request. There is no compulsory cross-searching. In addition, there is no searching among Registries. Once registered, a name is effective throughout the world in the sense that it can form part of an e-mail address or web site address accessible from anywhere in the world.
The IAHC recommendations took note of the tension that existed between domain names and intellectual property rights and included specific procedures designed to resolve conflicts between the two.
Famous and Well-Known Trade Marks in Cyberspace
Famous and well-known marks have been the special target of a variety of predatory and parasitical practices on the Internet. The consultations held throughout the WIPO Process and the submissions made in them have confirmed the singular nature of these predatory and parasitical practices with respect to famous and well-known marks.
In the WIPO Final Report, Chapter Four, it is recognised that there are four areas of conceptual difficulty that need to be borne in mind in considering how the international protection for famous and well-known marks can be given expression in respect of domain names.
First, it is to be noted that the provisions of the Paris Conventions and the TRIPS Agreement are directed at the protection of famous and well-known marks against the registration or use of other infringing marks. Domain names, of course, are not the same thing as marks and are used for many purposes other than the identification of a producer or seller of goods or services. They are, however, also used as a means of identifying goods and services with the producer or seller of those goods and services.
Secondly, the protection of famous and well-known marks under the Paris Convention and the TRIPS Agreement extends to those countries where the competent authority considers that the mark is famous or well-known. In this respect, gTLD cannot be limited in this way.
Thirdly, while there is an international obligation to accord protection to famous and well-known marks, there is not an established treaty definition of what constitutes such a mark-it is left to the local authority. However, Article 16.2 of the TRIPS Agreement provides some guidance as to the criteria that such a competent authority must take into account in forming its appreciation. In addition, such criteria have been developed in national case law and regulatory practices and decisions around the world.
Fourthly, while the protection of famous marks has increasingly been implemented at the national level by laws directed at prohibiting any use of famous marks by third parties that dilutes the integrity and reputation of such marks, the protection of well-known marks exists often only in respect of the registration or use of a confusingly similar mark in relation to the same goods or services as those for which the well-known mark is registered or used. At the present time, the gTLDs are largely undifferentiated. Insofar as some differentiation does exist, there is no enforcement mechanism to ensure that those who have registered domain names in open gTLDs confine their use of the domain name to the broad purposes of the gTLD. Thus, one can have a domain name registered in .com without undertaking any commercial activity, or a domain name registered in .net while undertaking commercial activity that is completely unrelated to the provision of Internet or network services. There is a lack of connection between the underlying theoretical foundations of differentiation in the registration and use of trademarks and differentiation in the registration and use of domain names, since differentiation is intended to serve a different purpose in each case.
In considering that the administrative procedure proposed in respect of bad faith, abusive registrations does not give expression to the separate international protection that already exists for famous and well-known marks, WIPO recommended two mechanisms designed to take this into account:
(i) a mechanism for obtaining and enforcing an exclusion of the use of a famous or well-known mark; and
(ii) an evidentiary device for ensuring that the protection afforded by an exclusion can be extended to misleadingly similar, as well as the same, domain name registrations.
CONCLUSION
There is no doubt that there is currently a great deal of confusion surrounding the issue of trade marks and domain names. In this confusion there are a number of fundamental issues that have to be resolved concerning the interaction between the two.
At a very basic level, it is not at all clear why trade marks and domain names are necessarily seen as synonymous. A domain name is an address and is used for many purposes. We all have addresses, and there has never been any argument that a postal address should be seen as synonymous with a trade mark, no matter how similar the name is to a registered mark. However, it is true that on the Internet, a company's "address" (i.e. its URL) may raise a level of expectation as to the quality and origin of the goods that may be offered, or the information that may be offered in connection with that address. For example the name "next.clothes.com" may lead us to think that what we would be buying would be clothes and other goods from the store Next, a famous commercial entity, and that any merchandise would be of the quality expected from Next. Because these domain names may suggest quality, origin and identity, they may function as trade marks. Thus, as a matter of fact, famous and well-known marks have been the special target of a variety of predatory and parasitical practices on the Internet. However, careful consideration must be given to the separation of the domain name from the trade mark and the underlying goods and services, which should not automatically be seen as synonymous.
