Recently, there has been a massive growth in the registration of domain names, many of which consist of trademarks of the registrant. Because of their accessibility, domain names are the preferred way to specify an address to a computer. While designed to serve the function of enabling users to locate computer addresses in an easy manner, domain names have acquired a further significance as business identifiers and, as such, have come into conflict with the system of business identifiers i.e. trademarks that existed before the arrival of the Internet and that are protected by intellectual property rights.
The tension between domain names, on the one hand, and intellectual property rights particularly trademarks, on the other hand, have led to numerous problems that raise challenging policy questions. These policy questions have new dimensions that are a consequence of the intersection of a global, multipurpose medium, i.e. the Internet, with systems designed for the physical, territorial world. With domain name registration tending to operate on a first come first served basis, the potential for disputes over rights to a domain name, particularly those that constitute trademarks, has also inevitably increased.
The tension that exists between the nature of the two systems has been exacerbated by a number of predatory and parasitical practices that have been adopted by some to exploit the lack of connection between the purposes for which the Domain Name System (DNS) was designed and those for which intellectual protection exists. These practices include the deliberate, bad faith registration as domain names of well-known and other trademarks in the hope of being able to sell the domain names to the owners of those marks, or simply to take unfair advantage of the reputation attached to those marks.
Disputes, however, arise over registration of conflicting domain names innocently as well as fraudulently .
Definition and Terminology of Well-Known Mark
The concept of a well-known mark was, in fact, developed in the context of Article 6bis of the Paris Convention to provide owners of marks, which were widely known in the marketplace but not registered, with a measure of protection against later registrations of the same mark by others.
It should, nonetheless, be recognised that well-known status cannot be pinpointed with precision by a bright-line definition. Courts and commentators use a variety of terms to refer to well-known marks or various categories of them, including notorious, famous, highly renowned, highly reputed and exceptionally well-known. These terms indeed have such a large degree of overlap which may lead to a fair amount of confusion. The better view seems to be one that focuses on the universal term provided in Article 6bis of the Paris Convention of a well-known mark: marque notoriement connue, notorisch bekannte marke, marchio notoriamente conosciuto or marca notoriamente conocida. The ordinary dictionary meaning of well-known according to Merriam Webster and the Oxford English Dictionary is, among others, widely known and known to many. According to the International Association for the Protection of Industrial Property (AIPPI), a well-known mark is a mark which is known to a large part of the public, being associated with the article or the service in the mind of the public, as indicating their origin.
Nevertheless, an interesting development is Article 16(3) of the TRIPs Agreement which provides that Article 6bis of the Paris Convention shall apply mutatis mutandis to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trade mark and provided that the interests of the owner are likely to be damaged by such use.
When Is A Mark Well-Known?
In trying to establish internationally recognised criteria to determine whether a mark is well-known or not, Frederick Mostert summarised a common set of factors that has evolved from an analysis and comparison of guidelines from many different countries. In brief these are as follows:
(i) The degree of recognition of the mark
This can be established directly, by unsolicited requests from third parties such as potential licencees, manufacturers and other users or consumers of the goods or services which bear the mark. Alternatively it can be proven by survey evidence. This degree of recognition is the very essence of establishing a famous or well-known status and can be done is various ways. The following additional factors are a non-exhaustive set of guidelines which has emerged to assist with assessing the degree of recognition acquired by the mark in question.
(ii) The extent to which the mark is used and the duration of the use
As well as volume of sales, and depth of market penetration, the market share of the goods or services for which the mark is used will also be useful.
(iii) The extent and duration of advertising and publicity accorded to the mark
The effectiveness of the advertising is very important in producing a well-known mark. It can happen overnight, or over a long period, and can spill over into other territories, jurisdictions, and fields of goods or services.
(iv) Factors which may determine the mark’s geographical reach locally, regionally and worldwide
Included in these are the extent to which the mark is recognised, used, advertised, registered and enforced geographically. Other significant factors could be the use in another country sharing the same language or media, along with the owner’s effort to register and enforce the mark worldwide.
(v) The degree of inherent or acquired distinctiveness of the mark
The demonstration of distinctiveness can assist in supporting a broader scope of protection for the mark on non-competing goods. Insofar as the distinctiveness of the mark is dependent upon its exclusivity, such determination coincides with the next factor to be considered.
(vi) The degree of exclusivity of the mark and the nature and extent of use of the same or a similar mark by third parties
The multiple use by several parties of the same mark is likely to indicate that wide reputation or fame does not attach to any one of them, except perhaps in a narrow field of use within a specific market. This is significant in a dilution case where the less exclusive a mark, the more unlikely the chances it will become even more diluted by a third party use on non-competing goods.
(vii) The nature of the goods or services and the channels of trade for the goods or services which bear the mark
The channel of trade which help to broaden or narrow the exposure of the consuming public to the mark, could have an effect on the protection afforded on non-competing goods or services.
(viii) The degree to which the reputation of the mark symbolises quality goods
This is relevant in dilution cases where tarnishing is involved.
(ix) The extent of the commercial value attributed to the mark
In some cases, the asset value given to the mark by financial institutions could be reflective of its reputation and fame. Whether a mark is well-known or not should be assessed case by case. It is the overall picture which emerges from the application of all these criteria which will determine whether a mark is considered famous in the marketplace.
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 18.104.22.168. 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).