Domain Names and Trademarks Introduction

Domain names and trademarks are more connected than you may realize. In the early days of the internet, certain domain names existed to help locate specific computers. As the internet has continued to become more commercialized and globalized, domain names are more significant, helping to identify businesses. Along with visibility online, domain names are more visible in magazine ads, TV commercials, billboards, and other ad spaces. You might even see a domain name on the side of a bus. With so much more visibility, domain names can conflict with trademarks and other identifiers.

Domain names exist on a global scale, so they must be unique. Certain letters strung together will only lead to a single website across the world, while trademarks may exist and overlap across various locations and industries. In addition, many internet users will guess what the domain name for a company might be, so a domain name that is more intuitive and guessable becomes a valuable asset for a business.

Extremely rapid internet growth coupled with the higher volume of usage has led to increasing disputes between those who have registered domain names and trademark holders with confusingly similar or identical trademarks. Trademark owners often demand that the registrant of the domain name should give it up or stop using it. These types of disputes have led to more legal issues and litigation over the past decade. Although some of the case law is more specific to the facts, legal professionals can usually arrive at least one general conclusion.

The general conclusion is often that if the registrant of the domain name acted in bad faith, the court is more likely to find a way to prevent that registrant from continuing to use the domain name. The struggle occurs when courts have to decide whether the traditional analysis procedures of a trademark apply or if the procedure must be stretched. Across the globe, the court's response is harder to predict if bad faith actions can't be proven.

Before November 1999, most disputes around domain names were determined by three main trademark law theories. One of the theories is around traditional infringement of trademarks, which must prove that the alleged infringement increases the likelihood of confusion among consumers. This theory is outlined in the Lanham Act S.32(1) - 15 USC S.1114(1)). The second theory is typically the easiest to prove in the case of domain names: a registered domain name causes dilution to the trademark's value, according to the Lanham Act S.43(c) - 15 USC S. 1125(c)). 

The third claim is unfair competition, covered under the Lanham Act S.43(a) - 15 USC S. 1125(a)). This claim relates to infringement of a trademark and is available for use in a case where the mark hasn't been registered on a federal level.

Congress modified the Lanham Act in November 1999. This addendum, Lanham Act 15 USC S.1125(d)), is referred to as the “Anti-cybersquatting Consumer Protection Act.” It was designed specifically to prevent cybersquatting and to modify the litigation and handling of domain name disputes. Until that modification happened, the court system didn't have a good way to handle complaints about domain names.

The registrar of domain names, NSI, did have a policy for domain name disputes, but it didn't offer the means to resolve these controversies. Instead of resolving a claim, the NSI would put a hold on the name until a resolution happened between the two parties, either through litigation or independently. ICANN, an organization that manages domain names, recently started a uniform procedure for dispute resolutions as an alternative to going through litigation.

As of January 3, 2000, a trademark owner can use this uniform procedure as a way to resolve a domain name dispute instead of going through litigation. This option only applies if the domain name registrant acted in bad faith when registering the name. Over the years, the resolution process for domain name disputes has changed substantially. The process is likely to continue to change, especially as the uniform procedure becomes more readily used and the cybersquatting legislation is more commonly utilized when mediating these disputes.

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