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Published: Fri, 02 Feb 2018

Trademark conflicts

Trademark conflicts have been the primary cause of most Internet litigation to date. Why do trademarks and domain names always come head to head? Trademark registration is governed by regional and governmental agencies, separated by geography and culture, while domain name registration is governed by administrative agencies around the world. Only if the system of registering trademarks joined its domain name counterparts by becoming an internationally administered process that granted worldwide trademark rights, could the relationship between trademarks and domain names become the love affair all businesses would like it to be. The existence of such a parallel global registry would be almost impossible and as a result disputes between trademark holders and domain name registrants will continue to occur. Classic examples of such cases are those concerning trademark owners suing for infringement, dilution, unfair competition, or related causes of action. Domain name registrants contend that there is no legal determination that domain names are synonymous with trademarks and, trademarks are inherently territorial whereas the internet is the opposite. In this regard the Uniform Dispute Resolution Policy (UDRP) and other national domain name dispute resolution procedures, including the IEDRP here in Ireland and Nominet established in the United Kingdom, have been put in place. It has become apparent during the short lifetime of these domain name dispute resolution procedures that trademark holders wield far more weight than the average domain name registrant. Is there an inherent quality to a web address that gives trademark holders a perceived right to control use of their mark when used in a domain name? In this regard it is prudent to analysis the decisions handed down through the EDRP, IEDRP and Nominet which tend to highlight how the scales are tipped in favour of trademark holders as against domain name registrants. In this regard it is also essential look to a number of academic criticisms of the system and its favouring of trademark holders as against domain name registrants.

Case Law Analysis

Case law emerging from domain name dispute resolution mechanisms such as the UDRP illustrates the position of trademark holders as against domain name registrants. Trademark holders consistently come out on top, to the detriment of domain name registrants.

AS highlighted by Bruce Young, calls have been made for the UDRP and national domain name dispute procedures to be rethought. Prior to the Internet, companies were not prevented from using similar business names without being charged with a trademark violation, as long as they were in different industries or different regions, and generally there was need for smaller business to register a trademark unless their business involved producing products for sale.

While these small businesses were slow to register trademarks many were recognised the value of an Internet presence, and registered domain names in good faith, often redesigning their entire business around them. Dispute resolution mechanisms, such as those seen through the UDRP, IEDRP and Nominet, changed all that. There can now only be one of a name in each domain. Thus, when a small business who has registered a domain name is challenged by a large corporation who was slow to recognise the advantages of an Internet presence, the outcome of that challenge generally depends on which company has the deepest pockets. As a result it is usually trademark holders winning the dispute. The threat of such legal action usually results in the small business owner surrendering the disputed domain name and the case never goes to arbitration. Even were dispute resolution procedures are invoked, by choosing the World Intellectual Property Organization (WIPO) as one of its arbitrators, ICANN has ensured that the process tends to favor commercial trademark rights above the rights of the existing domain name registrants.

The impact of the loss of a domain name to the current registrant should be taken into consideration as part of the dispute process,. Unless bad faith by a registrant can be proven a domain name should never be transferred solely because the registrant does not hold a trademark. A re-examination of entities allowed to arbitrate regarding domain name disputes is also necessary, the appointment of neutral non-bias bodies is essential. WIPO in its adjudication of domain name disputes shows obvious bias in favour of trademark holders as against domain name registrants and therefore should no longer be engaged in the domain name dispute process.

The panellists chosen to oversee a case greatly influence the results of the UDRP cases. An imbalance in the system that needs urgent attention is the fact that the overwhelming majority of panellists practice Intellectual Property law and work for firms who exclusively represent trademark holders. Indeed, many panellists who decide cases also act as counsel for complainants. The professional cultures of these panellists make them view domain names as trademarks, and render them less sensitive to the freedom of expression issues raised by the use of domain names.

While current rules are in place, domain name holders and the small business community should be engaged, through the popular press and government agencies to ensure small business owners are aware that they are at risk of losing their domain names unless they own a trademark and to encourage them to register trademarks.

These concerns regarding the bias of WIPO toward trademark holders has lead to the concern that complainants will go “forum shopping” to select the arbitration body most likely to rule in their favor.

A domain name can function as both a reference and as a trademark and as per Dr. Mueller under the UDRP, trademark owners are able to systematically assault domain name registrants on the “reference” paradigm Trademark holders in this respect are virtually guaranteed that they will win owing to the precedents the UDRP is establishing.

The importance of a domain name is of no less importance than a trademark. This has become more evident with the development of internet usage. The original role of a domain name was to provide a computer address on the Internet. But the Internet has developed from a communication mechanism to a mode of carrying out business. As a result, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. In the commercial field, each domain name is associated with particular information or services. The domain name in the online world, just like the trade name in the offline world, serves to identify the goods or services provided by the company. Therefore bias in favour of trademark holders exercised by entities such as the UDRP, IEDRP and Nominet, is a dangerous practice and must be addressed.

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