WHAT=S IN A NAME...Internet Domain Names vs. Trademarks.
Originally published February 10, 1997
We all know that the Internet is revolutionizing the way the world does business. Its impact on traditional models of intellectual property is tremendous. Intellectual property includes all of the original works, concepts, devices, information and procedures that are part of any company. Traditionally Copyright, Trademark, Patent and Trade Secrets laws protect these Asoft assets.@ But what happens when the technologic wonder called the Internet interfaces with long established regimens like Trademark law. And how does this impact on the businesspeople interested in taking advantage of this new technology?
Businesses expend vast resources establishing name recognition for their products and services in the marketplace. Once established, a trade name becomes one of the most valuable assets of any company. Brand name recognition is the mainstay of American marketing. In this article we will take a look at the following questions. How does this new thing, the Internet, affect traditional notions of trade names and use? Is there a difference between a Trademark and an Internet Domain name? If a conflict arises between a common law and even registered trade name and an Internet domain name, can it be resolved?
Federal Trademark laws and associated international treaties, and common law usage, protect trade names. Any trade name gains value by its use in commerce. And once a mark is properly registered, the ability to invoke the protection of Federal and international trademark protection is based on that same use in commerce whenever a likelihood of confusion within a specific market exists. Thus, trademark protection is defined in large part by the type of business and the geographic locale. This is because confusion in the marketplace is always the standard used to define the scope of protection offered. The Internet, especially its use of ADomain Names,@ is having a tremendous impact on trade names and their use.
Internet web sites each have a unique location on the world wide web. Domain names identify the electronic address of a web site. Usually these addresses start with @www.@ And end with A. com@ for commercial entities. The letters in the middle are the core issue because besides acting as an address identifier, because they can be words, they also carry a message. The Internet Network Information Center (InterNIC), managed under agreement by Network Solutions, Inc. (NSI), assigns domain names on a first come first served basis. Once registered, a user has the proprietary ownership of the domain name if the semiannual fees are paid. Until recently disputes between Domain names and Trademarks were resolved through the court system. However NSI recently instituted a formal dispute resolution procedure that is a tremendous step toward resolving these important issue.
WHAT@S IN A NAME?
An ideal example of a Trademark/Domain name is www.ibm.com... as expected, it=s the Internet address for International Business Machines. Let=s take another like Acoke@ the internationally recognized trademark of the Coca-Cola Bottling Company. The www.coke.com domain is registered to some guy named Rajeev Arora, in Campbell, California. (It is presently Aon hold@ pending a completion of the dispute resolution procedures). So even with a valid Trademark, present Internet domain protocols can create problems. An even more troublesome situation occurs when dissimilar businesses each use the same word in noncompeting Trademarks. Trademark law allows identical registrations of the same mark for noncompeting goods or services, provided there is no likelihood of confusion -- like Domino's Pizza and Domino Sugar. Nevertheless, on the Internet, there can be only one www.domino.com, and, in fact, it is not sugar or pizza. It is Domino Systems, a web site design concern another noncompeting use of the term Adomino.@
WHAT TO DO
Any business s person considering entering the cybermatkerplace who already has an established trade name or registered Trademark should get the domain name registered if it is available. This certainly avoids any problems with costumers identifying the existing elements of one=s business and a new Internet presence. With more domain names being secured every day, getting your existing mark may simply not be possible. At the present rates soon every coherent string of letters will be taken. Discussions are occurring about adding 30 new categories for domain names, the last three letters such as Acom.@ Still, at least for now there can be no doubt that .com is the accepted norm and any secondary designation will be out of the main stream of web commerce. You can check on the availability of a domain name at the InterNIC site called AWhois?@ at http://rs.internic.net/cgi-bin/whois on the Internet. That=s all for now and happy surfing.