Your Clients On The Internet
Some Practical Law On Domain Names And Trade Marks
Internet domain names are likely to become extreme important for because in the near future as email replaces the use of telephone and users increasingly use the World Wide Web to order products. The important of domain names for business on the Internet has been demonstrated recently by a series of legal dispute over the possession and use of certain domain designations. These disputes have involved trademark infringement, although there is also the possibility of infringement of s.52 of the Trade Practices Act and for actions in passing off.
What is a domain name
An essential part of the Internet is the manner of distinguishing and locating all the various computers, users, files and other resources attached to the Internet. This is a accompanied via Internetworking Protocol Addresses (“IP Addresses”), which are represented as strings of digits is difficult and cumbersome to remember, the IP Address system has been overlaid with a more user-friendly system of “domain names”. This allows Internet resources to be assigned a designation that is more easily remember, like for example, “Mcdonald.Com”.
As with IP addresses, domain names are divided into fields and separated by periods/
“Philip.cornella_cit.cornella.edu, for example, locates Philip at a machine name “cornella at Cornella University. The father you go to the right in the domain name, the more general the address becomes. There are only a limited number of designators for the right-most field and theses either show the country or type of organization to which the address belongs.
Registration
Anyone can register an Internet domain name submitting a completed registration form to a delegated authority (there is currently no charge). The registration is simply a listing service undertaken on a first come-first served basis and no adjudication is made of the ‘right’ of an applicant to a name .Rather, application have the responsibility for ensuring they have due title to a name and by lodging a request for a name assert such a claim. It is up to the requester to be sure they are not violating anyone else’s trademark.
At present, once an organization or person has registered domain name in Australia, they may use it, reassign it or simply hold on to it. Where there is a conflict between an applicant and an existing listing held by delegated authority, it is left to the parties to resolve the problem.
Possible legal wrangles
The registering of a domain name does not entitle its owner to use the name in a way that conflicts with a registered trademark. The issue therefore becomes whether the use or otherwise of a domain name can in fact amount to infringement. This has already been raise in the US in a number of cases including MTV v. Curry where Curry, employed as a host on MTV, organized an Internet site develop to popular culture and entertainment. He registered the site as “mtv.com” and refused to surrender or dismantle it on leaving the company. MTV sued. Pending trial, the parties quietly settled the dispute, with Curry handing over the rights to the “mtv.com”.
Despite it’s interest value this and other case do not provide any relevant precedent on the factors which might cause a domain name to infringe a trademark. The usual law applies. Though domain names designate a location they also clearly indicate the source or affiliation of the Internet resource (the function of trademark). As such they could lead to deception or confusion of customers who are familiar with a registered trademark for goods or services, especially where use of the Internet becomes a natural extension of the service offered in real space.
Matters which are yet to be determined include the effect of the top level domain name on an action for infringement. Theoretically it might be possible for example, for “mtv.com” to infringe MTV’s trademark while “mtv.edu” might not.
It also seems possible that a form of ‘cybermark’ law will develop preventing the use of a domain name which is ‘substantially identical’ or ‘deceptively similar’ to another domain name in cyberspace – neither imported from real space cyberspace refers to the global, link environment of computer information). This would be natural result of a domain acquiring a reputation based entirely on it’s Internet activities rather than business in the ‘real world’.
The future
Wholesale registering of Internet domain names by those with no intention of using them and the increasing number of names being registered, has brought about a change in the rules for registration in the US from July of 1995. Though names are still allocated on a first-come-first served basis, if the domain name is not used for a period of 90 days then that name must be relinquished on request. In addition, if someone doesn’t like the fact that an applicant owns a particular domain name that party can try to summarily force them to relinquish it. They can do this by presenting proof of a current registered trademark that is owned by them and that is ‘identical’ to the domain name. The owner of the domain name then has 14 days to prove that they also have the relevant registered trademark before their domain name is taken away.
However if both the domain name holder and the company trying to acquire it can prove they have the relevant trademark registration, a stalemate will result. InterNIC, the North American name registration authority, will take no further action and the domain name holder an only be restrained from using the name by a Court order.
It is likely that similar problems will cause similar rules to be adopted here in the future. Businesses are well advised to register a domain name as early as possible and, if they have not already done so, secure a trade mark corresponding to their domain name. The lack of settled trademark law with respect to domain names should otherwise not deter business from venturing out into a cyberspace.
Internet domain names are likely to become extreme important for because in the near future as email replaces the use of telephone and users increasingly use the World Wide Web to order products. The important of domain names for business on the Internet has been demonstrated recently by a series of legal dispute over the possession and use of certain domain designations. These disputes have involved trademark infringement, although there is also the possibility of infringement of s.52 of the Trade Practices Act and for actions in passing off.
What is a domain name
An essential part of the Internet is the manner of distinguishing and locating all the various computers, users, files and other resources attached to the Internet. This is a accompanied via Internetworking Protocol Addresses (“IP Addresses”), which are represented as strings of digits is difficult and cumbersome to remember, the IP Address system has been overlaid with a more user-friendly system of “domain names”. This allows Internet resources to be assigned a designation that is more easily remember, like for example, “Mcdonald.Com”.
As with IP addresses, domain names are divided into fields and separated by periods/
“Philip.cornella_cit.cornella.edu, for example, locates Philip at a machine name “cornella at Cornella University. The father you go to the right in the domain name, the more general the address becomes. There are only a limited number of designators for the right-most field and theses either show the country or type of organization to which the address belongs.
Registration
Anyone can register an Internet domain name submitting a completed registration form to a delegated authority (there is currently no charge). The registration is simply a listing service undertaken on a first come-first served basis and no adjudication is made of the ‘right’ of an applicant to a name .Rather, application have the responsibility for ensuring they have due title to a name and by lodging a request for a name assert such a claim. It is up to the requester to be sure they are not violating anyone else’s trademark.
At present, once an organization or person has registered domain name in Australia, they may use it, reassign it or simply hold on to it. Where there is a conflict between an applicant and an existing listing held by delegated authority, it is left to the parties to resolve the problem.
Possible legal wrangles
The registering of a domain name does not entitle its owner to use the name in a way that conflicts with a registered trademark. The issue therefore becomes whether the use or otherwise of a domain name can in fact amount to infringement. This has already been raise in the US in a number of cases including MTV v. Curry where Curry, employed as a host on MTV, organized an Internet site develop to popular culture and entertainment. He registered the site as “mtv.com” and refused to surrender or dismantle it on leaving the company. MTV sued. Pending trial, the parties quietly settled the dispute, with Curry handing over the rights to the “mtv.com”.
Despite it’s interest value this and other case do not provide any relevant precedent on the factors which might cause a domain name to infringe a trademark. The usual law applies. Though domain names designate a location they also clearly indicate the source or affiliation of the Internet resource (the function of trademark). As such they could lead to deception or confusion of customers who are familiar with a registered trademark for goods or services, especially where use of the Internet becomes a natural extension of the service offered in real space.
Matters which are yet to be determined include the effect of the top level domain name on an action for infringement. Theoretically it might be possible for example, for “mtv.com” to infringe MTV’s trademark while “mtv.edu” might not.
It also seems possible that a form of ‘cybermark’ law will develop preventing the use of a domain name which is ‘substantially identical’ or ‘deceptively similar’ to another domain name in cyberspace – neither imported from real space cyberspace refers to the global, link environment of computer information). This would be natural result of a domain acquiring a reputation based entirely on it’s Internet activities rather than business in the ‘real world’.
The future
Wholesale registering of Internet domain names by those with no intention of using them and the increasing number of names being registered, has brought about a change in the rules for registration in the US from July of 1995. Though names are still allocated on a first-come-first served basis, if the domain name is not used for a period of 90 days then that name must be relinquished on request. In addition, if someone doesn’t like the fact that an applicant owns a particular domain name that party can try to summarily force them to relinquish it. They can do this by presenting proof of a current registered trademark that is owned by them and that is ‘identical’ to the domain name. The owner of the domain name then has 14 days to prove that they also have the relevant registered trademark before their domain name is taken away.
However if both the domain name holder and the company trying to acquire it can prove they have the relevant trademark registration, a stalemate will result. InterNIC, the North American name registration authority, will take no further action and the domain name holder an only be restrained from using the name by a Court order.
It is likely that similar problems will cause similar rules to be adopted here in the future. Businesses are well advised to register a domain name as early as possible and, if they have not already done so, secure a trade mark corresponding to their domain name. The lack of settled trademark law with respect to domain names should otherwise not deter business from venturing out into a cyberspace.
No comments:
Post a Comment