THE INCREASING MONOPOLISTIC POWER OF TRADEMARKS AS DOMAIN NAMES

1
THE INCREASING MONOPOLISTIC POWER OF TRADEMARKS
AS DOMAIN NAMES

• Pamela J. Smith
• Fulbright Professor of Intellectual Property
  Cyberspace Law
• smithpj_at_protecting-technology.com

2
U.S. TRADEMARKS MULTIDIMENSIONAL SYSTEM OF
SHARING

• STATE versus FEDERAL LAW
• REGISTRATION VERSUS NOT
• GEOGRAPHIC LOCATIONS
• MARK/GOOD COMBINATION
• COUNTRY TO COUNTRY

3
E-COMMERCE AND DOMAIN NAMES

• DOMAIN NAMES ARE THE ALPHANUMERIC LETTERS BEFORE
  
• .COM
• .NET
• .GOV
• .EDU
• .ORG
• DOMAINS ARE MONOPOLITISTIC THERE CAN BE ONLY ONE

4
DOMAIN NAMES

• PURPOSE ALLOW CONSUMERS TO ACCESS INTERNET
  ADDRESSES WITHOUT MEMORIZING AN ACTUAL NUMERIC
  ADDRESS FOR A PARTICULAR COMPUTER.
• E.G. 206.139.182.52 versus DOOPPLING.COM
• TECHNOLOGY CREATES LIMITATIONS

5
PIRATES, CYBERSQUATTERS OR FIRST IN TIME
ENTREPRENEURS

• MOST OF THE CONTROVERSIES REGARDING THE USE OF
  DOMAIN NAMES AS TOP LEVEL DOMAIN (TLD) NAMES HAVE
  CENTERED ON THE .COM . . . THE COUNTRY-LESS
  TLD
• THE CONTROVERSIES CONTINUE TO EXPAND AS LARGE
  MULTINATIONAL CORPORATIONS DEMAND GREATER
  PROTECTION FOR THEIR TRADEMARKS IN CYBERSPACE

6
PROTECTIONISM FOR LARGE CORPORATIONS?

• CASE LAW ANTI-CYBER ENTREPRENEURS OR PRO
  TRADEMARK HOLDER/BIG BUSINESS
• ANTI-DILUTION LEGISLATION DESIGNED TO PROTECT
  FAMOUS MARKS IS PRO BIG BUSINESS
• US LEGISLATION THE CYBERPIRACY PREVENTION ACT
  IS ANTI-CYBER ENTREPRENEURS
• ICANNS DISPUTE RESOLUTION IS PRO-TRADEMARK
  HOLDER. SO FAR OVER 70 OF ALL CASES WON BY
  TRADEMARK HOLDER

7
STATE OF DOMAIN NAME MONOPOLISTIC BEHAVIOR
8
SPELLING SQUATTING

• But they are separate domains and e-cards is not
  a registered mark
• Further an e-card describes a generic electronic
  greeting card

• E-cards.com sues ecards.com and wins 4m
  judgement for unfair competition.
• A - hyphen (and presumably the _ dash) is
  irrelevant. Should it be?

9
METATAGS

• METATAGS ARE WORDS INCLUDED IN KEYWORDS FIELDS OF
  A WEBSITE IN THE HTML, WHICH ARE INVISIBLE TO THE
  EYE OF THE USER UNLESS THE USER IS VIEWING THE
  SOURCE CODE
• RESULT USE OF ANOTHERS TRADEMARK AS A METATAG
  IS AN INFRINGEMENT OF THE TRADEMARK

10
KEY WORDS

• KEY WORDS ARE USED BY SEARCH ENGINES TO CREATE A
  SEARCHABLE INDEX OF SITED LISTED IN A PARTICULAR
  DATABASE.
• SEARCH ENGINES HAVE SOLD TRADEMARK KEYWORDS TO
  NON-TRADEMARK OWNERS.
• RESULT? PLAYBOY V. NETSCAPE (PLAYBOY AND
  PLAYMATE HAVE NON-TRADEMARK MEANINGS).

11
INTERNATIONAL TLDsPROCTOR GAMBLE v. TIANDI

• PG
• Owns Tide For Detergent (In China Since 1992)
• Owns Tide.com
• Did Not Attempt To Register Tide.com.cn Until
  After April 1998
• Sued Tiandi In March 2000 Claiming That Tiandis
  Use Of Tide.com.cn Is Cybersquatting
• FIRST RULING FOR PG

• TIANDI
• Used Tide As Its English Name Since 1993
• Does Not Sell Detergent. Sells Electronic
  Equipment
• Acquired Tide.com.cn In April 1998
• Customers Refer To It As Tide
• Website Is Active And Loss of DN Will Cause A
  Business Loss

12
INTERNATIONAL TLDsIMPACT ON DEVELOPING IT
COUNRIES

• Where there is international sharing of a word as
  a trademark, how should domain names be
  apportioned?
• If the first to use the domain name in the
  popular .com or in the country designated TLDs
  (.com.lk) is given primary rights, then companies
  located in technologically developing countries
  may be effectively precluded from obtaining web
  sites under their own marks because they will
  have been previously claimed by multinational
  corporations.

13
GENERIC DNs

• OWNERS OF GENERIC WORDS AS DOMAIN NAMES (e.g.,
  Furniture.com, Loan.com, etc.) BEGIN TO DESIRE
  TRADEMARK RIGHTS FOR THESE GENERIC WORDS IN ORDER
  TO PROTECT REPUTATIONS CREATED ON THE INTERNET
• PTO ADDING .COM TO A GENERIC WORD DOES NOT A
  TRADEMARK MARK . . . I.E. GENERIC OR DESCRIPTIVE
  WORDS (SOAP, LOAN, FURNITURE), WHICH EVERY
  BUSINESS CAN USE, DO NOT BECOME ELIGIBLE FOR
  TRADEMARK PROTECTION BECAUSE ONE ADDS .COM . . .
  YET?

14
CROSS DOMAIN OWNERSHIP FROM .com to .net

• VOLKSWAGEN ENTITLED TO VW.COM and VW.NET
• DUE TO THE STRENGTH OF ITS MARK RATHER THAN ITS
  ACTUAL BUSINESS)
• DOES THIS MEAN IT IS ENTITLED TO EVERY VW DOMAIN
  NAMES AS NEW TLDs ARE ADDED?
• IS THERE THEN NO REAL DISTINCTION BETWEEN .COM,
  .NET, ETC.? IS THE TLD MERE SURPLUSAGE?

15
NEW TLDs

• .INFO .BIZ .PRO
• .COOP .AERO .MUSEUM
• HOW LEGALLY DIFFERENT FROM .COM?
• DOES IT INCREASE/DECREASE THE PROBLEMS OF
  TRADEMARKS AS DOMAIN NAMES?
• ARE THEY/SHOULD THESE NEW TLDs BE SUBJECT MATTER
  RESTRICTED?

16
TYPOSQUATTING?

• AS OF SEPTEMBER 2000, A STUDENT HAS ACQUIRED
  COMMON MISSPELLINGS MADE BY TYPISTS OF POPULAR
  DOMAIN NAMES
• E.G., FOXMEWS.COM
• E.G., ABCMEWS.COM
• IS HE A CYBERSQUATTER? WHAT IF THEY OFFER TO BUY
  HIS DOMAIN NAMES?
• DOES FOX OR ABC OWN THE RIGHT TO A TYPO?

17
SIMILARITY SQUATTING

• YAHOO WINS THE TRANSFER OF 37 ALLEGEDLY SIMILAR
  DOMAIN NAMES. FROM YHU.COM TO YAYOU.COM TO
  YOUHOO.COM TO YAOHH.COM
• NOTE OTHERS HAVE LEGITIMATE TRADEMARK RIGHTS
  RIGHTS TO SIMILAR DERIVATIONS OF YAHOO, E.G.,
  YOO-HOO CHOCOLATE CORP HAS 5 FOR YOO-HOO

18
MONOPOLY CHECKPOINT
19
HOW TO LIMIT THE MONOPOLIES?

• E-COMMERCE MONOPOLIES

20
TRADEMARK OWNERS DUTIES IN CYBERSPACE

• SHOULD THERE BE A DUTY TO PROTECT TRADE NAME AND
  TRADEMARKS (EVERY DERIVATION)?
• SHOULD THERE BE A DUTY TO ACQUIRE TRADEMARKS AND
  EVERY DERIVATION?
• SHOULD THERE BE A DUTY TO REACT ON CYBERTIME?

21
THERE SHOULD BE A DUTY TO ACQUIRE AND PROTECT

• EASY TO DO NSI ALLOWS REGISTRANTS THE
  OPPORTUNITY TO REGISTER IN OTHER TLDs EASILY AND
  SENDS OUT ANNOUNCEMENTS.
• NSI ALSO GIVES .COM HOLDS THE OPPORTUNITY TO
  OBTAIN A DOMAIN NAMES IN ALL 192 COUNTRIES.
• SOFTWARE CAN HELP CREATE DERIVATIONS OF A
  COMPANYS TRADEMARKS FOR ACQUISITION.

22
OTHER PROPOSED DUTIES

• DUTY TO ACQUIRE BASED ON CYBERTIME (SIX MONTHS TO
  A YEAR OF NEW TLDs)
• PENALTY FOR BAD FAITH OFFERS TO BUY (TRIGGERING
  CYBERSQUATING LEGALLY)

23
OTHER PROPOSED DUTIESCONTD

• DUTY TO ATTEMP TO RESOLVE THE LEGITIMATE USE
  ISSUES THROUGH NEGOTIATION OR SHARED WEB PORTALS,
  IN GOOD FAITH
• DUTY TO BRING DOMAIN NAME LITIGATION WITHIN A
  REASONABLE CYBERTIME PERIOD (STATUTE OF
  LIMITATIONS, E.G., 1 YEAR FROM DATE OTHER
  REGISTERS IT)

24
EQUITABLE DEFENSE FOR CYBER ENTREPRENEURS

• DUTY TO TIMELY LITIGATION LACHES IF, AS IN
  THE TIDE CASE, THE JUNIOR USER HAS BEEN USING THE
  DOMAIN NAME FOR YEARS, RULE OF FIRST IN TIME
  SHOULD CONTROL.

25
THE CONVERSATION MUST BECOME MORE BALANCED

• RESPONSIBILITIES OF CYBERSQUATTERS TO RECOGNIZE
  TRADEMARK LAW . . . PRIMARY LEGAL CONVERSATIONS
• TIME TO DISCUSS THE DUTIES OF TRADEMARK HOLDERS
  TO PREVENT
• CORPORATE GREED
• BAD FAITH
• MONOPOLIES WITHOUT RESTRAINT

26
THANK YOU

• SPECIAL APPRECIATION TO JAYANTHA FERNANDO
• AND THE DOMAIN REGISTRY OF SRI LANKA