AustLII Home | Databases | WorldLII | Search | Feedback

eLaw Journal: Murdoch University Electronic Journal of Law
You are here:  AustLII >> Databases >> eLaw Journal: Murdoch University Electronic Journal of Law >> 2003 >> [2003] MurdochUeJlLaw 6

Database Search | Name Search | Recent Articles | Noteup | LawCite | Help

Mridul, Madhurima Panwar --- "The Impact of New Generic Top Level Domains on Trademarks" [2003] MurdochUeJlLaw 6; (2003) 10(1) Murdoch University Electronic Journal of Law

The Impact of New Generic Top Level Domains on Trademarks

Author: Madhurima Panwar Mridul LLB, LLM
Advocate
Issue: Volume 10, Number 1 (March 2003)

Contents:The Impact of New Generic Top Level Domains on Trademarks

    OVERVIEW

  1. The objective of this research paper is to evaluate the effect of the new generic Top Level Domain (gTLD) name categories on Trademarks. The paper will try and assess whether the impact has been positive or whether introduction of the new TLDs has had an adverse impact on trademarks. The paper will also delve into the history of the Domain Name System (DNS) to understand how and why need for new TLDs arose. The study will not be complete without reference to the Trademark system and how it works. This will give an insight on the core reasons for the dispute between Domain Names (DN) and Trademarks (TM). The Paper will also touch on the dispute resolution system developed by Internet Corporation for Assigned Names and Numbers (ICANN) in association with World Intellectual Property Organization (WIPO) for resolving disputes arising between Domain Names and Trademarks.

  2. To enhance clarity and augment focus the paper has been divided into three parts. Part I of the paper will deal with the DN and the functioning of the DNS and the reasons for the introduction of the new gTLD categories. Part II of the paper will make a study of the Trademark system and the reasons for disputes between DN and TM. An attempt will also be made to evaluate the efficacy of the dispute resolution setup. Part III of the paper will study the impact of the new gTLD categories on TM and in conclusion will espouse the distillate of the study.

    PART I

    Introduction

  3. Despite the digital divide and all the other related problems of the Internet age, the use of the Internet is growing at an ever-increasing pace.[1] Now just about everything can be bought and sold on the net. With a little search on the World Wide Web (WWW) one can find a plethora of sites selling goods that one wants to buy, from computer software to flowers. At the same time there are sites-a-plenty where goods can be sold and transactions concluded online. This abundance of Internet sites highlights the importance of the address of the Internet site known as the domain name.

    What is a Domain Name?

  4. Every presence on the WWW has an assigned numeric Internet Protocol (IP) address. This allotted numeric address or number is like a telephone number for a particular website. However it becomes extremely difficult to remember each and every website by the number allotted to it. Thus a system was developed by which the allotted number had a corresponding alphanumeric name known as the Internet Domain Name. Initially these names were available only in English, but with the exponential growth[2] of the Internet and the development and sophistication achieved by the technology-in-use, domain names (DN) are now available in different languages. Put simply a DN is the name by which a website is located on the WWW. The name then is all-important in cyberspace (the internet world as different from the real world). It becomes imperative for a company to have a DN corresponding to its trade name in order to establish its presence on the web and reach potential customers. Technically a DN is divided into a generic Top Level Domain (gTLD) and a Second Level Domain (SLD). The TLDs are the categorization, which are generic like .com, .org, and .net. It is the SLD, which is unique to the owner of the name as there can be only one SLD in a given gTLD. For example there can be only one "microsoft.com" in the .com TLD. 'Microsoft'is the SLD and '.com' is the gTLD.[3]

    The Domain Name System

  5. The Domain Name System (DNS) is intended to provide a convenient means of referring to sites available on the Internet. By offering users an easy-to-use and reliable means of unambiguously referring to websites, e-mail servers, and the Internet's many services, the DNS has helped the Internet achieve its promise as a global medium for commerce, research, education, and cultural and other expressive activities.[4]

  6. The DNS is a set of distributed databases containing IP addresses and their corresponding domain names. The DNS has servers located all over the world which do the task of converting the DN to the allocated numeric address so that when a DN is typed into a computer the Internet software automatically converts the typed in DN to the corresponding numeric address enabling contact with the associated internet site.[5] In order to avoid criss-cross of connections and overlapping of addresses the allotment of the DN and the corresponding numeric address has to be strictly regulated. Since 1998 the Internet Corporation for Assigned Names and Numbers (ICANN) does this. It is a non-profit corporation that was formed to take over the responsibility for the IP address space allocation, protocol parameter assignment, DNS management, and root server system management; it is an Internet-community-based organization.

  7. The DNS operates on the basis of a hierarchy of names. At the top are the top-level domains, which are usually divided into two categories: the generic top-level domains (gTLDs) and the country code top-level domains (ccTLDs).[6]

  8. There are at present seven existing gTLDs, four of which are restricted and the other three open. The open gTLDs are:

  9. There are at present 243 ccTLDs, of these only 11 are unrestricted[7] and the rest are restricted. Registrations of DN in restricted ccTLDs have to fulfill the requirement of domicile and /or local registration. By April199[9] there were 1.[8] million registrations in the ccTLDs.8

  10. Besides being restricted or unrestricted, TLDs are Sponsored or Unsponsored. The Sponsored "smaller" TLDs are for use by a restricted group of people. The '.aero' TLD is meant for use by companies and organizations associated with the aviation industry. Thus Sponsored TLDs are specialized, having a sponsor representing the narrow community. The sponsor carries out delegated policy formulation responsibilities over many matters concerning the TLD. The Sponsor for '.aero' is Societe International de Telecommunications Aeronautiques (SITA). Unsponsored TLDs are those wherein the TLDs operate under policies established by the global Internet community directly through the ICANN process. The seven new DN categories, which have been introduced, are as follows:9

    The introduction of the seven new DN categories will now make available a total number of fourteen DN categories with open gTLDs increasing to a count of seven.

  11. The registration process for the .biz and the .info TLDs was officially started on 15th May 2001.[10] There is an established DN registration policy. Registration of DN occurs on a 'first-come, first-served' basis. To obtain a DN the applicant does not have to establish any commercial connection with the name (except under the .com.au registration policy where an applicant [commercial entity] for the DN is granted registration of a DN only if the name is closely aligned with their commercial name).[11] The policy of 'first-come, first-served' has more often than not led to cyber-squatting or cyber-jacking. This will be discussed in detail in Part III of the paper.

    Why the need for New Domain Name Categories

  12. The use of the Internet has been growing at an exponential rate and with it has increased the demand for easily identifiable domain names. Names that provide legitimate representations of real world business in cyber world business environment. Over a period of time various studies have been conducted on different aspects of the Internet and most reports[12] have reached a similar if not identical conclusion that the Internet needs to be made more user friendly and that the monopoly over the administration of the DNS should be discouraged. It was also the suggestion of the various Working Groups of the Domain Name Supporting Organization (DNSO), especially the Names Council that there was a need for the introduction of new DN categories to achieve these dual objectives.

  13. Several reasons seen as advantageous by the Internet community for the better working of the Internet were stated for the need for creating new DN categories. These can be grouped into three broad categories.[13]

    1. Enhancing competition for registration service

      It has been felt for a while that there has been an absence of competition in the Domain Name registration process. In its 18/19 April 2000 statement, the Names Council stressed that '[i]mplementation [of new TLDs] should promote competition in the domain-name registration business at the registry and registrar levels' so that not only the price for registration drops making it significantly lower than before and a much larger array of service offerings become available from which consumers may choose but also overall benefits of open competition accrues to the Internet community.

    2. Enhancing the utility of the DNS

      Under the argument of enhancement of the utility of the DNS by the introduction of the New TLDs the following evaluation is recoursed to
      * Whether it would make it easier for Internet users to find the web sites and other Internet resources they are seeking and
      * Whether it would make it easier for the providers of Internet resources to be found.

      This only strengthens the argument for adding special-purpose TLDs and disfavors adding undifferentiated, open TLDs. It is the belief of those opposing undifferentiated, open TLDs that these would only further confuse the consumer and would not really facilitate the easy identification of Internet sites. 'These people argue that introducing new unrestricted-use TLDs would not increase the availability of distinctive domain names, but would instead decrease the meaning of domain names generally by encouraging registration of domain names that are distinguished only by unmeaningful TLD labels. While the principles of WG-C's 17 April 2000 supplemental report point strongly toward introducing limited-purpose, distinct TLDs, most of those favoring them urge that they be applied flexibly so as not to rule out the introduction of one or more fully open, undifferentiated TLDs'.[14]

      The selection process of the new TLDs was a long one and when the seven new TLD categories were selected both arguments for and against undifferentiated, open TLD were considered. The result of the selection process is that the new categories that have been introduced are according to an evaluation of the current perceived needs of the Internet community. Different types of categories have been introduced, ranging from being unsponsored, unrestricted/restricted, open categories to sponsored, closed categories. Needless to say then that the type of TLD category will have varying effect on intellectual property in general and trademarks in particular.

    3. Enhancing the number of available domain names

      A third reason mentioned for introducing additional TLDs is that this would increase considerably the number of domain names available for registration. This rationale is usually based on the premise that "all the good names are already taken" and that adding TLDs would increase the supply of "good" names.

      'In fact, the number of second-level domain names within a single TLD is quite large (over 1098) and claims that any particular TLD is effectively exhausted are, as a technical matter, misplaced. (Even .com has only approximately 108 names registered)'. But at the same time it is important to keep in perspective the practical aspect of an argument, as some have noted that the group of useful or desirable names is much smaller than the total theoretically possible as cited above. While this observation is correct, even a slight lengthening of possible second-level domain names increases the available possibilities much more dramatically than the addition of new TLDs. For example, under the currently followed format rules increasing second-level domain-name length by one character multiplies the possible domain names by 37, while adding three new TLDs similar to .com, .net, and .org would only double them'.[15]

  14. Some participants in the discussion have asserted that adding undifferentiated TLDs for the purpose of increasing the number of available domain names runs counter to the goal of enhancing the distinctness of DNS names. In this view, adding names that differ from existing ones only because they fall into new, undifferentiated TLDs would impair the utility of the DNS. These participants argue that expansion of the DNS name space should not be accomplished by making available additional names that are likely to be confused with existing names, particularly since distinctive TLDs could instead be created.

  15. This overcautious attitude can only create unnecessary obstacles to an otherwise smoothly operating system of the Internet. We are well past the novice stage of the Internet - where the users were at the familiarization stage, getting the hang of the Internet system. The user is now well versed with the operations of the web and knows how to discern and understand the distinctness of DN.

    Guiding principles on the basis of which new TLD categories are to be introduced

  16. The statement made by the Names Council based on the report of Working Group C and related comments compiled from various other reports indicate "that there exists a consensus for the introduction of new gTLDs in a measured and responsible manner". On the basis of the reports submitted before it the Names Council therefore recommended to the ICANN Board to

    'Establish a policy for the introduction of new gTLDs in a measured and responsible manner, giving due regard in the implementation of that policy to

    (a) promoting orderly registration of names during the initial phases;
    (b) Minimizing the use of gTLDs to carry out infringements of intellectual property rights; and
    (c) Recognizing the need for ensuring user confidence in the technical operation of the new TLDs and the DNS as a whole'.[16]

  17. Since the availability of the earlier seven gTLDs no new gTLDs had been introduced and therefore because of a lack of recent experience in introducing new gTLDs, the Names Council recommended to the ICANN Board that initially a limited number of new top-level domains be introduced and that the future introduction of additional top-level domains be done only after careful evaluation of the initial introduction. The Names Council also recommended on the basis of the report submitted by Working Group C that several types of domains should be considered in the initial introduction, these being:

    Observation

  18. This approach of introducing several different types of domains simultaneously was probably recommended to lessen any negative impact a particular type of category may have on the functioning of the DNS. The introduction of different types of domains would also lend a degree of stability to the DNS in case of any destabilizing effects of the functioning of a particular domain category, the negative impact would be lessened by the cumulative positive impact of the stable functioning of the other domain categories. This is only a postulation as only two new domain categories have been introduced at the moment and it is too early to completely evaluate their impact on the DNS. However important issues have already come to the fore "particularly in connection with the implementation of "sunrise" and "landrush" DN allocation methods".[17] This will be discussed in detail in Part III of the paper.

    PART II

    Trademarks

  19. The term trademark itself suggests that it is a mark used with reference to a particular trade. A trademark is a word, phrase, symbol, design or combination of such, used to identify the source of goods or services, thereby linking traders with commodities.[18] Trademarks have increased in importance with the advent of industrialization and thus occupy a position of importance in the Intellectual Property regime of today.[19] A trademark serves the purpose of identifying the source of the origin of the goods. A registered trademark vests proprietary rights in the owner of the trademark. The advantage of having a trademark registered is that in case of misuse or infringement of the trademark by an unauthorized person the registered user can 'institute any proceeding to prevent, or to recover damages for, the infringement'.[20] Trademarks are registered on a territorial basis but there is no international registration of world famous trademarks.

  20. Under the Trademarks Act there is a classification of goods and services in accordance with the International classification[21] of goods and services for the purpose of registration.[22] This means that there are several classes under which goods can be registered and that one trademark may be registered twice but under a different class of goods and services without attracting infringement clauses. Trademarks are both market and good or service specific, so the same name could be found as a trademark in different industries or markets. This is almost similar to the DNS where there can be only one particular name in a given TLD category but there may be the same name in a different TLD category without attracting any penalties. Thus there can be only one 'microsoft.com' but there can be a 'microsoft.net', both being owned by two completely different legal entities and if both are able to prove legitimate use of the name 'microsoft' then neither would be attracting infringement sanctions to such use. However because a well-known mark is involved issues of TM dilution arise, but the 'case will depend on, among other factors, whether the domain name owner has a registered TM and on the nature of the use and the nature of the registration held by the complainant'.[23]

  21. A modified version of this principle was recognized and established in the Bruce Springsteen DN case,[24] which is a volte-face from the decision in the Julia Roberts case.[25] Both cases involved common law trademark rights. In the Julia Roberts case there were three main contentions, being, that the use of the DN 'juliaroberts.com' was identical and confusingly similar with the name "Julia Roberts", that the Respondent has no rights or legitimate interest in the domain name and that the registration and use of the DN 'juliaroberts.com' was in bad faith. However the majority panel, in the Bruce Springsteen case were of the opinion that 'previous Panels have all too readily concluded that the mere registration of the mark, and indeed other marks of a similar nature, is evidence of an attempt to prevent the legitimate owner of registered or common law trade mark rights from obtaining a "corresponding domain name"'. In other words the majority Panel felt that a similar or a substantially similar DN registration as that of the complainant was not an attempt to prevent the complainant from obtaining a DN registration.[26] The Panel further stated 'It should be noted that no evidence has been given of the name "Bruce Springsteen" having acquired a secondary meaning; in other words a recognition that the name should be associated with activities beyond the primary activities of Mr. Springsteen as a composer, performer and recorder of popular music'. Bruce Springsteen's lawyers failed to establish a clear secondary association with the name 'Bruce Springsteen', as had been done in the Julia Roberts case.

  22. A comparison of the Julia Roberts and Bruce Springsteen cases highlight two important aspects of TM. Firstly they bring out the importance of TM per se. By transferring the 'juliaroberts.com' DN to Julia Roberts, the Panelists have given full recognition and acceptance to common law trademark rights. Secondly, by denying the transfer of the 'brucespringsteen.com' DN to Bruce Springsteen, the Panelists have reemphasized the importance of the registration of TM.

  23. What is also evident from the Bruce Springsteen case is the potential of a Respondent to obtain a DN, which rightfully belongs to someone else by proving legitimate use for the name, in this case 'brucespringsteen.com'. It may be argued that this leads to dilution of the TM, which perhaps it does but law cannot proceed on assumptions nor allow monopoly to exist.

  24. This perhaps then is the point where the conflict between DN and TM begins - the differential between the registration process of DN and TM. Another point of dispute is the Uniform Domain Name Dispute Resolution Policy (UDRP) of ICANN adopted by WIPO and other domain name dispute resolution bodies, where infringement of the trademark will be upheld only when the plaintiff can prove all three of the following (paragraph 4 (i) (ii) & (iii)):

    4. 'Mandatory Administrative Proceeding.

    (i) Your domain is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
    (ii) You have no rights or legitimate interests in respect of the domain name; and
    (iii) Your domain name has been registered and is being used in bad faith.

    In the administrative proceeding, the complainant must prove that each of these three elements are present'.[27] The complainant, unable to prove all of the three requirements, loses, and the respondent is able to retain the DN registration.

    Why disputes arise between Domain Names and Trademarks

  25. There appears to be an ostensible similarity between TM and DN making the naïve believe that there should not be any reason for dispute between the two entities.

  26. As mentioned earlier, it is important to understand that trademarks are both market and good or service specific, so the same name could be found as a trademark in different industries or markets, either in the same jurisdiction or across jurisdictions. In contrast, only one domain name is available in a gTLD, excluding all other goods and services regardless of class, across borders. This situation has led to intense competition for domain names resulting in disputes involving domain name registrations. This makes a DN more exclusive than a TM. This is so because while the TM register is split into classes of goods and services, the registration of a DN is absolute, absolute in two senses: they do not know any market or country boundary and they do not know any class of good or service boundary 'so that there is only one address space available internationally for what could be hundreds of legitimate suitors'.[28]

  27. The second important reason for dispute between the two is that while the quality of distinctiveness[29] is required for Trademarks to be granted no such association of distinctiveness is required in the grant of a DN. Certain inherent qualities of distinctiveness have to be present in a trademark for it to be registered. This quality of distinctiveness may be acquired as well over a period of time through use. No such distinct association with a product or service is required while registering a domain name. What follows then is that the mere use of a domain name similar or substantially similar or confusingly similar to a trademark will not constitute an infringement of that trademark in law. Infringement of a trademark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registered, uses the same mark or a deceptively similar mark. This easy use of a trademark as a domain name has given rise to innumerable Internet trademark/domain name disputes.

  28. Thirdly, undue advantage that accrues to DN over TM, which spills over from the first point, is when a name is registered as both a DN as well as a TM but by different legal entities. The person who obtains a TM has invested more than just money in the name There is an association of the name to the goods or services, there is an association to a certain amount of goodwill or reputation that the owner of the registered trademark has built due to the excellence of quality of the good or service. Whereas in the case of a DN, the person who obtains the DN has to pay only a nominal fee towards the registration of the DN. This gives DN an undue advantage over TM, which then proves to be extremely expensive and unfair as compared to DN.

  29. Fourthly, and one of the most contentious issue is the problem of infringement. For infringement of a TM to occur the name/mark/symbol has to be put into 'use as a trademark'. An association has to be established between the use of the name and the purpose for which it is being used. As a consequence of the classification of goods and services under the trademark regime a domain name identical with a trademark will not infringe the trademark if the use of the domain name is in relation to entirely unrelated goods or services. The parameters that define infringement of a trademark are very stringent and therefore the mere use of a DM similar or substantially similar or confusingly similar to a trademark does not constitute infringement. This clearly puts TM at a disadvantage as compared to DN in proving infringement.

    Types of disputes between Domain Names and Trademarks

  30. From the foregoing paragraphs one can safely conclude that obtaining a DN registration is a comparatively easier task than obtaining a trademark registration. But a DN is precious because it is rare and a TM is precious because it is expensive and has a lot of goodwill associated with it. Protection of both becomes imperative and the possibility of conflict between DN and TM is increased dramatically on the Internet because of the absolute and international nature of DN.

  31. There are three common types of disputes between DN and TM:[30]

    1. DN identical or confusingly similar to an existing TM

      One of the most common types of disputes where the TM owner discovers that a DN has been registered that is the same or deceptively similar to the TM owned by him. In such a situation the TM owner should send a notice of the alleged infringement to the DN owner. The dispute arises when the alleged infringing party refuses to relinquish the DN. Trademark infringement will depend on whether the DN is being used as a TM. Mere registration of a DN is not 'use as a TM'.[31]

    2. Two independent companies with the same TM seeking the same DN

      This kind of a dispute cannot be resolved by the DN registration policies, as, if the purely 'first-come, first-served' principle is applied then whoever applies first shall acquire the DN. However under the UDRP both the parties would lay claim to the DN effectively so the dispute would have to be resolved by resorting to litigation. As was evidenced in Roadrunner Computer Systems Inc v Network Solutions Inc,[32] in which Roadrunner Computer Systems obtained the DN 'roadrunner.com' and Time Warner complained of the use of the DN under the NSI's Dispute Policy.

    3. DN 'hijacking'

      The most common type of disputes to date under the DNS. DN 'hijacking' is more commonly known as 'cyber squatting' or 'cyber piracy'. A cyber squatter is someone who registers a DN on account of its similarity to a famous name, brand or a TM. Usually this is done to extort money from the owner of the TM or to earn commercial gains from the deceptive use of a name. The first such case to be decided by the Administrative Panel, WIPO Arbitration and Mediation Center was the case involving the DN 'worldwrestlingfederation.com'.[33]

    Dispute Resolution under the DNS

  32. ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) on August 26th, 1999, with the implementation documents being approved on October 24th, 1999. All registrars in the .com, .net, and .org TLD follow the UDRP. The purpose of the UDRP is to set out procedures for the resolution of disputes between the DN customer and any third party (usually a TM owner) other than the registrar of the DN. Disputes that are TM-based or DN based are resolved either by court action, agreement or arbitration before a registrar will cancel, suspend or transfer a DN. The UDRP is implemented through several dispute-resolution service providers approved by ICANN. To date 4,819 proceedings have been commenced under the policy involving 8,262 DN. Of those proceedings 4,441 have already been resolved.[34]

  33. Recently ICANN has announced the addition of a new dispute resolution provider that will offer a regionally accessible capability for the Asian community. The Asian Domain Name Resolution Center (ADNDRC) has been authorized under ICANN's UDRP. ADNDRC will begin accepting disputes on 28 February 2002, through the offices of its centers in Beijing and Hong Kong. It is the belief of the CEO of ICANN that dispute resolution would be 'easier for people and institutions from Asian countries' with the addition of ADNDRC.[35]

  34. ADNDRC joins three other dispute resolution providers that have been designated by ICANN: New York-based (CPR) Center for Dispute Resolution; Minneapolis-based National Arbitration Forum (NAF); and Geneva-based World Intellectual Property Organization (WIPO). North American-based provider, eResolution, ceased operations in December 2001 due to economic reasons.

  35. WIPO is the first dispute-resolution service provider and one of the most widely used. It has resolved enumerable DN/TM disputes. In fact the U.S. Government asked WIPO to conduct a consultative study on DN/TM issues. On April 30, 1999 WIPO submitted the 'Internet Domain Name Process: Final Report, "The Management of Internet Names and Addresses: Intellectual property Issues"' to ICANN.

    The Dispute Resolution Process

  36. When the TM owner believes that his TM is being infringed by the use of a DN by another party then he has two options before him. He can either go to the courts by filing a complaint before a court of proper jurisdiction, or, in case of abusive registration he can seek relief under the UDRP by submitting a complaint to an approved dispute resolution service provider.

  37. Taking the matter to the courts can be a very expensive proposition on two counts. First, since the complaint has to be filed before a court of proper jurisdiction, the complainant may have to file before several courts in order to get appropriate relief, keeping in perspective the international nature of a DN. Second, litigation takes its own course and may prove to be expensive especially if it is protracted.

  38. Therefore for timely and effective relief disputes based on D research paper N/TM complainants would be well advised to seek relief under the UDRP, which is a form of alternative dispute resolution. 'The results of UDRP proceedings indicate that cases involving cyber pirates and others acting in bad faith are quickly resolved in a fair, efficient, and cost-effective manner, and that domain name registrants have prevailed when their legitimate rights to the domain name have been established'.[36]

    Effectiveness of UDRP with the introduction of the new TLD categories

  39. The unknown always raises doubts and the new TLDs have created their own share of uncertainties. Questions have been raised and concern expressed over the effectiveness of the UDRP under the new scenario, with the UDRP now having to cater for several new and different TLDs. This has 'prompted some in the DNSO Business Constituency to propose that the policy be evaluated and overhauled before any new TLDs are introduced'.[37] Suggesting a multi-phase process as one of the options proposed under which there would be several pre-requisites to the introduction of new TLDs.

  40. Phase I would involve a "rapid evaluation" of the first year of operation of the UDRP (implemented 24 October 1999), which would be extended with effect from 1st October 2000 "to evaluate claims for ownership transfer based on the relevance of a well-known trademark to a charter gTLD." On the basis of the UDRP successfully meeting its objectives, the evaluation process would proceed to phase II. Phase II would involve the Introduction of 'new gTLDs in a gradual but systematic way as outlined, testing each proposed gTLD against the principles'.[38]

  41. Given the success of the UDRP in existing open TLDs (like .com, .net and .org), the intellectual property community, registrars, prospective registry administrators, and other interested parties should turn their cooperative efforts towards ensuring application of the UDRP in the new open TLDs and finding ways in which the UDRP can be expanded in order to cover intellectual property violations that occur in the new chartered or restricted TLDs.[39]

  42. This handle-with-kid-gloves approach almost suggests that the UDRP has provided only limited redress against intellectual property violation. On the contrary, a study of the WIPO DN case decisions site shows how proficient the UDRP process has been. This is further evidenced from the ready acceptance of the UDRP under the new TLDs. Cases involving disputes concerning the new TLDs have been filed and decided upon under the WIPO dispute resolution process.[40] There has been a spate of 'Sunrise' challenges[41] under the .info TLD, which have taken recourse to the WIPO dispute resolution process.[42]

    PART III

    Impact of new TLD categories on Trademarks

  43. From the preceding discussion one could conclude that the introduction of the new TLD categories would only exacerbate the existing problems between DN and TM and perhaps, increase the disputes sevenfold. This would be a very myopic view of the entire DNS.

  44. To understand the impact of the new TLD categories on TM we need to firstly examine and understand the modified DN registration process because of pre-existing TM and the consequent intellectual property concerns. Secondly, we need to examine the objections that have been raised by certain concerned parties towards specific new TLD categories and evaluate whether these objections are justified. For the said purpose one restricted - .biz and one unrestricted - .info TLD has been taken.

    The " .biz" TLD

  45. The .biz TLD category is one of the seven new categories that have been introduced into the DNS. The .biz is a restricted TLD category open only for commercial and business purposes. .biz names are not intended for exclusively personal or non-commercial purposes.

    The Registration Process

  46. Under the .biz TLD a fee based 'Intellectual Property Claim Service' had been set up and was in operation for a period of roughly two months, starting from late May,'01 till the beginning of July, '01.[43]

  47. The purpose of this service was to enable businesses to make trademark claims before the application process was opened. Under this service, DN applicants would be notified of a TM owner's claim when they submitted an application for a claimed name. If after the notification the DN applicant decided to go ahead with the registration for the claimed name then the registry would notify the owner of the TM claim and provide for an opportunity to challenge the DN registration using an administrative dispute resolution procedure.

    Evaluation

  48. An analysis of this registration process makes one wonder whether it was the honest intention of the registry service to nip the bud of dispute. This service was only a form of a 'warning system', as it provided the businesses making TM claims a window of opportunity to challenge the registration for a claimed name; it did not stop the 'burglary' itself as it did not prevent the DN registrant from going ahead with the registration of a claimed name. The Internet is ravaged with DN and TM disputes. It should have been the prime objective of the registry to limit potential disputes by not entertaining DN registration applications for trademark claims submitted with them. Where "Prospective domain name registrants are strongly encouraged to verify, prior to registration, whether the domain name which they seek to register corresponds to a mark in which third parties have rights" it is disappointing that the registry only provides a 'window of opportunity' and nothing more substantial than that.

    Objections raised by Interested Parties

    Case I

  49. The lawyers of Shepher Corporation d/b/a 'biz.com' made representations to ICANN claiming that their client:

    ICANN's reply to the lawyers of Shepher Corporation stated that:

    Case II

  50. The lawyers of Economic Solutions, Inc. (ESI) made representations to ICANN claiming that their client ESI:

    This letter raised two issues, the issue concerning the exclusivity of ESI's marketing rights of .bz ccTLD and the TM rights issue. ICANN maintained,

  51. Judicial decisions support this conclusion as well. In Image Online Design, Inc. v. CORE Ass'n,[49] the plaintiff asserted trademark rights in the name "web" as applied to the service of registering domain names under the top-level domain .web. The court granted summary judgment to the defendants, finding as a matter of law that there could be no trademark rights in the name "web" based on its use in connection with the provision of registration services under the .web domain: "In sum, Plaintiff's use of the mark .web in connection with domain name pre-registration services does not confer trademark protection. As a gTLD, .web does not indicate the source of the services; instead, it indicates the type of services"'.

  52. It went on to state that because there are no trademark rights in a top-level domain (.web) based on provision of registration services in that same top-level domain, it is plain that there can be no trademark rights over domains (.biz or .ebiz) based on the provision of registration services within a different top-level domain (.bz).[50] Evaluation: - Unlike the 'registration process' where the system lacked in truly protecting the rights of the TM owners, the concerns raised by 'interested parties' were quite emphatically and effectively refuted by ICANN.

  53. Detractors opposed to the introduction of the new TLDs said that though the larger interest of the Internet Community has to be put first, it does lead to the dilution of TM by the introduction of the new TLDs as it is like having some TM in a family of TM. The TM law holds that anything that would be considered to be in the family of marks has to be owned by the same entity, otherwise it causes confusion. Not only this but they insinuated that the value of the DN itself would be affected, as they doubted the ability of the search engines and browsers to effectively pick up all the new DN.[51]

  54. The fact that substantial legal authority holds that one does not gain trademark or service-mark rights over use of a top-level domain by virtue of provision of registration services within that domain is a very important point to be taken note of as gTLDs only define the type of service and not the source of service. The requirement of TM is that the source of the good and services be identifiable.

  55. One is tempted to draw a parallel between the TM system of classification and the DNS. Just like the TM classification system has several classes of goods and services under which registration can be sought similarly the DNS has various categories under which registration can be sought. Only under the TM system the source of the good or service is of essence, but under the DNS the TLD describes the type of good or service and not the source. But it is still a system of identification. Besides this the DNS needs to be regulated as effectively and efficiently as the TM system of classification, which is being done now with the growing awareness both on the part of the users as well as the service providers.

    The ".info" TLD

  56. The .info TLD category is the second of the seven new categories that have been introduced into the DNS. This is an unrestricted TLD category, open to any business or person to register for any purpose.

    The Registration Process

  57. The .info registry has also provided for Intellectual Property safeguards by offering a "30 day "sunrise" period during which anyone with a national TM"[52] can apply for a DN same as the TM. To maintain fairness during the "sunrise" period, registrars will first collect applications and deliver them to Afilias who will then through a random selection process select applications from each registrar's batch. There will be a challenge procedure administered by WIPO through which third parties may challenge these sunrise period registrations.

    Evaluation

  58. Though the provision of the "sunrise" period is an improvement on the "first-come, first-served" policy of the earlier unrestricted TLDs, it is still not foolproof. The random selection process leaves much to be desired as it leaves too much to chance and some of the loopholes of the previous process, namely, verification of details of applicants have still not been plugged.

    Problem of Name Reservation

  59. Under the .info TLD a unique problem has arisen, that of reservation of 327 names, which have been identified pursuant to the Montevideo ICANN Board resolution 01.92.

  60. Though Afilias (the .info registry operator) has successfully reserved 129 names on behalf of ICANN. The remaining 198 names are subject to challenges under the rules of the .INFO "sunrise" period. About 160 country names have been marked for challenge by Afilias; third parties prior to 26 December 2001 challenged 17 country names. Upon adjudication of these 17 challenges by WIPO, if those challenges result in the registrations being transferred to the challenger, Afilias intends to conduct a review to determine whether these registrations also should be subject to a "challenge of last resort".

  61. Evaluation This is but one of the problems that will arise with the introduction of the new TLDs, especially unrestricted TLDs open to all for registration of a DN for any purpose and will be fraught with dangers of 'registration in bad faith'. Though again, the registration of geographic names is not a new problem. One of the first such dispute cases was the case involving the DN 'portofhelsinki.com'.[53]

    CONCLUSION

  62. In the final analysis despite the shortcomings that may plague the introduction of the new TLD categories, it cannot be denied that the creation of new DN will help relieve current scarcities for "good" names. The creation of choice and diversity supports the belief that the Internet should be an open system available to all.

  63. The extent of the impact on TM will depend on the type of TLD category. Open category TLDs will give more room for DN/TM disputes while restricted TLD will limit the scope of disputes as the categories are for specific purpose and so the parameters for dispute will get limited. However some have reasoned that more protections are appropriate in a commercial TLD than in one designated for non-commercial uses. Amongst the suggested methods, one method of protecting intellectual property that has been proposed is to prohibit the registration of famous and well-known trademarks. However no consensus has been reached for the compilation of a single list of internationally famous and well-known marks. Along with its recommendation for varying intellectual-property protections depending on the type of TLD, the Names Council also recommended that, as a minimum, the basic methods for enforcing infringed rights should always apply.

  64. No heightened adverse impact of the introduction of the new TLDs on TM has been reported or documented as yet. Reasons being, First, the cumulative impact of all the studies and reports conducted under the auspices of ICANN have amplified the concern that there may be special risks to Intellectual Property in the launch phase of the new TLDs. This has led to special emphasis being given to the protection of Intellectual Property during the start-up period of the launch of the new TLDs. Second, doubts raised about the increased dilution of TM with the introduction of the new TLDs are misplaced, as the additional TLDs do not add a new dimension to the problem, as it already exists. The volume of disputes will increase as the number of users increases. It is merely a matter of total numbers, not a percentage increase in disputes.

BIBLIOGRAPHY

Acts & Treaties

The Trade Marks Act 1999 (Indian).

Trademarks Act 1995 (Cth) (Australian) available at http://www.austlii.edu.au/au/legis/cth/num_act/tma1995121

WIPO, Paris Convention for the Protection of Industrial Property of March 20,1883 (as revised at Brussels on 14 December 1900, at Washington on 2 June 1911, at The Hague on 6 November 1925, at London on 2 June 1934, at Lisbon on 31 October 1958, and at Stockholm on 14 July 1967, and as amended on 2 October 1979. http://www.wipo.int/clea/docs/en/wo/wo020en.htm

Books & Reports:

B. L. Wadera Dr., Intellectual Property Law Handbook, Law relating to Patents, Trademarks, Copyright, Designs and Geographical Indications. 2nd Revised Edition 2000. Published by Universal Law Publishing Co. Pvt. Ltd.

Phillip Hourigan, Going Digital 2000: Legal Issues for E-Commerce, Software and the Internet, Chapter 9, "Domain Names and Trademarks: An Australian Perspective".

Nandan Kamath, A Guide to Cyberlaws: Law relating to Computers, Internet & E-Commerce. Second Edition 2000. Published by Universal Law Publishing Co. Pvt. Ltd.

ICANN, Interim Report of the New TLD Evaluation Process Planning Task Force, posted 3 December 2001. , http://www.icann.org/committees/ntepptf/interim-report-03dec01.htm>

Interim Report of the Second WIPO Internet Domain Name Process, "The Recognition of Rights and the use of Names in the Internet Domain Name System", April 12, 2000. <http://wipo2.wipo.int>

Second WIPO Internet Domain Name Process, Summary of Comments received on request for comments on Terms of reference, Procedures and Timetable for the Second WIPO Internet Domain Name Process. http://wipo2.wipo.int

WIPO Internet Domain Name Process: Final Report, "The Management of Internet Names and Addresses: Intellectual property Issues", April 30, 1999. <http://wipo2.wipo.int>

Policy Statements

ICANN, Uniform Domain Name Dispute Resolution Policy, Policy Adopted: August 26, 1999, Implementation Documents Approved: October 24, 1999. <http://www.icann.org/udrp/udrp-policy-24oct99.htm>

ICANN, Rules for Uniform Domain Name Dispute Resolution Policy, Policy Adopted: August 26, 1999, Implementation Documents Approved: October 24, 1999. http://www.icann.org/udrp/udrp-rules-24oct99.htm <http://www.icann.org/udrp/udrp-policy-24oct99.htm>

Internet Names Worldwide, Allocation Policy for com.au Domain Names. <http://www.inww.com/policies/comaupolicy.php3>

Articles & Postings on the WWW

Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen, "Marketing your website: Legal issues relating to the allocation of Internet Domain Names", UNSW Law Journal, http://www.austlii.edu.au/au/journals/UNSWLJ/1998/48.html

Dan L. Burke, Trademarks along the Infobahn: A first Look at the Emerging Law of Cybermarks, 1 RICH J. L. & TECH. 1 (1995) http://law.richmond.edu/jolt/v1i1/burk.html

Sandra Mingail, "The Name Game: New Domain Name Categories Spur Heated Debate", Canada Law Book Inc. 2001, http://www.canadalawbook.ca/headline70_arc.html

ICANN, New TLD Program, December 12, 2001, http://www.icann.org/tlds/

ICANN, Melbourne Meeting Topic: New TLD Agreements, posted: 26 February 2001, http://www.icann.org/melbourne/new-tld-agreements-topic.htm

ICANN, "Comments of Intellectual Property Constituency on New TLDs", 24 August 2000, http://www.icann.org/tlds/ipc-comment-24aug00.htm

ICANN, General Counsel's Analysis of .aero Sponsored TLD Agreement, posted: 24 November 2001, http://www.icann.org/tlds/agreements/aero/report-aero-tld-24nov01.htm

ICANN, ICP-3: A Unique, Authoritative Root for the DNS, posted: 9 July 2001, http://www.icann.org/icp/icp-3.htm

ICANN, ICP-2: Criteria for Establishment of New Regional Internet Registries, accepted: 4 June 2001. http://www.icann.org/icp/icp-2.htm

ICANN, "Letter to John M. Cone, Lawyer for Shepher Corporation d/b/a 'biz.com', 27September 2000, http://www.icann.org/tlds/correspondence/biz.com-letter-27sep00.htm

ICANN, "Letter from John M. Cone, Lawyer for Shepher Corporation d/b/a 'biz.com', 23 October 2000, http://www.icann.org/tlds/correspondence/biz.com-response-23oct00.htm

ICANN, "Letter from Anthony R. Kinney, Lawyer for Economic Solutions, Inc. (ESI)", 26 September 2000, http://www.icann.org/tlds/correspondence/bz-letter-26sep00.htm

ICANN, "Letter to Anthony R. Kinney, Lawyer for Economic Solutions, Inc.(ESI)", 23 October 2000, http://www.icann.org/tlds/correspondence/bz-response-23oct00.htm

ICANN, "Minimum Safeguards for the Introduction of New TLDs - Joint Statement from the Business and Intellectual Property Constituencies", 24 August 2000, http://www.icann.org/tlds/bc-safeguards-statement-sep00.htm

ICANN, "New Dispute Resolution Provider in the Asia Pacific Region", Announcement, December 3, http://www.icann.org/announcements/announcement-03dec01.htm

ICANN, "Yokohama Meeting Topic: Introduction of New Top-Level Domains", posted: 13 June 2000. http://www.icann.org/yokohama/new-tld-topic.htm

Cases

Image Online Design, Inc. v. CORE Ass'n, case No. CV 99-11347 RJK (C.D. Cal. June 22, 2000).

Juno Online Services, LP v Juno Lighting, Inc. 979 F Supp 684.

Lockheed Martin Corp v NSI 44 USPQ 2d 1865, 1871-2 (CD Cal1997)

Roadrunner Computer Systems Inc v Network Solutions Inc, Civil Action 96-413-A, filed 26 March 1996

WIPO Domain Name Dispute Cases

WIPO case number: D 99-0001, Domain Name: 'worldwrestlingfederation.com', Complainant: World Wrestling Federation Inc., Respondent: Michael Bosman, Decision: Transfer.

WIPO case number: D 2000-0210, Domain Name: 'juliaroberts.com', Complainant: Julia Fiona Roberts, Respondent: Russell Boyd, Decision: Transfer.

WIPO case number: D 2000-1532, Domain Name- gTLD: 'brucespringsteen.com', Complainant: Bruce Springsteen, Respondent: Jeff Burgar and Bruce Springsteen Club, Decision: Denied.

WIPO case number: D 2001-0002, Domain Name: 'portofhelsinki.com', Complainant: Port of Helsinki, Respondent: Paragon International Projects Ltd., Decision: Denied.

WIPO case number: DBIZ 2001-00002, Domain Name: 'fifa.biz', Complainant: Federation Internationale de Football Association, Respondent: Neocos, Decision: Transfer.

NOTES

[1] Dan L. Burke, "Trademarks along the Infobahn: A first Look at the Emerging Law of Cybermarks", 1 RICH J. L. & TECH. 1 (1995) http://law.richmond.edu/jolt/v1i1/burk.html

[2] Ibid.

[3] Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen, "Marketing your website: Legal issues relating to the allocation of Internet Domain Names", UNSW Law Journal. http://www.austlii.edu.au/au/journals/UNSWLJ/1998/48.html, pages 1-3.

[4] ICANN, ICP-3: A Unique, Authoritative Root for the DNS, posted: 9 July 2001, http://www.icann.org/icp/icp-3.htm page 1 para 2.

[5] Phillip Hourigan, Going Digital 2000: Legal Issues for E-Commerce, Software and the Internet, Chapter 9, "Domain Names and Trademarks: An Australian Perspective", page 140.

[6] WIPO Internet Domain Name Process: Final Report, "The Management of Internet Names and Addresses: Intellectual property Issues", page 8 para 5.

[7] ICANN, 'ccRegistrars.com' - Unrestricted ccTLDs",http://www.ccRegistrars.com/unrestricted.html

[8] WIPO Internet Domain Name Process: Final Report, "The Management of Internet Names and Addresses: Intellectual property Issues", page 9, para 8& 9.

[9] ICANN, "New TLD Program", December 12, 2001, http://www.icann.org/tlds/, page 2.

[10] ICANN, "ICANN Accredits New Top-Level Domains- .biz and .info", Announcement 15 May 2001.

[11] Internet Names Worldwide, "Allocation Policy for com.au Domain Names", <http://www.inww.com/policies/comaupolicy.php3> [12] ICANN, "Minimum Safeguards for the Introduction of New TLDs - Joint Statement from the Business and Intellectual Property Constituencies", 24 August 2000, http://www.icann.org/tlds/bc-safeguards-statement-sep00.htm

[13] ICANN, "Yokohama Meeting Topic: Introduction of New Top-Level Domains", posted:

[13] June 2000, http://www.icann.org/yokohama/new-tld-topic.htm

[14] Ibid.

[15] ibid

[16] ibid.

[17] ICANN, Interim Report of the New TLD Evaluation Process Planning Task Force, posted December 3 2001, http://www.icann.org/committees/ntepptf/interim-report-03dec01.htm, page 3 para 4.

[18] Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen, above n. 2, page 5.

[19] WIPO, "Introduction to Trademark Law and Practice - the basic concepts", http://wipo.org, page 5.

[20] The Trade Marks Act, 1999(Indian), Articles 27, 28, & 29 and the Trademarks Act 1995 (Cth). (Australian), Part 3 sec.

[20] and Part 12 secs. 120, 126 &128.

[21] Paris Convention for the Protection of Industrial Property and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

[22] The Trade Marks Act, 1999(Indian), Article 7 and the Trademarks Act 1995 (Cth) (Australian), reg. 3.1 and Sch 1.

[23] Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen, above n. 2, page 6.

[24] For full text read WIPO case number: D 2000-1532, Domain Name- gTLD: 'brucespringsteen.com', Complainant: Bruce Springsteen, Respondent: Jeff Burgar and Bruce Springsteen Club, Decision: Denied.

[25] For full text read WIPO case number: D 2000-0210, Domain Name: 'juliaroberts.com<', Complainant: Julia Fiona Roberts, Respondent: Russell Boyd, Decision: Transfer.

[26] The panelists were of the opinion that Bruce Springsteen still had the DN 'brucespringsteen.net' available to him!

[27] ICANN, Uniform Domain Name Dispute Resolution Policy, Policy Adopted: August 26, 1999, Implementation Documents Approved: October 24, 1999. http://www.icann.org/udrp/udrp-policy-24oct99.htm , page 2.

[28] Phillip Hourigan, above n. 4, page 148.

[29] The Trade Marks Act, 1999(Indian), Article 29(2) and The Trademarks Act 1995 (Cth) (Australian), Section 120 (2).

[30] Brian Fitzgerald, Leif Gamertsfelder and Tonje Gulliksen, above n. 2, pages 6-10.

[31] Lockheed Martin Corp v NSI 44 USPQ 2d 1865, 1871-2 (CD Cal1997); Juno Online Services, LP v Juno Lighting, Inc. 979 F Supp 684.

[32] Civil Action 96-413-A, filed 26 March 1996, page 8.

[33] WIPO case number: D 99-0001, Domain Name: 'worldwrestlingfederation.com', Complainant: World Wrestling Federation Inc., Respondent: Michael Bosman, Decision: Transfer.

[34] ICANN, "New Dispute Resolution Provider in the Asia Pacific Region", Announcement, December 3, http://www.icann.org/announcements/announcement-03dec01.htm, page 2 para 5.

[35] Ibid., page 1.

[36] ICANN, "Intellectual Property Protection in the New TLDs", Intellectual Property Constituency of the DNSO, August 24 2000, paragraph 1. B.

[37] ICANN, "Minimum Safeguards for the Introduction of New TLDs", Joint Statement from the Business and Intellectual Property Constituencies, 24 August 2000, http://www.icann.org/tlds/bc-safeguards-statement-sep00.htm

[38] ICANN, "Yokohama Meeting Topic: Introduction of New Top-Level Domains", posted: June 13 2000, http://www.icann.org/yokohama/new-tld-topic.htm

[39] ICANN, "Comments of Intellectual Property Constituency on New TLDs", posted: 24 August 2000.

[40] STOP complaints in .biz TLD of which following is one such case: WIPO case number: DBIZ 2001-00002, Domain Name: <fifa.biz>, Complainant: Federation Internationale de Football Association, Respondent: Neocos, Decision: Transfer.

[41] 'Sunrise' challenges is explained under '1. The Registration Process'.

[42] Sunrise challenges in .info TLD, http://arbiter.wipo.int/domains/decisions/2001/dinfo00000-00199.html

[43] ICANN, "ICANN Accredits New Top-Level Domains- .biz and .info....", Announcement, May 15, 2001, page 2.

[44] ICANN, "Letter from John M. Cone, Lawyer for Shepher Corporation d/b/a 'biz.com', September 27 2000, http://www.icann.org/tlds/correspondence/biz.com-response-27sep00.htm

[45] ICANN, "Letter to John M. Cone, Lawyer for Shepher Corporation d/b/a 'biz.com', October 23 2000, http://www.icann.org/tlds/correspondence/biz.com-response-23oct00.htm

[46] ICANN, "Letter from Anthony R. Kinney, Lawyer for Economic Solutions, Inc. (ESI)", September 26 2000, http://www.icann.org/tlds/correspondence/bz-letter-26sep00.htm

[47] ICANN, "Letter to Anthony R. Kinney, Lawyer for Economic Solutions, Inc. (ESI)", October 23 2000, http://www.icann.org/tlds/correspondence/bz-response-23oct00.htm

[48] Ibid.

[49] Case No. CV 99-11347 RJK (C.D. Cal. June 22, 2000).

[50] ICANN, "Letter to Anthony R. Kinney, Lawyer for Economic Solutions, Inc. (ESI)", October 23 2000, http://www.icann.org/tlds/correspondence/bz-response-23oct00.htm

[51] Sandra Mingail, "The Name Game: New Domain Name Categories Spur Heated Debate", Canada Law Book Inc. 2001, http://www.canadalawbook.ca/headline70_arc.html

[52] ICANN, "ICANN Accredits New Top-Level Domains- .biz and .info...", Announcement, May 15 2001, page 2.

[53] WIPO case number: D 2001-0002, Domain Name: 'portofhelsinki.com', Complainant: Port of Helsinki, Respondent: Paragon International Projects Ltd., Decision: Denied.

AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.austlii.edu.au/au/journals/MurdochUeJlLaw/2003/6.html