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Contents
A recent development in this respect is the controversy over the allocation of domain names. All sites on the WWW have host identifiers known as domain names and these usually contain the name of the organisation which runs the site i.e. www.hull.ac.uk or www.microsoft.com(46). Domain names have in the past been allocated on a first come first served basis by a US based body called InterNIC(47). The controversy lies in whether domain names are, or should be, subject to trademark law. For example, in the US, Adam Curry, a former MTV VJ engaged in litigation with MTV over whether he could use the domain name mtv.com(48). Other problems have arisen when companies have registered domain names containing their competitors' names or brand names(49), or when individuals have registered domain names containing the names or brands of major firms and then attempted to hold those firms to ransom(50). However, the question now arises as to whether trademark law is being abused by companies that wish to have a certain domain name that is already owned by an other individual or business, and which does not appear to be being misused.
Here, for example are extracts from a letter sent to a US member of the cyberia-l mailing list by US attorneys representing a firm which felt its trademark name was being misused(51). Some material has been deleted or omitted.
[material omitted]
Our firm serves as counsel for [material deleted] which owns and publishes Offshore magazine. [material deleted] first registered its trademark "Offshore" with the United States Patent and Trademark Office under Registration [material deleted] on December 12, 1967. Over the past 28 years [material deleted] has expended substantial amounts of time and money to establish and promote the "Offshore" name throughout the world. It has come to our attention that you have registered the name "Offshore.com" as a domain name on the Internet. It is out opinion that the unauthorized use of the trade name "Offshore" violates [material deleted]'s rights to the protected use of its trademark under federal and state law. Your use of the domain name "Offshore.com" as an Internet on-line computer address is trademark infringement in violation of 15 U.S.C. P1114. It is further likely to cause confusion as to the source or sponsorship of such Internet address in violation of Section 43(a) of the Lanham Act and common law. Under general principles of trademark law, it is irrelevant whether Frissell Associate had the intent to infringe on [material deleted] mark. Liability for trademark infringement depends not on intent, but on the likelihood that the similar trademark will cause confusion. Obviously, the potential for confusion inherent in Frissell Associates' use of [material deleted]'s mark is substantial. Accordingly, unless we receive written representation from you by [material deleted] that Frissell Associates will cease and desist from all use of the name "Offshore," we have been instructed to commence legal action against Frissell Associates in order to assert and affirm [material deleted]'s right to its protected use of the "Offshore" trademark, and to terminate the confusion that results from your unauthorized use of "Offshore" in the Internet. Such lawsuit would include demands for injunctive relief, money damages for lost profits, costs, and attorneys' fees. While it is [material deleted]'s desire to attempt to avoid litigation to resolve this matter, [material deleted] cannot afford to allow confusion in the marketplace or among readers and advertisers of "Offshore."
[material omitted]
The problem here lies not so much with the concept of whether trademark law can be used with regard to domain names, but rather whether it should. It is arguable that in stretching IPR concepts to deal with new technologies etc. we reach the point that they become so complex that we forget their original rationale, which may be very different from the interpretations that we now seek to place on them. Indeed, by attempting to fit yet another technology under an existing IPR, we risk making a mockery of the law - the fumblings of legislature, courts and academia with the issue of copyright and computer programs being one example, the issue of copyright in digital works potentially being another. It is possible to make them fit within those existing IPR categories, but only at the expense of coherency in, and enforceability of, the law(52).
There are attractions to the use of trademark law, particularly to deal with the problem of individuals registering names solely to hold businesses to ransom, and in such cases, the concepts of fair use and "passing off" would seem to be workable and indeed desirable. However, in the letter cited above, Frizzell Associates were using <www.offshore.com> with regard to offshore financial centres. The complainants, by contrast, appear to be concerned with the drilling business. It is difficult therefore to see why the complainants should have a right of action under trademark law. The current holder of the domain name "offshore.com" is not 'passing off' his site as being the complainant's, he is not in the same business, and any confusion is likely to last only until an individual visits the WWW/FTP etc. site. An ASCII server address would also appear to lack the visual identifiers that one would usually associate with a trademark.
To use a hypothetical example, if a company called "MacDonalds Shoes", run by an individual of that name, decided in early 1993 to put up a WWW site to advertise their shoe prices, and obtained the domain name <www.macdonalds.com> or <www.macdonalds.org> it is difficult to see why they should then be forced to give it up at a later date to the MacDonalds of hamburger fame. If, however, they called their site <www.macdonalds-burgers.com> or <www.macdonalds-goldenarches.com>, or when you accessed the site, the MacDonalds logo used was a copy of those on a MacDonalds shopfront, or it had the golden arches emblem, there would appear to be grounds for an action for trademark infringement.
Thus, the widely hyped circumstances where someone grabs the domain name of a big firm with the intent to hold them to ransom appear on the wane. What we now see instead are large companies exerting pressure on individuals and businesses, who have legitimately registered domain names, to give up those names, or risk legal action for trademark violation. The problem here lies in the fact that the threat of legal action in many cases would appear to be just that. The larger companies have been slow to pick up on the popularity of the WWW, and now that they have been apprised of that popularity, they wish to own domain names relevant to their business. However, in many cases it is arguable that they have no legitimate right to the domain names they want, as trademark law is not about using the courts to play catch-up in a commercial situation, where due to your own inactivity, you have been left behind. However, the threat of having to defend a legal action by a large firm, with all the attendant costs, will in many cases be sufficient to cause an individual or small business to surrender the domain name regardless of the letter of the law.
This would appear to be an abuse of both the spirit and the letter of trademark law, certainly it would not appear to be in keeping with the traditionally understood rationales for trademark law. In cases like that of the letter above, it is difficult to see any justification in trademark law for forcing the current owner of the domain name <offshore.com> to stop using it. <www.offshore.com> may be a desirable WWW domain name, but trademark law should not be about ensuring that those with the deepest pockets get the attractive names.
45 For an in-depth examination of UK trademark law see Annand, R. & Norman, H. Blackstone's Guide to the Trade Marks Act 1994, Blackstone Press, 1994. Note also the EC Regulation on the Community Trade Mark, Regulation 40/94/EEC, OJ 1994 L11/1, which was finally adopted in December 1993, and entered into force in March 1994. The purpose of the Regulation is to produce a trademark system which would permit trademarks to be valid in the whole of the EC by submitting an application to the Community Trade Mark Office, thus creating one unified legal procedure. This was seen by the Commission as the only means of ending the problems caused by differing national laws. However, as Member States were unwilling to abolish national marks, the Commission has been forced to accept a system in which, in the short term at least, Community trade marks will coexist with existing national trade marks. Community trademarks may only be obtained by registration.
46 Domain names provide a human friendly interface to the actual machine readable domain addresses which appear thus <204.254.209.2>. Thus if you wanted to access Hull University's WWW server you could type http://www.hull.ac.uk/ or http://150.237.176.8.
47 Registering a domain name used to be free, but now costs $50 per year.
48 A court decision was given in MTV Networks v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1994), but the effective result was an agreement between the parties that was not disclosed to the public - however, MTV now operates a WWW page at the domain name www.mtv.com.
49 e.g. the US telecommunications firm Sprint registered mci.com, the name of one of its rivals.
50 e.g. the dispute over the domain name mcdonalds.com, which was turned over to McDonalds by its owner in exchange for a donation to local schools.
51 E-mail message of Mon, 13 Nov 1995 18:29:49, sent by Duncan Frissell frissell@panix.com to recipients of list cyberia-l@warthog.cc.wm.edu
52 Although not all commentators agree with this, there are a number of proponents who argue that trademark law is quite suitable for the Internet and WWW. See for instance Burk, D. "Trademarks on the Infobahn: A First Look at the Emerging Law of Cybermarks" See also generally, "Billions registered, but no rules: the scope of trademark protection for Internet domain names" Journal of Proprietary Rights March 1995, and the bibliography on domain names.
53 Where a patent holder does not assert his right until the object of the patent is in common use, at which point the holder then 'surfaces' and demands royalties for the use of the patented object. Another example of this was the purported patent that Compton Multimedia claimed over multimedia in general - a patent which was eventually struck down by the US Patent office.
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Graphics Multimedia Virtual Environments Visualisation Contents