The advent of the Domain Name System has led to attempts by
trademark holders to enforce their rights over domain names that are
similar or identical to their existing trademarks, particularly by
seeking control over the domain names at issue. As with dilution
protection, enforcing trademark rights over domain name owners involves
protecting a trademark outside the obvious context of its consumer
market, because domain names are global and not limited by goods or
service.
This conflict was more easily resolved when
the domain name user actually used his website to compete with the
trademark owner. Cybersquatting, however, involves no such competition,
but instead an unlicensed user registering the trademark as a domain
name in order to pressure a payoff (or other benefit) from the lawful
mark owner. Typosquatters—those registering common misspellings of
trademarks as domain names—have also been targeted successfully in
trademark infringement suits.
This clash of the new
technology with preexisting trademark rights resulted in several high
profile decisions as the courts of many countries tried to coherently
address the issue (and not always successfully) within the framework of
existing trademark law. As the website itself was not the product being
purchased, there was no actual consumer confusion, and so initial
interest confusion was a concept applied instead. Infringing domain
names were analogized to a sign identifying one store but falsely
placed in front of another, in the hopes that customers will in the end
not care that they were duped or will at least give up on trying to
reach the right store.
Most courts particularly
frowned on cybersquatting, and found that it was itself a sufficiently
commercial use (i.e., "trafficking" in trademarks) to reach into the
area of trademark infringement. Most jurisdictions have since amended
their trademark laws to address domain names specifically, and to
provide explicit remedies against cybersquatters.
This
international legal change has also led to the creation of ICANN
Uniform Dispute Resolution Policy and other dispute policies for
specific countries (such as Nominet UK's DRS) which attempt to
streamline the process of resolving who should own a domain name
(without dealing with other infringement issues such as damages). This
is particularly desirable to trademark owners when the domain name
registrant may be in another country or even anonymous.
Registrants
of domain names also sometimes wish to register the domain names
themselves (e.g., "XYZ.COM") as trademarks for perceived advantages,
such as an extra bulwark against their domain being hijacked, and to
avail themselves of such remedies as confusion or passing off against
other domain holders with confusingly similar or intentionally
misspelled domain names.
As with other trademarks,
the domain name will not be subject to registration unless the proposed
mark is actually used to identify the registrant's goods or services to
the public, rather than simply being the location on the Internet where
the applicant's web site appears. Amazon.com is a prime example of a
protected trademark for a domain name central to the public's
identification of the company and its products.
Terms
which are not protectable by themselves, such as a generic term or a
merely descriptive term that has not acquired secondary meaning, do not
become registrable when a Top-Level Domain Name (e.g. dot-COM) is
appended to it. Examples of such domain names ineligible for trademark
protection would be "SOFT.COM" (merely descriptive when applied to a
product such as facial tissue), or "BANK.COM" (generic for banking
services).
