What is a domain name?
A text form of a computer's numeric IP address which is used
to identify it on the part of the Web.
Every computer has a unique IP address (i.e.
194.63.122.400) that can be allocated to
it permanently or temporarily, and the Domain Name System (DNS) maps the text
of the domain names onto the corresponding IP addresses.
The domain name is that part of a website or e-mail address
which follows immediately after the "www" part. In www.brunel.ac.uk the domain name is "brunel.ac.uk".
The master server is operated by Verisign,Inc (Network
Solutions Inc) and subject to the over sight of ICANN (Internet Corporation for
Assigned Names and Numbers)
DOMAIN NAMES’
CLASSES
Classes of domain names types:
• gTLD:
generic top level domains
• CcTLD:
contry code top level domains
• Top
level domain name (TLD) “uk”
• Second
level (SLD) “brunel”: usually includes a business' name or trade mark
DOMAIN NAME: FUNCTIONS
FUNCTION of identifying the company name
• Address:
alphanumeric address
• Identifier:
users will normally expect the SLD to contain or consist of its usual trading name,
company name or other corporate identifier. It indicates the ownership of
websites or the goods or services marketed. (in the traditional trade mark
sense).
Unlike registered trade marks, SLD can be wholly generic or
descriptive and their registration does not confer any statutory right to use
or prevent others' use, but only the limited ability to prevent registration of
identical domain names by third parties.
Who controls the domain name system?
• approximately
300,000 domain names are registered each week.
• Principle: "first-come, first-served"
• No
obligation to use a domain name once registered and failure to use a domain
name will not affect such registration - provided that the renewal fees are
paid.
• Domain
names are registered by different governing bodies around the world.
There are two principal types of domain name registration:
• (1)
international/generic;
• (2)
national or country based.
GENERIC DOMAIN NAME
The US generally uses only the generic registration
system.
This utilises a small set of generic top level domains
(gTLDs) which do not indicate geographical origin, but simply describe the
nature of the organisation owning the name.
• .gov - Governmental
• .com - Commercial/personal
• .mil - Military
• .org - Not-for-profit
• .net - Internet provider
• .info - General information
• .edu - Educational
• .int - International (Red Cross)
The .gov, .edu and .mil gTLDs are restricted to U.S.
applicants only.
The remaining gTLDs can be reserved by any international or
foreign enterprise.
The ".com" gTLD is generally regarded as
the most desirable gTLD for business organisations with any international
aspirations.
ICANN has approved sponsored gTLDs which are run by
independent agencies • .museum - Museums
• .pro - Credentialed professionals and related entities
• .aero - Members of the air-transport industry
• .coop - Cooperative associations
• .asia - Companies, organisations and individuals in the
Asia-Pacific region
• .cat - Catalan language and culture
• .jobs - Employment-related sites
• .tel - Internet-based voice/data/text communication
• .travel - Travel agents, airlines, hoteliers, tourism
bureaus, etc.
• .mobi - Mobile devices and services for them
(…)
• March
1998: creation of the Internet Corporation for Assigned Names and Numbers
(ICANN, former IANA), an international, non-profit, internet organisation based
in the United States. ICANN's brief was to take over responsibility for the IP
address allocation and domain name system.
ICANN’s role
From September 2000, ICANN has gradually assumed total
responsibility for the allocation of IP addresses, the management of the DNS.
There are three entities that serve as advisory bodies to
ICANN:
(1) the Domain Names Supporting Organisation (DNSO);
(2) the Address Supporting Organisation (ASO);
(3) the Protocol Supporting Organisation (PSO).
NEW REGISTERS’ ACCREDIT
An important aspect of ICANN's role is to accredit new
registrars to compete effectively with NSI in the registration of the gTLDs.
Guidelines for new registrars can be found at
http://www.icann.org/icp/icp-2.htm.
Applicants must meet certain criteria to show that they are
capable of acting as registrars, and enter into accreditation agreements with
ICANN by which they agree to follow various practices.
Country specific domains (ccTLD)
Country-specific domains are based on the international
two-letter country code and are known as "ccTLDs".
There are more than 200 national ccTLDs which are
administered by local governments or by private businesses authorised by
government, and all have their own registration policies.
A list of the local registries may be found at
http://www.iana.org/cctld/cctld-whois.htm.
Examples of ccTLDs are as follows: United Kingdom (.uk),
Italy(.it), Germany (.de), Europe (.eu) etc.
DOMAIN NAME
Some countries require both a local contact for domain name
registration and a local company to hold the registration.
UK and Italy: will allow foreign registrants to hold domain
names.
Many national registrars will allow only one domain name per
registrant, others allow multiple domain names.
In UK allocation of TLD ".uk" is conducted by
Nominet U.K. and other third level domain name have been created:
• .co.uk - commercial
• .org.uk - not-for-profit
• .ac.uk - academic
• .gov.uk - government agency
• .ltd.uk - registered limited company
• .plc.uk - registered public limited company
Domain name registration practice
All of the registrars (both national and generic) act
independently and maintain totally separate registers.
Ownership of a domain name will not affect others' rights to
register the identical name on other registers.
The registries have different procedure for application’s
acceptance and qualification criteria, but in no cases are there any check or
examinations for conflicts with existing trade marks, company names or business
names.
Registrars are not entrusted with any legal powers, nor they
can make judicial decisions.
Any decision is up to the applicants who can register domain
names which differ only very slightly from previously registered domain names
or existing trade marks.
Often applicants register as domain names also very close
variations of the company name or trade name ( e.g. pluralised or hyphenated
versions).
No classification system
CYBERSQUATTING
(domain name piracy or domain name hijackers)
Someone intentionally registers a domain name before the
trade mark owner have done so, to prevent the trade mark owner establishing a
website under that name, to oblige the trade mark owner to pay a price to
transfer the name back.
Definition under the U.S. anti-cybersquatting
legislation: registering, trafficking
in, or using a domain name that is identical or confusingly similar to another
trade mark, or dilutes another trade mark, when the person registering or using
the domain name does so with bad faith and intent to profit from the trade
mark.
THE “MC DONALD CASE”
The first leading case involved the domain name
"mcdonalds.com” registered by Mr. Joshua Quittner, a journalist in New
York.
McDonalds Corporation settled the dispute by making a
donation to the charity of Mr Quitt's choice in exchange for the domain name.
In EU countries unlike in the United States, there is no
specific anti-cybersquatting legislation.
There are also cases of conflict where domain names are used
and registered by entities that have no knowledge of a potential claimant's
earlier trade mark rights, and adopt such domain names in good faith.
WITHIN THE SCOPE OF TRADEMARKS
“It would be naïve to think of domain names only as
technical addresses, with no potential for wider characteristics as
identifiers.
It is equally inappropriate to assume that every domain name
is registered for a commercial purpose and therefore potentially falls within
the scope of someone’s registered trade mark.” (G. J H Smith, Internet Law and
Regulation, Sweet & Maxwell)
GROUNDS OF TRADEMARK INFRINGEMENT
Under Trademarks Act 1994
Sec 9 (1) the proprietor has exclusive rights in the
trademark which are infringed by use of such TM in UK without his consent.
Infringements (s.10): likelihood of confusion on the part of
the public
-
Identical TM, identical goods/services
-
similar TM, similar goods/services
-
Identical/similar TM, dissimilar goods/services
(the TM must have a reputation in UK and unfair advantage form such reputation)
-
Use as a TM (in a way that indicates the origin)
-
Use in the course of trade
-
In relation to goods or services
BRITISH TELECOMMUNICATIONS PLC v ONE IN A MILLION LTD
The defendants registered some domain names consisting of
the TM of well-known enterprises including marks&spencer.com;
marks&spencer.co.uk; jsainsbury.com; sainsbury.com; sainsburys.com;
ladbrokes.com; virgin.org; bt.org; and cellnet.net.
The plaintiffs alleged trade mark infringement and
passing-off and filed applications for summary judgment. They all owned
valuable goodwill and reputation in their trade marks in the UK.
The Court granted final quia timet orders (injuctions) and
regarded the domain name registrations as "instruments of fraud or
deception". The action of trafficking in registered trade marks by
dealers such as One-in-a-Million amounted to a use in the course of trade and
also as threats of infringement and threatened passing-off. He also ordered the
defendants to take steps to have the disputed domain names assigned to the
plaintiffs.
The case went to appeal. The appeal was dismissed. The
appellants' argument was that their domain name registrations could be used for
a legitimate purpose, that it was not (necessarily) an instrument of fraud and
that therefore injunctive relief was inappropriate.
But the court held that mere registration of a domain name
"marksandspencer.co.uk" was passing-off and there was likelihood of
damage because an internet user executing a "whois" search and
finding the appellants' name would believe them to be connected with Marks and
Spencer plc. The judge's finding were upheld.
Selling the domain name amount to use in the course of
trade?
In “One in a Million”case it was sufficient to satisfy the
requirement
One in a Million has been applied in several further cases
Britannia Buildings Society v Prangley
Easyjet Airline Co. Ltd v Dainty
Global Projects Management Ltd v Citigroup
CASE OF PASSING OFF?
Traditional requirements in the tort:
1) the claimant has established goodwill among the public in
relation to its goods/services and the TM is distinctive of such
goods/services;
2) A misrapresentation by the defendant likely to lead
persons interested in such goods/services to be mislead into buying to the
defendant
3) Damages suffered
ICANN
Uniform Dispute Resolution Policy (1999) (Incorporated in
the Registration Agreement)
Purpose: sets forth the terms and conditions in connection
with a dispute between the register and any party over the registration and use
of an Internet domain name registered.
Representations: (a) the statements made in your
Registration Agreement are complete and accurate; (b) to the register
knowledge, the registration of the domain name will not infringe upon or
otherwise violate the rights of any third party; (c) the applicant is not registering the domain
name for an unlawful purpose; and (d) he will not knowingly use the domain name
in violation of any applicable laws or regulations.
Cancellation, transfer, under the following circumstances:
a. receipt of written or appropriate electronic instructions
from the registrant or his authorized agent to take such action;
b. receipt of an order from a court or arbitral tribunal, in
each case of competent jurisdiction, requiring such action; and/or
c. receipt of a decision of an administrative panel
requiring such action in any administrative proceeding conducted under the
ICANN Policy.
Complaint:
(i) the domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights; and
(ii) The defendant have no rights or legitimate interests in
respect of the domain name; and
(iii) The domain name has been registered and is being used
in bad faith.
Evidence of Registration and Use in Bad Faith.
(i) registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of your documented out-of-pocket costs directly related to the domain
name; or
(ii) domain name registered to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name; or
(iii) domain name registered primarily for the purpose of
disrupting the business of a competitor; or
(iv) intentionally attempting to attract, for commercial
gain, users to your web site or other on-line location, by creating a
likelihood of confusion with the complainant's trade mark as to the source,
sponsorship, affiliation, or endorsement of the web site or location or of a
product or service on your web site or location.
Demostrating the rights in the domain name
(i) before any notice the defendant uses, or made
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(ii) The defendant (as an individual, business, or other
organization) have been commonly known by the domain name; or
(iii) The defendant is making a legitimate non-commercial or
fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue.
Provider’s selection: The selected provider will
administer the proceeding,
Initiation of Proceeding and Process and Appointment of
Administrative Panel
Consolidation: In the event of multiple disputes
the parties may petition to consolidate the disputes before a single panel.
This petition shall be made to the first panel appointed. This panel may
consolidate before it any or all such disputes in its sole discretion, provided
that the disputes being consolidated are governed by the policy adopted
by ICANN.
Fees. All fees charged by a provider in
connection with any dispute before an Administrative Panel shall be paid by the
complainant.
ICANN
The procedure
The procedure
NO Involvement in Administrative Proceedings: ICANN
does not participate in the administration or conduct of any proceeding before
a panel and it will not be liable of any decisions rendered by the panel.
Remedies: the cancellation of your domain name
or the transfer of the domain name registration to the complainant.
Notification and publication. The Provider shall
notify ICANN of any decision made by an panel with respect to a domain name.
All decisions will be published in full over the internet.
Availability of Court proceedings. The parties
are not prevent from submitting the dispute to a court of competent
jurisdiction
METATAGS
A text that is hidden from the user of a web site but
is visible to search engines and users who knows HTML or similar source
code.
• description
meta tags: provide a short description summarizing the web site and
• keyword
meta tags: a word or phrase that best describes the subject of the web site.
Often website owners will embed third-party trademarks
(often competitors TM) in meta tag data to attract Internet traffic to their
own website, diverting it from the trademark owner’s website.
In Reed Executive Plc v Reed Business Information Ltd the
Court of appeal ruled that the use of metatags by the defendant incorporating a
trade mark similar to that of the claimant did not amount to infringement or
passing off.
Metatag plaintiffs usually allege infringement under the
initial interest confusion doctrine: is a judicially created doctrine that
permits liability for infringement if there is confusion in the customer before
actually purchasing a good or a service. It happens when a customer seeks a
particular brand of good or service but is mislead to a competitor’s good or
service through the competitor’s use of the first company’s mark
Not every meta tag use of another company’s trademark is
illegal. When the trademark is used only to describe the goods or services of a
company, or their geographic origin, this is permitted under trademark law as a
“fair use.”
WORDSTUFFING
Simple way of hiding text in a web page by formatting it in
the same color as the page back ground.
The text is present in the web page but not visible to the
users.
It could help search engines to find a web site.
KEYWORD SALES
Lucrative for of advertising: it consists in agreeing, for a
compensation, to tie banner advertisements or sponsored links to the keyword
entered by the user, so said advertisements appear in the search results for a
particular keyword.
Problem: the keyword sold consist of a competitor trade
mark.
Germany case: Estèe Lauder sued the search engine Excite
because of the selling of some keywords (“Estée Lauder”, “Clinique”, “Origin”)
to a discount outlet whose banner advertisements appear when the user entered
sai keywords. Court ruled: unfair competiton not TM infringement.
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