Your Money or Your Name

By Brett Dorny, CIO |  Business

Naturally, complaints about the first-come first-served policy were soon raised,
and legal experts started thinking about what might be done to prevent the kind of
legal extortion that was flourishing. Since cybersquatting evolved from the use of
others' trade names and trademarks, trademark law appeared at first to be the most
appropriate mechanism to address the issue. But there was a problem with that
reasoning. Trademarks are protected from the use of similar marks that cause confusion
among the public. As long as the use does not cause confusion, different people or
companies can use similar or identical trademarks. Often, the cybersquatters do not
actually use the domain name. Therefore, there can be no confusion. And even in cases
where the names were used, Web site users generally would not believe that the site was
owned or operated by the trademark owner, siince they relate to different products or
services.

The remedy for a trademark law violation is an injunction from committing the
confusing use. While preventing a confusing use of a domain name is important,
generally the trademark owner wants to become the owner of the domain name. Assignment
of a domain name is not an available remedy under trademark law. To get the domain
name, the cybersquatter's ransom still has to be paid.

Internic, for its part, did not want to be charged with creating a policy for
deciding domain name disputes, so it left the matter to the courts. At the same time,
however, in an attempt to limit its own liabilities, Internic instituted a policy of
placing on hold any name involving a trademark dispute. Disputed names could not be
used until the dispute was resolved. While this move got Internic off the hook, it
raised a new problem. A proper domain name owner was precluded from using its own
domain name even if the alleged dispute was baseless. Trademark law is based upon the
use of a mark in connection with specific goods and services. It allows different
companies to use the same mark with distinct products. However, only one domain name is
available. When there are multiple trademark owners there is no process for determining
who should get the domain name. Nevertheless, any trademark owner could assert that a
dispute exists which prevents use of the domain name. Also, while some words represent
specific products, they can function as a trademark for other items. Apple.com could
equally apply to Apple Computer Co. and an apple grower. How does one decide who gets
the domain name? A registrant might have as much right to the domain name as a
trademark owner. The wait for resolution of a domain name dispute, which may take
years, can damage a proper user hoping to use the name he or she has developed.

Join us:
Facebook

Twitter

Pinterest

Tumblr

LinkedIn

Google+

Answers - Powered by ITworld

Join us:
Facebook

Twitter

Pinterest

Tumblr

LinkedIn

Google+

Ask a Question
randomness