The following article appears in the journal JOM,
50 (1) (1998), p. 60.

JOM is a publication of The Minerals, Metals & Materials Society

Understanding Some Ground Rules in Internet Domain Name Disputes

David V. Radack

With the ever-expanding Internet use by businesses, individuals, and organizations, a website is becoming almost as necessary as having a telephone number. Like a telephone number, an easy-to-remember and/or clever name gives a business a "leg up" on the competition. Furthermore, because of the existence of search engines, it is very important to have a domain name that is uniquely suited to identify you or your product. Inevitably, problems will arise when others attempt to use domain names that, intentionally or unintentionally,confuse people surfing the net. Not surprisingly, many of these disputes end up in court.

A domain name generally consists of two domains: a top-level domain indicating the type of organization using the name (e.g,. commercial/business is.com, government is .gov, organization is .org, .net is Internet service providers,and .edu is educational institutions) and a second-level domain. The second-level domain should, preferably, give web surfers the ability to locate a website easily. Frequently, the owner of the website will use its registered trademark (e.g., ibm.com, abc.com, or nba.com).

A domain name is obtained by applying for registration with Network Solutions (NSI). Domain names are given out on a first-come, first-served basis.Because of this procedure, conflicts between businesses owning long-established trademark rights and unscrupulous or legitimate people desiring a certain domain name have developed. These conflicts are becoming more frequent considering that there were only 25,000 domain names on the Internet four years ago, whereas on March 11, 1997, NSI registered its one-millionth domain name, most of which are in the .com top-level domain.

One exception to the first-come, first-serve rule is that an owner of, for example, a U.S. trademark can petition NSI to force the owner of previously registered domain name to relinquish that domain name if it is exactly the same as a registered trademark. For example, assume I own a company that makes XYZ® widgets and have along-standing U.S. trademark registration for the mark XYZ, as applied to widgets. I discover that a cult has recently registered as a domain name xyz.com and is using it to promote the benefits of mass suicide. In addition, I would like to put up my own web site, and I would like customers to be able to find it (and, incidentally,not find the cult's web site) by plugging my trademark into their search engines. Under this scenario, I can force the mass-suicide cult to relinquish the domain name under NSI procedures because the trademark registration preceded their domain name registration.

Companies are also increasingly relying on more traditional court-based remedies from trademark law to obtain relief. In one case, the owners of the federally registered Panavision and Panaflex trademarks brought a lawsuit against Dennis Toeppen, who registered the domain name panavision.com and established a web site depicting aerial views of the town of Pana, Illinois. When Panavision asked him to relinquish the name, Toeppen demanded money, which Panavision refused to pay. Toeppen retaliated by registering panaflex.com for a web site that contained only the word hello.

The court granted injunctive relief against Toeppen, forcing him to relinquish the domain names panavision.com and panaflex.com. The court stated that unauthorized domain-name registration of a famous mark (such as Panavision) is actionable under trademark law. Basically, according to the court's rationale, registering a domain name that is confusingly similar to a registered trademark is no different than using the registered trademark in a newspaper or magazine article.

There are other infamous Internet domain name cases. One case involved the domain name candyland.com for a web site that contained nude photos. Milton Bradley, the maker of the children's game "Candyland," was successful in shutting down this web site based on the prior existence of its registered trademark. In another case, the Princeton Review, a college SAT preparation course giver, registered kaplan.com. Kaplan is also a very well known SAT preparation course giver. The kaplan.com web site established by the Princeton Review, however, was filled with information on how the Princeton Review was superior to Kaplan's courses. Eventually,the Princeton Review, after being threatened with a lawsuit, settled with Kaplan and agreed to relinquish the name.

The above are high-profile cases in which, obviously, the domain name owner had nefarious intentions. Much more prevalent, however, are disputes between two legitimate businesses who claim the right to use the same domain name. It is common, outside the domain-name context, for two companies to have the same trademark, albeit for different goods/services. For example, the word Delta is used for bathroom fixtures and an airline. Trademark law allows these two exact marks to coexist because there is no likelihood of confusion between the goods/services. For domain names, however, most businesses can use only the .com top-level domain. As a result, once a legitimate user registers a domain name for a mark, it may not be available for another.

It is advisable to review your entire trademark portfolio to ensure that all trademarks are registered with the U.S. Patent and Trademark Office and if you have not done so already, establish a web site and register your company's appropriate domain name. Courts are becoming more amenable to giving the legitimate user of a mark the right to register and use the domain name.

David V. Radack is a member of Eckert, Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, please contact A.B. Silverman, Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 1998 by The Minerals, Metals & Materials Society.

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