Trademarks in cyberspace

Introduction

Trademarks are things which businesses use to identify their products to consumers. Traditionally this involves things such as logos, key sounds, symbols and words. Trademark law protects these marks against situations where consumer confusion may arise (misappropriation), or where the economic value of a mark is diluted (dilution).

Recently, however, trademarks have become a topic of specific attention in the context of today's online environment. Areas such as internet domain names, hyperlinks and keyword searches have forced us to rethink what trademark is and how it should be enforced. We discuss these topics and present some of the relevant law.

Domain names and cybersquatting

Internet domain name registration has become an area of much attention because of the commercial demand for domain names in order to establish presence on the Internet. The current system for registering domains on the Internet does not involve trademark review, mainly because of efficiency and liability reasons. It would be too much of a burden on registrars to look up trademarks for every single registration, and in the case of a mistake it could cost large amounts.

Domain name registrars also face the challenge of rejecting certain domain names due to policy reasons. For example, a registrar would reject domains with blatantly offensive meanings. The U.S. federal court has supported this action, saying that First Amendment rights are applicable only to actions by governments, and domain name registrars are not acting under the color of government authority. Relevant court cases are National A-1 Advertising, et al. vs. Network Solutions, Inc. and Island Online Corp. v. Network Solution. Inc.

People also try to protect the domain names themselves as trademarks. But registration of a domain name does not necessarily establish the existence of trademark protection. According to Brookfield v. West Cost , not only do you need to register the domain name, but also need to use it for commercial use in order to establish trademark rights. Furthermore, if the business wishes to establish its trademark over the entire domain name, it much treat it as a traditional form of trademark and go through the entire process as it would with a logo, sound etc.

Trademark law also prevents unwanted use domain names by other parties who do not own the trademark. As expected, large corporations have moved aggressively to claim trademark infringement and dilution to prevent other parties from using identical or very similar domain names. We see this activity in Hasbro, Inc. v. Clue Computing, Inc. and Porsche Cars North America v. Porsch.com . The U.S. Patent and Trademark Office has ruled, however, that nondistinctive elements of the domain names such as http are not under trademark law protection (Image Online Design v. Core Associates).

A particularly interesting and well publicized court case is Etoys v. Etoy.com , where the company Etoys was trying to prevent a group of artists, Etoy, from owning the domain Etoy.com. Complications arose, however, since Etoy owned the Etoy.com domain name 2 years before the lawsuit. It turned out that Etoys backed down and allowed the use of Etoy.com on Etoy's terms.