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Published: 2008-03-26

The Cautious Interplay Between Trademarks and Internet Domain Names



(Reprinted with permission of the Illinois Bar Journal, Vol. 88 #2, February, 2000. Copyright by the Illinois State Bar Association, on the web at www.isba.org.)

By Aaron W. Brooks

Your client's trademark has been registered as an Internet domain name. What, if anything, can you do? This article explores this fast-moving area of law.

I. Introduction

In 1998, Compaq Computer Corporation paid $3.35 million for the domain name "altavista.com." 1 This transaction vividly illustrates the vast significance that Internet domain names have assumed in our economy. It is axiomatic that with commercial significance comes legal significance.

As our clients become more active users and producers of information on the Internet, we as lawyers must become more knowledgeable about the ensuing legal consequences. Perhaps the most difficult to understand (and frequently encountered) Internet legal issue is the relationship between Internet domain names and traditional trademarks.

This article seeks to outline the basic legal principles that must be considered by both the trademark owner and the domain name owner in a dispute regarding their respective rights. Further, the article presents a simple analysis that attorneys may follow to clarify the issue and determine their clients' rights.

II. The Basics of Domain Names

In order to form a computer network, one must have two things: (1) two or more computers physically connected together; and (2) a language, or protocol, that allows some of the connected computers to answer questions asked by the others. The largest computer network on the planet goes by many names: "Internet," "information superhighway," and "cyberspace," to name a few.

Many kinds of software are run across the Internet. One particular kind of software is run most frequently and forms what is known as the World Wide Web. Each computer that is part of the World Wide Web runs software called a "Web server." Web-server software distributes computer files when asked to do so by a Web browser, such as Netscape Navigator or Microsoft's Internet Explorer.

When you wish to view a particular file on the World Wide Web, you need know only one thing: the name of the computer that stores the file. When you enter the computer's name into your Web browser, the browser automatically displays the main file located on that computer. The main file is commonly known as a "home page." The home page should then have links to all the other files that you are permitted to access on that computer. Frequently, the home page will have links to files on other computers as well.

When the Internet was young, the names of its computers were merely numbers, such as "151.200.97.36."2 All computers on the Internet were assigned a unique identification number composed of four numbers between zero and 255. Thus, a computer's identification number can be as low as 0.0.0.0 and as high as 255.255.255.255. However, as the World Wide Web got popular and grew commercialized, people began searching for ways to make it easier to find and remember certain computers on the Internet. The solution was to create a cross-referencing database known as the Domain Name System (DNS).

Under the DNS, each computer's number can be matched with an easy-to-remember name, called a "domain name." Ultimately, to find a particular computer, the Web browser needs to know that computer's identification number. However, if the user gives a domain name to the Web browser, the Web browser can cross-reference that domain name in its primary Web server database and come up with the proper identification number. Personified, the colloquy between the Web browser and Web server might look something like this:

Web browser: "Hello, Web server, my human wants to see files on a computer called www.uspto.gov. Can you tell me the number for that domain name?"

Web server: "Not off the top of my head, but let me look it up. Ah yes, according to the latest database from Network Solutions, Inc., which I download daily, the domain name www. uspto.gov corresponds to the IP address 151.200.97.36. I'll connect you right away."

Obviously, from the user's point of view, it is much easier to find and remember a computer on the Internet if its identification number is cross-referenced to a simple domain name.

Domain names are important to the information provider also, because an easy-to-remember domain name draws more users to the Web site. Further, if the information provider is a commercial entity, then its domain name will be all the more significant and effective if it is the same or similar to its trademark. However, frequently one finds that the domain name that corresponds to one's trademark is not available. When this happens, the question is: What remedy, if any, should the law provide to a trademark owner when a domain name containing its trademark has been registered by another?

III. The Basics of Trademark Law

A. Trademarks 101

A trademark is any word, name, symbol, or device, or any combination thereof, used to distinguish one's goods from those of one's competitors.3

To acquire trademark rights, all one need do is use the trademark in commerce. Use, without registration, entitles the user to "common law trademark rights." Common law trademark rights extend only to the boundaries of the markets within which the trademark owner has actually used the trademark.

A common law trademark owner can get additional rights by registering the mark on the Federal Primary Registry. Perhaps the most significant right acquired through federal registration is the exclusive, nationwide right to preclude others from using the same trademark. In other words, a trademark owner with a federal trademark registration has superior rights in the trademark even with respect to territories in which he has not used the trademark.4

The primary rationale for granting trademark rights is to protect the consumer from confusion in the marketplace. Thus, anytime one uses a trademark that is likely to cause confusion in the marketplace, such user is subject to a suit for infringement. By the same token, there are many simultaneous trademark uses that are not likely to cause confusion. For example, where similar trademarks are used on different goods, there is little chance that a consumer will be confused by the similarity. Also, similar trademarks are frequently permitted to coexist where their uses are geographically separated.

B. Trademarks 2001

Several important differences between trademarks and Internet domain names have sustained most of the controversy and confusion in this area. First, trademark rights are limited by relationships (or the lack thereof) between different types of goods. For example, it is perfectly permissible under trademark law to have "apple" computers and "apple" bottled water, so long as there is no likelihood of confusing the consumers of either. With respect to domain names, however, only one party may own the rights to "apple.com."

Second, trademark rights are limited by geographic boundaries. In other words, unless consumers are confused by such usage, trademark law will allow "apple" bottled water to be sold by one company in California and a different company in New York. In contrast, domain names defy geographic boundaries because they are equally accessible from any location on the planet.

Third, trademark rights are administered to a large degree by governmental agencies. In the event a trademark owner's rights are in question, not only are procedures in place to adjudicate those rights, but the adjudicating body is subject to political pressures. Domain names are not administered by the government; rather, they are sold by a companies like Network Solutions, Inc., which are financially motivated to grant as many domain name registrations as possible.5

Fourth, trademark owners must use their trademarks to sustain their rights. One can get an extension of time to use a trademark by filing a federal registration based upon a bona fide intent to use the trademark. However, this procedure is a delay of the use requirement, not an exception to it. On the other hand, one may register an Internet domain name and hold it indefinitely without use. This aspect of domain names has caused a significant stir among unwary owners of famous trademarks, discussed in more detail below.

Finally, a word that describes or defines one's goods generally is not entitled to protection. For example, an apple distributor will probably not be entitled to prevent other apple distributors from using the trademark "apples," regardless of who first used the word. On the other hand, there is no such standard among domain names and an apple distributor with the domain name "apples. com" might expect to do very well.

IV. What This Article Is Not About

This article is not about "cybersquatting." The term cybersquatting has been adopted by a few courts6 and several commentators7 to describe the practice of registering domain names that correspond to unique and famous trademarks. The domain name registrant obtains the domain name with the hope of extorting money from the trademark owner in exchange for a release of the domain name.

Cybersquatting sparked the first major debate about the relationship between trademarks and domain names; however, the issue has been resolved to a fair degree of certainty. The state of the law appears to be that the owner of a unique and famous trademark has a superior right to a domain name that is (1) registered by a registrant who is not otherwise identified by or associated with any of the commonly accepted meanings of the domain name, (2) not used by the registrant as its own domain name, and (3) held for resale to the original trademark owner.8

In essence, cybersquatting appears to have two basic elements: (1) a unique and famous trademark; and (2) a domain name registrant who is not using the domain name for a legitimate purpose.

This article considers the application of trademark law to domain name issues where one or both of the cybersquatting elements are not present. This is a much larger and unsettled issue; it is about the nonfamous trademark owner's right (or lack thereof) to the exclusive use of domain names that incorporate the exact trademark or similar variations. In hypothetical format, the issue is this: "As between two companies, both acting in good faith and both named Widget, Inc., which has the exclusive right to use the domain names widget.com, widget.net and widget.org?"

V. The Trademark/Domain Name Analysis

The classic case of trademark law applying to domain name usage seems to be the ongoing dispute between Hasbro, Inc. and Clue Computing, Inc.9 In that case, Clue Computing registered the domain name "clue.com." The related Web site was used to display information about its computer business. Hasbro initiated the Network Solutions domain name dispute resolution policy and caused the domain name to be made inactive. Hasbro then sued Clue Computing, claiming that the domain name infringed upon its famous trademark "Clue," used in conjunction with a board game.

Note that this case can be distinguished from the classic cybersquatting fact pattern because even though "Clue" is a famous registered trademark of Hasbro, Clue Computing did not register the domain name for an improper purpose. Instead, it did so to promote goods and services that were reasonably related to the domain name itself.On September 2, 1999, the United States District Court for the District of Massachusetts ruled that Hasbro was not entitled to the domain name "clue.com."10 This decision is sure to be hailed as a recognition that owners of famous trademarks are not automatically entitled to claim any related domain name.

Rather, domain name rights are determined by referring to the underlying goods and services described in the associated Web site. In the case of Clue Computing, there was no reasonable relationship between the goods and services displayed at "clue.com" and those associated with the registered trademark "Clue."

In short, the litigation involving clue.com demonstrates that where either of the two cybersquatting elements are missing, one must perform a traditional trademark infringement analysis to resolve domain name trademark issues. Additionally, one should remember that in any conflict between a trademark and domain name, one must determine whether or not a privately administered domain name dispute resolution policy applies.

A. The Domain Name Trademark Infringement Analysis

When representing either party in a dispute about the compatibility of a domain name and a trademark, an attorney should consider a series of basic trademark issues. While these issues model the traditional trademark infringement analysis, the peculiar nature of domain names adds a complicating factor and must be closely considered.

1. Is the Domain Name Being Used as a Trademark?
To be subject to an action for trademark infringement, one must first have a trademark. In the case of a troublesome domain name, this initial hurdle may be the greatest difficulty for the trademark owner, because many domain names on the Internet do not function as trademarks.

Strictly speaking, a trademark must be used as a source identifier. In September 1999, the U.S. Patent and Trademark Office (USPTO) determined that use of a domain name as a mere directional reference does not amount to use as a source identifier. Thus, the USPTO will reject service mark applications for domain names unless the domain name does more than merely indicate the address of the Web site, like a phone number or regular address.

From the USPTO's directive, it follows that in order to use a domain name as a trademark, one must set the domain name off in such a way as to make it more than a locator device. For example, saying "The amazon.com bookstore sells more books than anyone" clearly shows use as a trademark because it identifies the source of the particular goods. By contrast, using a domain name on business cards to merely identify the location of the Web site would not seem to qualify under the USPTO directive.By the same token, when the owner of a conflicting domain name merely uses the domain name to designate a host computer on the Internet, he will not be using the domain name as a trademark.11In such a case, the domain name owner may have a defense against any trademark action under the rationale that he does not have any trademark with which he could infringe upon others. In short, it appears that the basic rule is that domain names do not function as trademarks and thus are not subject to trademark actions. However, as discussed immediately below, this rule is replete with exceptions.

The first exception to the rule that domain names do not function as trademarks has already been discussed. Where the actions of a domain name registrant meet all the elements of cybersquatting, the requirement that the domain name be used as a trademark is essentially waived.

The second exception is very similar to cybersquatting. It applies when one registers a domain name that is the same or similar to the trademark of one's competitors and uses the domain name not to usurp the goodwill of the competitor or confuse consumers but rather to openly dissuade consumers from using the competitor's products.For example, in 1994, Princeton Review, a test preparation service, registered the domain name "kaplan.com," corresponding to the trademark of its chief competitor, Stanley Kaplan. The information posted at the domain name clearly indicated the source of the goods and services; nonetheless, an arbitration panel ordered Princeton Review to relinquish all rights to the domain name and transfer it to Stanley Kaplan.12

Similarly, in Jews for Jesus v Brodsky,13 the court issued an injunction against the owner of the domain name "www. jewsforjesus.org ," where the associated Web site was used to post information denigrating the plaintiff's teachings. In this case, the defendant clearly distinguished himself from the plaintiff; however, the court found trademark infringement nonetheless because the misleading domain name tended to intercept and reroute consumers who were searching for the plaintiff's Web site.14 A similar result ensued in Planned Parenthood Federation of America, Inc. v Bucci.15

The third exception to the rule that domain names do not function as trademarks is for Web sites that offer goods and services that compete with the trademark in question. Obviously, because many Web sites offer goods and services, this exception has a tendency to devour the rule.

In Brookfield Communications, Inc. v West Coast Entertainment Corporation,16 there was a dispute regarding the plaintiff's trademark "MovieBuff," used in conjunction with computer software, and defendant's domain name "moviebuff.com," used in conjunction with an online database. The court analyzed the case as if both names were traditional trademarks, and found that the domain name "moviebuff. com" was likely to infringe upon the trademark "MovieBuff." The court's lack of regard for the unique nature of domain names is strongly evidenced by the following statement:

Properly framed, it is readily apparent that [the domain name owner's] allegedly infringing mark is essentially identical to [the trademark owner's] mark "MovieBuff." In terms of appearance, there are differences in capitalization and the addition of ".com" in [the] complete domain name, but these differences are inconsequential in light of the fact that Web addresses are not caps-sensitive and that the ".com" top-level domain signifies the site's commercial nature.17
In essence, Brookfield Communications fundamentally changes the rule that domain names do not function as trademarks. Instead, the rule is more properly stated as follows: "[N]either merely reserving a domain name nor use of a domain name solely to indicate a site on the Internet, in and of itself, constitutes [trademark use]. Rather, one must consider the content of the site identified by the domain name."18

In other words, even if a domain name is used merely to identify an Internet Web site, the domain name may still infringe upon existing trademarks if the domain name, when taken in context with the content of the Web site, is likely to cause confusion in the mind of the consumer.

2. Does the Trademark Owner Have Enforceable Trademark Rights?
Even if the domain name in question is found to be used as a trademark, the domain name owner may have a defense that the trademark in question is not entitled to protection. There are several theories under which a trademark may be denied the protection of law.First, the trademark owner may be deemed to have abandoned its rights in the trademark. Abandonment occurs when the trademark is no longer used in commerce or by certain acts that cause the trademark to lose its distinctiveness. Second, the trademark owner may be estopped from pursuing an action against the domain name owner due to acquiescence in the domain name owner's actions or laches. Third, a trademark may be inherently disqualified from legal protection. For example, the word "apples" is a generic term for the product apples and is not entitled to trademark protection. Additionally, words that describe the geographic region in which goods or services are produced, or which deceptively misdescribe such geographic regions, are not eligible for trademark protection.

Finally, if the trademark owner itself has engaged in fraud or illegal activity in connection with the domain name litigation, there is a strong possibility that the domain name owner will have the defense of unclean hands. By the same token, if the trademark owner committed fraud in the procuring of its trademark registration, that registration is likely to be voided.

3. Is There a Likelihood of Confusion?
Assuming that the domain name in question functions as a trademark, and further assuming that the trademark owner has enforceable rights, one must then determine whether or not there is a likelihood of confusion between the domain name and the trademark. Essentially, there are seven factors one considers when making this determination.19

First, one must consider the similarity between the trademark and the domain name. Names can be similar in three ways: appearance, sound, and meaning. Thus, if the trademark is "apples," domain names such as "a-apples.com" or "apple.com" may be considered sufficiently similar. Note that the additional ".com" or differences in capitalization are not likely to be considered significant differences.20

Second, consider the similarity between the associated goods and services. In the case of domain names, it is important to look not only at the goods or services described in the Web site, but also those that can be obtained through the Web site. Thus, if the Web site is an electronic commerce server, all the goods that are available for sale may be considered.

Third, a traditional trademark analysis requires a comparison of the geographic region in which each trademark is used. Frequently, two similar trademarks will be permitted to coexist if their geographic markets do not overlap. Obviously, the Internet tends to break down geographic boundaries; however, this factor may apply nonetheless. For example, if the Web site advertises services that are only available in Illinois, a similar service provider in California may have a difficult time arguing for infringement, even if its customers are exposed to the Web site in question.

Fourth, the degree of care that consumers will use when selecting a product may change the outcome. For example, if the goods or services are very expensive or customers tend to shop around for a long time before making the purchase, there is a good argument that confusion is less likely. Additionally, if the relevant customer tends to be very sophisticated or knowledgeable about the market, then that customer is also less likely to become confused by an otherwise similar domain name.

Fifth, the strength of the trademark must be considered. As discussed above, some trademarks are entitled to less protection than others. If the trademark owner has a weak trademark, the other factors described here will carry less weight. Sixth, actual confusion among consumers has a powerful influence upon trademark disputes. If the trademark owner can show that relevant consumers were actually deceived by the conflicting domain name, then the infringement case is greatly enhanced. Evidence of actual confusion can be a strong indication that the domain name is confusingly similar to the trademark.

Finally, the intent of a party who registers the domain name should be considered. If it is clear that the domain name registrant was attempting to derive benefit from the trademark owner's goodwill, then the court will be more inclined to grant relief. This principle is markedly clear in the case of cybersquatting, which stretches existing trademark dilution law to encompass domain name registrants acting in bad faith.

B. Domain Name Registrar Dispute Resolution Policies

The Internet community is in the midst of changing the way the Internet domain name system is administered. Previously, a single company, Network Solutions, Inc., had a contract with the U.S. government giving it the exclusive right to register and administer all domain names ending with ".com," ".net" and ".org." In September of 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was formed to oversee a select set of Internet technical management functions, including the domain name system.

As part of this change, the Network Solutions, Inc. domain name database, which cross-references domain names with IP addresses, was transferred to ICANN and renamed the Shared Registry System. Additionally, in April 1999, ICANN began accrediting various companies as domain name registrars to compete with Network Solutions, Inc. As of December 21, 1999, ICANN had named 98 different companies as domain name registrars, one of which is Network Solutions, Inc. itself.

Prior to these changes, Network Solutions, Inc., administered a resolution procedure that provided limited guidance for domain name trademark issues. In order to initiate the dispute, the trademark owner must have owned a federal trademark or service mark registration issued for the exact second-level domain name in question21 and he must have first sent a cease-and-desist letter to the domain name registrant.

When presented with a copy of the cease-and-desist letter and a certified copy of the federal registration, Network Solutions, Inc. gave priority using the following rules:

  1. If the domain-name creation date was before the filing date on the trademark owner's federal registration, Network Solutions, Inc. would take no action.
  2. If the domain-name creation date was after the filing date on the trademark owner's federal registration, the domain-name owner must have provided its own federal registration with a filing date that preceded that of the trademark owner's. If the domain-name owner had a federal registration with a filing date that preceded that on the trademark owner's federal registration, Network Solutions, Inc. would take no action.
  3. If the domain-name owner did not have a federal registration, or if the filing date on the domain-name owner's federal registration was later than that of the trademark owner's, Network Solutions, Inc. would give the domain-name owner two options: (i) to select a new domain name and retain the disputed domain name for up to 90 calendar days to allow transition to the new domain name, or (ii) to place the disputed domain name on hold until the dispute is resolved between the parties using any means (including a lawsuit, arbitration, or mediation) that they see fit.

Effective January 1, 2000, Network Solutions, Inc. has abandoned its domain name dispute policy and adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) promulgated by ICANN.22 Because Network Solutions, Inc. is still the leading registrar of Internet domain names, this change will effect the vast majority of domain name owners. Furthermore, the registrar accreditation agreement that must be executed by companies applying for access to the Shared Registry System specifically requires such companies to have a dispute resolution policy in place and to adhere to policies adopted by ICANN. According to the UDRP implementation schedule,23 the UDRP was applicable to all registrars no later than January 3, 2000. Thus, the UDRP is likely to be an important document from this point on in resolving disputes between trademark owners and domain-name holders.24

According to Network Solutions, Inc.'s interpretation of the UDRP, the new policy causes four basic changes from the previous policy described above:25

  1. Domain names will no longer be placed on hold.
  2. Actual resolution of a dispute will occur and result in continued use, deletion or transfer of a domain name registration.
  3. The new policy applies to all state and common law trademarks as well as nationally registered trademarks.
  4. The new policy allows the complainant to include any domain name confusingly similar to, as well as identical to, its trademark. From your client's point of view, changes brought by the UDRP will be both good and bad. If your client is the trademark owner, he will be attempting to have an objectionable domain name set aside. Under the UDRP, it will be more difficult to accomplish that goal. Where the old Network Solutions, Inc. policy allowed domain names to be inactivated after a minimal showing by the trademark owner, the UDRP requires a resolution of the dispute prior to any such action.
Furthermore, to initiate the administrative remedies set forth within the UDRP, the trademark owner must allege and be prepared to prove "bad faith" on the domain-name holder's part. The UDRP's definition of "bad faith" comes very close to the cybersquatting elements described above.

Notwithstanding these difficulties, trademark owners are now benefited by the UDRP's expanded view of infringement. In order to initiate the old Network Solutions, Inc. policy, one must have owned a federal trademark registration for the exact second level domain name in question. Thus, if the conflicting domain name was "apples.com" and your client had a federal registration for "apples.com," he could not have initiated the policy. Instead, he must have had a federal registration for "apples." Under the UDRP, however, a dispute might be initiated against the domain name "apples.com" (depending upon the specific goods or services involved) by the holder of "apples.com," "a-apples.com" or even "oranges.com."

After the trademark owner makes the requisite showing to initiate the administrative resolution procedures, the domain name owner can stop the process by filing a complaint in a court of competent jurisdiction. In fact, either party can avoid the UDRP provisions and elect instead to resolve the dispute in court, even after the UDRP procedures are complete and an adverse ruling has been given.

In the author's opinion, the quintessential domain name dispute policy case is Giacalone v Network Solutions, Inc.26 In that case, an individual purchased the domain name "ty.com." The domain name was named after his son, Ty Giacalone. He used the domain name to post a simple Web site describing his computer business and for e-mail. Ty, Inc., the famous maker of Beanie Babies, invoked the old Network Solutions policy in an attempt to obtain rights to the domain name.

This case demonstrates what many commentators call "reverse domain name hijacking."27 It is "hijacking" because no trademark issue is present. In other words, Ty, Inc. did not argue that consumers are likely to be confused by the domain name "ty.com"; rather, Ty, Inc. was merely invoking the benefits of the dispute policy in an attempt to wrestle the domain name away from Giacalone.

After Ty, Inc. initiated the old policy, Network Solutions placed the domain name on hold, thus inactivating the Giacalone Web site. Based on the rigid process set forth in the old policy, this was the technically proper result, and the case illustrated that a federal trademark owner had the power to take a domain name bearing its mark even where there was no likelihood of commercial use, let alone confusion.

Note that Giacalone involved only one of the two cybersquatting elements: a unique and famous trademark. Had Giacalone merely registered "ty.com" to resell it to Ty, Inc., then both elements would have been present and, based upon the cybersquatting case law described above and the newly enacted Anticybersquatting Consumer Protection Act, Ty, Inc. would have had a cause of action beyond the dispute resolution policy.

Following the inactivation of their domain name, Giacalone filed suit and was granted a preliminary injunction preventing Ty, Inc. from interfering with his use of the domain name. The parties subsequently settled and today "ty.com" is "The Official Home of the Beanie Babies."

Giacalone seems to teach at least three lessons. First, domain-name dispute policies are not an encompassing solution for trademark issues arising from domain-name usage. Second, privately administered domain name dispute policies have the potential for working injustice between trademark owners and domain name owners. Finally, no Internet rule or custom can set aside or diminish the authority of existing law. In short, trademark law is alive and well in domain-name disputes.

More importantly, Giacalone should serve as an important reminder of the impact a domain name dispute policy can have on an infringement case. Whether representing the trademark owner or the domain name holder, an attorney should determine what private dispute resolution policy might be in place and carefully review the most current version of the policy to determine its effect on the case.

VI. Conclusion

From the foregoing analysis, it seems that one can distinguish two types of trademark-related domain name disputes. First is the case of the cybersquatter. A cybersquatter is characterized by the presence of two basic elements: (1) a unique and famous trademark; and (2) registration of a corresponding domain name for an improper purpose. When either of the cybersquatting factors is not present, a more detailed analysis is required. In such a case, a traditional trademark analysis should be applied, with special attention being given to the unique nature of domain names. When conducting the analysis, one must consider (1) whether the domain name is used as a trademark, (2) whether the trademark is entitled to legal protection, and (3) whether or not there is a likelihood of confusion between the domain name and the trademark. Generally speaking, where a domain name is used on a Web site that is not reasonably related to the trademark owner's goods and services, the domain name owner will have priority. Such was the case in Giacalone, discussed above.

Finally, in any case involving a conflict between a trademark and a domain name, one should consider whether or not the privately administered domain name dispute resolution policy applies. If so, a domain name owner can lose his or her rights even if the related Web site does not bear a reasonable relationship to the goods or services of the trademark owner.

  1. Wall St J, July 29, 1998.
  2. This system is still in place. The number is called an "IP address." Try purchasing the number into the "location" bar of your Web browser; you should see the USPTO home page.
  3. 15 USC § 1127.
  4. Dawn Donut Co. v Hart's Food Stores, Inc., 267 F2d 358, 121 USPQ 430 (2d Cir 1959). Note, however, that in order to enforce his trademark rights in such a territory, the trademark owner must actually use the trademark therein. For example, assume A uses "apple" only in California and registers "apple" in 1990. In 1991, B uses "apple" in Illinois. A cannot sue B until A actually uses "apple" in Illinois; however, when A finally does use "apple" in Illinois, he will have superior rights based upon his federal registration, even though B used "apple" in Illinois first.
  5. Between 1993 and 1999, Network Solutions, Inc. had the exclusive right to register internet domain names under a Cooperative Agreement with the U.S. Government. Today, this responsibility is being shifted to the Internet Corporation for Assigned Names and Numbers (ICANN), which has authorized many companies to make such registrations through a Shared Registry System. For more information on this topic, see ICANN's Web site www.icann.org.
  6. Intermatic, Inc. v Toeppen, 947 F Supp 1227, 40 USPQ2d 1412, 41 USPQ2d 1223 (ND Ill 1996). See also Panavision Int'l L.P. v Toeppen, 945 F Supp 1296, 40 USPQ2d 1908 (CD Cal 1996).
  7. See, e.g., Comment, Ronald@mcdonalds.com: Owning a Bitchin' Corporate Trademark as an Internet Address: Infringement?, 17 Cardozo L Rev 85 (1995); Dan L. Burk, Trademarks Along the Infobahn: A First Look at the Emerging Law of Cybermarks, 1 Rich J L Tech 1 (1995); and Kenneth Sutherlin Dueker, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, 9 Harv J L & Tech 483 (Summer, 1996).
  8. Avery Dennison Corporation v Jerry Sumpton, 189 F3d 868, 51 USPQ2d 1801 (9th Cir 1999). The Anticybersquatting Consumer Protection Act, recently enacted as part of the Intellectual Property and Communications Omnibus Reform Act of 1999, offers additional protection for trademark owners as well as statutory penalties against infringing registrations, trafficking or use of domain names that occurs on or after November 29, 1999.
  9. For a summary of the progress in this case, see Carl S. Kaplan, Judges Pick David Over Goliath in Domain Name Suits, New York Times, September 17, 1999.
  10. Hasbro, Inc. v Clue Computing, Inc., 66 F Supp 2d 117 (D MA 1999).
  11. Lockheed Martin Corp. v Network Solutions, Inc., 985 F Supp 949, 44 USPQ2d 1865 (CD Cal 1997). See also New Kids on the Block v News America Pub., Inc., 971 F2d 302, 23 USPQ 1534 (9th Cir 1992).
  12. Kent D. Stuckey, Internet and Online Law, § 7.04[1] (1996).
  13. 993 F Supp 282, 46 USPQ2d 1652 (DNJ 1998).
  14. It has been offered that this use of a domain name may constitute " initial interest confusion." Such confusion occurs where consumers are initially confused by one's use of a competitor's trademark, even if the confusion is allayed prior to the actual purchase of competing goods or services. See J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition, § 25.76, n26 (1999) ("McCarthy").
  15. 42 USPq2d 1430 (SD NY 1997).
  16. 174 F3d 1036, 50 USPQ2d 1545 (9th Cir 1999).
  17. Id.
  18. McCarthy at § 25.76 (cited in note 14).
  19. See Smith Fiberglass Products, Inc. v Ameron, Inc., 7 F3d 1327 (7th Cir 1993).
  20. Brookfield Communications., 174 F3d at 1055.
  21. A "second level domain name" is the portion of a domain name to the left of the ".com" and the right of the "www." In other words, "uspto" is the second level domain name for the domain name www.uspto.com.
  22. See www.domainmagistrate.com for details on the adoption and implementation of this policy.
  23. www.icann.org/udrp/udrp-schedule.htm.
  24. The latest original copy of the UDRP can be found at www.icann.org/udrp/udrp-policy-24oct99.htm.
  25. .
  26. 1996 WL 887734 (N.D. Cal. 1996).
  27. See, e.g., McCarthy at §25.74 (cited in note 14).