Increasingly, consumers are utilizing Internet addresses for finding specific sources of goods and services. More specifically, consumers often search for goods and services by utilizing well-known trademarks or service marks as Internet search strings. Due to the convenience of Internet shopping, consumers utilized the Internet to buy over $2.3 billion of goods and services during the 1998 holiday season alone. Accordingly, businesses have a financial incentive to prevent others from using Internet addresses ("domain names") that are identical to their registered trademarks or service marks. This article discusses a dispute procedure where the owner of a federally registered trademark or service mark can prevent a third party from using an identical Internet domain name.
Network Solutions, Inc. (NSI) is the corporation designated as a registrar of the top-level domain names of .com, .net, .org and .edu. It should be understood that each domain name comprises a top-level domain name (i.e., .com) and a second level domain name that is a unique name selected by the registrant. When registering a domain name, NSI does not determine the legality of the domain name registration, or evaluate whether the registration or use may infringe upon registered trademarks or service marks. Rather, domain names are assigned on a first come, first served basis, where the registrant is solely responsible for selecting its own domain name. Accordingly, registrants have selected domain names that infringe registered trademarks and service marks owned by others. In response to this problem, NSI has implemented a domain name dispute procedure.
Initiating a Domain Name Dispute
NSI may apply its dispute procedure when a trademark owner presents satisfactory evidence of the trademark ownership and written notice to the potential infringer describing the legal harm that is incurring. More specifically, the trademark owner must present:
(a) an original, certified copy, not more than six months old, of a trademark registration which is in full force and effect and is identical to a second-level domain name (i.e., not including com, net, org, or edu) on the principal registry; and
(b) a copy of the written prior notice sent to the potential infringer by the trademark owner, and a representation by the trademark owner indicating the mode of delivery of the notice (e.g., first class mail) and the factual basis for believing that the potential infringer received the notice. Notices must be sent to the mailing address of the potential infringer as provided in NSI's WHOIS database. The notice to the potential infringer must state that the trademark owner believes the registration and use of the disputed domain name violates the trademark right of the trademark owner; and must also clearly allege the factual and legal bases for the belief.
However, NSI will not accept federal trademark or service mark registrations from the supplemental registry to initiate the dispute procedure. Additionally, NSI will not accept federally registered trademarks that are classified as stylized marks or state registered trademarks to initiate the dispute procedure.
Domain Name Dispute Procedure
After the trademark owner has fulfilled the initial requirements for initiating a domain name dispute, NSI may apply the following procedures. Initially, NSI will determine the "creation date" of the potential infringer's domain name registration. The creation date can be readily found by accessing NSI's WHOIS database. If the creation date is prior to the trademark filing date, NSI will not take any action. However, if the creation date is after the trademark filing date, then NSI will request from the potential infringer, proof that they own their own federally registered trademark or service mark. If the potential infringer submits proof that it owns a trademark that has a filing date prior to the filing date of any trademark owner's notice of dispute to the potential infringer, NSI will take no further action.
NSI will apply the following procedures if the creation date is after the trademark filing date, and the potential infringer fails to provide proof of ownership of a trademark registration within 30 days of the dispute notification letter. NSI will assist the potential infringer with the registration of new domain name, and will allow the potential infringer to maintain both names simultaneously for up to 90 days. However, NSI will only provide such assistance to a potential infringer if they (1) submit a Registration Agreement requesting the registration of a new domain name; and (2) submit an explicit written request to NSI Business Affairs Office identifying the desired new domain name its corresponding NIC tracking number, within 30 days of receipt of the dispute notification letter. At the conclusion of the 90 day period of simultaneous use, NSI will place the disputed domain name on "Hold" status, pending resolution of the dispute. While the domain name is on "Hold" status, the name cannot be used by any party until the dispute is resolved.
Practical Tips
Businesses can take several steps to protect their trade names, trademarks, and service marks on the Internet. First, businesses should register their important trade names, trademarks, and service marks as operating domain names through NSI to prevent third parties from registering the domain name. Second, trademarks and service marks should be registered as "word marks" if feasible since the NSI dispute procedure can only be initiated by the owner of a registered "word" mark. Third, a periodic Internet search should be performed to find any domain names that are confusingly similar to registered marks owned by a business. The periodic Internet search is needed because NSI does not police the registered domain names for possible trademark or service mark infringement. Fourth, if a business finds that a domain name is identical to one of their registered trademarks or service marks it is cost effective to initially utilize the NSI domain name dispute procedure versus litigating the matter. Although, the owner of the registered trademark or service mark will not automatically get the right to use the domain name, all parties will be precluded from using it until the dispute is concluded.