Battle Galactica: recent advances and retreats in the struggle for the preservation of trademark rights on the Internet.

• Author: Wilson, Darryl C.

Cite as 12 J. High Tech. L. 1 (2011)

Rapid-fire changes in global e-commerce have placed past standardized notions of trademark practice in a state of siege. Goods and services are being injected into the market place at warp speed while the justice system strains to keep pace with new types of trademark conflicts concerning the identification of the new commodities. While core principles remain, legal decisions directed toward the resolution of these conflicts commonly known as domain name disputes continually chip away at the viability of the historic application of trademark law.

What is an ongoing battleground to many theorists and jurists alike can alternatively be seen as fertile ground for practitioners with forced answers, for better or worse, resulting from sheer case volume filling many of the traditional gaps previously occupied by thornier theoretical questions of legal applicability. Recent cases from a variety of venues highlight the need for practitioners to be more thorough than ever in their approach to protecting marks. These decisions indicate that searches must be conducted on an ever broadening basis and that one who fails to secure national registration, then actively police, as well as zealously protect the rights of mark holders with greater creativity does so at his or her peril. Interpretations of existing statutes and regulations along with newly announced changes indicate a wealth of strategies and ammunition available for advocates to use on all fronts in the technologically driven international turf war that punctuates cyberspace.

For more than a decade, a number of academics and jurists have taken the position that efforts to combine trademark and Internet law decisions into some form of coherent jurisprudence is a pointless task. (1) Their reasons have been numerous but one constant has been recognition of the fact that the direction of the law is not being primarily driven by the judiciary any longer. (2) The practicing bars and global business societies are forcing more reaction than action from jurists and legislatures alike. (3) New precedents, standards, and approaches are set almost daily usually at the expense of pre-existing trademark rights. (4) Perhaps that is how it should be since cyberspace presents a new realm in which the boundaries of traditional legal thought regarding trademarks appears to be dwarfed by the possibilities the Internet world has to offer.

In the last year, many significant cases have been decided involving the overlap of trademark law and domain names. (5) Domain names are the alphabetical words associated with the numerical addresses for locations on the Internet. (6) Domain names are registered at various levels to indicate certain types of entities and/or locations. (7) For example, ".com" indicates a commercial enterprise on the web while ".edu" indicates an educational institution of some type. (8) The example highlights two of the many top-level domains (TLDs). (9) There are currently twenty-two commonly recognized TLDs. (10) The name preceding the TLD is called the secondary level domain (SLD). (11) Thus "wilson.com" consist of the SLD "wilson" and the TLD ".com". Internet addresses, also known as uniform resource locators (URL), are actually numerical and consist of additional parts, but the SLD/TLD interplay is where trademarks and domain names routinely become inextricably intertwined. (12)

Domain cases are basically decided on two fronts, one being judicial and the other administrative. (13) The volume of cases decided administratively under the Uniform Dispute Resolution Process (UDRP) (14) that has been developed for arbitrating disputes over domain names has far outweighed the number of cases that have and are being decided through the judicial process. (15) The UDRP approach to resolving domain name matters allows for fairly effortless tracking of decisions across the globe while it is much more difficult to determine how many cases have made it into real courtroom space. (16) However, United States (U.S.) courts are a good barometer since the U.S. is often touted as the world's most litigious society. (17) This characterization is not all bad since U.S. jurisprudence is routinely referenced in international disputes (18) and despite the "international" moniker attached to the principal entities regulating the Internet, they are domestic corporations physically located in the U.S. (19)

U.S. Courts address domain name disputes in a variety of ways. The cases may arise from a standard infringement action (20) or a dilution action. (21) They may also be brought specifically under the Anti-Cybersquatting Consumer Protection Act (ACPA), which specifically addresses domain names. (22) A successful ACPA action requires that certain elements be met, including that the mark in controversy is distinctive. (23) In fact, distinctiveness is the core requirement for a mark to be protectable and it is the central point around which trademark disputes of any kind revolve. (24)

Domain names are not necessarily trademarks nor are the procurement of trademarks an automatic reservation for domain names. (25) While trademarks require distinctiveness in order for protection, (26) the same standard is not used to determine domain name "registerability." (27) TLDs are distinguished solely by the designation of the type of website one is most likely to find that the domain name resolves to. (28)

TLDs are commonly referred to as generic top-level domains, or gTLDs, and the additional characterization of "generic" is indicative of the lack of distinctiveness attributable to the TLDs. (29) Some of the generic top-level domains are unrestricted; while others are limited, thus a person can use ".biz" only for business or ".pro" only for a professional credential. (30) There are sponsored top-level domains as well, such as ".gov" in the US for government. (31) Likewise ".museum" and ".mil" for the military are also sponsored TLDs in the U.S. (32)

Furthermore, there are more than (200) country codes extensions (CC's) such as ".eu" for the European Union, ".uk" for the United Kingdom, and ".su" for the Soviet Union. (33) Of the top-level country code domains some are used for dual purposes. (34) In addition to government or official use, the authorities may use the CC to generate income for the country. (35) This is accomplished by allowing the use of a CC extension to be sold to the general public. (36) Popular examples include ".tv" for the small island nation of Tuvalo, used in conjunction with television programming and one of the most recent, ".co" for Columbia, which the country is now allowing individuals to use to indicate their particular company. (37)

The UDRP rules and the ACPA statutes were established to address activities generally identified as cybersquatting. (38) Cybersquatting is often characterized as registering or trafficking in domain names in bad faith. (39) The ACPA definition is more extensive but all characterizations share the view that cybersquatting involves trading in bad faith on the protectable mark of another with the intent to profit. (40) The irony of a robust setting of domain name arbitrage is juxtaposed against the concern over cyberpiracy. (41) Similarly stands the query of how much protection should extend to those who do not fully and adequately protect their marks in cyberspace. (42) Of course that query presupposes that such protection is definable and accessible by the average mark holder which is a far from settled proposition. (43)

At this very moment I can purchase "burgerkingonline.com" as a domain name. (44) Shouldn't I feel free to do so and use this mark to sell goods or services if Burger King (45) has decided not to purchase that domain name? Traditional notions of trademark law indicate that one can use the domain name if he or she does not sell products that are likely to confuse the consuming public or dilute the trademark of Burger King, the international restaurant chain and well-known mark owner. (46) While others in the past may have been able to successfully use the same mark while selling similar products, (47) one may safely presume that the "burgerkingonline.com" domain name is available for purchase precisely because no one currently believes that any type of deliberative body would find in their favor if they tried that in today's business climate. (48) But current decisions are being made that are fading prior bright lines and indicating that such a belief may be misplaced. (49)

This article reviews the top recent cases involving the intersection of trademark law and one aspect of Internet law commonly referred to as domain name disputes. (50) The latest administrative and legislative decisions are also highlighted. The article concludes that the newfangled flexibility being found in the statutes and policies that regulate the area may reflect unnecessarily dangerous precedents. While uncertainty exist in the ever broadening conflict between subsets and outgrowths of trademark law as well as who best to apply them practitioners undoubtedly must arm themselves with as much knowledge as possible in preparation to capture the moment as there is truly no present end to the battle in sight.

1. Highlights in the Evolution of Trademark Cyberspace Law

   The driving force behind the conflict is the geometrical growth in size and importance of domain name law. (51) While trademark protection has been around in some form since population density made identification of goods and services both convenient and profitable, (52) domain name law is a recent phenomenon with the first domain name being issued in 1985. (53) Although the interplay of domain names and trademarks have been debated since the commercialization of the Internet, (54) original disputes sprung more from speculation as opposed to the decades of decisions emanating from the various levels and angles now available. (55)

   When domain...