Domain Names

• Author: Dennis S. Prahl and Elliot Lipins
• Profession: Ladas & Parry LLP
• Pages: 85-101

C0509/02/201112:36:45Page 85

CHAPTER 5

Domain Names

Dennis S. Prahl and Elliot Lipins

Ladas & Parry LLP

The Internet and domain names have created one of the largest challenges to the

protection of trademarks since the end of the 20th century. It is essential for

every trademark owner to understand the nature of domain names, the threats posed

to trademarks by domain names, and the options available to prevent and act against

abuses by other parties.

An Overview of the Internet

The Internet is a large number of interconnected computer networks located across

the globe, which collectively offer a vast amount of information to other people

on the network. At the end of 2009, an estimated 1.8 billion people were using the

Internet.

1

The World Wide Web specifically refers to a network of hyperlink docu-

ments that users access via an Internet browser on their computer. The Internet and,

most prominently, the World Wide Web have become wildly popular and offer com-

panies great opportunities to establish andexpandtheirbrands.TheInternetand

World Wide Web also pose significant opportunities for trademark infringement and

misuse by third parties.

The Internet has also presented a challenge internally to brand owners and com-

panies, forcing a convergence of assets across the legal, marketing, communications,

and information technology (IT) departments. The most successful companies in this

area are those who have recognized this convergence and established protocols for

strategy, budgeting, and communications across these internal departments, result-

ing in proactive policies to capitalize on the opportunities and address the chal-

lenges. Others have simply left it to an ad hoc and inconsistent approach that

achieves neither an effective message, a productive legal strategy, nor IT best prac-

tices. Either way, brand owners have had to devote more personnel and monetary

resources to their Internet strategies and coordination among the three key depart-

ments yields the greatest cost-benefit.

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A basic understanding of the Internet and careful monitoring of a company’s

trademarks on the Internet is necessary in order to establish and maintain effective

policies and the goodwill and value of a company’s trademarks.

Domain Names

Brand owners need to understand how domain names function and how they are

allocated and used in order to grasp the risks they present to brands.

The Function of Domain Names

Organization of large numbers of computer networks that comprise the Internet

is accomplished largely by the Internet protocol (IP) address system. Under the IP

system, each network on the Internet is assigned a unique IP address in the form of a

32-bit number, or a number string such as 123.234.345.456, which can be analogized

to a telephone number. Computers rely on the IP address of a network to identify

and connect to specific web sites on that network.

Domain names provide a simplified naming system to associate with IP

addresses so that users do not need to remember long number strings. A domain

name is an alphanumeric identifier that is used to designate a particular 32-bit Inter-

net protocol Web address. The use of meaningful, informative language to direct a

user to a particular domain name greatly simplifies the task of locating particular

web sites. The use of language within a domain name allows domain owners to

define their web site in a manner that helps users find and remember the domain

name. For instance, Ladas Domains, LLC has registered ladasdomains.com to provide

information and a Web commerce site for its services. Internet users simply type

www.lada sdom ains.com in the address bar of their Internet brows er to find the web

site rather than typing 69.20.67.17, which is the IP address for the same web site.

Domain name servers (DNSs) associate the specific numeric IP address with the

corresponding domain name and provide the technical framework to allow the

domain name system to function successfully. DNSs ensure that an Internet user

who types a specific domain name in his Internet browser is routed to the proper IP

address. Notably, they also allow a domain name holder to modify the domain

name/IP address relationship at any time. As a result, if the domain owner’s server or

server location is changed, the domain owner or its network administrator can

update the IP address on the DNS and an Internet user typing the domain name will

then be directed seamlessly to the new location or new server. A domain name’s

function as an unchanging designator for a domain owner’s server allows physical

changes of server locations to go unrecognized to a visitor of the owner’s web site.

The Anatomy of a Domain Name

A web address such as http://www.internet.com is comprised of numerous parts.

The most relevant components of a domain name for intellectual property owners

are the portions following the ‘‘www.’’ The rightmost portion immediately following

the rightmost period is known as the top-level domain (TLD). The TLD defines the

86 Intellectual Property Operations and Implementation