ON THIS PAGE...
- Domain name registration practice
- Domain name disputes
- Domain names and trade mark infringement
- (A) United States
- (B) United Kingdom
- Dispute Resolution
- Searching on the Internet
The following information is derived from The Trade Marks Handbook by The Chartered Institute of Patent Attorneys & The Institute of Trade Mark Attorneys
A domain name is the text form of a computer's numeric IP address which is used to identify it on the part of the internet called the world wide web ("www") or, simply, "the Web". Every computer has a unique IP address, and the Domain Name System (DNS) maps the text of the domain names onto the corresponding IP addresses. In practical terms, the domain name is that part of a website or e-mail address which follows immediately after the "www" part. For example, the website address of this firm is "www.intellectual-property.co.uk" and the domain name is "intellectual-property.co.uk".
Every domain name has two or more separate levels. In the domain name "intellectual-property.co.uk", the part furthest to the right is known as the top level domain (TLD) and, in this example, is a country-specific (as opposed to a generic) TLD - see below. Thus, in this example, the TLD is "uk". The name "intellectual-property" would be the second level domain (SLD). It is usually the SLD that includes a business' name or trade mark.
When a website is established for business or trading purposes, internet customers will normally expect the SLD to contain or consist of its usual trading name, company name or other corporate identifier. Domain names therefore not only function as user-friendly internet addresses indicating the locations of computers on the Web, but also indicate the ownership/origin of websites and/or the products or services that they market, ie. domain names function in the traditional trade mark sense. Unlike registered trade marks, however, domain names can be wholly generic or descriptive, e.g. "law.com" or "food.co.uk", and their registration does not confer any statutory right to use or prevent others' use, only the limited ability to prevent registration of identical domain names by third parties.
It is estimated that approximately 300,000 domain names are registered each week. Every domain name must be globally unique, and since there are many businesses sharing the same or similar names, the fact that domain names are registered on a "first-come, first-served" basis means that businesses must register names at the earliest opportunity. There is no obligation to use a domain name once registered and, unlike registered trade marks, failure to use a domain name within any given period of time will not affect such registration - provided the necessary registration renewal fees are paid (normally due every two years). Unlike company names and trade marks, therefore, domain names may be reserved, or "stockpiled", with impunity.
Domain names are registered by different governing bodies around the world. There are two principal types of domain name registration: (1) international/generic; and (2) national or country based.
The United States generally uses only the generic registration system. This utilises a small set of generic top level domains (gTLDs) which do not indicate geographical origin, but simply describe the nature of the organisation owning the name. These different unsponsored gTLDs are:
• .gov - Governmental
• .com - Commercial/personal
• .mil - Military
• .org - Not-for-profit
• .net - Internet provider
• .biz - Businesses
• .name - Individuals
• .info - General information
• .edu - Educational
• .int - International (e.g. Red Cross)
By allocation policy, the .gov, .edu and .mil gTLDs are restricted to U.S. applicants only. However, the remaining gTLDs can be reserved by any international or foreign enterprise. The ".com" gTLD is generally regarded as the most desirable gTLD for business organisations with any international aspirations. ICANN has approved sponspored gTLDs which are run by independent agencies who vet owners eligibility. These are as follows:
• .museum - Museums
• .pro - Credentialed professionals and related entities
• .aero - Members of the air-transport industry
• .coop - Cooperative associations
• .asia - Companies, organisations and individuals in the Asia-Pacific region
• .cat - Catalan language and culture
• .jobs - Employment-related sites
• .tel - Internet-based voice/data/text communication
• .travel - Travel agents, airlines, hoteliers, tourism bureaus, etc.
• .mobi - Mobile devices and services for them
More information about top level domains is available at ICANN's website.
Partly in response to complaints about excessive pricing, the Clinton administration, in March 1998, oversaw the creation of the Internet Corporation for Assigned Names and Numbers (ICANN), an international, non-profit, internet organisation based in the United States. ICANN's brief was to take over responsibility for the IP address allocation and domain name system and, more particularly, to break the monopoly of Network Solutions Inc. (NSI), and open GTLD registration to full-scale competition.
ICANN is also the successor to the Internet Assigned Numbers Authority (IANA), which historically co-ordinated the IP addressing and domain name system. From September 2000, ICANN will gradually be assuming total responsibility for the allocation of IP addresses, the management of the DNS and root server systems and the co-ordination of the assignment of protocol parameters. More information about ICANN may be found on its website.
There are three organisations that serve as advisory bodies to ICANN:
(1) the Domain Names Supporting Organisation (DNSO);
(2) the Address Supporting Organisation (ASO);
(3) the Protocol Supporting Organisation (PSO).
Under ICANN's by-laws, these supporting organisations act as advisory bodies to ICANN, with primary responsibility for developing and recommending substantive policies regarding those matters falling within their specific responsibility.
The DNSO is concerned with, inter alia, trade mark interests and consists of a general assembly, together with a names council containing three representatives from seven constituencies, one of which is the IP constituency (IPC). For further information on the DNSO, the reader is invited to go to its comprehensive website www.dnso.org.
An important aspect of ICANN's role is to accredit new registrars to compete effectively with NSI in the registration of the gTLDs. ICANN's accreditation guidelines for new registrars can be found at http://www.icann.org/icp/icp-2.htm. Applicants for accreditation must meet certain criteria to show that they are capable of acting as registrars, and enter into accreditation agreements with ICANN by which they agree to follow various practices. In April 1999, ICANN announced five new registrars to participate in the test bed phase, and a further 29 applicants have since been accredited. Full details of participating registrars can be found on ICANN's website. To register a GTLD with a registrar other than NSI, one should go to the INTERNIC site at www.internic.net which has central links to all the accredited registrars in the competitive shared registry system.
For the UK, the centralised information on registration is via INTERNIC site at www.internic.net which has central links to all the accredited registrars in the competitive shared registry system.
NSI remains an accredited registrar but must now operate in accordance with the same ICANN rules as other competing registrars. Formal instructions to register a domain name with NSI can be found at www.networksolutions.com.
Country-specific domains are based on the international two-letter country code (ISO-3166) and are known as "ccTLDs". There are more than 200 national ccTLDs which are administered by local governments or by private businesses authorised by government, and all have their own registration policies. A list of the local registries may be found at http://www.iana.org/cctld/cctld-whois.htm. Examples of ccTLDs are as follows:
• United Kingdom uk
• Belgium be
• Germany de
• Ireland ie
• Portugal pt
• Spain es
• Europe eu
Registration requirements for ccTLDs differ radically from registrar to registrar. Many countries, such as Belgium, Ireland and France require both a local contact for domain name registration and a local company to hold the registration. In contrast, the United Kingdom, Germany and Italy are examples of countries that are non-discriminatory and will allow foreign registrants to hold domain names. Many national registrars will allow only one domain name per registrant/organisation. Others allow multiple domain names.
In the United Kingdom, allocation of domain names ending in the top level domain ".uk" is conducted by Nominet U.K. and the following sub-domains have been created:
• .co.uk - commercial
• .org.uk - not-for-profit
• .ec.uk - educational
• .gov.uk - government agency
• .ltd.uk - registered limited company
• .plc.uk - registered public limited company
All necessary forms, instructions and registration costs for domain names can all be found at Nominet's website, www.nominet.org.uk.
For some companies, it may be sensible to register key domain names in multiple jurisdictions for defensive purposes, ie. to prevent others from registering the same names. This may be important in countries where anyone can register any domain name or where entities have customers, a trading presence or competitors.
The two main reasons for domain name registration are for actual use and for protection of a brand.
All of the registrars mentioned above, ie. both national and generic, act independently and maintain totally separate registers. Ownership of a domain name such as "intellectual-property.co.uk" will not, therefore, affect others' rights to register the identical name on other registers, e.g. prevent others from registering "intellectual-property.com". Different registries have different acceptance and qualification criteria, but in no cases are there any examinations for conflicts with existing trade marks, company names or business names. Indeed, although it was many years ago that E. Eder & Co. firm registered the domain name "intellectual-property.co.uk", the UK Intellectual Property Office some time later obtained a registration of the domain name "intellectual-property.gov.uk".
Domain Name Registrars are not entrusted with any legal powers, nor can they make judicial decisions. Unlike the trade mark registration system, applicants can register domain names which differ only very slightly from previously registered domain names. It will therefore often be prudent for businesses to register as domain names both their business name/trade mark and very close variations thereof, e.g. pluralised or hyphenated versions. Another way in which domain name registration differs from trade mark procedure is the absence of any goods or services classification system for domain names. As is well known, there are now 45 international classes for goods and services (see classification), which facilitates the coexistence of identical marks, e.g. FORD for motors cars, and a model agency, respectively. In contrast, there is only one "ford.com" gTLD available worldwide. According to various registrars, including Nominet in the UK, technical difficulties make it very difficult for businesses to share the same online domain name.
Factors particular to the domain name system and the internet make disputes over domain names more likely than, e.g. disputes over company names or trade marks. Registration of domain names can be effected very quickly, often in less than 24 hours, and the procedure is informal and inexpensive. This ease of registration, combined with the fact that domain names must be globally unique and are allocated on a first-come, first-served basis, make it easier for disputes to arise over entitlement to domain names. In general, disputes can arise in two distinct sets of circumstances, described below.
This is also known as domain name piracy. It is usefully defined in the recently enacted U.S. anti-cybersquatting legislation as registering, trafficking in, or using a domain name that is identical or confusingly similar to another trade mark, or dilutes another trade mark, when the person registering or using the domain name does so with bad faith and intent to profit from the trade mark.
Accordingly, cases of cybersquatting invariably involve an element of improper motive or bad faith.
The first, widely publicised cybersquatting case involved McDonalds Corporation. Joshua Quitt in New York, a writer for RED magazine, registered the domain name "mcdonalds.com". McDonalds was not amused, but settled the dispute by making a donation to the charity of Quitt's choice in exchange for the domain name. Further examples include a reporter registering a domain name "nyt.com", which was later purchased by the New York Times Company; and Sprint Communications registering the domain name "mci.com". In these cases, someone intentionally registers a domain name to prevent the trade mark owner establishing a website under that name, to compel the trade mark owner to pay a ransom to acquire the name back. In an action before the U.S. District Court in Kansas City, Counsel of Better Business Bureaus Inc. v. Mark Shoe, No. 95-0473-CVW-2 (filed May 8, 1995), Mark Shoe has registered the domain names "bbb.com" and "bbb.org" in an attempt to force the Counsel of Better Business Bureaus (referred to as BBB or CBBB) to buy back the domain names. CBBB brought an action for unfair competition and trade mark infringement. On settlement, the domain name was handed back to the plaintiffs.
In the United Kingdom, cybersquatting has been held to constitute trade mark infringement and passing-off in the One-in-a-Million case referred to below although, unlike in the United States, there is no specific anti-cybersquatting legislation.
There are also cases of conflict where domain names are used and registered by entities that have no knowledge of a potential claimant's earlier trade mark rights, and adopt such domain names in good faith. These cases should be distinguished from the cybersquatt ng scenarios described above and the ordinary rules of trade mark infringement and passing-off applied. In the Avnet case , the English courts found that the services provided under the domain name "avnet.com" were not similar to those covered by the claimant's earlier trade mark registration for AVNET, and, hence, refused to grant an injunction for trade mark infringement.
Although many lawsuits containing domain name disputes have been filed and settled in the United States, very few courts have actually ruled on the matter of infringement of trade mark rights. The first case was Hasbro v. Internet Entertainment Group where the court issued an injunction under the then new Federal Trade Mark Dilution Act. The case concerned the defendant's use of candyland.com as a domain name for an adult entertainment website. Hasbro owned the registered trade mark CANDYLAND covering children's games and alleged that the defendant's use would dilute its trade mark rights, especially as in US parlance "Candy" can have sexual connotations. Hasbro submitted evidence to show that 60 per cent of US families with children under five owned the CANDYLAND board game. This evidence was deemed persuasive of the reputation of Hasbro's CANDYIAND trade mark.
In Panavision International LP v. Toeppen Panavision, which was the owner of the well-known trade marks PANAFLEX and PANAVISION, registered for theatrical motion pictures, television cameras and photographic equipment, sought to prevent Toeppen registering the domain names "panaflex.com" and "panavision.com". Toeppen, who did not use either domain name in commerce, tried to sell the names back to Panavision. The court held that Toeppen's practice of registering the domain names and then seeking to sell or license them back to the true owners constituted dilution of Panavision's marks. The defendant was ordered to transfer the domain names back to Panavision. This result was achieved in an analogous situation but by a very different route in the English court in the One-in-a-Million cases.
In Actmedia Inc. v. Active Media International Inc. Actmedia had registered the trade mark ACTMEDIA for advertising and promotional services. It then tried to register the domain name "Actmedia.com", only to find that it had already been taken by Active Media, a company providing similar services. The court ordered an injunction on the basis that use of the domain name "Actinedia.com" on an intemet site in respect of similar services to those of Actmedia created a likelihood of confusion. The court also ordered the defendant immediately to transfer the domain name "Actmedia.com" to Actmedia.
In another decided case, Playboy Enterprises Inc. v. Chuckleberry Publishing Inc. (unreported) of New York held that U.S. trade mark law could not prohibit the mere operation of an internet website located in another country, despite the fact that users in the United States could obtain access to the site. It was held, however, that US trade mark law could prohibit the overseas operator from actively marketing or promoting its goods to US users or receiving money from them. The defendant maintained its "Playmen" website in Italy which contained images which could be accessed by users via the internet. In order to subscribe, a user could send his credit card number to the operator in Italy and then obtain unlimited access to the site. Although the Playmen site was physically located in Italy, the defendant actively invited US users to download images. The court held that the invitation to view and download constituted infringing distribution in the United States and the defendant was ordered to discontinue its services to users in the United States. Although the defendant was allowed to continue to operate its internet site, it was ordered to refrain from offering or accepting subscriptions from customers living in the United States. This case, as well as the U.K. Prince case referred to below, neatly illustrate the non-territoriality of internet trading, ie. the near-impossibility of confining trading activities to selected jurisdictions.
In Ticketmaster Corp v. Microsoft Corporation Microsoft created a hyperlink to Ticketmaster's website without its permission. The hyperlink took the user from the Microsoft website directly to pages on Ticketmaster's website describing various entertainment events and thereby by-passing Ticketmaster's home page. Ticketmaster filed an unfair competition and trade mark infringement case against Microsoft contending that its activities constituted "electronic piracy" by depriving Ticketmaster of the advertising revenue it would otherwise have obtained if the link had connected to its home page.
In Washington Post v. Total News Inc. the defendant set up hyperlinks to the plaintiff's website. However, rather than conveying the internet user directly to the Washington Post website, the hyperlinks on the Total News website showed the contents of the plaintiff's website within a window or "frame", with the defendant's name posted over the information acquired from Washington Post. This type of linking, known as "framing", creates a risk that the internet user may be confused as to the source of the content. The case has now settled on the basis that Total News shall continue to provide hyperlinks but no longer frame the content of the site with its own.
Another common internet practice that may, in certain circumstances, give rise to liability for trade mark infringement and, in the United States, trade mark dilution, is the practice of meta-tagging. Websites are written in a language called HTML (Hypertext Markup Language), and "meta-tags" are the keywords embedded in the code of the websites which are employed by internet search engines and browsers to index and identify relevant websites. In some cases, website owners will embed a competitor's name as a key word in their own sites so that when an Internet user uses a search engine to locate the site, the search engine will identify both companies. Tlis practice has been objected to by trade mark owners in the United States.
In Playboy Enterprises Inc. v. Calvin Designer Label, a court in California ordered Calvin Klein to desist from using the plaintiff's trade marks PLAYMATE and PLAYBOY embedded in its home pages or web pages.
In Oppendahl & Larson v. Advanced Concepts, Advanced Concepts was in the business of registering domain names and embedded the name "Oppendahl & Larson" as a meta-tag in its website. Oppendahl is an intellectual property law firm. Oppendahl sued for trade mark infringement, dilution and unfair competition. Advanced Concepts has removed all reference to Oppendahl & Larson from its website.
In Brookfield Communications Inc. v. West Coast Entertainment Corp the defendant used the name "MOVIEBUFF", a trade mark owned by the plaintiffs, in its meta-tags to lead browsers to its own informational sites. It was held that this practice constituted "initial interest confusion", amounting to trade mark infringement, although people were unlikely to be confused once they reached the actual site. The court made an interesting analogy to a situation in which the defendant and plaintiff operated competing stores at different highway exits. If the defendant placed a sign at the exit to his store, indicating that the plaintiff's store was located there, then customers would be misdirected. Some customers might not then make the extra effort to find the plaintiff's store, but patronise the defendant's store instead.
A factor that counts against a defendant, even if not acting in bad faith, is not searching the Register before adopting and registering a domain name: First Yewelry Company of Canada, Inc. v. Internet Shopping Network. It is submitted that this may also be relevant in the United Kingdom; cf. Torbay Council v. Satnam Singh (a U.K. criminal trade mark case). In US jurisdiction, the general principle is that a US court will not exercise jurisdiction in a state with which the defendant does not have sufficient contact. A defendant will have the necessary contact if (a) he purposefully avails himself of the benefits and protections of the laws of the state and (b) exercise of jurisdiction does not offend "traditional notions of fair play and substantial justice". In general, a US state will not exercise jurisdiction solely because the defendant maintains a website on the internet. For example, in Bensuson Restaurant Corp v. King, a New York court refused to exercise jurisdiction over a Missouri resident who operated a website publishing events and offering reservation services at his "Blue Note" jazz club. The plaintiff owned a federally registered trade mark, THE BLUE NOTE, and operated a famous New York jazz club under the same name. The New York court held that, because the defendant did not solicit customers in New York, but only directed his services locally in Missouri, the court could not exercise personal jurisdiction. By contrast, in Inset Systems Inc. v. Instruction Set Inc., a Connecticut court held that nationwide advertising by a Massachusetts company under the name "INSET.COM" and the operation of a toll-free phone number, 1-800-US-INSET, available in Connecticut constituted sufficient contact with the forum state for the court to exercise jurisdiction in respect of a trade mark infringement suit by the owner of a federal registered mark INSET.
At a practical level, a UK company wishing to avoid invoking the jurisdiction of a US Federal Court by simply operating a website accessible in the United States, should make it clear on its website that it does not make sales to US customers, and should take care not to present itself as seeking sales in the territory. For example, prices should not be quoted in US dollars.
However, more recently US and Canadian courts have been moving away from the "interactive v. passive website" test towards the "targeted" or "effects-based" test under which a passive website does not necessarily confer immunity from infringement if it is part of a larger business plan or model, does target customers, or causes loss to residents, in the jurisdiction question.
For an extensive review of (mainly) US and international case law, the reader is recommended to turn to "Trademark Law and the Internet", INTA Publications (Lisa E. Crystal and Neal S. Greenfield (eds); with October 2000 Supplement).
In Mecklermedia Corporation v. DC Congress  F.S.R. 627 Jacob J., in an application to strike out proceedings, considered whether the defendant, DC Congress, could, by operating its website from Germany under a domain name incorporating the words "Internet World", be held liable for passing-off in the United Kingdom. Mecklermedia published the magazine Internet World in the United Kingdom and other countries and also ran trade shows under the name in the United Kingdom. It also ran trade shows under the name and a promotional website. Accordingly, Mecklermedia claimed that it had established goodwill and reputation in the name "Internet World" in the United Kingdom. The defendant, a German organiser of trade shows, launched a trade show called "Internet World" to be held in Germany and Austria, and set up a website located on a computer in Germany under a domain name including the words "Internet World". DC Congress argued that its website was legitimately situated in Germany and could not therefore be restricted by an English court. The judge disagreed, however, on the basis that operation of the website caused damage to Mecklermedia's goodwill in the United Kingdom. He added that where an organisation wishes to use a domain name globally it must take into account that in some countries there may be infringement of existing rights.
The question of whether there is infringement if a person uses a UK registered trade mark on the internet remains difficult. In Euromarket Designs v. Peters and Crate & Barrel  F.S.R. 288 Jacob J. held that the phrase "using in the course of trade ... in relation to goods" in section 10 of the Trade Marks Act (Article 5 of the EU Directive) required the court to ask whether a reasonable trader would consider that the use concerned was "in the course of trade in relation to goods" within the Member State concerned. In considering this, the court should ask whether the defendant had any trade in the United Kingdom or had any customers buying goods for consumption in the United Kingdom. He relied on his own decision at first instance in the case of 800 Flowers TM  F.S.R. 121 in saying that it is not merely a question of using a name on the internet and thereby establishing "use" throughout the world, but rather on whether or not the website owner has actively gone out to seek worldwide trade not just by use of the name on the internet but also by advertising its business there and offering and operating a real service of supply of goods to the jurisdiction in question.
In Harrods Ltd v. U K Network Services, Michael Lawrie, [The Times, December 9, 1996], the plaintiffs, who had registered the trade mark HARRODS for goods and services in various classes, sought summary judgment against the defendants in respect of Michael Lawrie's registration of the domain name "harrods.com", alleging trade mark infringement and passing-off. Harrods had Network Solutions Inc. (NSI) suspend the name and pursued the action in England, given that Michael Lawrie was resident there. It is noteworthy that NSI acknowledged that it would comply with any order of an English court allocating ultimate ownership of the name, and this removed any doubt as to the correct forum for trade mark proceedings. The judge held in favour of Harrods, stating that the defendants' actions clearly constituted trade mark infringement and passing off. He did not regard as persuasive the pleaded defences that the defendants had no intention of using the domain names themselves or that unless Harrods had registered its mark in class 38 (telecommunications) no infringement was committed. He also rejected submissions that domain names were akin to electronic street addresses and could not function as trade marks or infringe registered trade mark rights. Although this judgment has been welcomed as a deterrent to UK domain name grabbing, it is of limited use in determining the law because the defendants did not appear in court to defend their position. It is noteworthy, however, as the first decision by the English courts which confirmed that trade mark law applies to the Internet in the same way as any other medium.
In British Telecommunications plc v. One-in-a-Million Ltd; Ladbroke plc v. same; Sainsbury plc v. same; Virgin Enterprises Ltd v. same; Marks & Spencer plc v. same  F.S.R. 265, the defendants registered Internet domain names consisting of the trade marks of well-known enterprises including marks&spencer.com; marks&spencer.co.uk; jsainsbury.com; sainsbury.com; sainsburys.com; ladbrokes.com; virgin.org; bt.org; and cellnet.net. The plaintiffs, who owned the registered trade marks included in the various domain names, alleged trade mark infringement and passing-off and filed applications for summary judgment. All the plaintiffs owned valuable goodwill and reputation in their trade marks in the United Kingdom. Mr Jonathan Sumption Q. C., sitting as a deputy High Court judge, granted final quia timet orders in all cases on the basis that, irrespective of the uses to which the defendants put the domain names, the plaintiffs' registered and common law rights would be infringed and there would be likely damage sufficient to support passing-off. He regarded the domain name registrations as "instruments of fraud or deception". With regard to trade mark infringement, he held that the action of trafficking in registered trade marks by dealers such as One-in-a-Million amounted to a use in the course of trade and also as threats of infringement and threatened passing-off. He also ordered the defendants to take steps to have the disputed domain names assigned to the plaintiffs. While this was not the type of order normally appropriate in a quia timet action, the judge took the view that this appeared to be the most expedient way of dealing with the matter since the disputed domain names were of no value to the defendants other than as a means of threatening unlawful acts. The case went to appeal. The appeal was dismissed with costs and leave to appeal to the House of Lords was refused ([ 1999] E.T.M.R. 6 1;  F.S.R. 1). The appellants' argument was that their domain name registrations could be used for a legitimate purpose, that it was not (necessarily) an instrument of fraud and that therefore injunctive relief was inappropriate. But the court held that mere registration of a domain name "marksandspencer.co.uk" was passing-off and there was likelihood of damage because an internet user executing a "whois" search and finding the appellants' name would believe them to be connected with Marks and Spencer plc; this was an erosion of the latter's goodwill. The judge's finding were upheld. The Court of Appeal also pointed to its own decision in Norwich Phamacal Co. v. Customs and Excise Commissioners  A.C. 133 as illustrating the ability to restrain dissemination of an instrument of fraud.
In Prince plc v. Prince Sports Groups  F.S.R. 21, Prince plc was an IT services company who had registered 'prince.com' as its domain name in 1995. Prince Sports had registered PRINCE as a trade mark for sports goods in the United States and wrote to Prince plc in the United Kingdom threatening proceedings. Prince plc brought proceedings under the threats provision of section 21 of the Trade Marks Act 1994 and succeeded in obtaining an injunction against Prince Sports Group. Prince Sports Group tried to argue that this was a threat regarding an infringement of a US trade mark, and so was not actionable in the United Kingdom. However, this had not been clearly stated in the letter and therefore no defence was afforded under the UK Act.
In Pitman Training Ltd v. Nominet U.K.  F.S.R. 797, the Nominet "first come, first served" rule for internet domain name registration was confirmed where the first applicant had a legitimate right to use the name PITMAN. Pearson trading as Pitman Publishing had registered the domain name "pitman.co.uk" but, due to a procedural error, Pitman Training was later granted the name. When Pearson discovered the error it asked Nominet U.K. to correct it and the name was transferred back to Pearson as the initial proprietor. At a pre-trial hearing, Scott V.-C. rejected all Pitman Training's claims (including a claim for passing-off) as unarguable.
Of interest also is the case Avnet Incorporated v. Isoact Lid  F.S.R. 16 mentioned above. The defendants were Internet Service Providers (ISPS) and owned the domain name 'avnet.co.uk'. AVNET was the plaintiff's registered trade mark in Class 35 for "advertising and promotional services". On an application for summary judgment Jacob J. held that an ISP facilitating customers to advertise on their own websites was not trade mark infringement of a registration covering advertising services.
In what is believed to be first UK court decision involving "metatags" (keywords, which here were someone else's registered trade mark, invisibly embedded in the code of a website to attract search engines to that website), the court found the defendant's use of the claimant's mark as a meta-tag solely to attract Internet users to its website a "blatant and unsophisticated" infringement as well as passing-off. Road Tech Computer Systems v. Mandata  E.T.M.R. 970.
In Bell Atlantic Corp. v. Bell Atlantic Communications plc (unreported, December 21, 1998) the defendant claimed to have adopted 'bellatlantic.co.uk' innocently. Following One-in-a-Million, summary judgment was given in favour of the claimants for infringing their registered trade mark BELL ATLANTIC.
The issues of whether use of a domain name and website constitutes (i) use in the course of trade and (ii) within the jurisdiction of the United Kingdom arose in 800-FLOWERS TM  R.P.C. 697. The judge held, inter alia, that use of 1-800-FLOWERS in the United States and a website was insufficient: "the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world" (at page 705). The website needs to be "aimed at" customers in the jurisdiction in which infringement is claimed; and this was not so in this case.
Whereas the defendants in One-in-a-Million and Bell Atlantic (above) were clearly not in good faith, where that is not so interlocutory injunctions or summary judgments will be refused: French Connection Ltd v. Sutton  E.T.M.R. 34 1, the "fcuk.com" case. In Tropical Resorts Management Ltd v. Morgan (unreported, July 3, 2001), Ferris J. decided that the holding of a registration of a domain name which incorporated the trade mark of another company could amount to holding an instrument of deception actionable in passing-off.
The judge in the 800-FLOWERS case (above) had a second chance to strengthen the issue on jurisdiction in Euromarket Design Inc. v. Peters  ES.R. 288. A successful U.S. business, trading under the name "CRATE & BARREL", sued an Irish company with a Dublin shop of that same name on the basis of an advertisement by the latter in a UK magazine which referred to its website. The judge considered that the website was referring to the Dublin shop and, in the absence of evidence of actual solicitation of trade from the United Kingdom, there was no use "in the course of trade" as required by section 10 of the 1994 Act, and that phrase had to be interpreted as having the words "in relation to goods".
In the meantime, there had been an appeal from the 800 Flowers case to the Court of Appeal whose judgment on May 17, 2001 (unreported) differs somewhat from Jacob J.'s approach. The Court of Appeal drew a distinction between use to support the trade mark and potentially infringing use. To quote from one of the judgments:
"The implication of Internet use for issues of jurisdiction are clearly wide-ranging and will need to be worked out with care ... It is therefore unlikely that there will be one uniform rule specific to the Internet that can be applied in all cases ... there is something inherently unrealistic in saying that A 'uses' his mark in the UK when all that he does is to place the mark on the Internet from a location outside the United Kingdom and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A. By contrast ... it might be more easily arguable that if A places on the Internet a mark that is confusingly similar to a mark protected in another jurisdiction, he may do so at his peril that someone from that other jurisdiction may download it; though that approach conjured up in argument before us the potentially disturbing prospect that a shop in Arizona or Brazil that happens to bear the same name as a trade marked store in England or Australia will have to act with caution in answering telephone calls from those latter jurisdictions. However that may be, the idea of 'use' within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring their mark into the area. Of course if persons in the United Kingdom seek the mark on the Internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different."
At the same time as setting up ICANN, the Clinton administration also asked WIPO to produce a report recommending a uniform policy for the resolution of disputes between domain name holders and trade mark owners. WIPO's final report was published on April 30, 1999, and is available on the WIPO website http://www.icann.org/dndr/udrp/uniform-rules.htm. A list of WIPO decisions may be found at http://arbiter.wipo.int/domains/decisions/index.html. It should be noted that the ICANN rules include dealing with "reverse domain name hijacking", i.e. using the UDPP rules in bad faith in an attempt to deprive a domain name owner of a legitimately registered domain name; see, e.g. WIPO Case No. D2000-0993 re. "smartdesign.com": SmartDesign LLC v. Hughes.
The U.S. Anti-Cybersquatting Consumer Protection Act was enacted on November 29, 1999. This provides brand owners with a civil cause of action against a U.S. defendant who, with bad faith intent to profit, registers, traffics in or uses a domain name identical or similar to an earlier trade mark. This is an important piece of U.S. legislation but which differs on many points from the ICANN UDRP.
In the UK, Nominet UK will assist parties involved in a dispute about a UK Internet domain name by providing the following services:
(1) Investigation: Nominet U.K. will try to establish a mutually acceptable solution to the dispute by means of the impartial intervention of senior executive staff of Nominet U.K.
(2) Formal action under the rules: Nominet UK may suspend delegation of an Internet domain name if it is drawn to its attention that the domain name is likely to cause confusion. If investigation does not resolve the dispute, it will consider evidence to see whether suspension is necessary. If the affected party is not satisfied with the decision to suspend, then Nominet U.K., at the party's request, will refer the suspension to an independent expert and will inform the parties of the expert's role. The expert will request the parties to make written submissions and, having considered the evidence, will issue a recommendation to Nominet with reasons, which will then make a final decision and confirm it to all interested parties.
(3) Dispute-resolution service: Nominet provides an alternative dispute-resolution service where either party is dissatisfied with the final decision, and this is administered by the Centre for Dispute Resolution (CEDR). The dispute service is a form of mediation to provide the parties to the dispute with a mutual third-party intermediary to assist them reaching an agreement. Mediation fees and expenses are borne by the parties.
Nominet also allocates domain names on a first come, first served basis. This policy is clearly demonstrated in the recent case of Pitman Training Ltd v. Nominet U.K. and Pearson Professional Lid  F.S.R. 797, a transcript of which may be found at http://www.nominet.org.uk/ReferenceDocuments/here/ThePitmanCase.html. In this case, Pitman Publishing, a division of Pearson Professional, and Pitman Training Ltd had both traded under the name "Pitman" for many years, but were unconnected. In February 1996, Pearson Professional arranged for registration of the domain name "pitman.co.uk" and "pitman.com" as domain names for the benefit of its Pitman Publishing division. Pitman Publishing made no immediate use of Internet facilities for which the domain name were needed, so steps were not taken to translate the domain name into IP numbers. It was Pearson's intention to register the domain name for future use. Subsequently, in December 1996 Pitman Publishing attempted to connect its website to the "pitman.co.uk" domain name but, unknown to it, that domain name had been reassigned to the defendant, Pitman Training Ltd, which was actively using it. Pitman Publishing demanded that Nominet return the name to it, threatening to sue, and Nominet duly complied. The transfer was effected in April 1997. Pitman Training Ltd then commenced proceedings and applied for an ex parte injunction to compel Nominet to reinstate Pitman Training's electronic mail address. The injunction was granted and the court ordered Nominet not to suspend or remove Pitman Training's electronic mail address or to assign any electronic mail address with the name "pitman.co.uk" or any name including "pitman.co.uk" to any person other than the plaintiffs.
However, at the subsequent inter partes hearing, the judge questioned whether Pitman Training had any cause of action. (It alleged, inter alia, passing-off.) The evidence presented by Pitman Training did not support the contention that the public associated the domain name "pitman.co.uk" with Pitman Training. Pitman Training had only ever received two e-mail responses to the advertisement put out during the previous months and it was held that no passing-off claim against Pitman Publishing arising out of the future or past use by Pitman Publishing of the "pitman.co.uk" domain name was shown. The court accordingly held that Pitman Training had no arguable cause of action and discharged the injunction. The result might have been very different, however, if Pitman Training had been able to show that it conducted a high level of business on the Internet with the result that it had established a reputation and goodwill in use of the domain name.
There are many contexts in which it will be necessary or advisable to conduct searches of existing registered domain names. Unfortunately, there is currently no centralised database of existing registered domain names, and it is necessary to conduct electronic searches of each of the registers individually.
Registering domain names as trade marks
Information on this appears in our section on Trade Marks.
The comments above should not be regarded as a definitive statement of the law and are provided for general information purposes only. For further details, advice, and an indication of likely costs, please contact us.