Laying down the law on domain names
August 25, 1999
by David Pescovitz
(IDG) -- In the realm of intellectual-property law, domain names are still living in the Wild West. There is not yet a body of domain-name legal rulings to rely on if you feel you've been wronged, only the legal precedent from existing trademark law or relevant court cases. And the legal precedents are being set as we speak.
"Trademark law simply doesn't map onto the domain-name infrastructure," says Gray, Cary, Ware & Freidenrich attorney Mark Radcliffe, who has handled legal issues related to domain names for Salon.com, among many other companies. "You can have many people with the same trademark within any country as long as their products and services aren't confusingly similar. And competitors may own the same trademark in different countries."
For instance, Apple is a trademark that's owned by both the computer company and the Beatles' record label. But, Radcliffe points out, "there's only one dot-com address."
We asked Radcliffe to debunk some commonly held myths about domains and the law.
Myth: "My company registered the domain name first, so I have the right to it."
Reality: It depends on who obtained the trademark for those goods or services first. The best tactic is to simultaneously apply for a federal trademark and a corresponding domain. Trademark rights can be obtained simply by doing business with that name, although this only gives you rights in the geographic area in which you're using the name to conduct sales.
Myth: "I own the trademark, so I automatically have rights to the domain name."
Reality: If another party registered the domain before you got the trademark rights, you're probably out of luck. In addition, many other companies may also own the trademark, perhaps for other goods or services. Who gets the domain in those cases? That's up to the courts.
Myth: "Network Solutions will give me my domain name back once they realize I own the trademark."
Reality: If you send proof of trademark ownership to Network Solutions and written notice to the domain-name registrant, the most NSI will do, under its Domain Name Dispute Policy, is put the domain name "on hold," which prevents anyone from using it.
The real battle over the domain name will most likely be fought in court. Filing a lawsuit can run you $5,000 to $10,000 just to get it into court -- and let us not forget the hefty legal fees you'll face once the case goes before a judge (if it isn't settled out of court first, as the overwhelming majority of civil lawsuits are). Then there's the potential that you may have to pay penalties and the other company's legal fees if you lose.
Myth: "My domain name is only an electronic address, not a trademark, so I'm protected from companies that think they have legal rights to the domain name."
Reality: If you're using your site for commercial purposes, the company with the trademark probably has the law on its side.
Myth: "I'm using .net or .org, so I don't have to worry about violating someone's trademark."
Reality: Regardless of the suffix, rights are determined by the way in which you use the word or words.
Myth: "I'll be able to get the domain name I want in another country."
Reality: Possibly, but domain registries in many countries require that your firm be incorporated within that country's borders before you can gain rights to the domain name there. If you think things are complicated here, keep in mind that trademark law relating to domain names is even less clear abroad.
Opinion: E-nough already!
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