When Trademarks and Domain Names Collide

Posted by Cyberbear on April 27, 2015 in Domain Names, Intellectual Property, Judicial Decisions, Legislation, Trademark |

Posted by Angelica J. Simpson

April 6, 2015

Trademark-Symbol_32Branding your product has long been a protected area of American legal practice. However, in the fast changing age of the Internet, the ability for those to monitor and protect their trademark has become increasingly difficult. With multiple parties requesting the use of limited domain names, the legal rights to who controls these names becomes an issue. As the access to the Internet expands, along with the domain names available, the international community requests authority and structure to level the playing field of all countries involved.

The Madrid Protocol, adopted in 1989, and in operation since 2004, sought to address the original issue of international trademarks. The system provides a way to register trade marks internationally, by way of one application. With 91 members, including the United States, trademark holders with an existing trademark, can seek application to register their mark with thy system. This grants the trademark the protection afforded by the international registration in more than one jurisdiction. It is important to note that a valid trade mark in the United States, might not enjoy the same status abroad, and with the every changing law and technology things become more difficult to understand.

The United States has undertaken further protections by enacting the Anti-Cybersquatting Consumer Protection Act, (ACPA) Enacted in 1999, this act established a cause of action for those who registered, trafficked in, or used a domain name that was confusingly similar to, or was used to dilute a valid trade mark. The concept of this law protects those in the United States, however cases have stemmed from international individuals gaining access to sites that a potential trademark owner would seek rights too.

One issue that warrants discussion in regards to enforcing trademark law over the Internet is the idea of jurisdiction. The Internet is a product that has the ability to reach an international scale, making out of state, and out of the country defendants hard to reach for an American plaintiff. One solution to this problem is the use of a special jurisdiction that allows trademark owners to reach individuals infringing on their mark. This concept is known as in rem jurisdiction. But just how far will in rem jurisdiction take you?

In rem jurisdiction seeks to allow the trademark owner to reach a person who may have been originally not within the jurisdiction of the court. A trademark owner can file an in rem action against the domain name, in the judicial district where the domain name registrar, domain name registry, or other domain name authority registered or assigned the domain name is located if (1) the domain name violates any right of the trademark owner and (2) the court finds that the owner (a) is not able to obtain in personam jurisdiction over the person who would have been a defendant under 15 U.S.C. § 1125(d)(1); or (b) through due diligence was not able to find a person who would have been a defendant under 15 U.S.C. § 1125(d)(1) by sending a notice of the alleged violation and publishing notice of the action. 15 U.S.C. § 1125(d)(2)(A)

A 2003 case, GLOBALSANTAFE CORP. v. GLOBALSANTAFE.COM looked at many of these issues. The case involved Global Marine and Santa Fe International Corporation, both major international drilling contractors. After announcing their merger into an entity known as GlobalSantaFe Corporation, Jongsun Park registered a domain main with the Korean registrar Hangang. That domain name was <globalsantafe.com>. After gaining the Federal trademark, GlobalSantaFe Corp. filed suit under the ACPA, claiming Park acted in bad faith, seeking a transfer or cancel of Park’s registered domain name. But then it gets interesting. The US court granted GlobalSantaFe’s request, however Park then filed in a South Korea court claiming that the courts lacked jurisdiction over the case, and Hangang failed to transfer the domain name. The court then looked at in rem jurisdictional requirements, and found that the U.S. did in fact hold jurisdiction over the case, under a first in time rule, and that the ruling of the South Korea court was not concurrent, and seemed to be intended to frustrate the judgment of the U.S. court. This case however did not address all issues with internal use of trademarks and domain names, but it offered a start. It also presents the issues that arise when multiple countries attempt to litigate claims that arise from the Internet.

WIPO, the World Intellectual Property Organization, lists helpful advice for creating a domain name for your company. The website seeks to explain the complexities of the IP issues that are related to internet domain names, and points out the dangers of using a famous trademark already taken. They even go as far as to direct users to a website that allows users to search for a registered trademark in particular country. For the layperson who may not be tech savy, this offers a way for those to compete with bigger names who may be more experienced with the way the Internet and the laws that govern it work.

The current system of domain names is fast approaching the end of its availability. In order to respond to the rapid growth of the Internet, the digital age is bracing to expand the number of generic top-level domains or gTLDs). ICANN has prepared to make available more than 1,300 of these new domains or “strings” such as .porn, .healthcare and even .love. A full list can be found here. These new gTLDs are becoming available to create a more infinite way to create an address located on the web. With that, ICANN is learning from past mistakes. At this time they are allowing certain trademarked brands as well as public figures to take advantage of a sunrise period. This limited registration period allows those with proven ownership rights the ability to purchase these domain names prior to the launch to the public. The idea here is to prevent negative repercussions from using a controversial new domain name against a current trademark owner.

Further, ICANN has laid out procedures to be used when two competing trademarks are requesting the identical domain name. If both owners have a legitimate claim to the given domain, then the domain name goes to auction. This process attempts to prevent further litigation over an existing domain name by valid trademark holders. However in these auctions, the domain name goes to the “highest bidder”, which begs the question of how fair this process really is.

On March 15, 2014, The US government renounced its control over the technical operations of the Internet. With the US government distancing themselves from the regulation and monitoring of ICANN, the responsibility has shifted to a global multi-stakeholder community. While the Internet continues to expand the legal issues that coincide with doing business on an international level will rise as well. The international community has begun to express concern with American laws controlling the rules of which all countries must play by, and with this trademark owners should be aware of all necessary steps to take when attempting to protect and develop their brand on the international scale.

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