The popularity of the World Wide Web among computer users — regardless of computer expertise, and educational and business background — has caused an exponential growth of Web sites. Conditioned primarily by the delivery of news via television, on the on e hand, and by the delivery of entertainment via movie theaters and video cassettes, on the other hand, computer users have recognized the elegance and convenience of retrieving a diversity of multimedia information from the Internet. Thus, businesses, o rganizations, and individuals, recognizing the unique opportunity to provide information for immediate access and downloading by interested customers and the like, have established Web sites fraught with a myriad of information comprising text, images, s ound, animations, and video clips preferably stored in searchable databases. Interested users may simply visit suitable Web sites and obtain any and all available information.
But how do users know which Web sites to visit for obtaining particular information? Well, of course, common search engines such as Yahoo or Lycos or Excite or Alta Vista may be invoked to locate sites of interest. Once such sites have been visited and d eemed to, indeed, be useful, then these sites may be saved in the browser of choice as “bookmarks” or “favorites.” Subsequent visits to these sites may be expedited simply by clicking the appropriate favorite site that has been saved as a bookmark. Neve rtheless, to easily recall a frequently visited site and perhaps to share its utility with another user, users’ retention of relevant domain names is critical. As will be appreciated by regular Web-surfers, the easier the mnemonic captured in the domain name, the easier it is to routinely visit the site.
Ergo, as an “idiot-proof” vehicle for locating Web sites, domain names have evolved during the 1990’s as a valuable asset to businesses, organizations, and individuals alike (“vendors”) for reaching customers or potential customers. Since, in this contex t, domain names are performing a marketing and sales function, trademark law has become entangled in issues related to vendors’ rights to use established trademarks, service marks, or trade names (collectively referred to as “trademarks”) as domain names . Unfortunately, conflicts have arisen and will continue to arise between the simultaneous use of an established trademark by its owner and a use of a domain name incorporating this trademark by a vendor having an Internet presence. Who has superior righ ts?
Consider the nature and significance of a domain name. Domain names help users identify and locate the plethora of resources that are loosely interconnected on the Internet. Each of the file-servers, i.e., host computers, that store and service Web sites is identified by an Internetworking Protocol address (“IP” address). This IP address is similar to a street address for locating a house in a neighborhood, and is divided into four parts or fields separated by periods. This IP address is frequently affe ctionately called “dotted quad” or “cyberquad.” For example, the cyberquad for HAL-PC’s server is 204.52.135.1; instead of specifying the domain name “www.hal-pc.org” the IP address “204.52.135.1” may be specified instead. Either way, the HAL-PC homepag e is downloaded for viewing in the user’s browser. Obviously, since the IP address comprises a string of four integer fields, its corresponding domain name is much easier to recall. Furthermore, while the cyberquad is a direct address that designates a s pecific physical location of a host computer, the corresponding domain name is an indirect address that automatically references the current physical address of the host. Hence, the advantage of using domain names to locate Web sites.
The Internet Domain Name System (“DNS”) is superimposed upon the underlying IP address structure so that a corresponding IP address is automatically retrieved whenever a mnemonic domain name is specified. The right-most portion of a domain name is its to p-level or root; the intermediate portion is its second-level or trunk. Using the HAL-PC site as an example again, the top-level domain is “org” and the second-level domain is “hal-pc.” The root domains that are assigned in the United States do not expl icitly map the geographical location of the site. That is, in the domain name “www.hal-pc.org” there is no indication that the host computer is located in the United States. On the other hand, the domain name “www.framistat.ca” indicates that the host co mputer is located in Canada and the domain name “www.ferndock.uk” indicates that the host computer is located in the United Kingdom. Non-geographical roots that have been assigned in the U.S. are com, net, org, edu, and gov (imminently, there will be add itional roots assigned including firm, store, web, rec, and info). Accordingly, non-geographical assigned domain names tend to acquire a universal nature which traverses geographical boundaries. Furthermore, a single, universal domain name is clearly sim pler for a vendor to maintain than a series of related domain names that are assigned in individual countries, e.g., www.hal-pc.uk, www.hal-pc.ca.
For businesses seeking an Internet presence, since a domain name provides an easy “handle” for customers or potential customers seeking to latch onto Web sites, mnemonics are selected not only to enable users to easily recall the sites, but also to disti nguish the contents of sites or perhaps the products or services offered by vendors from competitors’ products and the like. That is, a domain not only identifies and associates a Web site with an IP address, but also may identify and distinguish the sou rce of products and services displayed on the site. By serving to identify and distinguish the source of products and services, domain names function similarly to trademarks. Hence, the basis for controversy between domain name registrants and trademark owners.
Unlike trademarks, which must have a distinctive total commercial impression to achieve the purpose of identifying and distinguishing goods or services from comparable competitors’ goods or services, domain names may be merely generic or descriptive. Suc h names as “nerd,” “apricot,” “elevator” and “american” may be used for domain name trunks, but not for trademarks. Generic names are the antithesis of trademarks: generic names generally “identify” an entire class of goods or services — not a specific product or service. When domain names are selected, either intentionally or inadvertently, to include an established trademark or a variation of such trademark, then controversies tend to arise. More particularly, a controversy is apt to arise when an e stablished trademark is used as a second-level domain name by a party other than the trademark owner.
For example, Hasbro took offense to Internet Entertainment Group registering the “candyland.com” and “parkerbrothers.com” domain names for use on a Web site displaying sexually explicit content. A federal lawsuit was filed to protect Hasbro’s well-establ ished Candy Land children’s game and the trade name of its subsidiary Parker Brothers. Internet Entertainment Group was temporarily enjoined from using these domain names to Hasbro’s detriment. Other representative illustrations of conflicts between an e stablished trademark and unauthorized incorporation of the trademark into a domain name relates to: Roadrunner Computer Systems’ aborted registration of “roadrunner.com” since it conflicted with Warner Brothers’ well-established Road Runner trademark ass ociated with toys, costumes, and masks; Zero Micro Software’s registration of the domain name “micr0soft.com” (in which a zero was conspicuously substituted for the letter “o”) causing a tension with the strong Microsoft trade name; and Princeton Review intentionally registering the domain name “kaplan.com” in connection with online language adversely describing the services provided by arch rival Stanley H. Kaplan Educational Center (who sought legal redress and obtained court ordered discontinuance o f Princeton Review’s control of this domain name).
Similar controversies are arising on a regular basis and are contributing to the excitement and confusion in Cyberspace. Trademark owners, besides complaining about likelihood of confusion, mistake, or deception engendered by competitors’ use of domain n ames, are realizing that such uses are likely to dilute their reputation and associated good will. Trademarks are even being surreptitiously incorporated into Web site tags to obtain illegitimate hits via search engines and the like. Thus, such conduct i nvading Cyberspace is generating an evitable backlash among trademark owners causing somewhat of an overreaction to any and all instances of domain names or online references to their corporate image, or products or services. On the other hand, there is a counterattack to this strong trademark “policing” activity, arguing that protected commercial speech is being censored. On a related front, the government’s attempt to regulate Cyberspace, the Communications Decency Act, has recently been held to be un constitutional by the United States Supreme Court. Can order be made out of this apparent chaos? Stay tuned.....
Al Harrison, a HAL-PC member and past president, is a patent attorney with the Houston firm of Harrison & Egbert. Having a background in engineering and operations research, and having worked as a programmer, systems analyst and designer, consultant, aut hor and lecturer in the computer industry, he practices intellectual property concentrating in computer law. Al is a past chair of the Computer Section of the State Bar of Texas and is chair of the Computer Law Committee of the Intellectual Property Law Section. He is chair of the Law Practice Management Section of the Houston Bar Association and regularly speaks on computer law issues at Bar seminars. Al is on the Advisory Board of PC World magazine and is the media reviews editor of The Houston Lawyer magazine.
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