Legal Issues about Trademarks and Domain Names
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Peter Goldberg May 16, 2006
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Trade marks are a name or symbol that are used to distinguish the goods of services of a particular company from others.
Similar to copyrights and other signs of intellectual property, the
effects of the trademark system is territorial. This means, that each
country has its own trademark system. A brand name like Machine Head
may be owned by one person in the United Kingdom and by another,
totally unrelated, person in the United States.
The domain name system, which is putting most of its emphasis on the
.com title as the international domain, does not really jive well with
the trade mark system because of the latter’s fundamental definition of
“ownership.”
A case in point is the Prince vs Prince suit. Prince, the US-based
manufacturers of sports goods, challenged the use of the www.prince.com
domain name by a British computer consultancy company. The said company
registered the domain in good faith and have been using it. The Prince
sports goods company, which has no registered UK trademark, threatened
to sue the British company for US trademark infringement. The latter
counter-sued in the UK for the unwarranted threats regarding trademark
infringement. They eventually won and the US company had to contend
with just using the domain name www.princetennis.com.
Alternatively, a different scenario where the trademark owner will
most likely prevail over a domain name holder’s rights is in the case
of Marks & Spencer vs One in a Million. This particular case was
elevated to the English High Court in 1997 when various trademark
holders, including the world-famous UK retailer Marks & Spencer,
sued One In A Million, a company who accumulated a number of domain
names under the well-known trademarks like Sainsburys, Virgin, Marks
& Spencer, and Cellnet. These domain names, and others, were bought
with the express goal of selling them again to the trademark owners.
The High Court decided that One In A Million be required to relinquish
their claim on the said domain names. This decision was further upheld
by the Court of Appeal.
The One In A Million company’s basis of argument was that domain
name registrations were first come, first served”, thus, the trademark
owners do not have any rights to the domain names.
Based on the two actual court cases we can build up a clear picture about the interrelation of trademarks and domain names.
In general, domains that have no trademark significance can be
acquired by the entity who registered them first. Continuous use of
this non-trademarked name will allow the holder to build a reputation
on the name. When the situation is between to legitimate companies who
have a right to the name then, as with the stipulation of most laws in
most countries, the first person who registers will get the domain.
However, a registrant to a domain that is also a subject of a trademark
and who does not have any entitlements is going to be forbidden based
on the laws of most countries. For more information please visit
http://www.dolphinformations.co.uk
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