Trademark and the Internet By Timothy B. McCormack Attorney at Law
Every day there are 50,000 new domain names coming online. The number of internet users globally will double to over 3 billion by 2015 and internet commerce is expected to be $1.4 Trillion by 2015. To address the increase in internet traffic, on January 12, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) ICANN opened the application window for its new Generic Top Level Domain program. The new program allows successful applicants to run their own domain registry (i.e. .wine). Seattle businesses need to pay attention or they risk getting left behind. Part I, in this two part series, gives an overview of the new gTLD program, key dates Seattle businesses need to be aware of and why the new gTLD program is a concern for Seattle businesses worried about protecting their brand and trademarks. Part II will cover key questions Seattle businesses may have regarding the effect of the new gTLD program. For example, could a business tie up a new extension like .movie or .wine? Could that business then decide who can obtain a new domain name under the extension? How will trademarks be affected? Can trademark holders object to a new top level domain? For answers to these questions stay tuned for Part II in this two part series on the new gTLD program.
Trademarks and The Internet
In the United States trademark protection emanates from both state statutes and common-law and federal statutes. Trademark rights can be enforced for two primary reasons. First, trademark rights can be enforced to avoid consumer confusion as to the source or sponsorship of goods and services. Secondly, trademark rights can be enforced to avoid dilution of famous trademarks. Both Washington state law and the Federal Lanham Act offer protection to unregistered famous marks.
Trademark infringement is another common area of dispute on the Internet. Trademark infringement actions can cover everything from domain name disputes and improper use of a company’s name, mark or symbol to infringement of the distinctive elements used to distinguish one’s web site on the Internet. Some trademarks are registered with the federal government. Some trademarks are registered on a state-by-state basis. Still other trademarks are protected without any registration at all under state common law. In comparative advertising it is usually acceptable to use another’s trademark so long as the advertisement does not cause consumer confusion as to the source or sponsorship of goods.Trademarks “Trump" Domain NamesTrademark law also applies to the Internet and domain names. Domain names are important marketing devices for corporations or businesses using the Internet, because customers and search engines use domain names to locate on-line businesses.
A growing number of domain name trademark cases suggest that a trademark holder has no absolute right to use its trademark as a domain name. The test for determining whether a trademark holder will be able to stop someone from using a similar domain name is the Likelihood of Confusion test. The Likelihood of Confusion test embodies the primary principle of traditional trademark law, namely that consumers should not be confused or deceived into buying goods or services based on false or confusing sponsorship. Other recent trademark cases suggest that a trademark holder might have an advantage in a domain name dispute.