Trade Marks and Domain Names: There's a lot in a name

Abstract

Over two years ago, it was predicted that the end of the Internet was nigh unless there were concerted efforts put into place to solve the problems associated with domain names and trade mark clashes. Certainly, the person who predicted the demise of the Internet had an interest. It was Sally Tate the managing director of Prince plc, the UK company who had at the time just won the UK round of their case against Prince Sports Group Inc. over the domain name www.prince.com. Happily, Tate’s prediction has not come true, and the Internet continues to survive. The domain name problems, however, continue. The purpose of this article is twofold. Firstly to discuss the nature of the problems concerning trade mark and domain name disputes. The focus will be on the UK with relevant comparisons being made in particular with the US where most of the reported litigation has taken place. The second aim is to provide support to what might be called minority interest groups who participate on the Internet, whether they be small business or individuals. Much emphasis is often placed on the ‘rights’ of the party with superior bargaining power (or clout), the big business in the trade mark domain name disputes. Too often the legitimate interests of the minority are lost in practices of ‘reverse domain name hijacking’, as will be explained below. This article seeks to redress that balance by highlighting a number of the legitimate practices that individuals and small business can indulge in that are legally acceptable. The first part of this article will focus on UK law, looking at the arguments that have been used under Trade Marks Act 1994 section 10. We will move to look at defences that might be available to the return of a domain name primarily in terms of US law where a number of arguments have been considered. We will consider how disputes were dealt with under the Network Solutions Inc. (NSI) dispute resolution policy, and move to look at the ways in which disputes are now dealt with under the rules promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN).