Trade Marks v – the Technical Issues – Sweeny Legal – Tracy Sweeny

The Technical issues

The DNS (Domain Name System)  was designed by non-lawyers and developed before the Internet began to be used commercially. The founders of the Internet were from IT backgrounds and were concerned primarily with the technical matters allowing access, potential legal matters were far from their minds. When the DNS was initially established there was no way of predicting the difficulties we have today, such as conflicts between Internet identifiers and real-world identifiers, such as trade mark proprietary interests.

The growing commercialisation of the Internet was associated with the change in the function of domain names. Domain names are easily remembered and businesses began to utilise this as a marketing strategy which became a means by which consumers would identify with their product or services.[1]

The system for allocating rights in names in the physical world works well as geographical boundaries and classification of goods and services can be dealt with, however conflicts which arise in cyberspace evolve because there is insufficient names to satisfy trade mark owners. The demand outweighs the supply.

Many conflicts arise,[2] within each country-code top level domain (ccTLD) such .au there are potentially innumerous trade mark owners who might want the domain name The approach which most countries have adopted is the first come, first served basis, leaving many dissatisfied trade mark owners in the balance. The same can be said for global top level domains gTLDs. This problem is much worse as trade mark owners want to do business globally and they all want a .com registration. Why this creates another controversy, is the fact that non-trade mark owners may register a domain name which is identical to the trade mark and use of that name will normally infringe the trade mark in the course of trade.[3]

The second conflict arises because the Internet is global and not defined by geographic borders and trade marks registered in the domain owners jurisdiction are also displayed in other jurisdictions where other person’s may hold the mark.[4]

Recently dilution of trade marks have become widespread, it is the architecture of the internet which provides the mechanism for this in the very nature of searching, sometimes it can become impossible to distinguish who the brand belongs to whose are the goods and services as a direct  result of the search list. This can become extremely confusing for consumers.

[1] Lindsay, David Internet name dispute resolution: paper presented to BLEC Congress 2002. p. 5

[2] Reed op cit p. 46

[3] Ibid p.47

[4] Ibid

Please contact me at the links below if you have any issues regarding passing off or anti-competitive business behaviour using domain name metatags or other capture and transfer devices.

Introducing the Virtual Solicitor Service from Sweeny Legal in Wollongong

Tomorrow’s Lawyer Today – Tracy Sweeny at Sweeny Legal and Associates

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Filed under Domain Names Law, Trade Marks Law

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