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David Flint[1] has proposed a Cybermark theory in which a trade name or domain name which has acquired a reputation based entirely on its Internet activities. Disputes will continue to occur until a more balanced approach is devised.[2]

A trade mark that meets certain criteria should then be considered a cybermark, because disputes such as the Women’s Wire and Wired Magazine case[3] will continue to occur as business on the Internet is more widely accepted and commonplace. the conflict between Women’s Wire and Wired Magazine[4]. Wire, a computer network devoted to women’s issues, registered the domain name wire.net. Wired, a cyberspace magazine, holds the domain name wired.com. Wired complained about the domain name used by Wire. Rather than litigating the issues, Wired contacted Wire and asked them to change their name. The parties settled with Wire agreeing to change its name to Women’s Wire and its domain name to wwire.net. It is worth noting that they changed not only their domain name, but also their business name in real space. This helps minimise any likelihood of confusion. The dispute is interesting, as it is an early precursor to the kind of cybermark conflicts that will arise in the future. The Wired/Wire settlement it is not about the appropriation of a well known trademark from real space, but the confusing similarity between two cyberspace based marks.[5]

 

A cybermark is defined by Flint as a domain name whose reputation attached to it depends entirely on internet presence.[6] Use of the cybermark on the Internet that fulfils set criteria should not be considered as trade mark infringement. The idea behind this solution is that the domain name owner should have a legal right to use the mark in the territory where the server is located. The mark should be a word which occurs in the language used on the site in reference to goods and services. It is also suggested that the server should be located in the same country as the owner of the domain name functions to operate unless there is a bona fide reason the server should be located in another country. The reason for this is to eliminate servers being established in countries where there is less stringent rules and the use of the mark should only be directed at consumers in another country or countries if the domain owner has rights to their marks in those countries.[7]

 

This makes perfect sense, if we are to apply trade mark infringement law to domain names, why not allow domain names to function in a more controlled space governed by the parameters of trade mark law, such as in the future prevent the use of a domain name which is identical or deceptively similar to another domain name in cyberspace. We need some established rules otherwise there will be continued conflicts where parties set up business in territories where they are unaware of other parties existence or conflicting rights. The DNS should have its own new intellectual property law which is separate from trade mark law and governed by ICANN.[8]


[1] Flint, David “Internet domain names, proposal of a cybermark” (1997) 13(3) CLSR, 163 in Gulliksen, Tonje Roste Internet domain names and trademarks. Institutt for rettsinformatikk, 2001 p. 82

[2] Gulliksen, Tonje Roste Internet domain names and trademarks. Institutt for rettsinformatikk, 2001 p. 82

 

 

[4] Wired v WWire Rather than litigating the issues, Wired contacted Wire and asked them to change their name. The parties settled with Wire agreeing to change its name to Women’s Wire and its domain name to wwire.net. It is worth noting that they changed not only their domain name, but also their business name in real space.

 

[5]Fitzgerald, Brian, Gamertsfelder, Leif, Gulliksen, Tonje Roste  “Marketing your website: legal issues relating to the allocation of Internet domain names” [1998] UNSWLJ  p. 48

[6] Ibid

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[7] Gulliksen op cit p. 82

[8] Ibid  p. 83

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Filed under Domain Names Law, Intellectual Property Law, Trade Marks Law

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