TRADEMARKS V. DOMAIN NAMES - DISPUTE RESOLUTION

[Singtel MAGIX <chengnet@magix.com.sg>]

1. In this article:
1.1 SLDN = Second Level Domain Name
1.2 TLD = Top Level Domain 
1.3 URL = Uniform Resource Locator
1.4 DN = Domain Name = any SLDN + any TLD; DN includes, where the
context permits, also the 'Internet Keywords' (IKs) of RealNames
Corporation although IKs do not have TLDs and the usual prefix of URLS.
1.5 IKs = Internet Keywords as last stated
1.6 DN registrant = registrant of a DN and/or an IK as last defined 
1.7 TM = trademark and/or servicemark
1.8 TM term = the term registered as a TM
1.9 TM owner = owner of a TM term as last defined
1.10 IP = Intellectual property
1.11 IANA = Internet Assigned Numbers Authority
1.12 DNSO = Domain Name Supporting Organization
1.13 ICANN = Internet Corporation for Assigned Names & Numbers
1.14 USPTO = United States Patent & Trademark Office 
1.15 WIPO = World Intellectual Property Organization

2. The key facts:
2.1 The registration of a TM entitles the owner to exclusive right of
use thereof within the class and within the mode of use as described by
the TM owner at the time of registration of a TM in question, it does
not forbid the use of the TM term concerned by any third party within
the same TM class but under a different mode of use, or within a
different TM class.
2.2 TMs are registrable in 42 separate classes because it is accepted
that a TM term as used in one class can nevertheless be used by a
third party in any of the other TM classes.
2.3 A TM term is either precise and complete in its entirety, or is a
term, or a letter/numeral, or a selection of some of the letter(s)/
numeral(s) forming a single long/short term, or a selection of
letter(s)/numeral(s) as appearing in a number of combined terms. 
2.4 The sole TM approving authority in the US is the USPTO. 
2.5 USPTO examiners do now make use of Internet resources as part of
their consideration process but they apply only TM law in the said
process as there is no existing DN law.
2.6 The sole constitutionally enshrined arbiter of IP and/or TM (and
presumably, DN) disputes is the court.
2.7 It is the duty of TM owners to guard their own TM/IP rights by
carrying out their own surveillance, especially with regard to the
question of DN registrants using DN terms identical to their TM terms 
for purpose of diverting traffic for commencing benefit.

3. The key issues WITHIN THE CONTEXT OF THE INTERNET:
3.1 Are a TM owner's IP and other legal rights confined within the exact
letter(s)/numeral(s) forming his TM term (e.g. VWXY), or does this right
extend beyond that to include a TLD (e.g. VWXY.com), even where a TM
owner had not included a TLD (e.g. .com, .org, .net, etc.) in his TM
registration. As an illustration, company A registered TM VWXY in class
1 (for chemicals) for use in agriculture, but did not register VWXY or
VWXY.com as his TM(s) under class 42 (the class into which DNs fall) for
use in accessing his website -- does the sole act of registration under
TM class 1 automatically entitles A to TM infringement and/or other
legal remedies against company B which uses: 
(i)	VWXY as an IK for accessing his website, which is used to advertise
say, industrial adhesives (class 1) or say, fuels (class 4); 
(ii)	VWXY.com as his DN, where B is dealing in say, toys (class 28)
3.2 If so, does it mean that as more and more TLDs are introduced, TM
owners like A will then become entitled to claim IP rights over all DNs
made up of its TM term as the SLDN and ANY (and by extension, ALL)
future TLD(s).
3.3 If so, does it mean A is free to choose to register only VWXY.com as
its DN and ignore all other TLDs in order to save costs and yet, be
entitled to prevent others from registering DNs like VWXY.org, VWXY.net
etc. even though they are not dealing in agriculture chemicals? 
3.4 If so, would timing make a difference? For example, a DN registrant
C, who is not dealing in agriculture chemicals but in say, toys
registered VWXY.com as his DN in 1997, and in 1998, A put in an
application to USPTO to have VWXY registered as his TM under class 1 and
subsequently receives TM approval in 1999, is A then entitled to 'come
from behind' and claim IP rights over the DN VWXY.com, assuming C did
not have occasion to register VWXY.com under class 42 for use as a means
of accessing his website?
3.5 More fundamentally, assuming D is dealing in agriculture chemicals
AND artificial resins (which also come under class 1) and while making
no TM registration with regard to the term VWXY, he nevertheless
registers VWXY.net as his DN: can A, who has registered VWXY.com as its
DN, sue D successfully for having used the TM term VWXY in D's DN?  
3.6 With reference to the last question:   
(i)	what if D did register VWXY as his TM, also under class 1, before
proceeding to register VWXY.net as his DN?
(ii)	what if A did not register VWXY.com as its DN nor any other DN, and
D goes ahead to register all 3 DNs available, namely, VWXY.com,
VWXY.net and VWXY.org as his DNs, can A sue D for leaving A with no DN
bearing A's TM term VWXY?
(iii)	if A did register VWXY as its TM as originally said, can D
successfully protect himself against any TM/IP suit by A if D, after
having registered all the last 3 said DNs, proceeds further to register
successfully VWXY.com, VWXY.net and VWXY.org as D's TMs, not under class
1, but under class 42, specifically for use as means of accessing D's
website which introduces his chemicals and resins to the world? 
3.7 What would be the respective positions of D vis-a-vis A in the
situations described in 3.5 and 3.6 above if D were to be an Internet
search service provider (which said service comes under TM class 42)
instead?  
3.8 Are registries and/or registrants of DNs empowered by legislation to
arbitrate or resolve DN disputes, and can they effectively and fairly
carry out such a task? To be precise, do they have the necessary legal
authority, knowledge of the law, enforceable legal procedures, and
impartiality to do so?

4. Personal View of this Neophyte:
4.1 Except as provided in 4.2 below, registrars and the present registry
for DNs should not involve themselves in TM and/or IP dispute
resolutions, and indeed, should be free to register DNs on a
first-come-first-served basis, without due concern about TM and related
IP-right issues except for their own internal registration policies, be
it Network Solutions or any of the recently appointed testbed registrars
of DNs, or registrars like RealNames Corporation which are running their
own "exclusive" registries and whose IKs have attained at least 50%
ubiquity within the Internet. 
4.2 Their reaction, when confronted by a TM owner who insists on having
priority over a DN that has already been registered by a third-party DN
registrant, should simply be to ask it/him to produce evidence that it/
he has indeed a TM involving the TM term in question duly registered:
(i)  prior to the registration of the DN claimed;
(ii) which is exactly the same as the DN claimed (e.g. VWXY.com or
VWXY.org or VWXY.net as the case may be) as distinct from the TM term
VWXY taken in isolation;
(iii) in class 42 (and not any other class) and which was described at
the time of its/his TM application as for use in accessing websites/
webpages.
4.3  If the answers are yes to all 3 questions, then, clearly, the DN
registrant concerned was in breach of the TM owner's IP right at the
time of its/his DN registration, and the said DN should morally, legally
and fairly be retrieved from him and given instead to the TM owner.
4.4 If the answer to any of the 3 questions in paragraph 4.2 above is
no, then the TM owner should be told he should either:
(i)  apply first for a TM comprising the exact DN concerned (i.e. with
the TLD in question) before coming back to claim any legal right over
the DN
(ii) or make the necessary application in court and let it decide on the
merits of his claim (and in this connection, all future court decisions
should be based on TM law modified in a way mentioned in 5.3 below).
4.5 In a situation where a TM owner's (original) TM comes without any
TLD (e.g. VWXY) and/or whose TM was not registered under class 42 and
stated in the TM application as for use in accessing websites makes an
application to the USPTO to have registered a (second) TM which is made
up of the TM term in the (original) TM and a TLD (e.g. VWXY.com), the
USPTO examiner concerned should be directed by the USPTO to check also
Network Solutions' database and the databases of RealNames Corporation
and other similar registries to see if the whole or a part of the TM
term of such a proposed (second) TM coincides with any existing DN or
any part thereof, and if so, the (second) TM application should be
denied.
4.6 In such a situation, it is then up to the owner of the (original) TM
to conduct its own investigation to see if the DN in question i.e. the
one that bears resemblance to his TM term, is being used in any way to
represent or promote the product/service covered by the (original) TM or
to derogate/infringe it in any other way and if so, seek redress in
court for TM infringement and other appropriate remedies like the
transfer of the DN in question from the existing DN registrant to the TM
owner, etc.
4.7 Indeed, TM owners should conduct the investigations mentioned under
paragraph 4.6 before taking the step in paragraph 4.5 and forget about
this (paragraph 4.5) step if the DN in question is not used in any way
so as to infringe any right(s) of his as owner of the (original) TM.

5. Conclusion:
5.1 In so far as the Internet is concerned, and in particular, the use
of DNs for purpose of accessing websites, there is a clear difference
among the following terms:
(i)	VWXY
(ii)	VWXY.
(iii)	VWXY.com
(iv)	VWXY.org
(v)	VWXY.net
(vi)	VWXY combined with any other letter(s), Arabic numeral(s),
punctuation mark(s) and/or any other present or future TLD(s).
The omission of a single dot (the full stop) will mean complete
impossiblity in accessing a target website and in this sense, all the
six variations given above are clearly separate, different and
distinguishable. 
5.2 On the other hand, under TM law, it is arguable that, without regard
to issues like TM class, use within a given class, timing of a TM's
registration, etc., the owner of TM VWXY has some form of legal right(s)
over variations (ii) to (vi) above.
5.3 Clearly, the existing TM law cannot be applied fairly to DNs and the
best solution is to amend the existing TM law to make it recognize that
there are differences, now that the Internet is upon us, including TMs,
among terms/variations (i) to (vi) above. If otherwise, a new DN law
will have to be enacted which accords recognition to the differences in
the six variations above mentioned. However, should this happen, there
would be a head-on clash between the current TM law and the new DN law
and it would be impossible to reconcile conflicts between TM owners and
DN registrants in a way that is fair to both parties. 
5.4 Presently, the other main difficulty in resolving clashes between TM
owners and DN registrants seems to have arisen from the fact that DN
registrars/registries have hitherto tried to undertake upon themselves
the task of resolving IP disputes when they are not competent both in
terms of authority and knowledge to do so, and in the process, they tend
to act in favor of TM owners which is tantamount to holding that their
TM registrations have the effect of precluding all others from using the
TM terms concerned, even for purpose of accessing websites that are
totally unrelated to the trades/services of TM owners. In other words,
no due regard is being presently accorded to important factors like
differences in TM class, differences in use (whether within or without a
given TM class), the prior registration date of a DN versus that of a TM
and vice versa, etc.
5.5 The above suggestions will hopefully bring some fairness to DN
registrants, free DN registries/registrars from dealing with TM and/or
IP related disputes and from legal actions by both TM owners and DN
registrants alike, and most importantly, restore to the court its
exclusive and constitutional right and power to decide on TM
and/or IP disputes.
5.6 In the interim period before the TM law is amended to accommodate
the advent of the Internet, ICANN should, together with IANA, DNSO,
WIPO, the US Department of Trade and/or other appropriate organizations/
authorities, get the USPTO to agree to have its examiners search all
existing databases of DNs (which, as above defined, include also IKs and
other similar numeric, alphanumeric and alphabetical terms for use in
accessing websites/webpages) and accord them priority vis-a-vis all TM
applications under class 42 intended for use as a means of accessing the
Internet unless there is conclusive evidence of bad faith, etc.
furnished by a TM applicant which makes it undesirable to accord the
corresponding third-party DN registrant its/his rights over the DN in
dispute; or at least, all such TM applications should be placed on hold
until the existing TM law has been modified to reconcile with the
realities of the Internet.
5.7 Failing the above, TM owners will unjustifiably become entitled to
monopolize all present and future DNs bearing ALL present and future
TLDs, as long as terms similar to their TM terms are involved as SLDNs,
and irrespective of whether they have bothered to register all of them
as their DNs. Apart from the fact that this means a waste of Internet
resources, the law and things as they stand now have unwittingly
given TM owners the right to become 'virtual cyber-squatters' even
without the need on their part to register any DN! 
5.8 In my ignorant view, the phenomenon of the Internet is so
overwhelming and it is wrong to pretend that no IP right or some form of
legal/moral right of use/priority whatsoever attaches to an honest DN
registrant who has acted in good faith and infringed no law,
irrespective of whether it/his DN has or has not been registered by
it/him originally or subsequently as a TM. 

6. In a nutshell:
6.1 The Internet has brought about a new mode of use for TM terms,
namely, the use of TM terms to access websites.
6.2 The existing TM law has suddenly become too archaic to cope with the
humble old dot (the full stop) and its various punctuation cousins; when
applied within the context of the Internet, it allows TM owners to
"road-hog" the cyberway by giving them priority (indirectly through the
existing wary-of-being-sued-by-TM-owners dispute resolution policies of
DN registries and registrars alike) in the unfair circumstances
mentioned above, and it also indirectly allows TM owners to carry out
"reverse DN hijacks". 
6.3 The issues described in 6.1 and 6.2 need to be reconciled first
before any model/uniform DN dispute resolution policy capable of
delivering justice or equity to TM owners and DN registrants alike can
be properly formulated.

C.H. Eng
Singapore 
Aug. 29, 99