One of the most active areas of litigation involving the Internet has been generated by the conflict between trademark law and domain names. The basic conflict stems from the fact that trademark law allows for multiple uses of the same word. Two different entities may label their products with the same name, as long as the consumer is not likely to be confused or deceived as to the affiliation, connection or association of the two.

What is a Domain Name?

Domain names in themselves have not been recognized in UK law as property rights, but they may still be registered. This type of registration is not a trade mark registration; it amounts to a contract with the registration authority, which controls the Top Level Domain (TLD) (e.g. ‘uk’ which is a country code TLD, or ‘com’, ‘org’, which are generic TLDs). This type of registration does not afford any exclusive rights, and has been likened to a company name registration in that it merely serves to identify the organization using it.

Domain names may also be registered as trade marks. It is now possible for the owners of both registered and unregistered trade marks to bring an action against ‘domain name squatters’, i.e. those who register a domain name so as to sell it to the owner of the trade mark.

A Domain Name system is a method of administering names by giving different groups responsibility for subsets of the names. Each level in this system is called a domain. In the name http://elearning.northumbria.ac.uk is the name of a host, a real computer with an IP address. The name for that computer is created and maintained by the elearning group which happens to be the department where the computer resides. Northumbria is a portion of the national group of educational institution. So the domain ac contains all computers in all UK educational institutions.

When the Internet started to be of wide commercial use around the world, additional top-level domains were added. These new domains corresponded to the two characters ISO country codes (.uk for United Kingdom, .ca for Canada, and so on) and allowed countries to control their own domains. This all worked well until the domain names becomes valuable assets. Names had been given out on a first-come, firs-served basis, but this approach caused serious problems when someone had a prior claim to a particular name.

What is a Trade Mark?

This Act gives the owner of a registered trade mark exclusive rights in that trade mark. Certain uses by another person of that trade mark without the owner’s consent will infringe his rights, and the Act spells out what type of acts amount to an infringement of a registered trade mark.

It is not necessary to identify a trade mark as registered, but one can use the (r) symbol to show that the trade mark is registered. A ™ symbol placed next to a mark does not signify that it is a registered trade mark, only that it is being used in a trade mark sense. It is an offence under the Act to falsely represent that a mark is a registered trade mark. This means that the (r) symbol should only be used with a registered trade mark.

The registration of a trade mark affords it the protections set out in the Act. There also exist unregistered trade marks. Where an unregistered trade mark is infringed, the owner must rely on the remedies afforded by the common law to seek redress – most commonly by bringing an action for passing-off.

A Trade Mark is a sign or symbol which is used in the course of trading and it is defined in the Trade marks Act 1994. A registered trade mark does not provide a trader with absolute power but it is rather a registered name for a particular good or services. A trader is free to enter the market to sell or to provide his goods or services but as long as he does not use the same trade mark of someone else who has already registered the name. If he does, then a dispute would arise and it would have to be settled in the court of law because trade mark is territorial.

Names Disputes

Since the Internet is commercially global, so no two domain names are the same. Two or more businesses may conduct their trading in the same or different countries but they can only use one name and one name only. Take an example of a prince.com – a sport trading name, the Prince in the UK was challenged by the Prince in the USA, but it was the Prince in the UK registered the name first and they had won to keep their name. This activity is called ‘domain name envy’.

There are cases where Internet participants have registered for domain names which are identical to a well-known or one with a reputation company. The reason behind their intention is to draw customers to their sites but they have, sometimes, no intention to cause confusion. This kind of activity is called ‘domain name hijacking’ or ‘Cybersquatting’.

When these activities take place on the global market, the law of registered trade mark or domain name comes into play.

The UK Approach to Disputes Resolution of Trade Mark and Domain Name

First of all, a point should be explained between the differences of Trade Mark and Domain Name. A domain name is part of an address and is allows one ‘to locate and to communicate with a place or a person’ on the Internet. It does not, however, function as a trade mark. Whilst a trade mark is a name given to signify a source of goods or services and be used in the commercial consumer market. A trade mark, however, does not function if it is used as an address of a particular trader, hence it cannot exist in a vacuum.

A registered trade mark can be infringed under section (10) of the Trade Mark Act:

1. Section 10 (1) of the TMA provides that if a sign that is identical to a registered trade mark is used in the course of trade in connection with identical goods and services for which the mark is registered then there is infringement. There is no need to show any likelihood of public confusion.

2. Section 10 (2) of the TMA provides that if an identical or similar sign is used in conjunction with identical or similar goods for which a mark is registered then there is infringement if there is a like likelihood or public confusion.

3. Section 10 (3) of the TMA provides that a registered trade mark is infringed in the UK is a similar or identical mark is used in relation to goods or services which are not similar to those for which it is registered, where the trade mark has a reputation, and the use of the sign without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark.

Section 10 (1) of the TMA

In Avnet Inc v. Isoact Limited (Avnet) the owner of registered trade mark tried to use trade mark law to take the name ‘avnet.co.uk’. Avnet Inc., a US company, provides business goods by catalogue and at the same time it runs advertisements for different manufacturers. It registered its name in the UK in class 35 providing advertisement and promotional services. Isoact Ltd, an Internet Service Provider, uses Aviation and Avnet and thus taking the domain name as avnet.co.uk allowing customers to display their own advertisements on its site.

Avnet complained that Isoact used the name ‘avnet’ in its domain name and hence infringing its registered trade mark. Avnet relied on section 10 (1) of the TMA saying that Isoact used the same trade mark in connection with the same goods and services. Jacob J disagreed with Avnet arguing that Isoact was not providing the same goods and services but Isoact was rather an Internet Service Provider which falls under within class 42. Isoact had a right to keep its domain name and there was no infringement involved.

The case was noted for its judgment. Firstly, Jacob J knew how to keep the monopoly of each individual rights under check and would not allow those rights to go beyond what was permitted. Secondly, Jacob J checked for the registered good and services and pointed out that those who registered for trade mark had to be careful in keeping their specifications within limit if the monopoly claimed was not to be seen as too wide. And if it is too wide, it will be struck the register for non-use. Avnet had already a prior registered trade mark, there was no question of that right taking precedence over an unregistered right where there was no overlap between the services provided by the right holders.

The domain name was not considered as a trade mark. But however, when there is an argument over the same identity of the registered trade mark, for instance the marks are identical on particular style of font in connection with the logo of the company, it has always been decided that identical does not necessarily the same thing and that external matter should not considered when it comes to comparing a mark with a sign. It should be noted that domain names only comes with simple type, therefore if it is argued, the words used should be decided and not on the matter of how it was presented. If an address of ‘wetwetwet.com’ were registered by the publisher for the sole purpose of selling covers for books with the words ‘wet wet wet’ then it would infringe the rights of Bravado Merchandising (Services) Ltd which has a registration of the stylized words for just that purpose.

Learning from the case of Avnet, we can confidently say that if you register for a trade mark or a domain name which someone else has already held which incorporates a same mark, then you got to be sure that the registration for goods and services are identical to those being traded on the web site, otherwise you will not be able to argue and to win your case with the domain name using section 10 (1) of the TMA. It is also important to note that a registered trade mark does not give a ‘right’ to a domain name, thus the need to secure domain name registration as soon as possible.

Section 10 (2) of the TMA

In Avnet Jacob J resolved the case on the confusion matter rather than identity between trade marks, and therefore an infringement might closely link to section 10 (2) of the TMA. It can be said that he could rely on cases under this section to arrive at conclusion.

In British Sugar plc v. James Robertson & Sons it was argued that the word Treat used by James Robertson in relation to a toffee flavoured infringed the trade mark ‘Treat’ which had already been registered by the British Sugar company in connection with dessert sauces and syrups. The argument to see whether there was an infringement was divided into three parts. Firstly it was considered to see if there was any similarity of the mark with the sign, secondly to explain the concept of similarity between the goods and services; and thirdly to consider whether there was a possibility of confusion because of that similarity. In this case the court argued that the trade marks were the same, but the goods were not, taking into account of the uses of the products, the locations and the food sectors into which they categorized.

If the domain name was identical to the registered trade mark, then the goods and services covered by the registration would need to be considered whether they were the same and whether it fell under the guidelines drawn in British Sugar company. If they were not the same then there would be no infringement. And if they were the same, then the court will consider the matter to see if there is a likelihood of public confusion. Going back to the case of Avnet Jacob J explained that the real concern of that case was not about Isoact competing with Avnet, but it was all about confusion when a search engine returns a hit on a particular site, over which ‘Avnet’ has been found. Jacob J went on to argue that it is very difficult to see how such confusion could occur. For instance, a surfer found the site, he or she would find aviation products instead of electronic products. The confusion here is not the goods and services but is rather the hits the search engine returns and this is not a matter for the trade mark law.

In Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc. the European Court of Justice ruled that the first and foremost important factor in considering liability under section 10 (2) is the character of the trade mark and in particular its reputation. The more distinctive the mark the more reputation it signifies, the wider the ambit of goods and services which would be determined for the similarity to those represented by the trade mark, which in turn more likely to present more confusion. Hence a distinctive and well-known trade mark will have the protection over most of their goods and services.

It is considered that it is much easier to claim for protection under section 10 (2) than section 10 (1) for the apparent reason that the trade mark has a distinctive character and a reputation. Avnet is certainly a distinctive character and it will probably have been used over many years in the course of trading, so its reputation will rise over those years. Giving the likelihood that the two companies – Avnet and Isoact – providing the same services, it will not be difficult for the court to decide that they present some confusion and this will lead to infringement under section 10 (2) of the TMA. Unless if it is accepted that the confusion occurs when a surfer randomly search, then it will become clear that he has come to the wrong site.

Section 10 (3) of the TMA

This particular section of the TMA provides questions of trade marks. It is used to deal with the problems of cyber squatters and it is considered recently in One in a Million. In this case there were a number of domain names used the words One in a Million including marksandspencer.com, bt.org, and others. It was decided by looking to the law of passing off and by some existing principles. The court declared that the defendants had created instruments of deception. Hence the domain names had to be returned back to the trade mark and brand owners. But however, the case was argued that the implication of the case was not at all clear even if the passing off was made.

When it comes to deal with section 10 (3) Aldous LJ considered the domain name was the trade mark, hence it takes the advantage of the distinctive character and reputation of the marks which was looked upon as unfair and detrimental. And so section 10 (3) was infringed and it left a number of unanswered questions.

Some of these questions were what is a mark with a reputation, and which would fall under this provision? What is meant by taking advantage of the distinctive character or repute of a mark, more commonly known as dilution? And what is the relevance for Internet domain names? These questions will be considered individually in turn.