Domain names have become a very important strategy for any online company. Even the offline companies are considering developing a strong online strategy by using an effective domain name. As the internet knows no boundaries and more and more people are logging into the cyber world, domain names are becoming more and more popular and precious. It may be very difficult for a company to choose a right domain name. In certain cases, even if a good domain name can be selected which would be helping a company develop profits; there may be certain disputes with other companies who engage in selling similar or different products.
Such domain name disputes can be solved through several mechanisms including the Internet Corporation of Assigned Names and Number (ICANN) and in extreme case even to the British Courts. The ICANN plays a role in registering domain names by developing certain registration processes. The issues of domain name disputes is usually taken to court, if the plaintiff finds it difficult to prove bad faith on the part of the defendants, or wants to cover up extreme damages. The party, to whom the case is ruled in favour of, can also claim the costs of litigation.
The court can also place injunctions to prevent future misuse of domain names by the opposing party. Courts have to follow a special procedure when dealing with domain name disputes as certain international issues are involved. However, courts do not provide speedy recover as compared to the ICANN process. Usually, the ICANN provides a recover within one or two months and provides its services at $ 1500 for a one-panel jury and $ 3000 for a three-panel jury. For cases involved the . UK TLD, UK pounds 750 has to be paid as Nominet adjudicator's fees.
Another advantage with filing through the ICANN is that jurisdictional issues need not arise, as the ICANN has jurisdiction over the internet in any part of the world. Once a case is filed with the ICANN, both the parties cannot transfer the domain name to any other party unless the issue is completely settled. However, the ICANN has developed rather inconsistent decisions (Out Law, 2008). Cats United Co Limited has been in the English Market since the year 1962, and has been selling their products which basically include pet cats. On the other hand, catsunited.
com is an internet magazine that is using the internet to provide certain services such as online chatting and social networking, sale of products, shopping, auctions, etc, for several years. It has a strong identity as an internet service provider, and no user has been confused between the internet service provider and the pet cats company. There is no tangible link as to show that the internet magazine company is infringing on the trademark of Cats united. Catsunited. com would not be infringing on the trademark of Cats United Co Limited if it is not dealing with the same products as Cats United Co Limited is dealing with.
The Court handling the infringement has to also determine how much well-known the Cats United Co Limited trademark is, in order to demonstrate that the internet magazine is not using a well known trademark to attract people and gain unlawfully. If Cats United Co Limited is trying to use a well-known trademark, they could be held for tarnishing or diluting the pet’s company trademark. In the US, the Lanham’s Act has been utilised to protect well-known trademark by other traders who are trying to dilute or tarnish their name. It also prevents traders from using similar trademarks wherein the class of product would be completely different.
In the Case Habro Vs Intenet Entertainment Group, one of Habro’s trademarks namely ‘candyman’ was misused by an internet company selling pornographic material. The court said that such an infringement would create confusions in the mind of the people and could tarnish the strength of Habro’s trademark. Brazil in the year 1998 came up with certain regulations to protect well-known trademarks. All well-known trademarks are protected by preventing registration of similar or identical trademarks (Forsythe, 2008, Ramakrishna, 2008).
Three issues need to be considered in the trademark and domain name infringements:- The strength of the trademark of the plaintiff The deception caused between the defendant’s trademark and the plaintiff’s trademark The chances of creating confusion in the mind of people (Ramakrishna, 2008). The issue of domain name dispute arises specifically when the internet company specifically deals with the same class of products or services. In these cases, Catsunited. com has been involved in the auction of cats. Catsunited.
com would not be infringing the trademark of Cats United Co Limited if the company is trying to create a separate identity for itself on the internet and is not using the name of the Pets Company to create confusion in the minds of people. The internet company is dealing with a separate class of products and is involving different people. The website has been specialised in social networking, shopping and auctioning. Even if a few products of pets are sold across the internet, it would not be infringing upon the trademark of the pet company, provided catsiunited. com does not say that it is dealing with the sale of pets specifically.
However, if castunited. com specifically says that it is dealing with the auction of casts over the internet, and makes all arrangements in the sale of pet cats, then it would be infringing upon the trademark of the pet company and could be held liable under trademark or domain name infringement. This was established in the Ozu case, a Spanish search engine titled “Advernet’. It was registered as a trademark in Spain. A few company staff left the organisation and started another internet domain by name ozu. com in the US.
The Spanish court did not permit this, as it was infringing the defendant’s mark. Catsunited.com could completely coexist with Cats United CO limited, provided, they have a separate identity, deal with different classes of products and do not create confusion in the minds of the public. Catsunited. com has established itself as an internet magazine company and Cats United co limited as a pet providing company. If Cats United Co Limited wishes to use the domain name catsunited. com, it would be infringing upon the internet magazine’s domain name (Forsythe, 2008, Ramakrishna, 2008).
References: Cornell University Laws School (2008). Contracts: Overview, Retrieved on August 5, 2008, from Web site: https://www.law.cornell.edu/