Introduction

Trademarks are things which businesses use to identify their products to consumers. Traditionally this involves things such as logos, key sounds, symbols and words. Trademark law protects these marks against situations where consumer confusion may arise (misappropriation), or where the economic value of a mark is diluted (dilution).

Recently, however, trademarks have become a topic of specific attention in the context of today's online environment. Areas such as internet domain names, hyperlinks and keyword searches have forced us to rethink what trademark is and how it should be enforced. We discuss these topics and present some of the relevant law.

Domain Names and Cybersquatting

Internet domain name registration has become an area of much attention because of the commercial demand for domain names in order to establish presence on the Internet. The current system for registering domains on the Internet does not involve trademark review, mainly because of efficiency and liability reasons. It would be too much of a burden on registrars to look up trademarks for every single registration, and in the case of a mistake it could cost large amounts.

Domain name registrars also face the challenge of rejecting certain domain names due to policy reasons. For example, a registrar would reject domains with blatantly offensive meanings. The U.S. federal court has supported this action, saying that First Amendment rights are applicable only to actions by governments, and domain name registrars are not acting under the color of government authority. Relevant court cases are National A-1 Advertising, et al. vs. Network Solutions, Inc. and Island Online Corp. v. Network Solution. Inc.

People also try to protect the domain names themselves as trademarks. But registration of a domain name does not necessarily establish the existence of trademark protection. According to Brookfield v. West Cost, not only do you need to register the domain name, but also need to use it for commercial use in order to establish trademark rights. Furthermore, if the business wishes to establish its trademark over the entire domain name, it much treat it as a traditional form of trademark and go through the entire process as it would with a logo, sound etc.

Trademark law also prevents unwanted use domain names by other parties who do not own the trademark. As expected, large corporations have moved aggressively to claim trademark infringement and dilution to prevent other parties from using identical or very similar domain names. We see this activity in Hasbro, Inc. v. Clue Computing, Inc. and Porsche Cars North America v. Porsch.com. The U.S. Patent and Trademark Office has ruled, however, that nondistinctive elements of the domain names such as http are not under trademark law protection (Image Online Design v. Core Associates).

A particularly interesting and well publicized court case is Etoys v. Etoy.com, where the company Etoys was trying to prevent a group of artists, Etoy, from owning the domain Etoy.com. Complications arose, however, since Etoy owned the Etoy.com domain name 2 years before the lawsuit. It turned out that Etoys backed down and allowed the use of Etoy.com on Etoy's terms.

Another major topic of discussion is 'cybersquatting' which occurs when an outside party registers another's trademark in its own domain name. Many cases have risen from cybersquatting, and they have been treated as traditional misappropriation cases by the courts. Nowadays, The Internet Corporation for Assigned Names and Numbers (ICANN), has stepped in and prohibited cybersquatting along with federal law through the Anticybersquatting Consumer Protection Act of 1999. ICANN is a nonprofit organization dedicated to regulating these specific types of trademark issues, and although it has no official jurisdiction like a court, it has had a large influence on trademark law. ICANN has built a system of rules which are enforced through the Uniform Dispute Resolution Procedures (UDRP).

But situations do arise where two separate owners may have legitimate claims to the same trademark. This is actually quite common and is in line with trademark law, as long as customers do not get confused. A common example is companies working in separate industries, as they can use similar trademarks for completely separate things (a 'leaf' on a computer monitor and a the same 'leaf' on construction equipment). But now with the internet, both companies may want to claim the same domain name. What do we do now?

Originally the domain name registration system has worked on a 'first come first serve' basis. But this has caused some undesired consequences, as now companies feel the need to register everything similar to their trademark, in effect registering domain names in defense. ICANN has created additional top-level domains (TLDs) in order to address the problem, so that now www.computer.com and www.computer.info can have two separate owners. But again, companies just registered along every single top domain, as the first come first served basis was still employed. Other ideas have also been tried such as country TLDs (.uk, .tw), but there still has been no truly effective solution. How should this problem be addressed in order to balance both trademark rights and rights to free enterprise?

Hypertext Links

Another area where disputes can arise is in hyperlinks between web pages. What should Coca Cola do if I get a link labeled "Coca Cola" on some shopping website, but it actually links to my page, which sells drinks but not Coca Cola? Unfortunately, one can easily see how difficult it is to regulate hypertext links on the internet, since there is a virtually unlimited of hypertext links floating around. But there could be specific situations where the plaintiff shows that there is trademark infringement and the plaintiff thinks the economic compensation would be worthwhile. But as for now this is a problem without any practical solution.

Keywords and Search Engines

Online search engines have also brought up issues having to do with trademarks. For example, one may have a website that sells electronics, but then to attract more attention from a search engine, it may say "Sony" 50,000 times at the bottom of its website so that it comes up higher for search engine results. In fact, an automated ranking system may even select this site above Sony's real website simply because it seems like there is such a strong relationship with this website and 'Sony'.

The courts have said that when the metatags being abused are trademarks by other parties, this can be considered misappropriation. We see this in Playboy Enterprises v. Calvin Designer Label. There is an added likeliness that liability will result when the opposing sides are in direct competition, as seen in Insituform Technologies v. National Envirotech Group.

Another situation that has risen comes from how the search engines themselves do business. Search engines often sell advertising rights to common search terms, so that advertisers can target their advertisements better. But then what happens if the purchased terms are trademarks of other companies? This has also been brought up trademark claims successfully, as it can fairly easily be seen as trademark infringement.