Domain Names and Trade Marks

Often a URL or Internet site address will contain a trade mark as the second level domain as a unique identifier of a business. For example, the general Internet URL may be in the form of www.trademark.com where the trade mark element may be the business trade mark.

A problem arises from basic principles of Trade Mark Law and the nature of the domain system; namely, each domain name must be unique. In addition, a specific domain name can only be associated with one entity. Since most elements of the URL are generic, the distinguishing element in a domain will typically be the second level domain name or trade mark in our example. This should be contrasted with trade mark law where more than one person can legitimately use the same names as trade marks so long as the trade marks are used for different products or services, and create no likelihood of confusion.

Since two or more entities may both have legitimate rights to use the same name as a trade mark (which are used in association with different goods or services) a dispute may arise as to which entity should have the exclusive right to use the trade mark as part of their Internet address. This problem is compounded by the global nature of the Internet since the registration of a domain name containing a trade mark may include many legitimate uses of the trade mark in jurisdictions other than those in which the registrant is carrying on business.

Disputes that arise due to this incompatibility between the Internet domain names system and the traditional trade mark doctrine of confusion is resolved by the general law on the adoption and use of trade marks in each jurisdiction, and where applicable by the application of the relevant domain name dispute policy implemented by the applicable domain name registrar.