The Interrelationship of Trademark and Internet Law

The Interrelationship of Trademark & Internet Law
Protecting Trademarks; Domain Name Dispute Resolution
By John M. Tanner and Timothy W. Gordon

The rapid and widespread use of the Internet raised serious questions for which traditional trademark law has few clear answers. The interception of these two areas is one of the things that makes practicing law in a common law jurisdiction so interesting.

I. DOMAIN NAMES

Each computer on the Internet has an "address" made up of a string of numbers. This string of numbers is called an Internet Protocol, or IP, address. To make navigating the Internet simple, users rely on the domain name system (DNS). Domain names are the easy-to-remember names users employ for navigating the Internet that often begin with "www." and end with ".com". After the user enters a domain name in their web browser, the DNS translates the domain name into its corresponding IP address. The DNS is in effect an indexing system that matches domain names to the addresses. Thus, if the user wants to visit Fairfield and Woods' web site, he or she only has to enter in www.fwlaw.com, and the DNS will look up the IP address that www.fwlaw.com is assigned to.

Domain names are hierarchical. The top-level of this hierarchy begins on the far right. This is where you find the "com", "edu" and so on. The second-level of the hierarchy is immediately to the left. The second-level domain name is what you frequently find between "www." and ".com".1 There are over 200 national top-level domains, such as "us" for the United States and "fr" for France, which are administered by their corresponding governments. In addition, there are 7 generic top-level domain names. They are "edu" for educational institutions, "org" for non-profit organizations, "com" for commercial users, "net" for networking/Internet service providers, "gov" for the U.S. government, "mil" for the U.S. military, and "int" for international treaty organizations. Seven new generic top-level domain names will likely be available soon. The proposed new generic top-level domain names are "firm" for businesses or firms, "shop" for businesses offering goods to purchase, "web" for entities emphasizing activities related to the World Wide Web, "arts" for entities emphasizing cultural and entertainment activities, "rec" for entities emphasizing recreation/entertainment activities, "info" for entities providing information services, and "nom"for those wishing individual or personal nomenclature or identifier. Thousands of domain names are registered daily. As of October 29, 1998, the weekly growth rate of domain name registration was 74,087, and the number of registered domain names totaled over four million.2 Between October 28 and October 29, 1998, alone, over seven-thousand ".com" domain names were registered.3

Through an agreement with the National Science Foundation, Network Solutions, Inc., is responsible for the registration of all second-level domain names for the top-level domain names "com", "org", "net", edu", and "gov". Registration is done through the Internet, by filling out the template provided at Network Solutions' web site.4 Domain names are issued solely on a first-come first-served basis, and because each domain name is unique, it is also appropriate to say that they are issued on a first-come only-served basis. There can be only one www.fwlaw.com.

The DNS can be thought of as a telephone directory, but with a few key differences: First, there is only one; Second, it contains no categories; Third, it lists only one "number," or "address," for each name. If the user looks up the name Panavision, they should expect to get the address or number for Panavision, Inc. However, because Network Solutions does not inquire into a person's legal right to use a particular name, anyone, including Dennis Toeppen, can register the domain name panavision.com, so long as no one else has already done so. As a result of the relaxed standards of Network Solutions' registration system, some companies have been so bold as to register their competitors' trademark names as domain names. For example, Princeton Review, a company providing preparatory materials and services for persons taking standardized tests, registered the domain name kaplan.com, where it posted its own comparison of its services to the services of its competitor, Kaplan Review. This illustrates a key difference between people's use of the Internet and other media. I doubt that Princeton Review would have attempted to put a listing in the telephone directory, or an advertisement in a school newspaper, using only the name "Kaplan" and list its own location and telephone number.

II. NETWORK SOLUTIONS' DISPUTE POLICY

In an effort to deal with the problem of third parties registering trademark names that they do not own as second-level domain names, Network Solutions has created its own Domain Name Dispute Policy.5 Under the policy, which all registrants of domain names must agree to, Network Solutions will put a domain name on "Hold" if presented with proper documentation that the domain name possibly violates the trademark rights of the trademark owner, and the registrant refuses to give up the domain name. A domain name that has been put on hold is not available for use by any party.

To initiate the dispute procedures, a complainant must provide Network Solutions with an original certified copy, not more than six months old, of a trademark registration that is still in full force and effect and is identical to the disputed second-level domain name, and a copy of the written prior notice sent by the complainant to the domain name registrant.6 If the registration of the domain name predates the complainant's trademark, Network Solutions will take no action.

If the registration of the domain name is after the effective date of the complainant's trademark, Network Solutions will request the registrant to submit proof of ownership of the registrant's own registered trademark, which must predate any notice of dispute sent to the registrant. If the registrant provides such proof of trademark, Network Solutions will take no action.

If the domain name was registered after the effective date of the complainant's registered trademark and the registrant fails to provide adequate proof of its own registered trademark, Network solutions will allow the registrant to register a new domain name free of charge. Otherwise, Network Solutions will put the domain name on hold pending resolution of the dispute.7 Network Solutions will remove the "Hold" only if presented with one of the following:

1) a bilateral agreement signed by both parties to the dispute;
2) an order from a court of competent jurisdiction, or an arbiter,
3) a written request from the trademark owner withdrawing the complaint,
4) a transfer of the domain name from the registrant to the trademark owner,
5) a deletion request from the domain name registrant, or
6) deletion of the domain name for non-payment of the registration fee.8

III. THE LANHAM ACT

A. Trademark Infringement

Until 1996, the Lanham Act only protected the registered owners of a trademark from another's competitive, confusing, or deceitful use of the trademark. Section 32 of the Act provides, in relevant part, that:

Any person who shall, without the consent of the registrant . . . use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or inconnection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant . . . .9

Section 43(a) provides in part that:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin . . . which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin . . . of his or her goods . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.10

B. The Federal Trademark Dilution Act

In 1995, Congress amended the Lanham Act to cover non-competing uses of a trademark. Section 43(c)(1) of the Lanham Act11, the Federal Trademark Dilution Act, became effective on January 16, 1996, and provides that:

The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to--
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods and services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principle register.12

Just in case the reader missed it the first time, Congress reiterated the fact that the Trademark Dilution Act does not cover the noncommercial use of a mark.13 The Act further provides that:

a mark shall be deemed to be in use in commerce (1) on goods when; (a) it is placed in an manner on the goods or on their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, the documents associated with the goods or their sale, and (b) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce . . . .14

Finally, the Act provides that:

The term "dilution" means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of
(1) competition between the owner of the famous mark and other parties, or
(2) likelihood of confusion, mistake, or deception.15

C. Trademark categories

When applying for a Federal trademark, the registrant must specify the category of goods or services being designated by the mark. There are 42 classes in the international schedule16, and 60 classes in the prior U.S. schedule.17 These categories are irrelevant to Internet domain names. The perfect commercial web page has the domain name companyname.com. However, there may be several non-competing companies whose goods and services fall under different "categories," all doing business under the same name, who would like to use the domain name companyname.com. Some possible examples would be Delta Airlines and Delta Faucets, Columbia Records and Columbia Sportswear, United Airlines and United Van Lines, Capitol Records and Capitol Savings and Loan.

IV. JURISDICTION

The question of jurisdiction as it relates to Trademark law and domain names may seem intimidating at first. However, the process is not as bad as it seems once the law is applied. A good, and recent, exampleis Panavision v. Toeppen.18 In Panavision, the Ninth Circuit affirmed the District Court's holding that Toeppen diluted Panavision's trademark by registering the domain name panavision.com. The Court stated early in the opinion that jurisdiction was proper since Toeppen registered the domain name panavision.com in order to demand money from Panavision for its release, and that his acts were aimed at Panavision in California, and caused it to suffer injury there.19 The Court later addressed the jurisdictional issue in more detail.

Panavision manufactures and sells motion picture camera equipment under the registered trademarks "Panavision" and "Panaflex." In December of 1995, Panavision attempted to register panavision.com as a domain name, but was prohibited from doing so due to Toeppen's prior registration. Toeppen used the site to display photographs of the City of Pana, Illinois. After being contacted by Panavision's attorney, Toeppen offered to exchange the domain name for $13,000.00. After Panavision rejected his offer, Toeppen registered Panavision's other trademark as a domain name, panaflex.com.

Panavision brought an action against Toeppen, claiming dilution of their trademarks under Federal and California laws. The first legal issue encountered was whether the District Court had personal jurisdiction over Toeppen, a resident of Illinois. California's long arm statute permits its courts to exercise jurisdiction over a defendant to the extent permitted by the Due Process Clause of the Constitution. The Court affirmed the District Court's holding that it did not have general jurisdiction.20 However, the Court also affirmed the District Court's exercise of specific jurisdiction. The Ninth Circuit applies the following three-part test to determine whether a district court may exercise specific jurisdiction:

(1) The nonresident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or results from the defendant's forum-related activities; and (3) exercise of jurisdiction must be reasonable.21

The purposeful availment requirement is satisfied if the defendant takes deliberate actions towards the forum state. The Ninth Circuit held that Toeppen's activities satisfied the purposeful availment requirement under the "effects doctrine." Under the "effects doctrine," "personal jurisdiction can be based upon: '(1) intentional actions (2) expressly aimed at the forum state (3) causing harm, the brunt of which is suffered-and which the defendant knows is likely to be suffered-in the forum state.'"22 The Court found that:

Toeppen purposefully registered Panavision's trademarks as his domain names on the Internet to force Panavision to pay him money. (Citation omitted) The brunt of the harm to Panavision was felt in California. Toeppen knew Panavision would likely suffer harm there because, although at all relevant times Panavision was a Delaware limited partnership, its principal place of business was in California, and the heart of the theatrical motion picture and television industry was located there.23

Although the Court still maintained that registering a domain name and maintaining a web page is not sufficient for "purposeful availment," the Court held that Toeppen's registration of the domain name with the intent to extort money from Panavision was. The Court also found that Panavision's claims arose out of Toeppen's forum-related activities. Finally, the Court found that the district court's exercise of jurisdiction was reasonable.24

V. VARIOUS PROBLEMS

A. Domain name speculation

While much of the corporate world was sleeping, some individuals who realized the Internet's potential began registering large numbers of domain names and warehousing them, speculating that one day someone else would want to purchase the rights to the domain name.25 While much of this activity was perfectly legitimate, some "speculators" registered others' trademark names as domain names, or part of domain names, hoping that the trademark owner will one day pay a healthy sum for the rights to the domainname. For example, although Viacom International, Inc., owns the trademark phrase "MTV Sports"26, the listed registrant of the domain name mtvsports.com is Jeremy Padawer of Germantown, Tennessee, and the domain name is available for purchase at a web site called Absolute Domain Names Reseller.27 Mr. Padawer is also the listed registrant for the domain name pepsi2000.com, which is offered for $30,000.28

These speculators "attempt to profit from the Internet by reserving and later reselling or licensing domain names back to the companies that spent millions of dollars developing the goodwill of the trademark."29 "While many may find [cyber-squatting] patently offensive . . . [s]peculation and arbitrage have a long history in this country."30 A common, but misleading, position taken by such speculators is that a domain name is akin to a street address or telephone number, and that anyone who first registers it should be permitted to use it. This position is misleading because it is the IP address, not the domain name, that is analogous to a street address or telephone number. The domain name is akin to the name of the person or business who resides at the address or is assigned to the telephone number.

One of the most well-known domain name speculators is Dennis Toeppen. Toeppen has registered over 200 domain names, including deltaairlines.com, britishairways.com, crateandbarrel.com, ramadainn.com, eddiebauer.com, greatameria.com, neiman-marcus.com, northwestairlines.com, ussteel.com, unionpacific.com,31 americanstandard.com and panavision.com.32 Toeppen's activities have found him in court on more than one occasion. One such occasion was Intermatic Inc. v. Toeppen.33

In December of 1995, Toeppen registered the domain name intermatic.com. When Intermatic Inc. later attempted to register intermatic.com as its domain name, it was obviously prevented from doing so due to Toeppen's prior registration. Intermatic, a manufacturer and distributer of electronic products, has used the name Intermatic since 1941, and is the exclusive owner of trademark and trade name Intermatic. When asked to surrender the domain name, Toeppen refused, and, pursuant to a formal request by Intermatic, Network Solutions put the domain name on hold. Intermatic brought an action against Toeppen, alleging trademark infringement, unfair competition, trademark dilution and state law violations. Both parties moved for summary judgment.

The Court's analysis of Intermatic's trademark infringement claim illustrates the difficulty of applying Trademark infringement law to this area. In order to prevail, Intermatic basically had to prove that it owned the rights to the name Intermatic and that Toeppen's registration of intermatic.com is likely to cause consumer confusion, deception, or mistake. The problem facing Intermatic was that Toeppen was not "using" the mark to sell products or services. In all likelihood, what Toeppen wanted to sell was the domain name itself, and not to any customers of Intermatic, but to Intermatic itself. Thus, Toeppen's use was not competitive with Intermatic's activities. This is where the Federal Trademark Dilution Act of 1995 came into play. The Court noted that the Trademark Dilution Act was intended to address Internet domain name issues.34

Toeppen did not dispute that the Intermatic mark was a famous mark, but argued that his use of the mark was not a commercial use in commerce. The Court rejected Intermatic's argument that Toeppen's registration of the Intermatic name as a ".com" domain was enough to prove that Toeppen's use of the name was commercial.35 The Court found that Toeppen's intention to arbitrage the domain name constituted a commercial use. According to the Court, "Toeppen's desire to resell the domain name is sufficient to meet the 'commercial use' requirement of the Lanham Act."36 Finally, the Court found that Toeppen's use of the mark caused dilution of Intermatic's trademark. The Court recognized that Toeppen's registration of intermatic.com lessens Intermatic's ability to utilize the Internet to identify and distinguish its goods. According to the Court, potential Intermatic customers would expect to locate Intermatic on the Internet at intermatic.com.37 The Court also noted that "[i]f Toeppen were allowed to use 'intermatic.com', Intermatic's name and reputation would be at Toeppen's mercy and could be associated with an unimaginable amount of messages on Toeppen's web page."38

The result was similar in Panavision v. Toeppen. With regard to Panavision's dilution claims, Toeppen did not challenge the district court's finding that the mark was famous, but maintained that his use of the mark was not a commercial use and that his use did not result in dilution in the quality of the mark. The Court disagreed, stating that "Toeppen's 'business' is to register trademarks as domain names and then sell them to the rightful trademark owners. He 'acts as a "spoiler" preventing Panavision and others fromdoing business on the Internet under the trademarked names unless they pay his fee.'"39 Thus, "Toeppen's commercial use was his attempt to sell the trademarks themselves."40

Next, the Court found that Toeppen's registration of Panavision's trademarks as his domain names diluted the marks within the meaning of the Federal Trademark Dilution Act and the California Anti-dilution statute. In particular, Toeppen's conduct diminished Panavision's ability to identify and distinguish its goods on the Internet. Also, as many domain names are obvious, users can frequently guess that a company's domain name is its trade name. Thus, prospective customers will be discouraged if they cannot find Panavision's web page by typing in panavision.com, and may not want to go through the trouble of using a search engine since they can often turn up hundreds of web sites. 41

B. Actual use of another's trademark name as a domain name

Speculating in domain names is not the only way to make money by registering another's trademark as a domain name. For example, although the word "Viagra" is a registered trademark owned by Pfizer, Inc.,42 other companies not associated with Pfizer use the Viagra name in their domain name as a way of marketing the fact that they sell the drug.43 A company may also hamper its competitors' ability to market its product over the Internet or attract its customers by registering its competitor's trademark as a domain name. Not only does this prevent the trademark holder from using its own trademark as its domain name, it allows a competitor to take advantage of the goodwill that the trademark holder has worked hard to create.

In Cardservice International, Inc. v. McGee,44 Cardservice International, a credit and debit card processing service which owned the registered trademark "Cardservice International", brought an action against one of its competitors, McGee, after McGee registered and began using the domain name cardservice.com to advertise and market its services. The Court found that McGee's actions violated the Lanham Act, explaining that:

Because of McGee's use of "cardservice.com", Cardservice International has no access to an Internet domain name containing its registered mark, and must use a different domain name. Cardservice International's customers who wish to take advantage of its Internet services but do not know its domain name are likely to assume that"cardservice.com" belongs to Cardservice International. These customers would instead reach McGee and see a home page for "Card Service". They would find that McGee's Internet site offers advertisements for and provides access to the same services as Cardservice International -- credit and debit card processing. Many would assume that they have reached Cardservice International or, even if they realize that is not who they have reached, take advantage of McGee's services because they do not otherwise know how to reach Cardservice International. Such confusion is not only likely, but, according to McGee, has actually occurred at least four or five times since he began using "cardservice.com".45

Trademark names have also been used as domain names to sell goods that do not compete with the goods or services offered by the trademark holder. In Hasbro, Inc. v. Internet Entertainment Group, Ltd.,46 the Court granted Hasbro a preliminary injunction against Internet Entertainment Group, prohibiting it from using the name "CANDYLAND" and the domain name candyland.com, which it had used for a web site containing sexually explicit material.

In Avery Dennison Copr. v. Sumpton,47 the Court held that the defendant diluted plaintiff's trademarks, "Avery" and "Dennison", by registering and using the domain names avery.net and dennison.net. The "twist" in Avery Dennison is that the defendant registered the domain names, along with over 12,000 others, not because of the famous trademark, but because they are popular surnames. The defendant registered the domain names in an effort to solicit business from persons who would like to use the domain name as part of their personal e-mail address.48 The defendant did not argue that the Avery and Dennison marks were not famous. The Court found that the defendant's use of the marks was commercial, and that such use diluted the plaintiff's trademarks. The Court did not find it significant that the plaintiffs were able to, and had, registered domain names bearing their trademarks with the top-level domain of ".com". Because there was no evidence that the defendant actually registered the domain names for the purpose of selling them to the highest bidder, the Court ordered the plaintiff to pay defendant $300.00 for each of the names, representing the investment defendant made to register the names.

Finally, some domain name registrants try to make money by registering domain names containing intentional misspellings of a trademark name. For example, the domain name wallmart.com is offered for sale at http://www.wallmart.com/purchase.html for $6,000.00.49 Wal-Mart Stores, Inc., maintains a Web site at http://www.wal-mart.com. Another example is the domain name amazom.com, a domain name that is just one letter away from the popular Amazon.com online bookseller. The web site at amazom.com allows users to buy books over the Internet, but from companies other than Amazon.com.

C. Use of another's trademark as a "meta tag"

In order to locate a company's web page or a web page that deals with a particular topic, many users rely on search engines such as Alta Vista, Lycos, HotBot, Infoseek and ExCite. Most search engines utilize programs that read the entire content of web pages, and categorize the pages. In an effort to manipulate the way in which their page is categorized, web page designers often include meta tags in the source code. Meta tags are words that serve a function similar to the "subject" words in a library catalog entry. Most search engines rely heavily on meta tags when categorizing web pages. The meta tags can only be viewed in the source code, and is not ordinarily displayed by the web browser. For example, although not all of the terms appear on the screen, the source code for the Westword newspaper web site contains over two-hundred meta tags.50

Thus, through the use of meta tags, a competitor or other party does not need to use a company's trademark in its domain name or anywhere in the page's visible text in order to attract attention to its site. Web page designers can achieve similar results by putting colored text in their page that matches the background color.

In Playboy Enterprises, Inc. v. Calvin Designer Label51, the Court granted Playboy a preliminary injunction and enjoined the defendant from using the trademarks Playboy and Playmate "in buried code or metatags on their home page or Web page . . . ."52 The problem with the defendants' use of the terms as meta tags is that search engines, when asked to locate Internet sites containing "Playboy" or "Playmate," would list the defendant's site. It may not always be obvious to the user viewing a list of found web pages which web page is actually sanctioned by Playboy.

However, in Playboy Enterprises, Inc. v. Welles53, the Court held that Terri Welles, Playmate of the Year 1981, could continue to use the terms "Playboy" and "Playmate" as meta tags, and could display the titles "Playmate of the Year" and "PMOTY '81" in her web page. The Court held that the "fair use" defense applied. "[W]here the mark is used only to describe the goods or services of a party or their geographic origin, trademark law recognizes a fair use defense."54 According to the Court, Welles used the term "Playmate of the Year" to describe herself. The Court further noted that:

Ms. Welles has minimized her references to Playboy on her website and has not attempt to trick consumers into believing that they are viewing a Playboy-endorsed website. . . . In the case at bar, Ms. Welles has not created a Playboy-related website. She does not use Playboy or Playmate in her domain name, she does not use the classic Playboy bunny logo, she inserted disclaimers which clearly state that the website is not endorsed by [Playboy], and the font of the Playmate of the Year 1981 title is not recognizable as a Playboy magazine font.55

The Court went on to hold that Welles' use of the phrase "Playmate of the Year 1981" and "PMOTY '81" was a "fair use" since she was describing herself. The Court also held that Welles could continue to use Playboy's trademarks as meta tags.

With respect to the meta tags, the court finds there to be no trademark infringement where defendant has used plaintiff's trademarks in good faith to index the content of her website. The meta tags are not visible to the websurfer although some search engines rely o these tags to help websurfers find certain websites. Much like the subject index of a card catalog, the meta tags give the websurfer using a search engine a clearer indication of the content of a website. The use of the term Playboy is not an infringement because it references not only her identity as a "Playboy Playmate of the Year 1981," but it may also reference the legitimate editorial uses of the term Playboy contained in the text of defendant's website.56

Because the Court found that Welles' was entitled to the "fair use" defense, the Court held that Playboy "cannot make a sufficient dilution claim . . . to warrant the granting of a preliminary injunction."57

D. Multiple parties entitled to use the same name

Sometimes two or more companies may use the same name to sell different goods or services. Both Playtex Apparel, Inc., and Playtex Products, Inc., share the Internet site http://www.playtex.com, from which the computer user can follow hypertext links to information about products form either company. Such a solution is ideal for both Playtex Apparel and Playtex Products sine they are the only two companies who use the name, and they sell distinct goods. Such a solution may not be practical, however, when several companies use the name. For example, numerous companies have a registered trademark to use the name "Columbia" in some capacity. However, only one company, Columbia Sportswear Company, has the domain name columbia.com. Thus, Columbia Records cannot use columbia.com, and instead maintains a web site at columbiarecords.com.

This problem has resulted in litigation. In Juno Online Services, L.P. v. Juno Lighting, Inc.,58 the Internet provider Juno Online, who had the registered domain name juno.com, brought an action against Juno Lighting after it registered the domain name juno-online.com. The Court dismissed all of Juno Online's causes of action, noting that, with regard to the Lanham Act claims, Juno Lighting was not using, and had no set plans to use, the juno-online.com domain name. There is also no indication from the decision that Juno Lighting ever intended to sell the domain name to Juno Online.

Sharing a web site is also an unlikely solution when two companies who deal in the same or similar goods share the same name. Both Rubbercraft Corp. of California, a California corporation, and Rubbercraft, Inc., an Ohio corporation with its sole place of business in Florida, manufacture rubber goods under the name Rubbercraft. Neither complained about the other's use of the name Rubbercraft until Rubbercraft, Inc., registered the domain name rubbercraft.com.59

E. Registering a domain name as a trademark

Doing business over the Internet has become so popular that some companies have sought and acquired registered trademarks for their entire domain names. The applicant must show that they are offering services over the Internet.60 Use of the Internet domain name as a mere advertisement is not enough.61 The Lanham Act provides that a trademark may include:

any word, name, symbol, or device, or any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others to indicate the source of the goods, even if that source is unknown.62

Amazon.com, Inc., which sells books over the Internet, has registered Amazon.com as a trademark.63 Amazon.com not only uses the term "Amazon.com" as its domain name, it actually uses it as its name to identify its service. With regard to the proper classification, the classification that applies to the specific service should be used.64

1 For example, in "www.fwlaw.com", "com" is the top-level domain name and "fwlaw" is the second-level domain name.

2 http://www.domainstats.com/, visited on October 29, 1998. The most common generic top-level registered is "com," totaling over 2.5 million. http://www.domainstats.com/internic.cfm, visited on October 29, 1998.

3 http://www.domainwatch.com/, visited on October 29, 1998.

4 http://rs.internic.net/help/templates.html.

5 http://www.internic.net/domain-info/internic-domain-6.html, visited on October 19, 1998.

6 http://www.internic.net/domain-info/internic-domain-6.html, ¶ 8, visited on October 19, 1998. The name and address of the registrant may be acquired at Network Solutions' WHOIS database at their web site. The notice sent to the registrant must clearly state that the complainant believes that the registrant's registration and use of the disputed domain name violates the complainant's trademark rights, and the factual basis for such belief.

7 http://www.internic.net/domain-info/internic-domain-6.html, ¶ 9, visited on October 19, 1998.

8 http://www.internic.net/faq/dispute.html, ¶ 19, visited on October 24, 1998.

9 15 U.S.C. § 1114(1).

10 15 U.S.C. § 1125(a).

11 15 U.S.C. § 1125(c).

12 15 U.S.C. § 1125(c)(1).

13 15 U.S.C. § 1125(c)(4)(B).

14 15 U.S.C. § 1127.

15 Id.

16 37 C.F.R. § 6.1.

17 37 C.F.R. § 6.2.

18 141 F.3d 1316 (9th Cir. 1998).

19 Id. at 1317.

20 "General jurisdiction exists when a defendant is domiciled in the forum state or his activities there are 'substantial' or 'continuous and systematic.'" Id. at 1320.

21 Id.

22 Id. at 1321.

23 Id. at 1322.

24 In addressing the issue, the Court considered the following factors outlined by the United States Supreme Court in Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476-77, 105 S.Ct. 2174, 2184-85, 85 L.Ed.2d 528 (1985):

(1) the extent of a defendant's purposeful interjection; (2) the burden on the defendant in defending in the forum; (3) the extent of conflict with the sovereignty of the defendant's state; (4) the forum state's interest in adjudicating the dispute; (5) the most efficient judicial resolution of the controversy; (6) the importance of the forum to the plaintiff's interest in convenient and effective relief; and (7) the existence of an alternative forum.

Id. at 1323. The Court found that the balance of these factors tips in favor of the exercise of personal jurisdiction.

25 This was even more attractive prior to September 14, 1995, when the registration of domain names was free. http:internic.net/domain-info/fee-policy.html, ¶ 1.1, visited on October 24, 1998. Today Network Solutions charges a $70.00 for the registration of new domain names, which are kept active for two years. Thereafter, the registrant must pay an annual fee to keep the domain name active. If the domain name was registered on or before March 31, 1998, the annual fee is $100.00. If the domain name was registered on or after April 1, 1998, the annual fee is $35.00. http:internic.net/domain-info/fee-policy.html, ¶ 3, visited on October 24, 1998.

26 Registration numbers 2157332, 2104165 and 2104156

27 See http://www.jrsconcepts.com/domain2.html, visited on October 22, 1998.

28 See http://www.jrsconcepts.com/domain5.html, visited on October 22, 1998.

29 Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1233 (N.D.Ill. 1996).

30 Id. at 1233-34.

31 Id. at 1230.

32 Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).

33 947 F.Supp. 1227 (N.D.Ill. 1996).

34 Id. at 1238.

35 "Therefore, the Court holds that the '.com' designation alone does not establish commercial use." Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1239 (N.D.Ill. 1996); see also Panavision International, L.P. v. Toeppen, 945 F.Supp 1296, 1303 (C.D.Cal. 1996) ("Registration of a trade[mark] as a domain name, without more, is not a commercial use of the trademark . . . .").

36 Id. at 1239.

37 Id. at 1240.

38 Id. at 1240.

39 Panavision supra at 1325.

40 Id. at 1325.

41 Id. at 1327.

42 Registration number 2162548.

43 For example, the listed registrant for the domain name viagra4you.net is HallMark Intl. Marketing Ltd., and the listed registrant for viagraguys.com is a company named AMR.

44 950 F.Supp. 737 (E.D.Va. 1997).

45 Id. at 741. This problem has also been addressed overseas. As reported in the August 1998 Intellectual Property Strategist, a French Tribunal held in favor of Champagne Céréales and against a competitor who registered the domain names champagne-cereale.com and champagnecereale.com. The Tribunal held that the competitor's use of the domain name could create confusion for the public. The Intellectual Property Strategist, Vol. 4, No. 11, at 14-15 (August 1998).

46 1996 WL 84853 (W.D.Wash., Feb. 9, 1996).

47 999 F.Supp. 1337 (C.D.Cal. 1998).

48 For example, the defendant also administers the domain name tanner.net, which is registered to "Tanner E-mail Service." If I was so inclined, I could have the e-mail address "jack@tanner.net" by paying the defendant in Avery Dennison a modest fee. See http://MailBank.com/. "MailBank rents Domains for US$4.95 per year, plus a one charge of US$19.95 for setup and administration." As of October 26, 1998, "Jack@tanner.net" was still available.

49 The listed registrant for wallmart.com is Trilium Interactive, Inc., in Boulder, Colorado.

50 The following is the complete meta tag information contained in the source code for www.wesword.com as visited on October 22, 1998:

westword, denver, , Denver, WESTWORD, DENVER, News, Denver, NEWS, DENVER, newspapers, denver, NEWSPAPER, denver, media, DENVER, politics, Denver, Colorado, POLITICS, DENVER, COLORADO, Roy Romer, ROY ROMER, JonBenet, Ramsey, JONBENET RAMSEY, Ski Guide, Skiing, Colorado Skiing, Rocky Mountain Skiing, Ski Bargains, Ski Deals, The Edge, food, denver, dining, Denver, reviews, denver, guide, denver, Patricia Calhoun, New Times, Denver, Boulder, Colorado, free weekly, free paper, free newspaper, free weeklies, rocky mountain, rocky mountains, Denver, ROCKY MOUNTAINS, Denver theater, Denver performance, Denver art, Denver entertainment, theaters, Denver theatre, Colorado stage, Colorado Theater, Colorado theatre, Colorado Drama, DENVER THEATRE, DENVER THEATER, DENVER, newspaper, denver newspaper, film, review, Denver movies, Denver film , Denver showtimes, show times Denver, review, movie review, Bill Gallo, Denver arts and entertainment, art, film, movies, Denver, Colorado, entertainment listings, guide, city guide, guide, Denver, nightlife, Denver showtimes, Denver theaters, Denver entertainment, Denver city guide, movie times, showtimes, show times Denver, showtimes, Denver, SHOWTIMES, DENVER, SHOW TIMES, MOVIES, TIMES, MOVIE TIMES, THEATERS, DENVER THEATERS, THEATRES, DENVER THEATRES, denver, theatres, listings, entertainment, COLORADO, ENTERTAINMENT colorado, Denver, Concerts, Denver concerts, denver bands, denver music, denver clubs, colorado concerts, colorado clubs, colorado music, arts and entertainment, denver arts and entertainment, denver nightlife, Denver concert listings, country music, rap, hip-hop music Denver, Westword, newspaper, Westword newspaper, The Westword, Michael Roberts, MUSIC, DENVER, MUSIC, DENVER, ENTERTAINMENT, DENVER CONCERTS, COLORADO, CONCERTS, COLORADOENTERTAINMENT, COLORADO BARS, DENVER BARS, DENVER CLUBS, DENVER DANCE, DENVER MUSIC, DENVER CLUBS, COLORADO CLUBS, LISTINGS, ENTERTAINMENT LISTINGS, NEWSPAPER, DENVER, , denver, food, cafes, denver cafes, food, Denver entertainment, Denver guide, Denver, Colorado, Denver food, Denver dining, Denver restaurants, Denver Denver food, Denver restaurants, Denver entertainment, westword, Westword, Westword Newspaper, The Westword, www.westword.com, DENVER, DINING, DENVER DINING

51 985 F.Supp. 1218 (N.D. Calif. 1997).

52 985 F.Supp. 1218, 1219 (N.D. Calif. 1997).

53 7 F.Supp.2d 1098 (S.D.Cal. 1998).

54 Id. at 1103 (internal quotations omitted); 15 U.S.C. § 1115(b)(4).

55 Id. at 1103-04.

56 Id. at 1104.

57 Id. at 1105.

58 979 F.Supp. 684 (N.D.Ill. 1997).

59 Rubbercraft Corp. of Calif. v. Rubbercraft, Inc., 1997 WL 835442 (C.D.Cal., Dec. 17. 1997).

60 See http://www.uspto.gov/web/offices/tac/domain/tmdomain.htm.

61 Id.

62 15 U.S.C. § 1127.

63 Registration Number 2167345.

64 See http://www.uspto.gov/web/offices/tac/domain/tmdomain.htm; See also Trademarks on the Net: How to Register Service Marks That are Used on Web Sites, The Intellectual Property Strategist, Vol. 5, No. 1 (October 1998).

This Article is published for general information, not to provide specific legal advice. The application of any matter discussed in this article to anyone's particular situation requires knowledge and analysis of the specific facts involved.

Comments or inquiries may be directed to:
John M. Tanner or Timothy W. Gordon.