Securing and Protecting a Domain Name for Your Web Site mitchell zimmerman About the Firm Fenwick & West LLP provides comprehensive legal services to high technology and biotechnology clients of national and international prominence. We have over 250 attorneys and a network of correspondent firms in major cities throughout the world. We have offices in Mountain View and San Francisco, California. Fenwick & West LLP is committed to providing excellent, cost-effective and practical legal services and solutions that focus on global high technology industries and issues. We believe that technology will continue to drive our national and global economies, and look forward to partnering with our clients to create the products and services that will help build great companies. We differentiate ourselves by having greater depth in our understanding of our clients’ technologies, industry environment and business needs than is typically expected of lawyers. Fenwick & West is a full service law firm with nationally ranked practice groups covering: ■ Corporate (emerging growth, financings, securities, mergers & acquisitions) ■ Intellectual Property (patent, copyright, licensing, trademark) ■ Litigation (commercial, IP litigation and alternative dispute-resolution) ■ Tax (domestic, international tax planning and litigation) Intellectual Property Group Fenwick & West’s Intellectual Property Group offers comprehensive, integrated advice regarding all aspects of the protection and exploitation of intellectual property. From providing sophisticated legal defense in precedent-setting user interface copyright lawsuits to prosecuting arcane software patents, and from crafting user distribution arrangements on behalf of high technology companies to implementing penetrating intellectual property audits, our attorney’s technical skills enable the Firm to render sophisticated legal advice. Our Offices Silicon Valley Center Embarcadero Center West 801 California Street 275 Battery Street Mountain View, CA 94041 San Francisco, CA 94111 Tel: 650.988.8500 Tel: 415.875.2300 Fax: 650.938.5200 Fax: 415.281.1350 For more information about Fenwick & West LLP, please visit our Web site at: www.fenwick.com. The contents of this publication are not intended, and cannot be considered, as legal advice or opinion. ©1998, Fenwick & West LLP, All Rights Reserved. Securing and Protecting a Domain Name for Your Web Site I. Domain Name: Critical But Perilous Tickets to Online Commerce ..................................... 1 II. Domain Names and Trademarks .....................................................................................3 A. The Domain Name System ....................................................................................3 B. Domain Names: Addresses or Trademarks? ..........................................................4 III. The Right to Use a Mark as a Domain Name ...................................................................5 A. Cybersquatter’s got Your Mark?—Anti-Dilution to the Rescue! ..............................5 B. Diversionary Uses of Other’s Marks as Domain Names and Meta-Tags ................ 12 C. “Garden-Variety” Infringement Claims and NSI’s Dispute Resolution Policy ........18 IV. The Internet, Domain Names and Jurisdiction ..............................................................27 V. Trademark Searching/Policing ......................................................................................32 Conclusion .......................................................................................................................33 Table of Cases ..................................................................................................................34 Decisions of Courts of Foreign Jurisdictions ..................................................................... 38 I. Domain Names: Critical But Perilous Tickets to Online Commerce The explosive development of the Internet, accompanied by the exponential and still accelerating growth in online commerce, is fated to effect important changes in economic power, commercial life, communications and culture. Just how profound the social and economic implications of the Internet may be is doubtless open to debate. But there can be no doubt that—fueled by the burgeoning market of Internet users, the rapid development of online technologies, and the swift evolution of new business models—the World Wide Web will irresistibly lure enterprises of virtually every size into doing business online.1 Before a company can go online, however, before any potential customer, business partner or supplier can find the company’s web site and transact business, the company must first have an address in cyberspace. A company’s domain name, commonly in the form “companyname.com,” is that cyberspace address. Since a domain name is a ticket for entry into online commerce, securing a domain name and protecting the company’s right to use it are critical steps in doing business online. But since a company’s domain name can also serve as an important corporate locator and identifier—in short, since a domain name may also be a trade name or trademark—selecting a domain name involves perils, and protecting it involves new challenges and risks under trademark law. Technically, a domain name is merely a mnemonic term a computer user uses to instruct her computer to obtain the Internet Protocol (or IP) number of the desired web site, the numerical address code needed to find and communicate with a computer anywhere in the world “hosting” a web site. By keying in the characters “http://www.fenwick.com,” for example, in the address or URL space of her web browser and pressing return, a user is prompting her computer to engage in a set of data transmissions that obtain the IP number (206.204.3.47) of the Fenwick & West web page; signal Fenwick & West’s host server computer that she wishes to view the Fenwick home page; and ultimately cause “pages” from Fenwick’s web site to be displayed on her screen. But notwithstanding these technical aspects, notwithstanding that technically <Fenwick.com> is just a more memorable equivalent of <206.204.3.47>, it is plain that domain names actually have an important role beyond invoking certain global network protocols. In the context of online marketing, the right domain name can be an essential element of an effective online marketing strategy, both a direct tool for effectively reaching customers and a symbol of the company and its good will. 1 Some measures: The quantities of data being processed over the Internet is doubling every 100 days, according to an April 15, 1998 Commerce Department report, and the numbers of Americans using the Internet has grown from 3 million in 1994 to approximately 68 million today; an estimated 100 million people worldwide now use the Internet. The Commerce Department report projected that business- to-business purchases over the Internet could reach $300 Billion by 2002. “Internet Use Is Doubling Every 100 Days,” San Francisco Chronicle, April 16, 1998. And on May 18, 1998, Network Solutions, Inc. announced that it had registered its 2,000,000th domain name, up from 1,000,000 in March 1997. fenwick & west securing and protecting a domain name for your web site 1 Given the unstructured nature of the Internet, an easily ascertained domain name can be critical to online success. As the cases have recognized (see, e.g., Cardservice Int’l, Inc. v. McGee, 950 F.Supp. 737, 741 (E.D. Va. 1997)), users regularly attempt to guess a company’s Internet location or domain name by simply inserting the company’s name between the ubiquitous “www.” and “.com” specifiers. This common guessing practice makes an intuitive domain name “a valuable corporate asset, as it facilitates communication with a customer base.” Panavision International v. Toeppen, 1998 U.S. App. LEXIS 7557, at *32 (9th Cir. April 17, 1998). Representing both name and address in the online context, a domain name can serve the classic trademark function of symbolizing a company’s recognition and good will in the marketplace. And insofar as domain names can fulfill the functions of trademarks, it follows as well that domain names can infringe the trademark rights of others. The scope of rights to use particular terms and trademarks as domain names is unsettled. Non judicial procedures for resolving domain name disputes are unsatisfactory, but continue to evolve. And the courts are struggling with the challenge of applying established trademark doctrines in this new and unfamiliar venue, cyberspace. This paper will set forth the critical trademark issues raised by the rise of the Internet, particularly in the domain name context. We will discuss the manner in which domain names are assigned, the state of the law governing substantive rights to use trademarks or names as domain names, and the dispute resolution procedures of the principal domain name U.S. registry. Finally, we will consider some jurisdictional and other issues arising out of the use of trademarks on the web.2 2 This paper is based in part on an article by one of the co-authors, Sally M. Abel, and some of the material from that article has been used here without further attribution or citation. See Abel, “Trademark Issues in Cyberspace: The Brave New Frontier,” available on Fenwick & West’s web site at <http://www.fenwick.com/pub/cyber.html>. The charactoers “<“and”>” are used here and throughout this paper to indicate that the authors are referring to a URL [Uniform Resource Locator or Internet address] or to a