(Published in the Los Angles Daily Journal, August 21, 1998)
copy; Copyright 1998, William E. Maguire. All Rights Reserved.
Sorting through the day's mail, past Brandweek, AdrEsq.com,Trademark Lawyers Rule, The Daily Journal, counsel finds his/her client'snew brochure and notices that prominently displayed on the cover is theclient's, albeit new, website address or URL. Not having seen it before,the lawyer surfs over to the client's site. Once there, counsel isrelieved to see a distinct commercial impression for their client'strademark, ROXY (chosen arbitrarily by this author for illustrativepurposes only), on their homepage. The lawyer also notes that the URL isconsistent, i.e., www.roxy.com, which is nice and may avoid the annoyingand all too prevalent domain name dispute. Nevertheless, does this endcounsel's inquiry from a trademark perspective? Is the registration of thedomain name enough protection to help the client avoid potential futurelegal costs and fees? This article will suggest a winning strategy forcounsel to consider in this regard.
The strategy with respect to domain names as 'designations oforigin' or trademarks on the world wide web is as follows:
(1) Who's On First?: Primary Domain Name Registration(s). In the case ofa business with a trademark and/or service mark, the registration of saidmarks, including any acronyms or abbreviations, should be obvious "primary"(e.g., second level domain names, i.e., that which appears just to the leftof .com) domain name registrations. For instance, in the example above,hopefully ROXY is available as a second level domain name. If the clientis a commercial enterprise, hopefully they can register their mark(s) inthe ".com" top level domain (TLD). If the .com TLD is not available, itdoes not necessarily mean that the client has struck out. There may stillbe the opportunity to use hyphens, underscoring or acronyms, but doing soshould not be in an attempt to divert or confuse searchers to the 'true'owner of a well known mark. In any event, InterNIC (www.internic.net) isthe registration authority that has responsibility for registering secondlevel domain names that include top level domain names such as .com, .net,.org, and .edu.
(2) Good Defense Can Beat Good Offense: Other/Defensive Domain NameRegistration(s). The client also should be thinking defensively.Brainstorming as a "pirate" or domain name trafficker might think isworthwhile. In the example of ROXY, consider registering in thealternative ".org" and ".net" top level categories. In this regard, pleasenote that InterNIC no longer ascertains the non-profit status of .orgrequesters. Variations or misspellings of ROXY should also be considered,together with changing the TLD. This effort might be charted as follows:
Country designation top level domain name registries, such asRipeNCC (Europe) and APNIC (Asia-Pacific Region), should also be consideredif the client has an international presence. Domain names registered withRipeNCC and APNIC include a country code system that cover non-U.S. firstlevel designations with a two-letter TLD indicating the country of origin.For example, .uk (United Kingdom), .ca (Canada), .fr (France), and .au(Australia). Please note that a separate registration authority, namely,IANA (The Internet Assigned Numbers Authority) is responsible for the .us(United States) TLD. This part of the strategy would be similar to theadvice given to a client as to the countries in which to file trademarkand/or service mark applications. For instance, if the client plans tosell product in Brazil and Argentina, then it should seek to register theirmark(s) with the relevant country designation top level domain nameregistry for these two countries. In addition, defensive domain nameregistrations should be considered for commercially contiguous "pirate"countries, e.g., Venezuela, Colombia, etc.
(3) Laying Down A Good B.U.N.T. This acronym stands for "Back-Up NationalTrademark." This final part of the strategy suggests that it is not enoughto have merely a domain name registration. In addition, the client shouldhave backup federal trademark and/or service mark registrations. Forinstance, if the client sells footwear via its website, then its domainname registration would not be enough protection against third partieswishing to exploit an idential or similar "designation or origin" ortrademark for similar goods or services. Additionally, the client shouldfile a federal trademark application in International Class #25 forfootwear, in addition to filing a federal service mark application in Class#35 for 'retail services featuring footwear via a global computerinformation network' ('global computer information network' is acceptedU.S. Patent and Trademark Office parlance for the 'internet'), and Class#42 for 'providing information in a wide variety of fields by means of aglobal computer information network.'
The suggestions offered in this article, while not intended tocover all issues attendant to 'designations of origin' or trademarks,should help counsel develop a game plan of their own to assist theirclientele as they chart the web. Finally, should the client be luckyenough to have captured and registered a domain name consistent with itstrademark and/or service mark, remember to have them consider (1) otherprimary designations such as acronyms, abbrevations or nicknames, (2)defensive designations to ward off pirates or domain name traffickers, and(3) don't forget to BUNT. If the client can accomplish all of this it willdefinitely be batting 1000.
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