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Handler, Michael --- "Internet Domain Names and Trade Mark Law" [1999] DigTechLawJl 4; (1999) 1(1) Digital Technology Law Journal 4

Internet Domain Names and Trade Mark Law

Michael Handler [1]
BA/LLB (Final Year Student)
University of Sydney
mhandl@sydney.phillipsfox.com.au

This article provides an overview of the procedures in place for the allocation and registration of Internet domain names and shows how these procedures have come into conflict with laws protecting registered trade marks. The article addresses the question of whether the current Australian law is able to deal with the problem of domain names infringing registered trade marks, with a focus on US and UK case law as a guide. It is argued that while the Australian law is most likely adequate to deal with this problem, greater international effort is needed to reform the Domain Name System so that the interests of trade mark holders may be better protected than they are at present.

1 Introduction

[1] The Internet has grown from four computers linked by the United States Advanced Research Projects Agency in the 1960s [2] into a global communications system comprised of thousands of linked computer networks which contain millions of host computers providing information services. [3] In order for companies to take advantage of the opportunities offered by this constantly expanding system, they need an Internet address and more specifically a domain name. [4]

[2] Domain names are the most important means of identification for companies and businesses on the Internet. A domain name which mirrors a company name is a valuable corporate asset because it facilitates communication with the company's customer base. [5] However, domain names have been allocated very much outside the constraints of intellectual property law and only recently have efforts been made to restrain the registration and use of legally problematic domain names.

[3] This paper looks at how the systems for allocating domain names have come into conflict with trade mark law, and whether the Australian law is adapted to deal with this conflict. In Part 2, I will provide an overview of the Domain Name System, including a discussion of how domain names are registered in the US, the UK and in Australia. In Part 3, I will show how these registration procedures have created conflicts between domain names and trade mark law and how the courts in the US and the UK have dealt with these legal problems. In Part 4, I will analyse whether the Australian law provides adequate protection for trade mark holders. In Part 5, I will look at the recent proposals for reform to the regulatory structures of domain name allocation and analyse the potential impact of these changes.

2 Overview of the Domain Name System

2.1 What is the Domain Name System?

[4] Internet Protocol addresses (IP addresses) are the devices which provide access to web sites. These are represented as strings of four numbers, the combination of which uniquely identifies and specifies the location of some interface on the Internet. Thus, an example of an IP address is <123.45.234.56>.

[5] Because of the difficulty of remembering IP addresses, the Domain Name System was created to provide alpha-numeric substitutes for these strings of digits. Domain names are thus simply mnemonics which allow Internet users to access web sites more conveniently and allow owners of web sites to distinguish their sites more easily. [6]

2.2 What are the Components of a Domain Name?

[6] Take for example the hypothetical Internet address . The domain name is that part of the web address which comes after the and it contains a minimum of two major components.

2.2.1 The Second Level Domain

[7] The Second Level Domain, which usually comes after , is unique to each web address. In my example, this is . Normally, this part of the domain name is the name of the individual or company which owns the web site, or the company's acronym, or some other word to identify the owner of the site.

2.2.2 The generic Top Level Domain

[8] To the right of the Second Level Domain is the generic Top Level Domain Name (gTLD) which shows the type of organisation to which the address belongs. In my example above, this is <.com>. There are a limited number of gTLDs, the major seven being:

• <.com> originally for commercial organisations but now used for most non-specific sites,
• <.edu> for educational institutions,
• <.gov> for government bodies,
• <.net> for network providers,
• <.org> for miscellaneous organisations,
• <.mil> for military organisation, and
• <.int> for international organisations.

2.2.3 The country code Top Level Domain

[9] A third component of the domain name which may come after the gTLD is the national domain for each nation, called the country code Top Level Domain (ccTLD). This shows where the site is registered. In my example this is <.au> for Australia. Other examples are <.uk> for the United Kingdom, <.jp> for Japan and <.ch> for Switzerland. [7] There is a <.us> ccTLD for the United States although it is infrequently used, with most US companies relying on the gTLD alone. [8] Also, many non-US companies have registered their domain names under the <.com> domain, largely for the convenience of having a short Internet address. [9]

2.3 How is the Domain Name System Controlled?

[10] To prevent duplication of Second Level Domains, one body must be responsible for the co- ordination of the Domain Name System. This body is the Internet Assigned Numbers Authority (IANA), which controls both the allocation of IP addresses and of domain names. [10] This latter responsibility has been delegated to the Internet Network Information Center (InterNIC) which has contracted with Network Solutions, Inc (NSI) to allocate names in the most important gTLDs, namely <.com>, <.org> and <.net>. [11]

[11] The IANA also allocates blocks of numerical addresses to regional Internet Protocol registries such as the Asia Pacific Network Information Centre in the Asia-Pacific Region. Responsibility for the <.au> ccTLD has been delegated by InterNIC to the Australian Network Information Centre, which allocates domain names in the , , and domains. [12] The responsibility for administering the domain has been delegated to Melbourne Information Technology Pty Ltd, which has established Internet Names Australia (INA) for allocating names in the domain. [13] As of 3 August 1998, 48,922 names had been registered in the domain. [14]

[12] On 26 June 1997 the Australian Domain Name Administration (ADNA) was established. This body is not a regulatory authority. Rather, its purpose is to assist in the development of policies for the administration of Internet domain names within the <.au> domain. [15]

2.4 How are Domain Names Registered?

2.4.1 The <.com> and domains

[13] Under the current InterNIC policy, NSI registers Second Level Domain names in the <.com> domain on a `first come, first served' basis. [16] NSI does not determine the legality of the domain name registration, or evaluate whether the registration or use of the name may infringe upon the intellectual property rights of a third party. [17] Rather, it requires the registrant to warrant that the selected domain name does not interfere with the rights of any third party, [18] and to agree to indemnify NSI for any loss or damages resulting from any claim arising out of the registration or use of the domain name. [19] Both individuals and companies can register for a domain name under the <.com> domain. [20] In the event of a dispute, NSI sets out detailed dispute resolution procedures in which the rights of trade mark owners can be considered. [21]

[14] The policies of Nominet, the authority responsible for allocating names in the sub- domain, are substantially similar to those of NSI. [22]

2.4.2 The domain

[15] The procedure for registration of a domain name in the domain in Australia resembles that in the US and the UK, in that registration is carried out on a `first come-first served basis', applications are accepted without a determination of trade mark issues and similar warranties are required. [23] There are however two important differences:

• Firstly, INA limits those who can apply for registration to commercial entities which trade in Australia. It requires that such entities wishing to apply for a domain name choose a name directly derived from the name of the entity. [24] Thus I would be unable to register unless there was an entity called `Handler Pty Ltd' trading in Australia.
• Secondly, INA's dispute resolution processes are not nearly as advanced as those of NSI. [25]

3 Conflict Between Domain Names and Trade Mark Law

3.1 Similarities and Differences Between Domain Names and Trade Marks

[16] Many domain names are the names of companies, which in turn are often registered trade marks. The use of a trade mark within a domain name allows for the easiest means of identification of a company's business for an Internet user. Some Internet browsers allow users to find a company's home-page simply by typing in the name of the company or its trade mark, and the browser adds the rest of the URL. [26] A short, easily identifiable domain name which `includes a company's trademark ... ensures that its promotions, information and commercial offerings are easy to find.' [27] Thus domain names can be said to serve similar functions to trade marks.

[17] However, domain names cannot necessarily be equated with trade marks because of the different purposes they serve. Trade marks are signs used to distinguish goods or services dealt with or provided in the course of trade. [28] They facilitate identification of the sources of merchandise and are important vehicles for the creation of business goodwill in relation to particular commodities. [29] Domain names on the other hand serve multiple purposes - they are like `postal addresses, vanity licence plates and billboards all rolled into one'. [30] In many cases, domain names are mere electronic addresses for web sites, rather than signifiers which seek to distinguish goods and services. [31]

[18] The World Intellectual Property Organisation has noted two areas where domain names may come into conflict with trade mark law:

• domain name allocation, and
• trade mark enforcement. [32]

[19] Both will be discussed, with a focus on relevant US and UK case law.

3.2 Domain Name Allocation

[20] The policies of NSI, Nominet and INA in allocating domain names on a `first come, first served' basis without regard to trade mark considerations are in some ways understandable. Second Level Domain names must be unique, whereas the same word or words can be registered as a trade mark by different entities operating in different countries, or by different entities operating in the same country but in respect of different types of goods or services.

[21] These policies have however led to the problem of some trade mark owners being excluded from using their trade marks as their domain names. For example, the word DELTA is registered as a trade mark in the United States in respect of both Delta Air Lines and deltaComm, an Internet Service Provider. However, the domain name is owned by the ISP, despite the fact that Delta Air Lines is the larger and better known company. [33] The domain name was initially registered in 1994 by a magazine editor, who only surrendered the name to McDonald's restaurants when it agreed to pay US$3,500 to a charity. [34] More recently, in April 1998, the owner of the trade mark `CDS' was held to be unable to assert its trade mark rights against the owner of the domain name because the term `cds' is the generic term used by the public for `compact discs'. [35]

[22] This problem has been exacerbated by the fact that there is only one international Top Level Domain Name available to companies, namely <.com>. This has greatly limited the number of available domain names. In Prince plc v Prince Sports Group Inc, [36] Prince plc, a British computer company, registered the domain names and . The Prince Sports Group Inc, a US maker of tennis products and the company with which the public would more commonly associate the word `Prince', was unable to register the domain names. The Prince Sports Group's claim that Prince plc should be forced to hand over the domain names was thrown out by the UK High Court, which held in doing so that any complaints the US company made to Prince plc would be seen as `unjustified threats' under the Trade Marks Act 1994 (UK). [37]

[23] To date, domain Name administrators have `been unable to develop a workable system which enables identically named companies to distinguish themselves so as to avoid confusion to the customer.' [38]

3.3 Trade Mark Enforcement

[24] The most fundamental question raised by the current policies of domain name allocation is whether and in what circumstances a domain name can infringe a registered trade mark. In most countries, a trade mark will generally be infringed when another party uses a sign that is substantially identical with the registered trade mark in relation to goods or services in respect of which the trade mark is registered. [39] Infringement of a trade mark by its use in a domain name may arise in four circumstances, when a domain name containing another party's trade mark is registered:

• for purely non-commercial use;
• in order to prevent a competitor from using that name;
• for commercial purposes, and;
• to be held for `ransom' with the expectation that the trade mark holder will pay to obtain the name (a practice known as `cyber-squatting'). [40]

[25] The US and UK courts have applied traditional trade mark law in respect of the first two circumstances. However, in the latter two circumstances, they have applied the concept of trade mark dilution to protect the rights of trade marks owners.

3.3.1 Registration for non-commercial use

[26] It has been held that the mere registration of a domain name cannot infringe another party's registered trade mark because the name will not be being used in trade. [41] In Lockhead Martin Corporation v Network Solutions Inc, [42] the Court held that `something more than the registration of the name is required before the use of the domain name is infringing.' [43]

[27] This is however of little practical importance, because in most cases a person who registers the name of a famous company as a domain name does so with a view to making commercial use of the name. [44]

3.3.2 Registration to stifle competition

[28] This situation has arisen in the US, where the Princeton Review, a satirical magazine, registered the domain name to annoy its main competitor, the Stanley H Kaplan Educational Center, which owned the trade mark in the word KAPLAN. [45] On the page, the Review ran a comparison between the products supplied by it and by Kaplan [46] and asked users to list any complaints they had about Kaplan. [47] A three-person NSI arbitration panel required the Review to relinquish the domain to Kaplan, finding that Kaplan's goodwill had been damaged and its customers confused. [48]

[29] Had the case gone to court, it is likely that the Review would have been found to have infringed Kaplan's trade mark, because it was using the word KAPLAN as a mark to distinguish goods and services.

3.3.3 Trading using another's trade mark

[30] If a domain name which is the trade mark of another company is being used in relation to similar goods in respect of which the trade mark is registered, then trading using another's mark will be an infringement.

[31] However, domain names will more frequently be used in respect of different goods and services. For example, in Interstellar Starship Services Limited v Tchou, [49] the defendant owned the domain name and used it to publicise the activities of a cabaret theatre group. This was held not to infringe the trade mark `ERIX', owned by the plaintiff manufacturer of video imaging hardware and software, because the domain name was being used in connection with services sufficiently different from those of the plaintiff and there was no likelihood of consumer confusion. [50]

[32] In such instances, the concept of trade mark dilution, provided for in legislation in both the US [51] and the UK, [52] may be of assistance to trade mark owners. Trademark dilution is the `gradual whittling away and dispersion of the identity and hold upon the public mind of the mark ... by its use upon non-competing goods.' [53] An example of this is the US case of Hasbro, Inc v Internet Entertainment Group, [54] where the plaintiff toy-maker owned the trade mark `CANDY LAND' and used it to identify board games for children. The defendant had been using the domain name to identify its pornographic Internet site. Hasbro argued that the `CANDY LAND' mark was strongly associated with its board game and that the use of the mark by the defendant, plus the fact that it had reserved another domain name incorporating another of the plaintiff's trade marks, showed that the defendant intended to trade off Hasbro's work. [55] The court granted a preliminary injunction, finding that it was arguable that the defendants had violated the Trademark Dilution Act 1995 (US). [56]

[33] More recently, the US Internet Service Provider America Online, which owns the domain name , obtained a cease and desist order against a German group which was operating an on-line casino at . America Online successfully argued that the actions of the German company were in violation of its trade mark rights. [57]

3.3.4 Cyber-squatting

[34] Recent US and UK cases show the importance of trade mark dilution in fighting against the `ransoming' of domain names.

[35] In both Avery Dennison Corporation v Sumpton [58] and Panavision International v Toeppen, [59] the respective defendants registered as their domain names the trade marks of the respective plaintiffs. The defendants did so with the intention of selling the rights to the domain names to the plaintiffs, making a substantial profit in doing so. In both cases it was held that by registering these names and then attempting to make commercial use out of them (by attempting to sell the rights to the names to the plaintiffs), the defendants had diluted the plaintiffs' marks and infringed the Trademark Dilution Act 1995 (US).

[36] In Marks & Spencer, Ladbrokes, J. Sainsbury, Virgin Enterprises, British Telecommunications and Telecom Securicor Cellular Radio v One in a Million, [60] the defendants registered a number of domain names which incorporated the famous trade marks of the respective plaintiffs with a view to selling the names to the plaintiffs. The plaintiffs alleged that their trade marks had been diluted. The UK High Court held that the mere registration of another's name as a domain name was not in itself actionable, but that registration for the purpose of preventing another company using that name except upon payment of a sum was a use in the course of trade within the meaning of the Trade Marks Act 1994 (UK). It held that an injunction may be granted to restrain a threatened tort if the registration was calculated to infringe the plaintiff's rights. [61]

4 Situation Under Australian Law

4.1 Protection Under the Trade Marks Act 1995 (Cth)

4.1.1 Section 120(1)

[37] Section 120(1) of the Act prohibits `the use as a trade mark of a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered'. Thus if a domain name which contains another's trade mark is being used as a device to distinguish goods and services, and the goods or services in question are of the same kind as those in respect of which the trade mark is registered, then there would be an obvious infringement.

[38] Section 120(1) would therefore be adequate to deal with the second and third circumstances outlined above, namely registration of a domain name to stifle competition, and registration with the purpose of trading in respect of similar goods and services. However, as noted, in most situations the domain name will not be being used in connection with similar goods and services, in which cases section 120(1) will be of no assistance to trade mark holders.

4.1.2 Section 120(3)

[39] There is no direct protection under the Act for dilution of a registered trade mark, as there is in the US and the UK. However, section 120(3) does protect famous marks in prohibiting similar signs being used in relation to goods or services for which the trade mark is not registered. Four factors are required to prove infringement under section 120(3):

• the trade mark must be well known in Australia;
• the person must use as a trade mark a sign that is substantially identical with or deceptively similar to the trade mark in relation to goods that are not of the same description as that of the goods in respect of which the trade mark is registered;
• the sign used would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark;
• the interests of the registered owner are likely to be adversely affected.

[40] Firstly, in determining whether a trade mark is well known, regard is had to the extent to which the mark is known to the relevant sector of the public, as a result of promotion as well as by trade. [62]

[41] Next, it must be established that the allegedly infringing sign is being used as a trade mark when being used as a domain name. If so, then the nature of goods and services to which the domain name relates is irrelevant. The US District Court has held that a domain name can act as a trade mark, [63] and, as argued, although domain names can be thought of as devices to designate the location of web sites they also can clearly indicate the source or affiliation of goods or services.

[42] Once this is established, it would need to be shown that the domain name is likely to be taken as indicating a connection between it and the registered owner of the trade mark, thus causing confusion. [64] Waelde argues that confusion should be assessed not at the point of access to the web site but rather when the site is actually entered. [65] However, this overlooks the fact that domain names can also be used as advertising logos and that inherent confusion would certainly be created if a company started to advertise its services using its domain name which incorporated the famous mark of another.

[43] The most relevant factor is the final one, namely whether the `interests' of the trade mark owner are likely to be affected. Since `interests' are not specifically defined in the Act, there appears to be no reason why courts cannot interpret this broadly and consider whether the singular identity of the trade mark has been eroded by the defendant's domain name. Thus trade mark dilution may be able to be taken into account in the interpretation of section 120(3).

4.1.3 Consequences for Australian trade mark owners

[44] Section 120(3) should provide some protection for famous trade mark holders where another party is trading under a domain name using a registered trade mark in respect of goods and services different from those in respect of which the mark is registered. Indeed Simpson has said that the `provision will be one of the most fertile areas of litigation in the protection of corporate name and reputation in the cyber environment.' [66]

[45] However section 120(3) does not provide total protection for trade mark holders. Firstly, it only applies where the trade mark is well known, and thus owners of valuable but unrenowned trade marks will not gain protection. Secondly, section 120(3) may not be able to protect owners from cyber- squatters, despite the US and UK authority on this point. This is because under section 120(3)(b), the domain name must be used as a trade mark. It is arguable that cyber-squatters do not commercially use the marks to distinguish their goods and services, but rather `stockpile' them, awaiting payment from the trade marks' owners.

4.2 Protection Other than Under the Trade Marks Act 1995 (Cth)

[46] The law of passing off may be used at least to obtain injunctions to prevent cyber-squatters profiting from their practices in Australia. In the Marks and Spencer case, the Court held that `[a]ny person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.' [67] A cause of action in passing off can be maintained in Australia so long as the three requisite elements of reputation, misrepresentation and damage can be established. [68] Proving reputation should be easier than establishing that a mark is `well known in Australia' under section 120(3)(a) of the Trade Marks Act.

[47] There may also be an infringement of sections 52 and 53 of the Trade Practices Act 1974 (Cth) if the use of the domain name constitutes `misleading or deceptive conduct' in that it is likely to cause confusion. [69] There is little doubt that use of a domain name so as to induce purchasers to believe that the goods being sold at that location are the manufacture of another person would contravene section 52. [70] Similarly, a false representation that a business at a registered site is connected to the business of another would amount to a contravention of both sections 52 and 53.

[48] A final factor is that the practice of cyber-squatting is unlikely to take hold in Australia because of INA's policy that only registered corporations or commercial entities trading in Australia may register in the domain.

5 Planned Changes to the Regulatory Structure of the Domain Name System

5.1 Global Reforms

[49] While local trade mark laws may be able to deal with infringing domain names, it is clear that international efforts are required to minimise the problems of domain name allocation. There have been two major proposals for reform of the Domain Name System.

5.1.1 The gTLD-MoU

[50] The first major proposal is the generic Top Level Domain Memorandum of Understanding (gTLD-MoU). This is a document of agreement issued by a group of Internet experts called the Internet Ad-Hoc Committee for the global management of the Domain Name System. [71] It proposes that:

• seven new gTLDs should be created, namely: <.firm>; <.store>; <.web>; <.arts>; <.rec>; <.info> and <.nom>
• the administration of the Domain Name System should be under the control of a private, non- profit, public interest organisation not under the control of any government;
• administration of these gTLDs is to be run by Registrars distributed around the world;
• there will be uniform procedures for dispute resolution, applying to all Registrars and domains, which will involve on-line mediation, expedited arbitration as well as an administrative challenge procedure. [72]

[51] The gTLD-MoU provides a policy framework by establishing a self-regulatory structure with capacity to evolve according to developing national and technological requirements. [73] However, none of its recommendations has to date been adopted by IANA or any other body responsible for domain name allocation.

5.1.2 The US Department of Commerce Green Paper

[52] On 20 February 1998, the United States Department of Commerce released a Green Paper titled A Proposal to Improve the Technical Management of Internet Names and Addresses. [74] The Paper outlined the process by which the US Government will transfer management of the Domain Name System from the IANA to a private non-profit US-based corporation. It was proposed that this new corporation would be subject to US law, ensuring US jurisdiction over trade mark issues and dispute resolution processes in all gTLDs. [75] The US Government also announced its intention in the Green Paper to open up to competition administration of Top Level Domains, thus affecting the allocation and registration of gTLDs. [76]

5.1.3 The Australian response

[53] The Minister for Communications, the Information Economy and the Arts, Senator the Hon Richard Alston, responded to the Green Paper by noting its relevance to the many Australian businesses which operate in the <.com>, <.org> and <.net> domains. [77] The Minister said that the proposed US model appeared not to recognise the desirability of developing an international approach to Internet-related issues and that it ignored existing international efforts to reform the domain name system. [78]

[54] The Commonwealth Government's official response to the Green Paper, announced on 6 May 1998, agreed that a non-profit, self-regulatory body should be established to provide governance over domain name matters. [79] However, it stated that the Domain Name System should be structured to be responsive to and accountable to stake holders in the many countries, such as Australia, which use gTLDs such as <.com>. [80] It also criticised the failure of the Green Paper to make reference to the other key process of international domain name reform that has taken place through the development of the gTLD-MoU and how such processes could be accommodated by the US to allow them to take meaningfully into account the interests of other countries. [81]

5.1.4 The US Department of Commerce White Paper

[55] On 5 June 1998, the US Department of Commerce released a White Paper titled Management of Internet Names and Addresses. [82] This Paper maintained most of the recommendations of the Green Paper, with one important change which recognises the number of parties worldwide which will be affected by changes to the Domain Name System. The White Paper suggested that the new corporation to take over from the IANA should adopt policies whereby:

• Domain registrants pay registration fees at the time of registration or renewal and agree to submit infringing domain names to the authority of a court of law in the jurisdiction in which the registry, registry database, registrar, or the "A" root servers are located;
• Domain name registrants would agree, at the time of registration or renewal, that in cases involving cyberpiracy or cybersquatting (as opposed to conflicts between legitimate competing rights holders), they would submit to and be bound by alternative dispute resolution systems identified by the new corporation for the purpose of resolving those conflicts;
• Domain name registrants would agree, at the time of registration or renewal, to abide by processes adopted by the new corporation that exclude certain famous trademarks from being used as domain names (in one or more TLDs) except by the designated trademark holder. [83]

[56] Both the Australian Government [84] and the European Commission [85] have announced their support for the White Paper.

[57] In response to the White Paper, the World Intellectual Property Organisation has convened an international process to develop recommendations concerning intellectual property issues relating to domain name allocation. [86] In particular, the Organisation aims to:

• recommend uniform approaches to resolving trade mark and domain name disputes;
• recommend a process for protecting famous marks in the gTLDs; and
• evaluate the effects of adding new gTLDs on trade mark holders. [87]

[58] The results of this process are expected by March 1999.

5.2 Local Reforms

[59] On 27 and 28 November 1997, ADNA organised public fora in Sydney and Melbourne. [88] A number of options were canvassed such as the introduction of three new Top Level Domains:

• for registered trade marks in Australia (consistent with the French domain );
• where N represents the registered class number of the trade mark; and
• to distinguish Australian products and services.

[60] There was some support for the and domains but most support for simply expanding the eligibility criteria for registration under the domain so that trade marks, rather than merely the names or abbreviations of commercial entities, could be used in this domain. [89]

[61] The views of the fora were put to the ADNA Board on 28 January 1998. [90] The Board did not support the proposed changes to the domain. Rather, it decided to proceed with its own domain [91] and, following public consultation, with the domain. [92] ADNA is still exploring ways of protecting trade mark owners' rights in respect of domain names, while the problem of how best to protect the rights of Australian trade mark owners on the Internet remains unresolved.

6 Conclusion

[62] The major problem with Internet governance is ultimately not the inability of trade mark law to adapt to new situations created by advances in technology. Rather, the problem lies in the local nature of the law, in that it only protects the owner of the trade mark in the country of registration. In the pre- cyberspace era, comparatively few products were marketed and sold globally. Those that were usually had trade mark protection in numerous countries. Because the Internet transcends national boundaries and has facilitated international trading and global brand awareness, this has created difficulties for businesses wishing to trade in cyberspace but also wanting to maintain their intellectual property protection.

[63] Of the two problems noted by the World Intellectual Property Organisation, it appears that Australia is adequately equipped to deal with the problem of domain names infringing trade marks. Both the Trade Marks Act and the relevant common law appears able to protect trade mark holders from improper commercial use of their trade marks. This may even include trade mark dilution, as long as the courts are prepared to interpret the `interests' requirement in section 120(3) broadly. The restrictive policies of INA in registering names in the domain also assist here.

[64] What is still needed is the implementation of global regulatory structures which provide for efficient domain name allocation to provide adequate protection for trade mark owners worldwide. There is still a need to develop either new domain names or new registration or dispute resolution techniques so as to protect the interests of trade mark owners, a problem which remains unresolved at both a global and local level. However the work of such bodies as the World Intellectual Property Organisation and ADNA should be encouraged, because hopefully it will be through self-regulation, and not through traditional legal procedures, that future domain name disputes will be resolved.

2 Weinfeld, C, `carrie@onulrev.onul.edu: Internet Domain Names and Trademark Infringement' (1996) 23 Ohio Northern University Law Review 229 at 231. Back to Text.

3 Brunel, A `Trademark Protection for Internet Domain Names' (1996) 24 International Business Lawyer 174 at 174. Back to Text.

4 Meadows, J, `Trademark Protection for Trademarks Used as Internet Domain Names' (1997) 65 University of Cincinnati Law Review 1323 at 1324. Back to Text.

5 Ibid. Back to Text.

6 Marcovitz, J, `ronald@mcdonalds.com - "Owning a Bitchin'" Corporate Trademark as an Internet Address - Infringement?' (1995) 17 Cardozo Law Review 85 at 91. Back to Text.

7 Osborne, D, `Domain Names, Registration & Dispute Resolution in Recent UK Cases' [1997] European Intellectual Property Review 644 at 644. Back to Text.

8 Shaw, R, `Internet Domain Names: Whose Domain is This?', Address at the Coordination and Administration of the Internet Workshop held at the John F Kennedy School of Government, Harvard University, 9-10 September 1996 [Internet] URL: http://www.itu.ch/intreg/dns.html. Back to Text.

9 Ibid. Back to Text.

10 Meadows, above n4 at 1130-1. Back to Text.

11 Id at 1131. Back to Text.

12 Skelly, G, `Australia Regulates Commercial Domain Name Use" (1997) 10 IP Asia 24 at 24. Back to Text.

13 A company called Netregistry has, since 31 April 1998, been offering names under what it has advertised as `the all new commercial domain' of . It is actually the case that is a privately owned Second Level Domain registered with NSI under which Australian organisations can seek sub-registration. See either [Internet] URL: http://www.netregistry.au.com or [Internet] URL: http://www.au.com for the home page of Netregistry. is not recognised by the ACCC as an `official' Australian domain and is not endorsed by any <.au> registry. See [Internet] URL: http://www.bluetongue.com.au/domainnames/info.html. Back to Text.

14 [Internet] URLhttp://www.bluetongue.com.au/domainnames/info.html. Back to Text.

15 See Australian Domain Name Administration, [Internet] URL: http://www.adna.asn.au. Back to Text.

16 Network Solutions Domain Name Dispute Policy (Revision 03, effective 25 February 1998) §1 [Internet] URL: http://is.internic.net/domain-info/internic-domain-6.html. Back to Text.

17 Ibid. Back to Text.

18 Id at §2. Back to Text.

19 Id at §6. Back to Text.

20 See Network Solutions Domain Name Registration Agreement (version 4.0) Instructions (revised 30 March 1998) §VI [Internet] http://is.internic.net/help/instructions.txt. Back to Text.

21 Network Solutions Domain Name Dispute Policy, above n16 at §8-9. Back to Text.

22 Nominet UK, `Rules for the co.uk Domain' (25 July 1996) [Internet] URL: http://www.nic.uk/rules/rup3.html. The major difference between NSI's Rules and those of Nominet is Nominet's requirement that Second Level Domains be of more than two characters. Back to Text.

23 Internet Names Australia, `com.au Domain Name Allocation Policy' (version 3.4, 14 April 1998) [Internet] URL: http://www.ina.com.au/register/registerfr.htm. Back to Text.

24 Ibid. See also Skelly, above n12 at 26. Back to Text.

25 Ibid. Back to Text.

26 Waelde, C, `Domain Names and Trademarks: What's in a Name?' in Edwards, L & Waelde, C (eds) Law and the Internet: Regulating Cyberspace (1997) [Internet] URL: http://www.law.ed.ac.uk/ch4_main.htm Back to Text.

27 Brunel, above n3 at 175. Back to Text.

28 Trade Marks Act 1995 (Cth) section 17. Back to Text.

29 Gabay, M, `The Role of Trademarks in Consumer Protection and Development in Developing Countries' in Ricketson, S, Intellectual Property: Cases, Materials and Commentary, (Sydney: Butterworths, 1994) at 894-5. Back to Text.

30 Quittner, J, `Life in Cyberspace', quoted in Brunel, above n3 at 177. Back to Text.

31 Waelde, above n26. Back to Text.

32 World Intellectual Property Organisation, Meeting of Consultants on Trade Marks and Internet Domain Names, Geneva, 12-14 February 1997 [Internet] URL: http://www.wipo.org/eng/internet/domains/index.htm Back to Text.

33 See deltaComm's home page [Internet] URL: http://www.delta.com. Back to Text.

34 Brunel, above n3 at 174. Back to Text.

35 CD Solutions Inc v CDS Networks Inc, unreported, Civil No 97-793-HA (D.Or, 22 April 1998) [Internet] URL: http://www.perkinscoie.com/resource/ecomm/netcase/Cases-08.htm. Back to Text.

36 Unreported, UK High Court, Lightman J, 31 July 1997. Back to Text.

37 Abel, S, `Trademark Issues in Cyberspace: The Brave New Frontier' 15 May 1998, rev 10.6 [Internet] URL: http://www.fenwick.com/pub/cyber.html. Back to Text.

38 Simpson, S, `Name and Reputation in the Fourth Dimension', Paper presented at the CyberLaw Conference (Business Education Law Centre), Hilton Hotel, Sydney, 1 April 1998 [Internet] URL: http://www2.austlii.edu.au/itlaw/articles/Simpson.html. Back to Text.

39 See for example Trade Marks Act 1995 (Cth) section 120; Trade Marks Act 1994 (UK) section 10; 15 USC §1125 (US). Back to Text.

40 Meadows, above n4 at 1325-6. Back to Text.

41 Gringras, C, The Laws of the Internet, (London: Butterworths, 1997) at 138 Back to Text.

42 Unreported, 1997 US Dist LEXIS 19273 (CD Cal 1997). Back to Text.

43 Id at 23. This position has been affirmed in Panavision International v Toeppen, unreported 945 F Supp 1296 at 1303 (CD Cal 1996) and in Academy of Motion Picture Arts & Sciences v Network Solutions Inc, unreported, F Supp 1997 WL 810472 (CD Cal, 22 December 1997). Back to Text.

44 But see Weinfeld, above n2 at 229-30. Back to Text.

45 Id at 237. Back to Text.

46 Brunel, above n3 at 177. Back to Text.

47 Meadows, above n4 at 1335. Back to Text.

48 Weinfeld, above n2 at 237. Back to Text.

49 Unreported, 983 F Supp 1331 (D. Or, 20 November 1997) [Internet] URL: http://www.perkinscoie.com/resource/ecomm/netcase/Cases-08.htm Back to Text.

50 Ibid. Back to Text.

51 15 USC §1125(c) (introduced by the Trademark Dilution Act 1995). Back to Text.

52 Trade Marks Act 1994 (UK) section 56. Back to Text.

53 Schechter, F, `The Rational Basis of Trademark Protection' (1927) 40 Harvard Law Review 813 at 825 (emphasis added). Back to Text.

54 Unreported, No C96-130WD, 1996 WL 84853 (WD Wash, 9 February 1996). Back to Text.

55 Meadows, above n4 at 1344. Back to Text.

56 Ibid. Back to Text.

57 America Online v AOL Casino (unreported, filed 24 June 1998) [Internet] URL: http://www.perkinscoie.com/resource/ecomm/netcase/Cases-08.htm Back to Text.

58 Unreported, CV 97-407, 19 March 1998. Back to Text.

59 Unreported, US 9th Cir Court of Appeals, No 97- 55467, 20 April 1998. Back to Text.

60 Unreported, UK High Court, Chancery Division, Deputy Judge Sumption QC, 29 November 1997. Back to Text.

61 See Simpson, above n38. Back to Text.

62 Trade Marks Act 1995 (Cth) section 120(4). Back to Text.

63 Comp Examiner Agency, Inc v Juris, Inc, unreported, No 96-0213-WMB, 1996 WL 376600 (CD Cal, 26 April 1996), as cited in J Meadows, above n4 at 1345. Back to Text.

64 Wagamama Limited v City Centre Restaurants plc [1995] FSR 713. Back to Text.

65 Waelde, above n26. Back to Text.

66 Simpson, above n38. Back to Text.

67 Above n60. Back to Text.

68 ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193 at 247 per Gummow J. See also Gringras, above n41 at 140. Back to Text.

69 See Simpson, above n36. Back to Text.

70 At present, the ACCC is seeking to bring an action for contravention of sections 52 and 53 of the Trade Practices Act against an Australian company which has registered the domain name and is providing domain name registration services similar to those provided by the US organisation InterNIC (which operates at ). See Australian Competition and Consumer Commission v Internic Technology Pty Ltd, unreported, Federal Court of Australia, Lindgren J, 14 July 1998 [Internet] URL: http://www.austlii.edu.au/au/cases/cth/federal_ct/1998/818.html. Back to Text.

71 See `Establishment of a Memorandum of Understanding on the Generic Top Level Domain Name Space of the Internet Domain Name System (gTLD-MoU)' (28 February 1997) [Internet] URL: http://www.gtld-mou.org/gTLD-MoU.html. Back to Text.

72 See `gTLD-MoU Frequently Asked Questions' (last update 1 June 1998) [Internet] URL: http://www.gtld-mou.org/docs/faq.html. Back to Text.

73 Stoodley, J, `Internet Domain Names and Trade Marks' [1997] European Intellectual Property Review 509 at 510. Back to Text.

74 [Internet] URL: http://www.ntia.doc.gov/ntiahome/domainname/domainname130.htm. Back to Text.

75 Ibid. Back to Text.

76 Ibid. Back to Text.

77 Department of Communications and the Arts, `Proposed US Changes to Internet Domain Name Regime' Media Release, 10 March 1998 [Internet] URL: http://www.dca.gov.au/text_welcome.html. Back to Text.

78 Ibid. Back to Text.

79 See `Response of the Commonwealth Government of Australia to the proposed rule of the United States Department of Commerce: A Proposal to Improve Technical Management of Internet Names and Addresses' (6 May 1998) [Internet] URL: http://www.noie.gov.au/dns/ausreply.html. Back to Text.

80 Ibid. Back to Text.

81 Ibid. Back to Text.

82 [Internet] URL: http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm. Back to Text.

83 Ibid. See also Klein, S & Lupo, A, ``White Paper' Leaves Some Domain Gray', National Law Journal, 29 June 1998 [Internet] URLhttp://www.ljx.com/internet/0629whitedomain.html Back to Text.

84 Department of Communications and the Arts, `Australia welcomes US Statement on Domain Names' Media Release (10 June 1998) [Internet] URL: http://www.dca.gov.au/text_welcome.html. Back to Text.

85 See `The Future Organisation and Management of Internet Naming and Addressing: Conclusions of the European Consultative Meeting', Brussels, 7 July 1998 [Internet] URL: http://www.ispo.cec.be/eif/dns/conclusions.html. Back to Text.

86 World Intellectual Property Organisation, `Internet Domain Name Process' [Internet] URL: http://wipo2.wipo.int/process/eng/processhome.html Back to Text.

87 Ibid. Back to Text.

88 Australian Domain Name Administration, `Trademarks and Domain Names Forum Report' [Internet] URL: http://www.adna.asn. /Documents/TrademarksAndDomains.html. Back to Text.

89 Ibid. Back to Text.

90 Australian Domain Name Administration, `Minutes of Fourth ADNA Board Meeting - 28 January 1998' [Internet] URLhttp://www.adna.asn.au/Minutes au /January1998.html. Back to Text.

91 Australian Domain Name Administration, `pr.au Policies (Draft)' (31 March 1998) [Internet] URLhttp://www.adna.asn.au/Documents/pr.au.html. Back to Text.

92 Australian Domain Name Administration, `ADNA Public Consultation Session', 30 April 1998 [Internet] URL: http://www.adna.asn.au/Minutes/April1998.html. Back to Text.