INFOTECH AND THE LAW
The Domain Name: A Race to Recognition
P> While many people may not know what an Internet address is, few would fail to recognize the companies that own the following domain names: att.com, mci.com, ibm.com and compaq.com. A consumer who wanted information on a Compaq personal computer would expect to find such information on the home page at www.compaq.com. If consumers did not find Compaq's home page at that address, there would be a risk of a substantial loss of potential sales. Thus, having a domain name that can be easily associated with the company's name may be very important to successful electronic commerce.
Until Internic, the domain name registration authority, changed the ground rules for assigning domain names last year, the first company to register a domain name effectively owned that name. In some cases, individuals registered well-known trademarks as domain names and then demanded compensation for release of the names to the rightful trademark owners. In at least one case, a company registered as a domain name the name of its principal competitor, forcing the competitor to bring an action claiming such registration was unlawful because it created confusion in the minds of consumers. These early abuses resulted in Internic's new procedures.
The new registration procedures require the applicant to represent:
-That it has the right to use the proposed domain name.
-That it intends to use the domain name on a regular basis.
-That its use will not infringe the trademark or other intellectual property rights of any third party.
-That it is not registering the name for any unlawful purpose such as unfair competition.
Internic does not verify the accuracy of these representations but reserves the right to withdraw the registration under certain circumstances.
If a domain name assigned by Internic is identical to a foreign or U.S. federally registered trademark or service mark of another party, the applicant's right to the name generally depends on the outcome of certain "races." If the applicant's first use of the domain name (e.g., its activation date) is prior to both the first use of the trademark or service mark and the effective date of the trademark or service mark registration, the applicant wins the race and can continue to use its assigned domain name until a court order to the contrary is received by Internic.
If the applicant loses this race, Internic will ask the applicant for proof that it also owns a foreign or U.S. federally registered trademark or service mark that is the same as its assigned domain name (two companies can have identical trademarks or service marks for different products or services). If the applicant owns a registered trademark or service mark that is the same as its assigned domain name, the applicant wins and can continue to use its assigned domain name unless a court order or arbitration award to the contrary is received by Internic.
The domain name game is a series of races that a company must win to obtain and keep a valuable domain name. To increase chances of winning, companies should determine whether Internic has assigned the desired domain name to another party. There is no way to search pending applications.
If the domain name search is negative, companies should register the domain name as a trademark or service mark if it is not already registered. Having the name registered as both a domain name and a trademark or service mark will afford the best protection.
Robert E. Gregg is a partner in the Fairfax, Va., office of Hazel & Thomas P.C., focusing on the representation of high-technology companies and government contractors.