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Trademark protection in cyberspace


Another important type of registration, albeit not a trademark or service mark registration, which should be considered by trademark owners is the registration of their mark or name as an Internet domain name. The registration procedure for an Internet domain name is relatively simple and inexpensive, and will preserve the trademark owner’s rights in the domain name. This is important because the music industry, particularly performing artists, attracts numerous fans who love to show their devotion to their favorite performers by establishing a website dedicated to them. Unfortunately, many such websites are accessed through domain names that consist of the performers' name. Examples include the official websites for The Cranberries at CRANBERRIES.COM and for Green Day at GREENDAY.COM. On the other hand, accessing the domain name SPICEGIRLS.COM leads the user to “The totally unofficial Spice Girls fan site”. The same is true for an unofficial website for the Beach Boys at BEACHBOYS.COM. Although this can be flattering, it may be problematic when the performer is unable to control the content of the website, such as controlling information concerning the performer, controlling the dissemination of digital recordings, controlling links to other websites that abet copyright infringement, etc. In the SPICEGIRLS.COM example, the website at one time listed “the lowdown on the fantastic five. All the info you ever wanted to know about them (and possibly quite a bit you didn't)". Since Internet users often attempt to access information concerning a party by simply typing in their name or trademark plus the generic Top Level Domain “.com”, music organizations and artists should wish to have fans directed to a website which they can control. The issue of who should control domain names, in the context of negotiations between artists and recording companies, has also become much more heated in recent years.

Depending upon the format of the domain name, whether registered in a generic Top Level Domain ("gTLDs" include .com, .org, .net and recently .info and .biz) or a country code Top Level Domain ("ccTLDs" include two letter country abbreviations, such as .uk in the United Kingdom, .de in Germany, etc.), different types of action against the unauthorized registration of a name or trademark as a domain name may be available. For gTLD's, the Internet Corporation for Assigned Names and Numbers, which oversees the internet, has established a Uniform Dispute Resolution Policy (“UDRP”), by which the rightful owner of a trademark or service mark registration may commence arbitration-like proceedings, under certain circumstances, to recover an unauthorized domain name. Special transitional procedures have been adopted for the introduction of the .info, .biz and .name gTLDs. Unfortunately under the UDRP guidelines, it is uncertain whether the adoption of a domain name by a fan be considered to violate any rights since the fan might be regarded as having a “legitimate interest” in the site for dissemination of information, etc. Such disputes may also be brought, as in traditional trademark infringement proceedings, before the courts. Other similar dispute resolution procedures exist with respect to a small number of ccTLD's, although the overwhelming majority will simply leave the dispute to the courts to decide.

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© Copyright 2001 Dennis S. Prahl - Posted July 2002
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