The nature of a trademark and the nature of a domain name are different, which is why it generates controversies. The registered trademark confers territorial rights limited by a certain class of the International Nomenclature, while the domain name does give its owner a cross-border right. In that sense, we will detail both concepts and from it, the main controversies will be exposed.
Registered Trademark
A trademark is a sign that represents the products or services offered by a certain company, which facilities its recognition by consumers. In that sense, the main function of a trademark is its distinctive nature. Every entrepreneur needs to identify their business in the market, so clients recognize the identity of this trademark quickly and that that is not confused with another similar one from the competition. Likewise, trademarks fulfill the identifying function, through which it is possible to delimit within each class of products or services the specific group of products or services that each company introduces to the market[1].
On the other hand, the legal principles of the trademark system are:
1) Registration; that is, to obtain the protection of a trademark by means of a registration, the same that grants an exclusive right.
2) Territoriality; which indicates that a registered trademark will have protection only in the country in which its registration has been granted.
3) Specialty; a brand is defended by virtue of the products or services it identifies.
4) Good faith; the good faith of whoever requests the registration of a trademark is presumed.
Domain names
The domain name is an alphanumeric address of a computer, which allows locating an internet site without resorting to an IP (numerical address). Domain names are made up of any denomination organized in at least 2 levels. For example, “unionandina.com” .com is the first level or top level domain name. The second level or second level domain name is unionandina. It can be inferred that the second level may be the name that identifies and individualizes an internet site.
Likewise, for the registration of a domain, the governing principle is first come, first served which indicates: who arrives first at the registrar will have the preference of a successful registration, since it is only required that an identical (second level) domain does not previously have been registered. Unlike trademark legal principles, domain names do not consider the risk of confusion and distinctiveness of domain names. It is common for companies to want to use the word and relevant part of their trademarks to identify their domain names and thus achieve general diffusion among consumers and internet users. Controversies arise, for example, when entrepreneurs discover that someone else has already registered a domain that contains – in its conformation – a registered trademark, the same that is recognized by consumers and associates its business origin with that name.
Two types of misappropriation can arise:
- First, whoever applied for the domain registration who knows that it contains a name that represents a trademark to negotiate with the owner in exchange for a sum of money.
- The second refers to those cases in which it is intended to use the domain on the internet to redirect to other websites, advertise other products / services different from those represented by the trademark and even carry out acts of unfair competition.
Finally, because of the various controversies, in 1998 the Internet Corporation for Assigned Names and Numbers (ICANN) was founded, this organization “helps coordinate the Internet Assigned Numbers Authority (IANA) functions, which are key technical services critical to the continued operations of the Internet’s underlying address book, the Domain Name System (DNS)”[2], regulates the Uniform Domain Name Dispute Resolution Policy and approves dispute-resolution service providers.
[1] FERNANDEZ-NOVOA, CARLOS. Fundamentos de Derecho de Marcas. Editorial Montecorvo S.A., Madrid, 1884, p. 15.
[2] https://www.icann.org/resources/pages/welcome-2012-02-25-en
Thalia Tapia Morales
Intellectual Property Legal Assistant