Trademarks and Domain Names:
Property Rights and Institutional Evolution in Cyberspace
A Study by Milton Mueller, Associate Professor, Syracuse University School
of Information Studies.
Forthcoming in Sharon E. Gillett and Ingo Vogelsang (Eds.), Proceedings
of the 26th Annual Telecommunications Policy Research Conference, Mahwah,
New Jersey: LEA Publishers (1999).
Abstract
Researchers gathered facts about 121 known cases of trademark-based challenges
to domain name registrations. The cases were categorized according to the
type of conflict and the kind of settlement or decision that resulted.
The data show that a large majority of the cases (88%) would not qualify
as trademark infringement under traditional standards of case law. Only
about 12% of the cases exhibited the kind of consumer confusion, intent
to pass off, or dilution that would normally be considered a trademark
violation. In all of the cases of passing off, trademark owners won decisive
victories in court. The largest number of domain name-trademark cases (49%)
arose from conflicts over the use of common names (such as “prince” or
“columbia”) that legally may be used concurrently by multiple organizations
or businesses. In many of these cases, courts have allowed trademark owners
to take away names from other Internet users. The bias toward trademark
owners has been exacerbated by dispute resolution procedures used by domain
name registries, which privilege trademark rights over all other claims
to the right to use a name. The paper concludes that trademark interests
are expanding the scope of their property rights in cyberspace at the expense
of smaller Internet users. The paper concludes by proposing changes in
law and registry policies that would rectify these injustices.