Trademark and Domain Name Disputes and Their Resolution Methods

Abstract

The electronic domain name registration system is based on the principle of “first come, first served,” whereby the person who first applies for the registration of a domain name is granted priority on the Internet, irrespective of the earlier filing dates of trademarks. Consequently, numerous trademarks, including well-known marks, have been registered as domain names without the knowledge or consent of their rightful owners.

One of the most common forms of disputes between domain name registrants and trademark owners involves the registration of a domain name identical to an existing trademark, particularly a well-known trademark. This practice is known as cybersquatting. It typically involves registering a domain name corresponding to a trademark owned by another party and subsequently demanding substantial sums of money in exchange for transferring the domain name to its legitimate owner.

As a result, affected trademark owners have increasingly resorted to judicial proceedings. Courts have issued judgments condemning cybersquatting and have held that the relevant domain name registrants had infringed the rights of registered trademark owners. Accordingly, trademark owners have been granted the right to bring an action for trademark infringement, an action for unfair competition, or both, depending on the nature of the acts committed.

Through this paper, the various forms of infringement of trademarks over the Internet will be examined, with a view to identifying their different manifestations by reviewing the most common forms of online trademark infringement and outlining the mechanisms available for their protection at both the national and international levels.