The increased popularity of the Internet has caused great concern within the assignment and use of Internet domain names. This is the way by which numerical addresses are translated into more understandable domain names, to become names such as "castren.fi". To solve the problems an International Ad Hoc Committee has been formed which has now developed recommendations for international administration of Top Level Domain names such as ".fi" and Second Level Domain names such as "castren".
Problems with domain names and trademarks
Problems with domain names may occur, for example, when a holder of a trademark wants to obtain a domain name that corresponds to his trademark. On the Internet, each domain name must be unique so that it can only be registered and used by one entity, whereas under most trademark systems, it is possible that a trademark, under certain circumstances, is used by several entities.
This leads to difficulties, as it is possible that a person registers a domain name to which he has not got a trademark right, and then in certain cases, tries to sell, for a large "ransom", the right to the domain name to the holder of the trademark in question or to the highest bidder. Further problems may occur if a third party has registered a domain name, as a second legitimate holder then is closed out of using this top level domain name.
Currently, only a few Top Level Domain names exists, most of them national names, e.g. .fi for Finland, and only a few truly international ones, i.e. .com, .net and .org. This might cause problems as different entities might hold, for example the Second Level Domain names law.com and law.org, i.e. two similar domain names where only the Top Level Domain name differs.
Infringement of a trademark may occure both when a trademark is used as a domain name by another trademark holder and in situations where a domain name that corresponds to a trademark is registered by someone else than the holder of the trademark.
In Finland one has, as a general rule, only been able to register domain names (.fi) which in some way correspond to a registered name that one holds. However, it might be mentioned as a curiosity that the domain name helsinki.fi does not belong, as one might believe, to the City of Helsinki but to the University of Helsinki, only because that the university realised to register its domain name sooner than the city.
Recommendations by the Ad Hoc Committee
According to the recommendations, the number of names available to specify Internet locations such as web sites and email addresses will be increased by seven new ones. (.firm, .store, .web, .arts., .rec, .info and .nom). In addition, up to 28 new registrars will be established to grant registrations for Second Level Domain names under the new Top Level Domain names. To guide future registrar developments, an association comprising all the registrars, the Council of Registrars, is to be formed. It will create and enforce requirements for registrar operations.
The protection of trademarks will be enhanced by a new system allowing registrants to voluntarily authorise the registrar to undertake a sixty-day publication procedure before registering a Second Level Domain name under a Top Level Domain. During this period objections may be made against the applications, and such objections are to be processed by a administrative domain name challenge panel, which decides to, if appropriate, exclude a challenged Second Level Domain name and possibly also similar names.
Alternative settlement of dispute mechanisms will become available to resolve disputes arising from the registrations. This will include on-line mediation, mandatory arbitration (if a domain name challenger chooses to initiate arbitration) and a fast-track on-line administrative domain name challenge procedure.
However, it is important to notice that as there is no single, universal international law of trademark, it is not possible to reserve disputes involving trademark and domain names to an international body to resolve them. Therefore, any procedures taken within the rules and dispute settlement arrangements according to the recommendations does not prevent any party from bringing a case before a relevant national court to resolve the dispute.
The content of this article is intended to provide a general guide on the subject matter. Specialist advice should be sought about your specific circumstances.
News: Rules Suggested For International Administration Of Trademarks And Domain Names
