Symposium: A Cyberspace Perspective on Governance, Standards and Control

Trademark Law on the Internet: Will It Scale? The Challenge to Develop International Trademark Law


David W. Maher


VOL. XVI • Fall 1997 • NO. 1 (table of contents)

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16 John Marshall J. of Comp. & Info. Law 3


The author states that the rapid growth of the Internet has caused a serious collision between the efficient functioning of Domain Name Systems and the claims of trademark owners. U.S. Courts have recognized that domain names can have trademark implications. Trademarks are important because organizations responsible for allocation and registration of domain names must take trademarks and trademark law into account.

The International Trademark Association (INTA) sets forth principles that should apply to the use of trademarks in the Domain Name System. The author's comment focuses on how to accommodate the interests and rights of trademark owners in the DNS and in the overall administration of the Internet.

Under the present domain system there can only be one, putting the "ACME" owner who got there first and registered in an advantageous position. The DNS as it is presently structured allows no accommodations for different owners of the same mark. Network Solutions, Inc. is the best known example of an attempt to resolve the conflicts addressed in the article. All of these collisions of trademark law and the DNS have resulted in litigation.

The author also addresses legal issues in addition to the technical trademark questions in the international arena. The major differences in national treatment of trademarks are in the following areas (dilution, geographical terms, famous marks, rights of publicity, religious and social issues.). Dilution is now recognized as part of US Statutory Law and took effect in 1995 in the Federal Dilution Act.

The Internet International Ad Hoc Committee was published on Feb. 3, 1997 and it provides for expedited on-line mediation and administrative challenge procedure for disputes arising from the assignment of second level domains in the new generic top level domains.

The author concludes that the IAHC is not intended to deprive anyone of rights existing in the law. However, the self regulation of the generic registrars as carried out by the deliberations and public decisions of the administrative challenge panels should at least point the way towards a new and creative approach to the resolution of trademark problems on an international scale.

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