Through the powers and resources of the Internet, users can communicate, explore, educate, advertise, buy and sell. All these quests, done from the sanctity of one's computer, transcend time, space and territorial boundaries. Whether the search is for information, entertainment, conversation, romance, or the holy grail, it is important for those on the net to know where they have been, where they are now, who they are dealing with. They must know that the information or products or romance is real, and how they can find them again.

On the Internet, domain names tell us these things. Thus, in this sense, a "domain name" shares similar qualities with a trademark and may create an expectation about the nature of a product, or the identity of a person or organization found at an address.

While there are similarities between trademark principles and the use of domain names, a number of problems arise if traditional trademark law is applied to domain names.

For example, an Internet user wants a domain name which is easy to recognize and recall. The world-wide nature of the web and technical limitations often make this difficult, and create conflicts between traditional trademark law and domain names.

Moreover, traditional trademark law, allows identical registrations of the same mark for noncompeting goods or services, provided there is no likelihood of confusion — both Domino's Pizza and Domino Sugar. But, on the Internet, there can be only one domino.com, and it isn't sugar or pizza.

Furthermore, traditional trademark law will not permit registration of generic terms. However, on the Internet "milk", "banana", and "cereal" are all registered domain names.

There are also some people who feel that a domain name is simply an alphanumeric translation of the numeric domain name address and, as such analogous to a street address instead of a trademark.

Using someone else's trademark as a domain name may constitute infringement of the mark. However, under current trademark laws, not all uses are actionable. For instance, merely registering a domain name may not be sufficient conduct to constitute infringement or dilution. Under some circumstances, even posting a web page under the domain name may not be actionable.

In many situations, domain name disputes can be resolved using traditional trademark principles, such as the dispute over the domain name "kaplan.com."

When Princeton Review registered its competitors domain name "kaplan.com" and posted a page comparing the two courses, it was likely that people who went to the page believed that the page belong to Kaplan Education Centers instead of Princeton Review.

However, what happens when two companies use the same mark for different products or services. In the world outside the Internet there can be two or more Kaplans. On the Internet there can be only one "kaplan.com." For instance, there can be a Kaplan Deli, a Kaplan Clothing, and a Kaplan's Education Centers. Outside the Internet, all these companies can concurrently use the name Kaplan. In fact, all these companies may possess federal trademark registrations. But NSI will registered only one "kaplan.com."

Moreover, outside the Internet, even if Kaplan Deli does not possess a federal trademark registration, it can still defeat a trademark infringement action by demonstrating that it used the name first, or that there is no likelihood of confusion between the two uses.

Thus, the ultimate Internet Network Information Center (InterNIC) and paying a fee to Network Solutions, Inc. (NSI).

NSI's Dispute Resolution Policy itself conflicts with traditional trademark principles. NSI continues to register domain names on a first come, first served basis, will not perform any trademark searches or otherwise investigate whether the applicant has rights to the requested domain name.

The Policy requires only representations by the applicant regarding their rights to use the domain name, and that, as far as the applicant knows, the name does not infringe any intellectual property rights.

NSI's Dispute Resolution Policy allows the owner of a federally registered trademark or foreign trademark owner to register a complaint with NSI if its identical trademark is registered as a domain name by someone else.

The original domain name holder can continue to use the domain name if they: (1) registered the domain name before the complaining party obtained its federal trademark (prior rights), or have a federal trademark registration; (2) post a bond; and (3) agree to indemnify NSI against legal liability and expenses. If the original domain name holder complies with these requirements, NSI will allow the original domain name holder to keep using the domain name, unless and until NSI receives a court order or arbitrator's judgment to the contrary.

If the original domain name holder does not have a registered trademark, NSI will asked him to relinquish his right to the domain name. If the original domain holder refuses to relinquish the name, NSI will place the name on a "hold" list, unuseable by anyone until resolution of the dispute by a court or settlement between the parties. NSI gives the original domain name holder a 90-day transition period before placing the domain name on hold.

To acquire the disputed domain name, the registered trademark owner must still prove infringement, dilution or some other form of unfair competition. If the registered trademark owner does not prevail, the domain name holder can remove the hold and continue to use the domain name.

However, NSI's Dispute Resolution Policy still allows the owner of a federally registered trademark to receive relief not dissimilar to a preliminary injunction — placing the domain name on hold during the pendency of the litigation — without having to demonstrate any of the substantive requirements of a preliminary injunction, such as irreparable harm, a likelihood of success on the merits, or even posting a bond. Instead, the owner of a federal trademark can force NSI to place a domain name on hold simply upon proof of federal trademark registration.

For more information relating to domain names and trademarks: