RE: [DNS] Tradmarks and Domain Names

RE: [DNS] Tradmarks and Domain Names

From: Mark Hughes <effectivebusiness§>
Date: Wed, 4 Aug 1999 23:47:18 +1000
Hoping to avoid duplicating the response from Doug, and based on my
understanding (but IANAL and no guarantees for absolute accuracy:

We're juggling the policies and the practices of three separate
databases here:

* Domain Names
* Business Names
* Trademarks

Domain Names are unique.  There can't be two ''.  But
there could be and  Or and

Business Names are unique.  There can't be two 'Mcdonalds
Restaurants'.  But there can be 'McDonalds Plumbing' and 'McDonalds

Trademarks are NOT unique.  There can be multiple users of the same
Trademark - eg. 'Apple' computers and 'Apple' records;  'Astra'
Margarine and 'Astra' cars.  There are 42 trademark classes.  In
theory, 42 separate entities could legally be using the same

A business name confers some limited rights.  But owning the business
'McDonalds Plumbing' does not stop someone opening a business called
'McDonalds Furniture'.

A trademark confers some different limited rights.  But having a
Trademark does not stop someone opening a business in a different
trademark class which happens to include a name that is present in a
trademark.  ie, the fact that McDonald's Family Restaurants is a
trademark does not stop anyone opening a plumbing business called
McDonalds plumbing.  Or McDonalds Furniture.  Look in your local
telephone directory for businesses using the name McDonalds and you'll
see what I mean.

If the rules for (and said that domain names had to
exactly equal business names (which I believe is how rules
work), then the situation would be a bit simpler (BTW, I'm strongly
against such a rule).  But the rules don't say that - basically the
domain name must be the business name or a contraction thereof - so
any company with McDonalds in the name can register
if its first in.  And it's not an infringement of McDonalds
Restaurants Trademark for McDonalds Plumbing to do so.

Trademark owners have quite limited rights.  They have the right to
stop anyone using that Trademark for a business in the class/classes
that the Trademark owner has registered the Trademark.  But in
general, for example, McDonalds Restaurants can't stop:

* another business including the name McDonalds in its business name.
* another business registering the Trademark McDonalds for a different
class of product (although with certain very well known brands there
might be problems due to some inherent 'passing off' type issues - see
my comments later).
* you walking down the street singing 'Old McDonald had a farm'
* you writing a book called 'Murder at McDonalds'

Trademark owners are trying on an international and national basis to
get the power to disapprove any domain name that includes their
trademark.  I'm strongly against such a move.  Outside internet domain
name space, trademark owners don't have total control over a name.  I
have never seen any sensible reasoning put forth why they should have
total control over a name in the internet domain name space.  Domain
names aren't there just for businesses.

Note 1 - Passing Off is a completely different situation.  If you're
'passing off' or deliberately attempting to benefit by trading on
someone else's name/reputation, then forget about all of the above -
'passing off' is clearly illegal, and if you're doing it you'll go
down in court like a bag of spuds.

Note 2 - cybersquatting/hoarding is likely to be a completely
different situation (although I don't know if the legality or
otherwise has actually been resolved here in Oz).  Even though
McDonalds Restaurants may not under trademark law have the right to
stop a genuine business with the name McDonalds from registering a
domain name that includes McDonalds, the situation with someone who
registers for the sole purpose of selling it for a
profit to a well known company like McDonalds, might be completely
different.  Court cases overseas have been fairly consistently going
against cybersquatters.

Regards, Mark

Mark Hughes
Effective Business Applications Pty Ltd
61 4 1374 3959
Received on Wed Aug 04 1999 - 22:00:31 UTC

This archive was generated by hypermail 2.3.0 : Sat Sep 09 2017 - 22:00:03 UTC