A domain name is the user-friendly form of an internet protocol (IP) address that allows users to locate and access a company’s web page on the internet. (The real technical IP address is a series of numbers which is invisible to the viewers.) Domain names are comprised of two levels: the Second-Level Name (such as “Google”, “Yahoo” or “Netflix”) and the Top-Level-Domain (such as “.com”, “.org” or “.net”). It is the Second-Level Name that is chosen by the site’s proprietor, and what becomes the company’s identifier and promoter on the web. Thus, the choice of a domain name ultimately becomes an important business decision.
The internet today is much more than a simple mode of communication and entertainment. In our view, it has now become the main source of business information, an important means to trade and advertise, and to carry out commercial activity in an interconnected-world. Therefore, the domain name not only serves as an address to provide access to a company’s site, but also distinguishes specific goods and services, as well as identifies a business as a whole. Under this premise, the role of the domain name likens itself to that of a trade or service mark and, as such, the domain name must also be unique and distinctive, and its use must be exclusive when used in connection with a business.
Bill Gates, the founder of Microsoft, in reference to the ever-growing presence of commercial enterprises on the web and the internet’s central role in business today, once said that “…domains have and will go up in value faster than any other commodity ever known to man”. Just like trade or service marks and other intellectual properties, domain names are becoming important assets for companies and may add considerable value to the operation.
Moreover, as is the case with trade or service marks, domain names can also be subject to infringement and other intellectual property violations. One practice is called cybersquatting, which occurs when unscrupulous persons register someone else’s trade or service mark or business name as their own domain name, with the sole purpose of extracting money from the rightful owners or causing confusion among consumers. And such as with other intellectual property, domain name registration and protection becomes of the utmost importance for businesses with strong internet presence.
Although domestic trademark legislation in some countries provide recognition of domain names as intellectual property, and offer a certain degree of protection (such is the case of the Nicaraguan Trademark and Other Distinctive Signs Act, Ley de Marcas y Otros Signos Distintivos), local registration in these countries cannot provide protection worldwide. Whatever provisions or resources they may establish in order to protect domain names of their nationals are limited to their own jurisdiction. Therefore, their practical effects are usually reduced to protecting names with Country-Code Top-Level Domains (ccTLD’s); such as “.com.ni” for Nicaragua, or “com.mx” for Mexico, because the registration authority for these ccTLD’s are locally based inside the country and subject to the jurisdiction of their courts. But what happens in case of infringement to generic TLD’s: the simple “.com” or “.net”?
“Just like trade or service marks and other intellectual properties, domain names are becoming important assets for companies and may add considerable value to their operation.”
No national trademark law is fully capable of protecting trade or service marks in countries of the world over, and much less domain names whose use or infringement is done exclusively in cyberspace. Because of the non-border nature and international reach of the internet, domain names are assigned and managed through the Domain Name System (DNS), which is a global database administered by the Internet Corporation for Assigned Names and Numbers (ICANN). With support from the World Intellectual Property Organization (WIPO), ICANN has taken measures to register and enforce domain names at a global level: a rigorous system of registration to verify that domain names are not being duplicated on ICANN’s database, a public and accessible database of all registered domain names and proprietors to allow background searches before applying for registration, a dispute resolution policy that allows domain names to be protected in an arbitration process sponsored by WIPO and ICANN, and promoting harmonization between trademark legislation in different countries to assure mutual recognition and cooperation in the protection of domain names as intellectual property worldwide.
Although conflicts of law between different jurisdictions and the costly process of taking a complaint to ICANN and WIPO’s dispute resolution mechanism still makes prosecution against violators a complicated affair, there have been significant advances in recognizing domain names as intellectual property and in establishing resources to ensure their proper protection. And as the internet is fast becoming the central platform for the exchange of goods, services and business information, we can be expecting further developments intended to provide domain names full global protection on par with trade or service marks, and other traditional intellectual properties.
