A little on trademarks in general:A trademark is usually a word, phrase or a symbol or combination thereof that is used to distinguish goods and services. Examples of things usually trademarked are company names, company logos, and mottoes. To be protected under law, trademarks are registered with the federal government. Cases of using someone else's trademark can lead to civil action of claims such as trademark infringement; false designation of origin; false representation or advertising; dilution; and other state or common law unfair competition claims. Perhaps the claim that comes most into play when looking at trademarks and domain names is that of trademark infringement. Trademark infringement action is brought about when there is a likelihood that consumers will be mislead or confused as to the source or origin of the goods or services. For more on the basics of trademarks, a good place to start is www.law.georgetown.edu/piet/internic/trademarks/tm1.html.
Trademarks and Domain Names:Perhaps the most effective domain names (effective in that they get a lot of hits) are those that are short and easily identified with a product or a company. A name with the trademark or other distinguishable feature of the company are good guesses when searching for that company. It is much the same as when dialing 1-800 numbers. The United Postal Service, or UPS has the 1-800 number 1-800-PICK-UPS just as their URL is www.ups.com. So domain names are much like trademarks in that they may create an expectation about the nature of the product or about the identity of a person or company.
Domain names and trademarks are similar, but domain names are worldwide, so trademark laws cannot cover the scope of domain names. While trademark law allows the same trademark to be used by different companies in different fields and/or geographic areas, a domain name can only be registered once so some problems arise. For example, Deutsche Sportfernsehen and the Deutsche Slowenische Freundschaft debated over the name dsf.de. Because NSI does not perform trademark searches or investigate otherwise if the applicant has rights to the domain name, many controversies arise between trademarks and domain names.
When an owner of a trademark has a problem with a domain name, he can register a complaint with NSI, which has an established conflict resolution procedure. The procedure will either reject the complaint if the current domain holder has a stronger claim to the domain name, or force the current holder to move if the complainant has a stronger claim.
As stated above, the difference between trademarks and domain names cause problems, some of which are still left unanswered by the NSI. For instance, they do not say anything about very similar but not identical trademarks, common law or state registered trademarks, concurrent uses of the same mark or conflicts within international trademarks.
Some examples of problems that have arisen:
One problem arises when people use trademarked names by "accident" and it may in fact seem like they should have a right to them. For example, in 1994 Mark Newton registered the domain name newton.com for his bulletin board that offered computer advice. However, Apple Computer has a trademark for "Newton" and asked Mr. Newton to relinquish the name because they had rights to the name. Mr. Newton did not comply with Apple's request so Apple complained to the InterNIC. Attempts www.newton.com will not go anywhere because the matter is still on hold, raising the question of whether trademarks really give companies ownership over a domain name.
Other times companies will register a domain name that represents a trademark held by another company. For instance, candyland.com used to belong to the Internet Entertainment Group (IEG) and was a page for adult entertainment. Hasbro, Inc., the makers of the game "Candy Land" were upset and thought that it gave the game a bad image. Since Candy Land was a trademarked name, Hasbro received an injunction forcing IEG to change its name. So www.candyland.com now goes to Hasbro's site.
Another interesting case concerning trademarks can be seen with dc.com. Andrew Baucom registered the name for his District of Columbia Information Site. But even before he used it, Warner Brothers contacted InterNIC to complain that Baucom infringed on their trademark for DC Comics. In cases like these, there is no choice as to the .com, but Warner Brothers had a problem with the combination of dc and this TLD. The domain name remains on hold today.