The Irish Trade Marks Act 1996 describes a trade mark as being any graphical representation (words, designs, letters, numerals and shapes of goods or their packaging) “capable of distinguishing goods or services of one undertaking from those of other undertakings” . Trade Mark Law stands to uphold the rights of ownership and use of such distinguishable properties.
With the advent of the World Wide Web and increasing access availability, online trading has become very important to the world of commerce and as such the provisions of traditional trademark law have come under duress.
A number of issues pertaining to trademark law have been highlighted through emergent internet domain name disputes. “Domain names are alphanumeric combinations that serve to mask internet protocol (IP) addresses” , for user-friendly access to individual web sites. No two websites can have the same domain name. In order to ensure the consistent clarification of individual reputations, businesses and organisations vie to register domain names akin to associated trademarks.
This paper discusses the effectiveness of jurisdictional trademark law in the context of the internet, a global platform for commerce. Section 1 outlines the nature of online disputes pertaining to the conflict between trademark law and domain names. Section 2 highlights how the jurisdictional nature of trademark law may in fact cause domain naming disputes and act as a hindrance to resolution. Section 3 presents an overview of the current efforts being made to resolve the conflict between trademark law and the domain naming issue. Section 4 is a critical analysis of the effectiveness of current dispute resolution policies. Section 5 summarises the progressive effectiveness of trademark law in regard to resolving the domain naming issue while addressing the need for further reform in the context of global harmonisation and the balancing of rights.
1. The Nature of Domain Name Disputes in the Context of Trade Mark Law Infringement
Online disputes may arise for a number of specific reasons as discussed in this section of the paper, but the underlining factor is the issue of proposed trade mark infringement.
Registered or common law trademarks are not automatically entitled to ownership of domain names as the registration acceptance criterion is based on the grounds of a “first-come, first-served” policy. Trademark law is jurisdictional in nature and “recognises that the same sign can be used by unconnected entities in different commercial sectors and, in some cases geographical areas when there is no likelihood of confusion or, if applicable, dilution” . The territorial nature of trade mark law is inefficient in relation to the global impact of online commerce.
On one hand, the first-come, first-served nature of domain name registration promotes fair competition for vying parties, but on the other, it allows for the “pre-emptive registration of trademarks by third...