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Articles

Trademarks and Domain Names

"What's in a name?" Unfortunately, Shakespeare's famous line, and his poetically simple response, were penned well before the laws of trademark and the InterNic domain name registration regime came into vogue. In these times, the answer to this question - from a legal point of view - is thoroughly complex.

A person engaged in commerce may have several "names" associated with his business. He will have a company name (a "trade name") and, if his business creates products or provides services, those goods and/or services may also have identifying names ("trademarks" and "servicemarks", respectively). For example, "Chevy Corvette" is a combination of a trade name ("Chevy") and a trademark "(Corvette"), which pertains to a particular product made by Cheverolet. To take another example, the name of a web site may serve to designate the source of a particular online service, and as such may qualify as a "servicemark."

To understand what rights you may, or may not, have in a web site or domain name, you first need a basic understanding of the Lanham Act (this is a federal law, located at 15 U.S.C. Sections 1051-1127).

 

Online Gaming

An Overview of U.S. Gambling Laws as Applied to Online Gaming

Before embarking on an Internet Gambling venture, or even placing a wager online, you should be aware of the legal framework currently in place.

Each of the fifty states regulates gambling by statute. These regulations are putatively attributed to two public policy goals: the public must trust that the games are legitimate; and second, that the winner will be paid. Three states ban all forms of gambling outright - - Hawaii, Tennessee and Utah. Of the 47 states which allow some form of regulated gambling, only Illinois and Louisiana specifically prohibit online wagering. Nevada permits online wagering if both the bettor and the server are within Nevada and the gaming operation is licensed by the state. This means that 44 states have gaming laws that do not specifically address the Internet. However, many of these states have already taken the position that online gaming violates their regulatory schemes. In 1999, New York successfully prosecuted an Antiguan based gambling site for accepting wagers from New York residents. The states of Minnesota and Missouri, in separate proceedings, successfully prosecuted offshore gaming sites for deceptive trade practices; i.e., representing to bettors that online gaming did not violate those states' laws. The Attorneys General of at least four states have issued public statements that Internet gaming will be treated as illegal under state law (California, Indiana, Kansas and Texas).

   

The Uncertain Status of Domain Names

Have you heard the news? That domain you hold, you know, the one you spent thousands of dollars to buy (or, better yet, have developed into a seven figure website business) . . . well, guess what? Your legal rights in that domain may be questionable, at best. And if your domain is dormant, or you have only recently begun using it in commerce, your rights in that domain are further lessened, or even non-existent.

Network Solutions, Inc. has been orchestrating efforts over the past several years to minimize its liability for fouling up domain registrations. The courts, which have been reluctant to approve legal theories that would saddle Network Solutions with liability, have been treating domain names as nothing more than an "indication of address" without cognizable legal status. The dangerous consequence of NSI's efforts to avoid liability, by trivializing the nature and importance of a domain name, has been to leave aggrieved domain registrants, whose domains have been hijacked or mistakenly released by NSI, with uncertain or no legal recourse.

   

Cybersquatting

In 1999, the federal trademark statute (the Lanham Act) was amended to address the tensions between trademarks and domain names.  These tensions are unique to cyberspace, and the new law (the “Anti-Cybersquatting Consumer Protection Act”) has no application outside the Internet.

The Anti-Cybersquatting law (located at Section 43(d) of the Lanham Act) is necessitated by the existence of two competing “reserved name” regimes:  (1) the trademark laws, including common law, federal and state registries; and (2) the domain name registries.  Because the latter regime, the domain registries, do not cross-check, or screen, applied for domain names with any trademark database, a person can become the registered owner of a domain name regardless of whether that domain infringes upon the trademark rights of another party.

   

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