Protection of trademarks against domain names.

Abstract

The exponential growth of the Internet has internationally generated an array of new disputes and serious legal risks for users. Moreover, most of the legal issues faced by Internet users are relatively new and traditional laws in some instances need drastic amendments as to cover these issues, while in other circumstances there is the need of introducing completely new laws. At the moment the Government of Malta and the European Union are striving to actively exploit Information and Communication Technology (ICT) to the widest possible extent, as a means to strengthen the economy, create jobs, ensure social equity and enhance education and culture. In view of this, it is important that the legislative infrastructure facilitates this development by granting a greater stability to cyberspace. Moreover, the need for lawyers with specialisation in this field is on the increase. Perhaps one of the issues on which the Courts around the world had to decide upon, is that concerning the conflict between trademarks and domain names. The thesis starts by giving a brief description of some technical aspects of the Internet and of the Domain Name System. Furthermore, the issue of the juridical nature of the Domain Name is subsequently tackled The thesis proceeds by giving an insight in the various conflicts between trademarks and Domain Names such as; Cybersqautting, Use of same trademark leading to Unfair Competition, Domain Name Grabbing, Injurious Domain Names, Typosquatting, Cyberpiracy and Domain Name Hijacking. This is followed by the legislative efforts made in foreign countries in order to protect trademarks against domain names. However, one of the most important aspects of the Trademark/Domain Name issue is tackled when the International regulation and the Uniform Dispute Resolution is discussed. Here the thesis gives a detailed look into the domain name governance, the Internet Corporation for Assigned Names and Numbers (ICANN), the contribution of the World Intellectual Property Organisation (WIPO) in protecting trademarks against domain names and the Uniform Domain Name Dispute Resolution Policy with its solutions and limitations. At the same time the thesis tackles the issue of Multilingual Domain Names which is a relatively new threat against trademarks. The thesis outlines the work being done by ICANN, WIPO and the International Telecommunication Union (ITU) in order to protect trademarks while developing Multilingual Domain Names which will revolutionarise the Internet. Finally the thesis tackles trademark issues in Country Code Top Level Domains (ccTLDs) and the problem of uniformity in the policies and disputes of the various ccTLDs. The situation of the Maltese ccTLD, the '.mt', is studied carefully and flaws in its policies are highlighted. Throughout the thesis there is a comparative study between American and European provisions and jurisprudence, with particular reference to the United States and Italy. The conclusions of this thesis indicate what in my opinion should be done to safeguard trademark rights on the Internet and what the Maltese legislator should learn from the experiences of foreign countries in this field.