In defense of (our) domain names

I was looking for more arguments to support the position of domain names and found a paper written on this particular subject The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World, written by Konstantinos Komaitis. I thought it would be interesting for some of you to read few (or more) extracts from this book which describes very well the favorite position that trademarks unfortunately have in udrp disputes.   

And one important thing should be mentioned before reading. The paper not only shows the disadvantages that the domain name owner has in front of the mark, but also demonstrates that the lack of clear regulation of the domain names will ultimately affect the limited nature of the trademarks.

“There is a great fear that we will not be able to afford similar trademarks in different classes, identical trademark in different regions or adhere to trademark law’s limitations. “

“We stop caring about the domain names registrants who unfairly lose their domain names to trademarks owners and are subject to unfair UDRP processes and biased panels.”

“We stop caring about small trademark owners and startups who saw the internet as the platform to promote their ideas and speech to the world.”

“I felt the need to tell this story because I realized that registrants are unrepresented and indiscriminately seen as bad factors in an environment that fully supports and protects trademarks owners.”

“The book and the arguments presented emanate from the thesis that no institution or system has a monopoly on curbing justice arbitrarily, much less ICANN and its trademark constituency. Academic literature is replete with examples of ICANN’s power and its questionable use of it, the illegitimate of the UDRP and the way both ICANN and UDRP have been compromised by trademark interests, which had led to the diminution of legitimate registrants and the lessening of the capacity of domain names as sui generis e- property rights.”

“It is a fight over reaching consumers internationally.”

“It is a fight over entering the worldwide market place through a single registration.”

“The UDRP was initially created as a means to combat the tangible problem of cybersquatting and that of abusive domain names registrations. Since its commercialization, the internet and the trademark community were in need of a mechanism to disrupt registrants who were capitalizing on the value of trademark through their domain name registration. Unfortunately the UDRP has gone beyond addressing the cybersquatting  and trademark owners currently use the Policy as a means to expand their rights and receive benefits through domain name transfers, that, in any case, should not automatically be considered articles of trademark ownership.”

“This book is a reflection on the domain names regulation, maintaining the thesis that, under current understandings, domain names are second class citizens in a world where trademarks proliferate.

Trademarks are considered intangible, limited property rights, and to this end, law does not protect the mark per se but the combination of the mark’s symbolic character along with its goodwill. On the other hand the domain name is a combination of letters and numbers and assists in identifying a computer or a URL on the Internet. Similar to trademarks domain names are words and have the capacity to generate trademark rights because they too can be used to indicate origin and identify the source of information promoted and the products sold on a website. Like trademarks, but no normatively so, the domain names may represent the goodwill of a business. “

“However not all domain names can perform trademark function. A pertinent question therefore is that what legal source is appropriate to protect registrants when not seeking to promote trademark interests?”

 “The truth is that legitimate domain name holders are dangerously disadvantaged because trademark owners consider the domain names as their (de) jure rights.”

“We need to accept that the value of the domain names goes beyond their commercial magnitude and extend to legal and social manifestation. In the years to come the current environment will impact trademark law to the severe end of creating an establishment that will not be able to support trademark registrations the way they exist worldwide. There is a great fear that we will not be able to afford similar trademarks in different classes, identical trademark in different regions or adhere to trademark law’s limitations.”



Monica Lupașcu Romanian Lawyer since 2005 with LL.M. in Intellectual Property Law. She currently activates as European Trademark Attorney and internet and technology legal practitioner.

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