Domain name right, but well-known trademarks based on cross-class protection principle and anti-dilution theory can be an exception.
Keywords: domain name right, trademark right, prior right
With the development of network, especially e-commerce, the status of network domain name is becoming more and more important, and more and more disputes follow. At present, such disputes mostly focus on the conflict between domain names and trademark rights, mostly because others use the same or similar names in their registered domain names and cause disputes among trademark owners. This paper intends to analyze the nature of domain names and discuss this issue according to the nature of different trademark rights.
First, the nature of the domain name positioning
There are many different views on the nature of domain names in academic circles:
(1) Some people refer to the rights based on domain names as domain name rights, and regard them as an independent civil right or a new intellectual property right alongside trademark rights. But I think:
Rights are "the legal effect of specific interests". An interest can only be protected in reality if it is recognized by law and given "legal effect", that is, it is promoted to legal right, which has practical significance. "Domain name right" can be interpreted as a right or interest in the sense of natural law, but only when it is recognized by legislators can it be publicly protected and become a property right. In the process of discussing the countermeasures of domain name problems for more than three years, WIPO once thought that using a second-level domain name on the Internet would definitely gain public awareness after a period of time, thus having certain commercial value. This value will make the domain name itself produce some form of intellectual property rights, which will be independent of other existing intellectual property rights and may even be used to counter other intellectual property rights, such as trademark rights. However, in the Interim Report on Internet Domain Name Procedures issued by WIPO in1June 1998165438+1October and the Final Report issued in April 1999, WIPO did not mention the issue of creating independent intellectual property rights for Internet domain names, and made it clear that WIPO had no intention to And so far, the author has not found the words "domain name rights" in the legal provisions of any country. Therefore, before the domain name right is formulated as a right by law, domain name should not be regarded as an independent intellectual property right, nor should it be called the so-called "domain name right".
(2) Some people think that domain name is an extension of traditional business logo intellectual property rights in cyberspace, but this view is one-sided:
First of all, the most basic and important function of a domain name is to identify the position of a computer in the Internet network, and the promotion of its commercial value only appears with the rise of e-commerce. Therefore, the registration of a real corporate logo as a unique part of a domain name (second-or third-level domain name) is generally limited to generic top-level domain names such as. Com and. Net, and most domain name disputes occur in these areas, even in other areas such as. Edu and. The government is also involved.
Secondly, even the second-level domain name at the bottom. Com and. Net does not always have the same or similar business logo. With the development of e-commerce, there are more and more network companies in the pure sense. Most of them use their own names, domain names that are easy to identify and remember, such as Sina.com and 263.net. Some trademark owners consider that trademark names are inconvenient to remember or easy to cause confusion on the Internet. (For example, if Changhong and Changhong are registered as domain names, which will cause confusion) or if their trademarks have been reasonably registered by others, they will also create their own domain names for registration. In this case, there is no corresponding intellectual property right in reality. What is an "extension on the network"?
Furthermore, even if the real business logo name is directly used in the domain name, it only involves part of the domain name, not all. In other words, even if the first two situations do not exist, all domain names choose the name of business logo, and intellectual property rights will not extend to all domain names. Generally speaking, the part of a domain name that represents the net name of a specific registrant can only appear in domain names at or below the second level, such as generic top-level domain names, national top-level domain names, and administrative domain names. Shh. Bj) Similar to those in China.
Will not involve the name of the corporate logo. For this reason, the whole domain name should not be generally recognized as an extension of the intellectual property rights of business logos on the Internet.
(3) There is still a view that although the domain name is not an independent intellectual property right, it is considered as the object of intellectual property protection, and this view cannot be established. The object of intellectual property rights should be what we usually call "intellectual achievements". Article 2, paragraph 8, of the World Intellectual Property Organization Convention lists seven intellectual property rights, and stipulates that "all other rights arising from knowledge creation activities in the fields of industry, science, literature and art" also belong to intellectual property rights. It can be seen that intellectual property rights protect the achievements of intellectual creation activities, and its object embodies human wisdom. In addition to the obvious intellectual creation of the original domain names, even if those trade marks such as trademarks are registered as domain names and regarded as the extension of intellectual property rights of trade marks in cyberspace, there are still some domain names that are not "the condensation of human wisdom". Such as wipo.org (World Intellectual Property Organization) and Peking University. Rmfyb.com (Peking University), edu (People's Court), etc. They are just English, pinyin or initials of some organizations, schools and newspapers in reality, and there is no intellectual creation activity at all, and they do not have the characteristics of intellectual property objects, so they should not be recognized as intellectual property objects.
(4) In fact, the essence of domain name is nothing more than an identifier with technical parameter function in online communication on the Internet, and it is a sign of a specific organization or individual on the Internet. When a user enters a domain name in the address bar of a webpage, the computer will contact the local domain name server, translate the domain name into an IP address through the domain name system, and then find the computer it recognizes. It can be seen that the IP address, not the domain name, plays a major role in locating computers on the Internet. Domain name is just an external code of IP address, which is convenient for people to remember. Without it, people can still find the computer they need by directly typing the IP number. So from a technical point of view, the role of domain name is similar to the telephone number or house number in reality, but it only plays a positioning role. If the telephone number or house number is to accurately locate the telephone or house, it must be unique in a certain area to avoid confusion. The same is true for domain names, and because IP addresses correspond to computers one by one, domain names as their external codes are technically impossible to be copied.
However, this does not mean that the role of domain names is limited to telephone numbers or house numbers on the Internet. In reality, we don't think of anything about its owner just by a strange phone number or house number, but when faced with a domain name of a website that has never been to it before, such as microsoft.com, we will naturally think that there may be information about Microsoft on it. Here, the domain name not only identifies the location of the computer on the network, but also identifies the identity of its owner or website. When it is owned by a specific organization or individual, it has an identity connection with it and becomes an important intuitive sign to know its owner in the network world. This function is similar to the names of natural persons and legal persons. Without them, we can't intuitively distinguish between several people and enterprises. Similarly, without a domain name, we can't visually distinguish two websites. What I said here is "not easy to be intuitive", not that it is impossible. Besides domain name, we can certainly identify websites from other aspects. Just like a person without a name, we can still distinguish them according to his appearance and voice, but after all, domain name is the most direct and effective identification sign. Therefore, the author believes that domain name is the external code of computer IP address designed and used by a specific organization or individual to reflect and identify itself on the Internet. It has two functions of location identification and identity identification, and its nature should be a right of name. In addition, literally, Chinese "domain name" and English "domain name" refer to an online name, which is based on the development of the network and is opposite to the real name (including the names of natural persons, legal persons and unincorporated organizations). ), and it should belong to the category of name right. In this way, the object of the right to name can be represented as the following figure:
Name of natural person
Actual name legal person name
Names of unincorporated organizations, etc.
Online name-domain name
With this positioning, many disputes about domain names can be solved:
First of all, domain name is a kind of name right, which determines that any organization or individual has the right to choose a specific name as a domain name according to his own will. Article 99 of the General Principles of the Civil Law stipulates that citizens have the right to decide, use and change their names in cyberspace, and the parties concerned should also have the right to set up, register and use domain names. Although the uniqueness of domain names determines that a specific name can only be registered as a domain name by one party under the same domain name, with the opening of more and more top-level domain names and the existence of national top-level domain names, there is still a lot of room for all parties to choose their favorite names as domain names in the domain name field. This right to freely choose a domain name determines that any property right is not necessarily a reason to prevent others from registering the same name as a domain name. Just as Party A's name "Zhang San" does not deny Party B's right to be called "Zhang San", nor does it exclude Party B's right to register "Red Sun" as a domain name because Party A owns the registered trademark of "Red Sun".
Secondly, since a domain name is a name right, it should only be associated with its owner's own identity, and should not be unreasonably associated with other subjects with the same name. Similarly, taking the right of name as an example, everyone has the right to choose a name according to his own will, and also has the right to register or use a name as a trademark. However, if a person named Li Ning uses his name on his own clothes, it is likely that others will mistakenly think that these clothes have some connection with "Prince of gymnastics" Li Ning, thus causing confusion. Therefore, not everyone has the right to use names in any way. In other words, in some cases, the exercise of the right to name will be restricted. The same should be true for domain names with the same name and rights. Due to the development of e-commerce, the function of many domain names is no longer limited to identifying the website itself, but more to show the source of goods or services to the public and show the relationship between their names and specific goods and services. However, this connection should also be limited to the real connection with the domain name owner himself, and should not make the public mistakenly connect it with other sources of goods or services. Therefore, although the parties have the right to choose a domain name freely, they may not register a trademark familiar to the public as a domain name, because this may make others mistakenly think that the goods or services indicated by the domain name have some connection with the well-known trademark, thus causing confusion.
Second, the conflict between domain name and trademark right.
Because in the field of e-commerce, domain names are often associated with certain goods or services, identifying the sources of goods and services, playing a role similar to trademarks to some extent, and often conflict with trademark rights in reality. Trademark owners often think that the domain name holder has violated their prior rights on the grounds that the domain name is the same as or similar to its registered trademark. Article 23 of the Interim Measures for the Administration of Internet Domain Name Registration in China stipulates that if the third-level domain name is the same as the registered trademark or enterprise name in China, and the registered domain name is not owned by the registered trademark or enterprise name holder, if the registered trademark or enterprise name holder raises an objection, the domain name management unit shall reserve the domain name service for the domain name holder for 30 days from the date of confirming that it has the registered trademark right or enterprise name right, and the domain name service will automatically stop after 30 days. There is a question, whether the trademark right in reality can naturally extend to the domain name field as a prior right against domain name ownership, that is, whether having a trademark right in reality necessarily means having the same domain name ownership as the trademark, this paper will analyze it according to different situations.
Conflict between well-known trademarks and domain names
At present, there is no exact and accepted definition of "well-known trademark" in the world, but many international conventions and regional international treaties, such as the Paris Convention for the Protection of Industrial Property and the Trips Agreement, all involve the protection of well-known trademarks to varying degrees. Article 2 of the Interim Provisions on the Recognition and Management of Well-known Trademarks issued by the State Administration for Industry and Commerce in August 1996 stipulates that "a well-known trademark refers to a registered trademark that enjoys a high reputation in the market and is well known to the relevant public."
Well-known trademark owners have gained high commodity reputation and business reputation in a certain field through their efforts, which will bring unlimited business opportunities to enterprises and their products. Once a trademark is well-known, the public in related fields will naturally associate it with the quality and performance of the goods marked. Here, well-known trademarks have a reputation advantage over ordinary trademarks, become the important wealth of their owners and the main means to attract consumers, and are endowed with independent goodwill value, which is undoubtedly inseparable from the hard work of all people. At this time, if you register a name that is the same as or similar to a well-known trademark of others as a domain name and sell goods on its website, it is easy for the public to mistakenly think that the webpage has some connection with the well-known trademark or the products marked by it, or even think that the owner of the domain name is the owner of the well-known trademark, so as to visit the webpage with some "admiration" for the well-known trademark. In this way, the domain name owner will use the market popularity and influence of other people's well-known trademarks for free, and make use of other people's labor achievements, no matter objectively.
In addition, from the perspective of national legislation and relevant international treaties, well-known trademarks are generally given a high level of protection. Article 16 of Trips Agreement not only extends the protection scope of well-known trademarks to service trademarks on the basis of Paris Convention, but also establishes the principle of cross-class protection of well-known trademarks. That is to say, it is also forbidden for others to use the same or similar marks as well-known trademarks on different commodities, as long as such use will imply that the goods and services have some connection with the owners of well-known trademarks, thus harming the interests of the owners of well-known trademarks. This kind of cross-class protection holds that well-known trademarks, because of their unique characteristics and outstanding reputation, will cause misunderstanding or reduce their reputation and value even if they are used in non-competitive products and services. Since the use of well-known trademarks in domain names will also cause the above consequences, the protection of well-known trademarks should also be extended to the domain name field. Registering a name that is the same as or similar to other well-known trademarks as a domain name shall also be regarded as trademark infringement.
In this regard, the Joint Proposal Clause for the Protection of Well-known Trademarks adopted by the World Intellectual Property Organization and the Paris Union Congress in 1999 has clearly stipulated that Article 6 of this clause stipulates that at least when a domain name or its basic components constitute a copy, imitation, free translation or transliteration of a well-known trademark, or a domain name is maliciously registered or used, the domain name will be regarded as a conflict with a well-known trademark; For a domain name that conflicts with a well-known trademark, the trademark owner has the right to request the domain name registration agency to cancel its registration and then transfer it to the well-known trademark owner. Here, the ownership of well-known trademarks naturally extends to the domain name field, and the same or similar names as well-known trademarks are registered as domain names as a prohibition right confirmed by the owners of well-known trademarks. Any violation of this provision should be regarded as trademark infringement.
In addition, even if the same name as other people's well-known trademarks is registered as a domain name and not used for commercial purposes, it should be revoked. The reason for this is the following：
First, registering the same name as other people's well-known trademarks as domain names will deprive the trademark owner of the right to operate the trademarks. Because the owner of a well-known trademark has made great efforts in the process of making the trademark famous, the trademark has great popularity and influence in the public. The network is a reflection of the real society, and this popularity and influence will not disappear because it is transferred to the Internet. One of the ways to use well-known trademarks on the Internet is to register them as domain names. In this way, domain names are naturally endowed with the goodwill value attached to well-known trademarks, which is an extension of the interests of well-known trademark owners in reality and should be protected by law. Once a domain name is registered by others, even if it is not used for commercial purposes, it will rule out the possibility of trademark owners registering their own trademarks as domain names because of the absolute uniqueness of the domain name itself, thus depriving well-known trademark owners of the right to use the goodwill brought by their "well-known" to conduct business activities on the Internet and obtain benefits.
Some people think that even if a well-known trademark is registered as a domain name by others, the trademark owner can still register his trademark under other top-level domain names, so that he will not be deprived of the right to use his goodwill through domain names on the Internet. However, the owner of a well-known trademark also has the opportunity to use the trademark under other top-level domain names, which does not mean that the above actions will not cause substantial damage to the business activities of the obligee on the Internet, nor does it mean that the holding of the domain name is reasonable. In fact, at this time, domain name holders often occupy the most favorable terrain for well-known trademark owners to use their trademarks online, depriving them of the opportunity to use their goodwill in the most effective way, which is still an infringement of their rights.
Second, registering the same name as other people's well-known trademarks as domain names will make the owners of well-known trademarks and their products face the danger of infringement at any time. Based on the previous analysis, registering a well-known trademark as a domain name objectively grasps the opportunity to gain benefits by using the goodwill value of the trademark. Once the domain name owner uses the domain name for commercial purposes, hitchhiking to identify his own goods or services, or selling it to the trademark owner's competitors, it will greatly harm the interests of the trademark owner. The author believes that from this perspective, this kind of behavior can be identified as immediate infringement. Since most countries have provisions to stop immediate infringement, it is reasonable to stop registering other people's well-known trademarks as domain names.
Third, registering other people's well-known trademarks as domain names will lead to the dilution of well-known trademarks. The American Federal Trademark Anti-dilution Law defines trademark dilution as an act that reduces or weakens the ability of well-known trademarks to identify and distinguish goods or services. Anti-dilution is based on the protection of trademark rights, regardless of the possibility of confusion. All acts that constitute trademark dilution should be stopped, regardless of whether there is competition between well-known trademark owners and others or whether there is the possibility of misunderstanding and confusion. The theory on which anti-dilution is based is the reputation value of a trademark: once a trademark is well-known, it gains independent value, and its main function is not to distinguish the source but to reflect the reputation and credibility of its owner, so a trademark can request legal protection of products and services. This protection is not only to prevent confusion, but also to prevent the reputation of well-known trademarks from being damaged by illegal competition, that is, to prevent trademarks from being diluted or defiled. Anti-dilution extends the protection of well-known trademarks to protect the reputation of trademarks with special market development value and protect the rights and interests of trademark owners to enter relevant markets. In view of the fact that registering other people's well-known trademarks as domain names will weaken the identifiability of their trademarks on the Internet, damage the rights and interests of trademark owners to enter cyberspace through domain names, and prevent them from using their trademark reputation to open up the market in cyberspace, it should be trademark dilution and should be stopped.
It can be seen that the act of registering a well-known trademark as a domain name, whether it is subjectively malicious or not, and whether it is used to express goods or services, should be revoked.
(B) the conflict between domain names and non-well-known trademarks
As mentioned above, the ownership of well-known trademarks can be extended to the network as a prior right against the registration of the same or similar domain names, which only gives special protection to the extension of well-known trademarks on the network and does not apply to non-well-known trademarks. That is to say, for a non-well-known trademark, having the trademark right does not mean having the exclusive right to register it as a domain name, and the non-well-known trademark right cannot be used as a prior right against domain name registration.
First of all, as long as any right has a clear scope and boundary when it is recognized by law, then the obligee can only claim rights and interests within that scope and boundary. Beyond the scope and boundary recognized by law, his rights and interests will not be supported and recognized by law. The scope of trademark right is legal. Before the law makes an expanded interpretation, it cannot be extended to domain names at will, and it has the right to ban domain names based on trademark rights.
Second, due to the principle of trademark classification protection, the same trademark can be registered on different kinds of goods and owned by different obligees. Trademark owners can only prohibit others from using the same or similar trademarks on similar or similar goods, and their exclusive rights are limited to certain types of goods and cannot be extended to the whole business field. The uniqueness of the domain name determines that under the same top-level domain name, the trademark of the obligee can only be registered with the domain name, that is, the domain name ownership extends to the whole business field. It can be seen that domain names and trademarks are very different in acquisition and use. In this case, why does the owner of a non-well-known trademark extend his exclusive right to a certain kind of goods to the whole commercial field, and why does he have the right to prevent others from registering domain names? In fact, the domain name field is a new space different from the traditional commercial field, and there is no one-to-one correspondence between it and the trademarks in the field. Except for well-known trademarks, which can obtain prior rights based on the principle of cross-class protection, everyone here has equal opportunities and the right and freedom to choose domain names.
Third, it is not feasible to exclude others from registering the same or similar names as trademarks as domain names in reality. First of all, there are a huge number of registered trademarks in reality, and some countries also protect unregistered trademarks, so there are countless protected trademarks all over the world. Domain names are worldwide. Once registered, they can be used on the whole Internet, and it is easy to be the same as or similar to real trademarks. At present, most domain name registration agencies are not responsible for trademark retrieval. Even if they undertake this task in the future, it is impossible to retrieve all the protected trademarks in the world. Domain name registrants are even less likely to find out which names are used in trademarks by others or similar names are registered or used. In this case, it is neither reasonable nor practical to ask the parties to avoid registering the same or similar names as others' trademarks as domain names. Secondly, the identification of identical or similar trademarks is difficult to grasp. Although some countries have begun to try to use non-Roman letters to construct domain names, so far, domain names running on the Internet are still composed of Roman letters, numbers and connectors, while the characters of trademarks may be Chinese or English, which is different in appearance. For Chinese trademarks, such as "Tengfei", is the transliteration of its pinyin Tengfei registered as the same or similar domain name, or is it the same or similar to its free translation in English? If we also consider the translation of meaning into English, we will not monopolize all the related names in the face of multiple translation methods (for example, which one should prevail when translating "Tengfei" into English). As for English trademarks, such as Macdonald's ②, do they make the phonetic maidanglao.com the same or similar?
Fourth, registering trademark rights as prior rights will harm the interests of domain name owners. Article 23 of China's aforementioned Interim Measures for the Administration of Internet Domain Name Registration stipulates that after domain name registration, as long as the same trademark owner or enterprise name holder raises an objection, the domain name registration authority will stop serving the domain name. In this way, the registered domain name will always be in an uncertain state, and I don't know when it will be revoked based on the real trademark rights of others, which is very unfair to the domain name holder. Especially in the field of e-commerce, domain name holders will have a certain popularity on the Internet and have their own relatively fixed online users in the process of operating their websites. At this time, the domain name has become a symbol for these users and their admirers to find this website online, which has certain commercial value. At this time, once it is revoked without reason, it will be difficult or impossible for the original visitors and their admirers to find the website, and the efforts made by the domain name holders on the goodwill of their domain names will be wasted.
From the above analysis, it can be seen that the actual trademark right cannot and should not naturally extend to the domain name field, and the registration and use of domain names should not be restricted by whether there are identical or similar trademarks in reality. As the presiding judge in the case of Lockheed Martin Company v. NSI Trademark Service-assisted infringement, unfair competition and trademark dilution said, "Trademark right itself does not give trademark owners any general rights in disputes over network domain names and trademark rights. The trademark law itself certainly does not prohibit others from registering trademarks or service trademarks as network domain names. It only prohibits others from using the trademark or service trademark of the trademark owner in an infringing or diluted way, and the innocent users of the trademark have no obligation to defend the trademark interests for the trademark owner. " Of course, there are exceptions, that is, domain names may not be maliciously registered or used.
In this regard, Article 4 b of the Uniform Domain Name Dispute Resolution adopted by ICANN in June 5438+1999 10 stipulates that malicious registration or use of domain names includes but is not limited to the following situations:
(1) Prove that the main purpose of domain name registration or acquisition is to sell, lease or transfer the domain name in any other way to the owner of the trademark or service mark or its competitors, so as to obtain additional value from it.
(2) According to the behavior of the domain name holder, it can be proved that the purpose of the domain name holder's registration or domain name acquisition is to prevent the holders of trademarks and service marks from reflecting their trademarks on the Internet through a certain form of domain name.
(3) The main purpose of domain name registration is to destroy the normal business of competitors.
(4) The purpose of the domain name holder is to induce Internet users to visit the domain name holder's website or other online address by deliberately confusing the mark of the goods or services held by the complainant, and to make profits from it.
These can be the acts of "using the trademark owner's trademark or service trademark in an infringing or diluted way" prohibited by the trademark right mentioned by the judge earlier, which belongs to trademark infringement.
China does not have a perfect anti-dilution law like the United States, and there are not a lot of precedents as a supplement to legislation. According to China's current Trademark Law and its detailed rules for implementation, the above acts do not constitute trademark infringement, but this does not mean that they will not be prohibited. Even if it does not constitute trademark infringement, it will also cause unfair competition, thus constituting infringement. Unlike trademark law, anti-unfair competition law protects specific rights. Generally speaking, it has protected a fair and orderly market competition order. When the misconduct of the actor puts the obligee at a disadvantage in the market competition and damages his rights, it will constitute infringement. This damage may be obvious or potential. The above-mentioned behaviors obviously belong to this category and can be regulated by the anti-unfair competition law.
Based on the qualitative analysis of the nature of domain names and the above analysis, the author believes that the general principle of the conflict between domain names and trademark rights should be: it is forbidden to register names identical or similar to other people's well-known trademarks as domain names, but it is allowed to register names identical or similar to other people's non-well-known trademarks as domain names. Of course, this is only a general principle, and it should be analyzed in detail according to different situations in practice.