You want to register a domain name and you find out it's already been registered as a trademark. Does that mean you can't use it? Well…. no. But if you look at the way court decisions have gone, you might want to proceed on the assumption that your ownership of the name is not necessarily PERMANENT.

Your company has a registered trademark on its most important product, and you find out that somebody registered your trademark as a domain name. Does that mean you can write a letter to Network Solutions Inc. (NSI), the company that operates the registry of domain names, and they'll take the domain name away from its owner and give it to you? Well… no. But...

Wait a minute. Isn't anything for certain about domain names and trademarks?

Funny you should ask.

The basic problem is that domain names and trademarks are apples and oranges, in the legal sense; however, they have a very large overlap when Web sites are involved in commerce.

Webheads complain that domain names are coming out on the short end, but that's possibly because domain names are a relatively new phenomenon, and there is very little experience to use as a guide for deciding what's good or bad, right or wrong, about their use. Trademarks, on the other hand, are the focus a large and venerable body of laws that govern their use and misuse.

There is a school of thought that believes that the Web just wants to be free; domain names are just names given to web sites so that we all don't have to try to memorize series of identifying numbers. However, there are corporations out there with a lot of money at stake, who have put a great deal of effort and experience into protecting their marks against infringement in other media. And they've been very willing to apply those precedents to the World Wide Web.

So far, interestingly enough, the trademark crowd has had only mixed success: The court cases that have been decided thus far have not made domain names synonymous with trademarks. But nor have they made it safe for domain name owners to ignore trademarks, by any means.

Most of the cases have concentrated on classic trademark infringement issues -- the use of a mark in a way that is likely to cause consumers confusion regarding the source of goods or services. Two recent court decisions have focused on this intent to confuse consumers. Both cases involved trademark claims, and the decisions went in favor of the trademark holders. But it was the intent to confuse Web users as to the source of the information they were receiving, as much as the existence of a trademark, that was the deciding factor.

The Planned Parenthood Federation of America holds several registered trademarks on the Planned Parenthood® name. When an anti-abortion activist launched a Web site with the domain name "www.plannedparenthood.com" the organization sued for trademark infringement.

In her ruling in the case in March of 1998, Judge Kimba Wood wrote that the defendant "has appropriated plaintiff's mark in order to reach an audience of Internet users who want to reach plaintiff's services and viewpoint, intercepting them and misleading them in an attempt to offer his own political message."

Her decision used language common to findings of trademark infringement. The use of the "www.plannedparenthood.com" domain name, she concluded, "is classically competitive: he has taken plaintiff's mark as his own in order to purvey his Internet services -- his Web site -- to an audience intending to access plaintiff's services."

In a similar case brought by the Jews for Jesus religious group, the judge found that the defendant had "intended to intercept, through the use of deceit and trickery, the audience sought by" the religious organization, and therefore violated rights to the registered trademark, Jews for Jesus®.

In both cases, it was the intent to create confusion in the mind of the general public that was a key factor. Yet some confusion seems to be an inevitable side-effect of the limited availability of domain names. Trademark law allows for multiple marks that use the same name, based on an international classification system that divides goods and services into 42 groups. But there are only a handful of Top-Level Domains for the Web, and one of these, ".com" has become the equivalent of a desirable corner location in a high-traffic area. It's the domain extension people will automatically try when they begin to guess at domain names in order to reach a site.

The result has been a landrush for ".com" domain names that has left multiple legitimate claimants contending for a single name. The Roadrunner case, for example, pitted Time-Warner Communications, holder of a trademark on the Roadrunner cartoon character, against a New Mexico computer services company that was using "www.roadrunner.com," -- and had operated under the name of its state bird for years.

In a flanking maneuver, Time-Warner sued Network Solutions Inc. for infringing on its trademark by issuing the domain name to another company, and asked the court to order NSI to strip the domain name from Roadrunner Computer Systems and turn it over.

Lockheed tried a similar tactic in a dispute over domain names using "skunkworks." The aerospace company holds a trademark on the term, but not in every class - other companies use "skunkworks" in their names, including Skunkworks Marketing Lab, Inc. of New York and Skunk Works Multimedia, Inc. of California. When these, and other companies registered variations on "skunkworks" as domain names, Lockheed took action to assert its trademark rights. It also filed suit against NSI, claiming that the company should have policed domain name registrations by checking them against trademarks before permitting them to be registered.

The court decisively rejected Lockheed's claim, finding that NSI's use of domain names is connected with their technical function to designate computers on the Internet, not with their trademark function to identify the source of goods and services. It concluded that NSI did not have reason to know that its domain name registration service was being used to infringe Lockheed's mark, and had no responsibility to take action.

Judge Dean Pregerson's decision summarized the domain name system's shortcomings, noting that "Commerce has entered the Internet only recently. In response, the Internet's existing addressing systems will have to evolve to accommodate conflicts among holders of intellectual property rights, and conflicts between commercial and non-commercial users of the Internet. . . . No doubt trademark owners would like to make the Internet safe for their intellectual property rights by reordering the allocation of existing domain names so that each trademark owner automatically owned the domain name corresponding to the owner's mark. Creating an exact match between Internet addresses and trademark will require overcoming the problem of concurrent uses of the same trademark in different classes of goods and geographical areas."

The judge cited various possible solutions to the problem, and concluded, "The solution to the current difficulties faced by trademark owners on the Internet lies in this sort of technical innovation, not in attempts to assert trademark rights over legitimate non-trademark uses of this important new means of communication."

The rights of trademark holders are much clearer, and the courts much more willing to rule in their favor, when domain names they seek are being held for ransom.

Internet-savvy speculators realized early on that domain names were a new kind of intellectual property with great potential value. Many of them registered domain names - some registered hundreds or even thousands of names - and then offered them for sale. This trade in domain names is just as legal as buying or selling or licensing the use of a copyright or trademark.

But the courts have overwhelmingly found that this issue can become trademark infringement when it amounts to the misappropriation of a trademark for profit, or if it dilutes the value of a trademark. The legal climate has developed through several important decisions over the last few years that haven't quite agreed on particulars, but the overall effect is that "cybersquatting," the registering of domain names that include versions of trademarks and the attempt to sell them to the legitimate trademark holder, does not pay.

Several of the earliest cases involved an Illinois ISP, Dennis Toeppen, who registered more than 200 domain names like "www.deltaairlines.com" and "www.nieman-marcus.com." He was sued by several of these companies, including American Standard, Panavision, and Intermatic.

The Intermatic decision rested on a finding of trademark dilution -- weakening the association a consumer makes between a unique name or mark and the company that owns it. Toeppen wasn't found guilty of infringement, and cybersquatting wasn't an issue: The decision noted that "while many may find patently offensive the practice of reserving the name or mark of a federally registered trademark as a domain name and then attempting to sell the name back to the holder of the trademark, others may view it as a service."

More recent decisions have emphatically rejected the idea that cybersquatters perform a service.

Two British Internet consultants, Richard Conway and Julian Nicholson, who operated as One In A Million Ltd., registered a collection of domain names, many containing the trademarked names of companies including virgin.org, bt.org, and the-spice-girls.com. A group of six major British companies including Virgin Enterprises Ltd., British Telecommunications and Marks & Spencer filed suit, and in December of 1997 a British High Court judge ordered the two to relinquish rights to their list and barred them from registering such names in the future. The decision found that the threat of trademark infringement was "beyond argument," even though Conway and Nicholson had not yet used the names to cause actual harm the companies' marks or business - a finding broader than any similar U.S. court decision.

As you can see, the legal systems and courts of the world are still searching for some order in the chaos that is the domain name registration process.