Trade mark law's increment through the Uniform Domain Name Dispute Resolution Policy

Abstract

Legal Context: This article discusses the changes independent Internet policy is imposing upon trademark law. The argument centres on the idea that the polymorphous nature of the trademark right is slowly drifting away from the traditional notions of goodwill and consumer protection, pertinent in trademark law philosophy; instead and because of the nature of domain names, existing and new policies focus on the protection of the word, creating an anti-competitive and hostile environment for users and entrepreneurs. Key Points: This article elaborates on the thesis that the trademark right is being distorted through ICANN’s UDRP in three critical ways: by paying emphasis on the protection of words, by simplifying the confusion test and by dismissing the ‘fair use’ doctrine. Especially, in relation to the latter, the article suggests that the UDRP itself along with UDRP panels fail, on the one hand, to protect critical speech whilst, on the other, redefine the nominative fair use of the mark. Practical Significance: If traditional trademark practice centres on the idea that trademark law’s evolution occurs through incremental judicial making, this article suggests that currently trademark law interpretations are also taking place through independent UDRP panels. This creates a substantial division between offline and online trademark law interpretations, an issue that becomes clear in the case of nominative use. However, the main issue is that because of these new ‘online doctrinal approaches’ the trademark right creates an intolerable environment for new entrants and shifts the focus of the protection to the mark rather than the consumer.