Well-Known Marks on the Internet

• Jurisdiction: South Africa
• Author: BR Rutherford
• Published date: 03 September 2019
• Date: 03 September 2019
• Pages: 175-183
• Citation: (2000) 12 SA Merc LJ 175

Well-Known Marks on the Internet

BR RUTHERFORD

University of South Africa

Introduction

The Internet is a means by which people exchange information and

transmit data. It has proven to be a low-cost method of communicating

with people across the globe. Companies have come to realize its

potential for communicating with customers or potential customers, and

for advertising and selling products. Trade marks are important agents in

the marketing of products and have become a vital aspect of trading

on the Internet.

The use of trade marks on the Internet has highlighted two short-

comings flowing from the nature of traditional trade-mark law. First, a

trade mark is registered for certain goods or services only. So it is possible

that a number of identical trade marks may be owned by different

companies, provided they are registered and used on different goods or

services. Secondly, trade mark is territorial by nature. It confers on its

proprietor the exclusive right to use that mark in relation to the goods or

services for which it is registered in the country of registration only. So

the identical trade mark may be owned by different companies, provided

they are used and registered in different countries. By contrast, the Inter-

net is global in nature. It allows access to virtually every country in the

world. Unlike a trade mark, a domain name (an address used to locate

individual Internet users) is unique. A particular domain name cannot be

owned by more than one company. Of all the companies that may own

the identical trade mark, only one may own the corresponding domain

name, irrespective of how distinct their products or markets may be.

Domain names are allocated by domain name registries on a first-come

first-served basis. These registries do not have the resources to verify the

rights of applicants to choose particular names or to examine applica-

tions for conflict with the rights of others. A company wishing to register

its well-known trade mark as a second-level domain name may well find

that its mark has already been registered by another Internet user. This

problem is compounded by the fact that most companies prefer to

register in one of the generic top-level domains (gTLDs) rather than the

relevant country-code top-level domains (ccTLDs). The most popular

generic top-level domains are '.com' (which denotes a commercial

organization), '.org' (which denotes a nonprofit and private organiza-

tion), and '.net' (which indicates a computer network). Anyone from any

country in the world may register his second-level domain name under

one of these generic top-level domains. Registration has been undertaken

by Network Solutions Inc (NSI), a private company based in the United

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(2000) 12 SA Merc LJ 175

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