To succeed, the owner of the mark must show that its mark is famous and the use of the domain name somehow tarnishes or otherwise dilutes the uniqueness of the mark. Such obstacles to judicial relief demonstrate that self-governance within whatever system is adopted is the most effective strategy for ensuring the safety of trademarks and other intellectual property on the Internet. Yet when efforts at cyberdiplomacy fail, deciding whether and how to challenge misuse of intellectual property calls for rational, disciplined analysis. To assist in making that analysis, we offer a model set of questions, crafted from the perspective of a trademark owner whose mark is being used by another as a domain name. Most of the same questions can be asked by a domain name registrant whose registration is challenged by the owner of a mark bearing similarity to the domain name.
Trademarks identify particular products, services, or vendors.
Trademark law is usually intended to protect marks used in a commercial enterprise. Thus, while the use of a domain name for a non-commercial activity has been enjoined in the U.S. 7, courts are still more likely to restrain conflicting commercial uses of a domain name. Domain names have only recently been utilized as a marketing tool. A domain name that serves solely as an email address is no more damaging to the trademark owner than a city's selection of the mark as the name of a street. If the domain name registrant is a competitor, the trademark owner may fear that customers will be diverted to the competitor's site in search of the trademarked product or service.