LEGALLY SPEAKING - PAUL SUGDEN

Names in Cyberspace

It's official - we are now living in the "dot.com" generation, and names rather than numbers are taking over the way we utilise cyberspace (the internet).

How often have you been asked for your "non snail mail address"? We are already so used to utilising the web, and sending information etc. by the internet that this article was written on the web and sent to TAFTA by the web - and until it was published in this magazine there was no paper copy of it.

This leads us to an issue: as so many businesses are accustomed to using business names and trade marks to sell their products, have the rules changed with the introduction of the internet? Can you use your name for trading purposes in the online environment? The simple answer to these questions is that yes, they can be used, but the online environment is causing challenges for the business community as there are different rules for issuing a domain name or internet address from the rules for a trade mark.

In cyberspace all computers are given a Universal Resource Locator (URL). This is an address that then tells all other computers where you are. This was originally a set of digits divided by full stops (for example 1234.4567789). How many of you can remember your credit card number or tax file number? - Very few I would suspect. Therefore there was a change to the use of names as an easier method for humans to remember addresses and locations, and it reduced the number of errors for people trying to locate people on the web.

The system adopted still utilised full stops as the spacing technique, but it put names in between and divides the names into different locations. This is called domain name and operates the same as a street address in snail mail terms would do. For example TAFTA's address (The Australian Forum for Textile Arts) is tafta@uq.net.au which tells us that Tafta is at a secondary domain of the University of Queensland, and at the first level domain of "net" (which says this is a net provider), and the "au" is the country code for Australia.

This system of registration has led to a new form of piracy called Cybersquatting, which has meant that many well known brands and corporations have found when they come to register an internet address that other parties have registered their names, and now are asking for large sums of money to transfer the internet address to the corporation. Recent cases have included companies from Christian Dior to McDonalds.

These types of cases are now being resolved through a mandatory mediation process set up by the World Intellectual Property Organisation - the process is to be completed within forty days of a party lodging a complaint. This system, which as been operating since October of 1999 is proving very effective with famous or well known brands, but the mediation process does not solve the problem that there can be two parties trading in different parts of a country that use similar names which cannot be registered on the web at the same time.

In these situation it is left to the national courts of the country to work out who is entitled to use the name, employing the rules of the tort of passing-off, and rules that prevent a person misleading and deceiving the public by using a name for that purpose. The thing to do often is to check whether your name of choice is available; it is also becoming more important to use a unique name that is not descriptive of your product or services. If you use a descriptive name then probably a geographic limitation saying Sydney, Melbourne, etc will have to be lodged for it to obtain registration.

Given the newness of this area of law and the problems that are arising, I would encourage all traders to develop a unique trade markable name for their products so that it can be used as part of an internet address. The philosophy behind this is that the law will protect your unique identity but not a descriptive identity.