NNDKP_Domain names on the internet. Alternative dispute resolution.
DOMAIN NAMES ON THE INTERNET – ALTERNATIVE DISPUTE RESOLUTION Delia Belciu Senior Associate Nestor Nestor Diculescu Kingston Petersen Conference “Intellectual Property Law and Practice Constancy in Innovation” September 5, 2012, Bucharest09/06/12 1
Domain name – general aspects Domain name = sequence of alphanumeric characters allowing the identifycation of an address on the Internet (e.g. www.ms.gov.ro); Suffix at the far right of the domain name (in this example,. “.ro”) is called top-level domain - TLD and can be: i. generic top-level domain - gTLD - indicates the nature of the activities carried out by its holder and is composed of three or more characters (eg. com, .org, .travel, .net, etc.); ii. country code top-level domain - ccTLD - indicates the geographical location and is composed of two characters (eg. de, .fr, .it, etc.). the complete list of top-level domains level can be accessed at http://www.iana.org/domains/root/db/#
Trends ICANN (Internet Corporation for Assigned Names and Numbers) was established in 1998 with the purpose of ensuring the unity and stability at an international level. In 2005, the GNSO (Generic Names Supporting Organization belonging to ICANN) initiated a process of introducing new generic domains. During the period 12 January to 30 May 2012, any interested person could submit to ICANN one or more requests for generic domains. Examples of requests: .TOYOTA and .LEXUS (applicant: Toyota Motor Corporation), .MICROSOFT (applicant: Microsoft Corporation); Some (potential) domains were more requested - nine requests were made for .BLOG and also nine for .BOOK. List of applications can be accessed at:http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en
Domain name protection Currently there are over 24o ccTLDs, each administered by a national body empowered for this purpose The domain name .ro is administered by The National Institute for Research & Development in Informatics, which manages the ROTLD register ( www.rotld.ro). The protection of the domain names is performed by registration with the body/organization authorized for this purpose (registrar). The registration of a domain name does not grant to the holder an ownership right over the denomination in question or any exclusive right similar to an intellectual property one, but just a simple right of use. The registration of a .ro domain name is performed online and is valid for an unlimited period of time (does not require renewal). The costs to register a .ro domain name is of 51,26 USD + VAT (currently 24%) which is paid at registration. Currently, there is no annual maintenance fee that has to be paid by the holder.
Conflicts domain name v. trademark The economic potential of the domain names has given rise to abusive registrations of domain names that corresponded to notorious / renowned trademarks belonging to third parties, aspect that led to several conflicts. This phenomenon is known as "cybersquatting" or "domain squatting" and consists in registering, trafficking and using in bad faith, of a domain name with the intention of taking unfair advantage of the clients associated to a certain trademark belonging to a third party or by reselling the domain name at a high price.
Conflict resolution between domain names vs. trademarksThe conflict between domain name vs. trademark may be settled, among others: By the Approved Dispute-Resolution Service Providers, according to UDRP: • Uniform Domain Name Dispute Resolution Policy (UDRP - http:// www.icann.org/en/udrp/udrp-policy-24oct99.htm) which was approved by ICANN (Internet Corporation for Assigned Names and Numbers) on August 26, 1999; • As a rule, the registers that agreed upon UDRP policy, have to incorporate it by reference within the registration agreement of that domain name. By the competent courts of law, according to the applicable law.
UDRP The ICANN Approved Dispute-Resolution Service Providers, currently, are: Asian Domain Name Dispute Resolution Centre; National Arbitration Forum; World Intellectual Property Organization (WIPO); The Czech Arbitration Court - Arbitration Center for Internet Disputes. The Service Providers apply the Uniform Domain Name Dispute Resolution Policy (http://www.icann.org/en/dndr/udrp/uniform-rules.htm), as well as their own supplimentary rules.
Alternative Dispute Resolution Courts of law Shorter settling time; Longer settling time; Lower costs; Higher costs;Eg: WIPO – 1 panelist – 1500$ Compensation may be granted;No compensation is granted; Final and binding decision can not The party dissatisfied with the be appealed.decision may challenge it before thecompetent courts.
UDRP Cumulative conditions for accepting a complaint: 1. The domain name is identical or confusingly similar to a trademark in which the complainant has rights; 2. The respondent has no rights or legitimate interests in respect of the domain name 3. The domain name has been registered and is being used in bad faith These conditions are detailed in the Policy. The burden of proof belongs to the complainant. Available remedies: 1. The cancellation of the domain name; 2. The transfer of the domain name to the complainant. No compensation is granted!
Typosquatting Is a version of cybersquatting consisting inthe registration of a domain name which is differentfrom a very known domain name only by a typing “error”. Examples: • www.ho0tmail.com" and "hot5mail.com vs. hotmail.com; • www.dosney.com vs. www.disney.com.
Example: An interesting example is that of a teenager from Canada named Mike Rowe who registered MikeRoweSoft.com domain name, used it to promote its web design services. Microsoft offered $ 10 for the domain name, but Mike Rowe has asked $ 10,000. Finally, the parties settled and Microsoft helped Mike Rowe to move his small business to another website. www.MikeRoweSoft.com website currently redirects users to www.microsoft.com.
Typosquatting in WIPO case law The constant WIPO practice: A domain name that contains a common or obvious misspell of a trademark will normally be considered very similar to the trademark, as long as the misspelled trademark is the dominant or main element of the domain name. Relevant case-law: • fuijifilm.com - Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings (http:// www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0971.html ); • humanna.com - Humana Inc. v. Cayman Trademark Trust (http://www.wipo.int /amc/en/domains/decisions/html/2006/d2006-0073.html) • luisvuitton.com - Louis Vuitton Malletier v. Net-Promotion, Inc. (http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0430.html) All the above cases were solved with the transfer of the domain name to the complainants.
Renewal snatching Another cybersquatting strategy is based on the fact that certain domain names are registered for a limited period of time. If the holder of the domain name registration does not renew it before the expiration date, the domain name becomes free and thus such can be registered by anyone. The cybersquatters often use software products that automatically register the expired domain names exactly
Sucks cases A type of behavior encountered in practice is the registration of a domain names that includes a trademark of a third party (eventually together with a negative or pejorative term such as [trademark]sucks.com or Ihate [trademark].com), in order to criticize the titleholder of the trademark.
Examples: accorsucks.com, antiphilips.com, airfrancesucks.com An interesting example is PETA (People for the Ethical Treatment of Animals), an animal welfare organization. In 1995, Michael Doughney has registered the domain name PETA.org that hosted a website under the denomination "People Eating Tasty Animals“, with links to websites that promoted the sale of meat and leather products. Although there was a link to the original website of PETA at the bottom of this website www.peta.org, PETA has not "tasted“ the joke and introduced a trademark infringement action, of cybersquatting and of unfair competition. The Courts have ruled in favor of PETA and have transferred the domain name, but did not award damages, considering that Mr Doughney has not acted with intent to harm PETA.
Sucks cases in WIPO case-law Constant WIPO practice : In general, a domain name consisting of a trademark and a negative or offensive term (such as [trademark] sucks.com or Ihate[trademark].com) will be considered very similar to a complainants trademark. By putting aside to a trademark a secondary word does not remove the risk of confusion with the trademark and also can lead to a likelihood of confusion specifically for users whose native language is not the same with the domain name’s language.
Relevant case-law: wal-martsucks.com - Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale (http://www.wipo.int/amc/en/domains/decisions/html/2000/ d2000-0662.html); abercrombieandfilth.com - A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen (http://www.wipo.int/amc/en/domains/decisions/html/2001/ d2001-0900.html) These complaints have been solved with the transfer of the domain names to the complainants.
The “tarnishment” concept Inappropriate behavior consisting in associating a trademark belonging to a third party with pornography, violence, drugs, etc..Examples: • John Zuccarini registered the domain name nicholekidman.com and nicolekidmannude.com and he was using them to advertise some websites with explicit sexual content; • Hasbro, Inc. is the titleholder of the trademark “CANDYLAND” registered for kids games. Internet Entertainment Group, Ltd. registered a domain name candyland.com for hosting an adults website.
WIPO case-law regarding domain names - case study -
kfc.ro (2002)Parties: Kentucky Fried Chicken International Holdings, Inc. v. Kimbeomsung (individual from Republic of Korea)Panelist: Jonas GullikssonFacts: The complainant opened its first KFC restaurant in Korea in April 1984, and in 2002 held 236 KFC restaurants in this country. In 2002, the complainant owned nearly 200 "KFC“ trademarks registered in 99 jurisdictions, including Republic of Korea and Romania.Conclusions: (i) the domain name "kfc.ro" is identical with the trade mark "KFC" (ii) the respondent has no rights or legitimate interest in the domain name, (iii) the domain name has been registered and is being used in bad faith by the respondent.Decision: The domain name was transferred to the complainant.
subaru.ro (2007) The first rejected complaint concerning a .ro domain name Conflict between the titleholder of the notorious trademark SUBARU (Fuji Jukogyo Kabushiki Kaisha) and the former distributor of the products in Romania (Radacini Autotrading SRL) Although the panel found that the domain name was similar to the earlier trademark and that the respondent had no rights or legitimate interest in relation to the domain name, such found that the domain name has been registered and was used (initially) in good faith (based on the agreement of the trademark owner), although at the time of filing the complaint it was clear that the respondent used the mark in bad faith.
ibm.com.ro (2010) an interesting case between two major competitors namely International Business Machines Corporation v. Linux Security Systems SRL, the last registering the domain name ibm.com.ro and leaving it inactive for 14 years; the panel decided the transfer of ibm.com.ro domain name to the complainant, finding that there was sufficient evidence to establish bad faith, given that the respondent registered as the domain name a distinctive trademark of a competitor without having any right or legitimate interest over it and keeping it inactive for more than 14 years.
annadior.com (2008)Parties: CHRISTIAN DIOR COUTURE (France) v. Paul Farley (USA)Facts: the domain name was used as a website for adults, prohibited to persons under the age of 21.Conclusions: (i) the similarity which led to confusion between the domain name and the complainant’s trademark, (ii) the nature of the website, with the same impact as a pornographic website - slander / defamation of the trademark (the concept of "tarnishment of the trademarks"), and (iii) the respondents intention to target, by registering the domain name the complainant’s trademarks were sufficient arguments for the panel to retain the respondents bad faith at the registration and use of the domain name.Decision: the domain name was transferred to the complainant.
moment.ro (2008) The first .ro case in front of WIPO in which the owner of a domain name won against a complaint brought by the titleholder of an earlier trademark, invoking an exception of legitimate noncommercial use of the domain name. The complainant failed to prove the respondent’s bad faith in registering the domain name and thus the complaint was dismissed Also, the panel dismissed the respondent’s complaint regarding the reverse domain name hijacking of the UDRP policy by the complainant.
Romanian case-law concerning domain names - case study-
vinexpert.ro (I) Object: VINEXPERT SRL requested the court: To cancel the abusive registration of the vinexpert.ro domain name by the defendant; The transfer of vinexpert.ro domain name to the plaintiff; To order the defendant to cease the use of the trademark "VINEXPERT" and the cancelation of the website www.vinexpert.ro Facts: The plaintiff was established by registration with the Bucharest Trade Registry Office on May 19, 1999 under the trade name "VINEXPERT SRL". The plaintiff is the titleholder of the combined national trademark "VINEXPERT" no. 060671/December 18, 2003. The defendant registered the domain name vinexpert.ro on April 30, 2001. First instance: By the civil decision no. 233 as of February 5, 2008, the Bucharest Tribunal has rejected the action as unfounded on the grounds that the plaintiff can not oppose its trademark that has been later registered in order to obtain the cancellation of the domain name registered by the defendant.
vinexpert.ro (II)Appeal: By the civil decision no. 215 as of 30 September 2008, the Bucharest Courtof Appeals uphold in part the action, has canceled the registration of the domainname vinexpert.ro and has ordered the cancellation of the websitewww.vinexpert.ro on the following grounds: The trade name registration entitles the plaintiff to claim to third parties to refrain from any action likely to prejudice its right; or By including in the domain name, the trade name of the plaintiff, without proving a right or legitimate interest, the defendant acted in bad faith in order to create confusion among consumers. Note: The Court rejected the plaintiffs request for the transfer of the domain name, considering that such is to be made by making a request to the National Institute for Research and Development in Informatics.
vinexpert.ro (III)Second Appeal: By the decision no. 5889 as of May 22, 2009, the HighCourt of Cassation and Justice, the Civil and Intellectual Property Sectionrejected the second appeal as unfounded considering that: The trade name is protected by the Paris Convention (to which Romania is a party), by means of an industrial property right; The third parties are compelled to refrain from any action which might prejudice a protected industrial property right; The inclusion of the plaintiffs trade name in the domain name is likely to cause confusion among consumers, who are expected to believe that the company that owns the domain name vinexpert.ro is one and the same with the company that commercializes products under the trade name VINEXPERT SRL.