Protect your domain name
The Internet is a shared resource, a cooperative network built out of millions of hosts all over the world. Its popularity is unquestionable, and the necessity is enormous. If you are not in the Internet – you do not exist at all. If Google search does not put your web page at the beginning of the search performed – nobody will know about you. Jobs are performed through Internet, business moves to Internet, our private life is in the Internet.Protecting your domain name
The Internet generates value – your web page is worth money! This Internet page you are reading now is worth 30 dollars[1]. You can check as well, how much is worth your site?
Nobody wants to lose an internet page that already became a part of the company, that customers are visiting every day – buying, selling, liking, commenting. It may take a year, two, three or more to create a memorable internet page and to become visible in the web.
One problem that might become a headache of the company is a competitor, creating similar web pages. Such a case might lead to the confusion of a customer. The consumer might believe companies are “friends”, subsidiaries, same entity. Such situation occurs when rival companies offer the same or similar goods or services. Imagine, a confused consumer visits web page of company B and purchases similar goods to company’s A, believing, that A company has provided the goods. The outcome for A company is a lost customer, a lost order and diminished value of a web page.
There are lots and lots of stories about confusing internet pages. Just some examples of misleading domains[2]:
dellfinacncialservices.com – was not related with Dell Inc.
kodak.ru – administrator is not Kodak.
bbcnews.com – was not a BBC News page.
So, how to prevent others from benefiting from your fortune and hard work? And what steps should be taken to prevent falsification of your domain name?
First advice is to protect your domain name by IP law. What we mean is go for trade mark registration. If your domain name is registered in patent and trade mark office, it has exactly the same scope of protection as a “normal” trade mark. You’re the owner of a trademark if you’re the first to use it. That principle equally applies to a domain name that functions as your trademark.[3]
The principles for registering your domain name are exactly the same as for any other kind of trade mark. No absolute grounds of refusal? No relative grounds of refusal? You are on the right path!
More and more often companies are registering their domain names as trade marks. Several examples of such trade marks[4]:
BLOOMINGDALES.COM – US registered trade mark;
ECOFASTENSOLAR.COM – US registered trade mark;
http://www.izzue.com – registered Community trade mark;
mantico.it – registered Community trade mark;
sesso.eu – www.sesso.eu – registered Community trade mark.
If you have registered a domain name as a trade mark, you can forbid the use of the same or similar domain name. Just like in the disputes between word or figurative trade marks, if there exist a likelihood of confusion, the later domain name cannot exist.
The WIPO has created special procedures to resolve trade mark related cases in the domain disputes. The WIPO Arbitration and Mediation Center provides time- and cost-efficient mechanisms to resolve internet domain name disputes, without the need for court litigation. This service includes the WIPO-initiated Uniform Domain Name Dispute Resolution Policy, under which the WIPO Center has processed over 30,000 cases.[5]
The domain name can also be protested by another kind of trade mark – word mark, figurative mark. However, if your trade mark is not well known and does not have a very strong distinctiveness (especially if it is a figurative trade mark) it might be difficult for a court or other dispute resolution body to find a domain name and trade mark confusingly similar. For example, WIPO Arbitration and mediation center might not be convinced that you have a common law trade mark rights. To establish common law or unregistered trade mark rights, a complainant must show that an alleged trade mark has become a distinctive identifier associated with the complainant or its goods or services[6]. This might be a very difficult task (specific assertions of relevant use of the claimed mark supported by evidence as appropriate is required). Therefore, without a registered mark a successful opposition against registered domain name is likely possible. On the other hand, confusing similarity between the registered trademark and domain is not the only requirement in such legal disputes.
WIPO Uniform Domain Name Dispute Resolution (UDRP) Policy[7] foresees that the domain name registrant should has no rights or legitimate interests in respect of the domain name in question and, furthermore, the domain name must be registered and used in a bad faith. Example circumstances (not a closed list of cause) of a bad faith are also foreseen in the UDRP Policy[8]. If the circumstances show that domain name was registered with the purpose of:
cybersquatting[9]; or
preventing the owner of the trademark from reflecting the mark in a corresponding domain name; or
disrupting the business of a competitor; or
intentionally attempting to attract for financial gain Internet users, by creating a likelihood of confusion with the previous mark,
A bad faith will be unquestionable. It is not enough for a trade mark owner to show that a registered trade mark and a domain name are similar. The complainant must also show, by supplying the evidence, that the domain name was registered in a bad faith. WIPO Arbitration and Mediation Center‘s Administrative Panel in one of its decisions has established that ‘it is sufficient that a complainant shows a prima facie evidence in order to shift the burden of production on a respondent, a complainant’s mere allegation <about the bad faith of the respondent> without supporting evidence is not sufficient‘[10]
To cancel or transfer a domain name, a bad faith must be proven. If the owner of the internet page shows that use of the domain results in rights or legitimate interests in the disputed domain name, complaint will be denied[11]. The requirements to show a bad faith and illegitimate interests of the domain name registrant, differ such legal disputes from opposition or cancellation procedures in the trade mark cases, where the likelihood of confusion and similarity between goods and services are sufficient to win a case.
When a conflict between two domain names occur, a trade mark owner have a possibility to choose a jurisdiction where to bring a claim. Any person or company in the world can file a domain name complaint concerning a gTLD using the above mentioned UDRP Administrative Procedure.[12] Of cause, WIPO Arbitration and mediation center is not the only body eligible for domain name dispute resolutions. On the contrary, when a dispute over a domain name occurs, such as those described above, the parties can always turn to the courts. While courts and judges have the authority to award control and ownership over domain names (just as they have the authority to award control and ownership over any other property), the judicial process is notoriously slow.[13] Differently from courts, WIPO procedures normally should be completed within 60 days of the date the WIPO Center receives the complaint[14].
The table below shows the differences between two procedures and it’s up to the claimant to decide which one to follow.
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[1] Checked at http://www.siteprice.org/
[2] Information taken from WIPO Arbitration and Mediation Center’s case law.
[3] http://www.nolo.com/legal-encyclopedia/can-you-register-domain-name-as-trademark.html
[4] Information from Tmview database.
[5] http://www.wipo.int/amc/en/domains/
[6] NH Resources LLC, Vaughn Crowe v. Andrew Holmes, WIPO Case No. D2015-0064.
[7] Paragraph 4(a) of the UDRP Policy.
[8] Paragraph 4(b) of the UDRP Policy.
[9] Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name
[10] Phoenix Polska Sp. Z o.o. v. Miroslaw Buldo, WIPO Case No. D2011-2225.
[11] Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001; Estate of Francis Newton Souza v. ZWYX.org Ltd., WIPO Case No. D2007-0221.
[12] Paragraph 3(a) of the UDRP Policy.
[13] http://www.bitlaw.com/internet/domain.html
[14] http://www.wipo.int/amc/en/domains/guide/#a6
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