The trademark issues

Domain Name Abuse

Malafide registration of domain names is increasingly becoming a malaise on the Internet to owners of intellectual property rights, including trademarks. Apart from registering the business names or trade names of well-known business organizations, their trademarks are also appropriated, without their consent, and registered as the domain names of trespassers into others’ rights. There are a number of factors that facilitate such abusive registration of trademarks and trade names. One is the approach of the agencies registering domain names. In a recent study, ‘Cyber squatting remains on the rise with further risk to Trademarks from new registration practices^[1]’ the World Intellectual Property Organization (WIPO) reported that in 2006, a total of 1,823 (gTLDs and code Top Level Domains (ccTLDs)) complaints alleging cyber squatting – the abusive registration as domain names of trademarks – were filed with WIPO’s Arbitration and Mediation Center (Center), representing the highest number of cyber squatting cases handled by WIPO since 2000. WIPO, in that study, cites that factors contributing to this alarming abuse of other people’s rights are:

The combined effect of development such as the use of ‘Whois’ privacy services for registration; the growth in the number of professional domain names dealers and the volume of their activity; the use of computer software to automatically register expired domain names and their ‘parking’ on pay-per-click portal sites; the option to register names for free for a five-day ‘tasting’ period; the growth in the number of accredited registrars; and the establishment of new gTLDs, is to create greater opportunities for mass registration of domain names. Such registrations are often anonymously undertaken on a serial basis without particular attention third-party intellectual property rights. Traditionally, cyber squatting involved the registration of domain names by individuals seeking to sell the ‘squatted’ domain name. Nowadays, ‘domainers’ derive income from the large-scale automated registrations of domain names. They acquire domain name portfolios, buy and sell domain names, and park domain names, claiming a significant share of the well over 100 million domain names that are now registered.

Intellectual Property on the Internet: WIPO Survey of Issues

The survey set out to explore the ways in which the uses of trademarks, among other rights, were liable to harm the owners of the marks. It segments the practices on the Internet of using trademarks that could either amount to abuse or dilution as a consequence of abuse. They are: use of trademarks as meta tags; sale of trademarks as keywords; pop-up advertisements, mouse trapping; and linking and framing.

The Survey also recommends a ‘fair use’ exception in the case of use over the Internet of a sign that is protected as a trademark. This would be where the use is in good faith in a purely descriptive or informative manner. Here also it points out that there could be broad agreement among countries as to what would be acceptable as fair use. To get over the problem of the limitation arising from the territorial nature of the right in a registered trademark, the Survey recommends the possibility of legislation enabling courts to pass orders of global injunction so that the restrained party cannot deal in the specified countries where an infringement of the trademark may occur.

The Survey reports that the general assembly of the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO adopted, on the occasion of the thirty-sixth session of the Assemblies of the Member States of WIPO, in September 2001, the WIPO Joint Recommendation Concerning the Protection of Marks, and Other Industrial Property Rights in Signs on the Internet^[2]. The Joint Recommendation aimed at providing a guide to the ‘application of existing national or regional laws with respect to legal problems resulting from the use of a sign on the Internet. It is intended to be used to enable the authorities in the respective states to determine the legal basis on which rights and infringements of a mark or other signs on the Internet would be decided and also when an act of unfair competition would be considered to have been committed on the Internet.

Jurisdiction in Internet Cases

As early as June 2000, WIPO raised the complexity of issues relating to jurisdiction in Internet cases in its Primer on Electronic Commerce and Intellectual Property Issues.

It highlighted the fact that in the context of electronic transactions the absence of rules relating to clear and convenient jurisdiction encouraged ‘forum shopping, with its attendant uncertainties, and potentially conflicting determinations’. It also noted that the choice of law remained a complex issue in case of infringement on the Internet.

The Future

While recommendations on choice of law or place of suing would be appropriate where parties agree on them, the question of jurisdiction in Internet cases, where malafide acts are committed by hostile parties, those principles would not be of any help. Perhaps, it is best that those using the Internet as a medium of commerce so arrange their activities by using specific and instant identifiers as their own marks or signs, in the sense that they are unique, issuing appropriate disclaimers, keeping track of those infringing their rights and suing them where they may be shown to have a real presence. It may be the minimum that they can do to protect themselves in a borderless world, which in certain aspects is not very different from a jungle.

[1]March 12, 2007, WIPO/PR/2007/479

[2]Accessed at: www.wipo.int/about-ip/en/development_iplaw/pub845.htm