The Diplomatic Crisis of Qatar & GCC Intellectual Property

Membership to the GCC has legal implications on all aspects of life and commerce in the Gulf – including intellectual property. Even though the GCC is not as deeply integrated as the EU, the GCC still has a body that issues a region-wide intellectual property right (the GCC Patent Office), has some intellectual property laws that apply across the entire region (e.g. the GCC Trade Mark Law), and has a legal instrument that recognises intellectual property as a fundamental right (the Gulf Declaration of Human Rights). With no solution to the crisis in sight, it is important to take a moment to consider what this crisis means for GCC intellectual property law and how it affects Qatari rights-holders.

Continue reading The Diplomatic Crisis of Qatar & GCC Intellectual Property

Non-English Domain Names Not A Smart Move

The legal status of VPN in Oman still remains a grey area. The telecommunications law prohibits the use of any method of encryption without acquiring an explicit permission from the government beforehand, but this law has no practical implication because encryption is a fundamental aspect of the Internet. Without it we cannot log into our e-mail accounts, pay our bills online or check our online banking services.

A Virtual Private Network (VPN) is a method by which a computer can securely connect using a public connection to a private network located elsewhere. Once a connection is established to the VPN, the administrator of the public connection cannot have any control over what content is delivered through the VPN to the remote computer and cannot monitor or intercept any of that traffic.

VPNs are regularly used by companies to connect their branches to their head office, thus ensuring that their communications remain secure. VPNs are also used by consumers all around the world to ensure that their connections are secure when using untrusted public connections such as those available in cafes, hotels and other public venues.

The authorities in Oman do not like VPNs because using a VPN circumvents all the censorship and regulations imposed over the Internet. If you connect to a VPN using a local ISP such as Omantel or Nawras, you can view any website, even if that website is blocked by the local ISP which you are using to connect to the VPN. Using VPNs also allows users in Oman to connect to blocked services such as Skype.

In 2010, the TRA sought public consultation over draft regulations that would have made VPN totally illegal for private use and would have required establishments to acquire a license from TRA to use VPN for commercial use. These draft regulations never materialised and the feedback the TRA received about them was never published.

While it is understandable that TRA would not be happy to have the public circumvent all the restrictions that it imposes on the Internet by using a VPN, it would be unreasonable for TRA to ban the use of VPN for private use. This is because using VPN in certain situations is fundamental towards ensuring that the user is protected from Web criminals and identity thieves.

It is extremely common for people to log into public networks in cafes and hotels, and using a VPN in these circumstances can be the only guarantee that your connection would not be compromised by the administrators of these networks or by anybody else who manages to take control over that network. Taking such precautions in certain countries where there is a high risk of Internet scams is a serious necessity, and it is not logical to stop consumers from taking such precautionary measures.

Instead of making more futile attempts at censoring the Internet, TRA should accept that this is an impossible task to accomplish. The position of the law in regard to encryption as it stands is pointless. TRA should focus on improving the Internet and providing us with rights that guarantee that our privacy will be protected instead of creating more barriers to connecting with the rest of the world.

Twitter Usename Room214 Infringes Trademark?

Twitter

A twitter user who goes under the username of room214 was recently contacted by a company called Room 214, Inc asking him to give up his twitter account or else they would ‘take it from him’. Can they take any legal action to retrieve the twitter account using trademark law?

First of all, in the US, trademarks law is regulated by the Lanham Act. This act does not only protect registered trademarks, but also unregistered ‘common law’ trademarks. A mark can be protected and will have rights under this act if this mark develops a certain level of ‘distinctiveness’ which makes it qualify for the common law trademark protection. This means that Room 214 can still get protection for its mark regardless of whether it was registered or not, if it can prove that the mark has been associated in the mind of the public with the certain service or product the company sells. This is a question of fact and will depend on the actual reputation the company has.

Now whether the company has a trademark or not, does this protection allow them to stop people from using a twitter account that contains their trademark? It must be noted that a trademark does not grant its own a monopoly over the use of a term, but instead it allows them to stop others from attaching the mark (1) to identical goods services or (2)  similar goods and serives if the public would be confused as to the source of the goods.

It cannot be said that the use of a trademark in a twitter account amounts to the use of a trademark in relation to any goods or services, especially because the user in this case was not using his twitter in the course of a business, and even if he did his will only be infringing if his use was (a) relating to goods and services similar ot those provided by the tradmark owner and (b) the public would be confused as to the source of the goods and services by that use.

Certain trademarks in the US attract special protection against trademark dilution through the Federal Trademark Dilution Act. This protection has a wider scope, but may only be conferred on ‘famous trademarks’ – trademarks which has established a strong connection in the minds of the public between the good or service and the source of that good or service. Examples of such trademarks include Coca Cola and Microsoft. It is extremely unlikely for Room 214, Inc to have such protection as nobody heard about this company.

I would confidently conclude that Room 214 Inc will not have a legal action under trademark law to stop another person from using the term “Room214” as part of their twitter username.

UDRP Local Experience: Bank Sohar/Oman Air

While we are still on the topic of the UDRP, I thought I’ll share with you an example of a local experience with the UDRP, and will show you an example of a classic case where the UDRP could be used.

BankSohar.com

Some of you might remember that when Bank Sohar launched its website it was hosted at a .net TLD and not the current .com TLD. This was obviously because someone registered the domain name before they did.

Late in 2008, Bank Sohar initiated a UDRP action against the website owner. Under the UDRP a domain name will be transferred to a TM owner if

  1. the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.
In the action handled by AlBusaidi, Mansoor Jamal & Co (which was then Al Alawi, Mansoor Jamal & Co) the complaint claims and arguments consisted of the following:

A. Complainant makes the following assertions:

1.Respondent’s <banksohar.com> domain name is identical to Complainant’s BANK SOHAR mark.
2.Respondent does not have any rights or legitimate interests in the <banksohar.com> domain name.
3Respondent registered and used the domain name in bad faith.

The domain name registrant did not respond to UDRP process, yet the panel decided in his favour, because the domain name was registered before the trademark of Bank Sohar was registered. The complaint was denied. But it seems that the Bank Sohar later settled (they paid them) with the domain name registrant to get the domain name which it currently uses.

Though not a clear cut case, because the domain name was registered before the trademark was registered, it is apparent that the complaint was not defended well (I mean, out of the 15 page limit they had, Bank Sohar submitted three lines?!).

First of all, under WIPO UDRP decisions for the purposes of answering element 1, there is no requirement for the trademark to be registered before the domain name for similarity to be established, the registration day is a factor to be considered in the third element. Bank Sohar would have easily satisfied that element by citing this decision Digital Vision, Ltd. v. Advanced Chemill Systems:

“The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdate the domain name registration; however, Paragraph 4.a.(i) does not require that the trade mark be registered prior to the domain name. This may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below. I conclude therefore that the Complainant has satisfied the first requirement of Paragraph 4.a.(i)”.

For the second element, Bank Sohar was required to establish that the registrant did not have any legitimate interests in the domain name, this is established by stating that the registrant does use the domain name in a bona fide business and that the registrant is not known by that name, both of which are easy to establish, he is obviously not known by the name Bank Sohar nor does he use it in a business context.

The third element is the hardest to establish, because Bank Sohar had to establish that the registrant registered the domain name and is using it in bad faith. The problem here is that Bank Sohar registered its trademark and started its business after the domain name was registered, however, in cases where the the registrant knew of the existence of the complainant and it was clear that he registered to take advantage of the domain name later, then bad faith can be established. This was the bases by which a transfer took place in cases such as ExecuJet Holdings Ltd. v. Air Alpha America, Inc. I don’t think that it is hard to establish that many people knew about the Bank Sohar a year before it started doing actual business!

Bank Sohar lost this procedure because it did not argue its right at all. The choice of UDRP provider was also bad as WIPO clearly holds the cases I cited above as the majority view and it have been more likely for Bank Sohar to win this if WIPO was used as a provider instead of the National Arbitration Forum. No idea how much they had to pay for the domain name afterwards!!

You can read the decision text here.

OmanAir.com

Unlike the Bank Sohar case, the second part of this post is not about a case that happened, but about a cybersquatting example which can be easily won through the UDRP.

Again, some of you might remember when Oman Air used to have a website at the .aero TLD, it currently uses the oman-air.com TLD as its web address as well nowadays. The most desirable TLD though, omanair.com, is registered by a Sri Lankan since 2002. The domain is parked.

This is a classic UDRP case at which it is guaranteed that Oman Air can gets its domain back. If Oman Air wants to get the domain it has to establish in a UDRP procedure the following:

  1. the domain name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

In regard to the first element, the trademark is identical to the trademark owned by Oman Air, the location of the service and place of registration is irrelevant (case Guinness.com), if Oman Air did not have a registered trademark at that time it can establish that it had a common law trademark as Oman Air was commonly known by that name by 2002 (case: IdeaLeage.com).

In regard to the second element, it can be easily established as the registrant is not known by that name, not does not carry out any bona fide business using that domain name.

In regard to the third element, it is clear that the registrant registered the domain name to profit from the Oman Air’s trade mark, lack of usage has been considered an indication of bad faith (recent case example).

All in all, this case is a classic UDRP example which Oman Air can easily win if it uses the procedure.

Oman Air would be stupid to let somebody else take control of their domain name, the costs for using the UDRP are nominal (WIPO it costs $1500 while at NAF its $1300), and there is not to do it!

Other interesting decisions from the region include aljazeera.com and ebay.ae.

Inconsistencies in UDRP Decisions


(Photo credits: Monroe’s Dragonfly)

The deeper you dig into the realm of the UDRP to more you realise that this cheap and fast procedure for fighting cybersquatting is not totally perfect, in fact, the 10 years old procedure is widely believed to be in dire need of a reform.

The most major problem with the UDRP is that its decisions consistently inconsistent. This is unsurprising as the procedure is usually conducted by lawyers from all around the globe who come from different jurisdictions and have a different understanding of the principles of the UDRP. This is combined with the fact that there is no appeal system within the UDRP and there is no strict sense of precedent to be followed by later cases. 

In order for a complainant to initiate a transfer under the UDRP, he must establish the elements of section 4(a) of the UDRP Policy:

  1. your domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and
  2. you have no rights or legitimate interests in respsect of the domain name; and
  3. your domain name has been registered and is being used in bad faith.

Examples of inconsistencies can be seen in relation to the application of ALL these elements:

1- Element(1) Domain name is identical or confusingly similar.

The UDRP does not explain what is meant by confusingly similar and a diversion in opinion was established in the case of ‘sucks’ domain names. These are domain names such as walmartsucks.com where the trademark is obviously present in the domain name, but the domain name as a whole is not identical and most people would not be confused as to its relationship with the trademark owner as walmart will not be using such a domain name

Scott Donahey identified two different tests by UDRP panelists when attempting to examine this element, the first test is an objective test that simply looks at whether or not the trademark is in the domain name or not, if it is, then the domain name is capable of being confusingly similar. This was first used in the case of Britannia Building Society v Britannia Fraud Prevention and most recently applied in the case of Sermo, Inc v CatalystMD, LLC.

(WIPO says that majority agree with the objective test – for the same reasons used in cases, people who do not speak proper English might not understand the negative term and therefore get confused).

Another test occasionaly used is a subjective test which does not automatically hold a domain name confusingly similar because it contains a TM and instead attempts to look at the state of the mind of the user to see whether he would actually be confused after looking at all relevant factors. This case is similar to that used by US courts for examining TM cases. This test was used in Lockheed Martin Corporation v. Dan Parisi, it was most recently used in a trademarkrip-off.com context where the US TM law and other factors were taken into consideration to deny the success of the case under this element (Case: Citigroup Inc. and Primerica Financial Services, Inc. v. Brian Allman).

Donahey suggests that the subjective test should be abandoned and the objective test is the one to be used as the subjective factors are examined for elements 2 and 3. He also suggests that using the subjective test would allow competing company to benefit from this by using such domains and gives the example of Pepsi using the domiain cokesucks.com as a redirection to its own website.

2 – Element(2) Domain registrant’s rights and legitimate use

The UDRP again does not explain what this element means, but provides a list of non-exhaustive examples of legitimate rights.

This elements created diverging opinions in relation to domain names in criticism or free speech cases

The first opinion suggests that no legitimate criticisms rights can subsist in a domain name that is identical to the trademark of the complainant because the domain name here is used to indicate the identity of the owner and that overrides any legitimate use by the regisrant. This was most recently applied in the case of 1066 Housing Association Ltd. v. Mr. D. Morgan. (Explains the both principlesi in great details!)

The second opinion says that there is legitimate use if the registrant uses the domain name for a criticism website the use is fair and non-commercial. A recent decision here is the case of Covance  

Diverging opinions under regarding this element were also seen in regard of the usage of trademarks in the domain name of a reseller.

The most commonly applied opinion says that if the reseller “makes a bona fide oferring of goods and services” he will have a legitimate interest in the domain name. Establishing this bona-fide offering will only be established if a number of requirements can be established such as clearly identifying the relationship with the mark holder, the actual sale of the relevant goods and services, and  selling only the trademarked goods and services, and that the reseller does not corner the market in all domain names. This was first seen in the case of Oki Data Americas v ASD and was most recently seen in the case of Research in Motion Limited v. Domains by Proxy, Inc. and Kafiint. (Yet, again, these requirements were not followed by everyone, in the case of Weber-Stephen Products Co. v. Armitage Hardware 10% sale of other goods did not bar legitimate interest).

The minority opinion in this matter is a reseller cannot use a TM in his domain without the express permission of the TM owner as the right to sell TM products does not create the right to use the TM as a basis for a domain name. The first case to feature this opinion was Motorola, Inc. vs NewGate Internet, Inc and then also mentioned in The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc. and most recently applied in F. Hoffmann-La Roche AG v. Internet Climate where it was stated that “the collateral trademark use necessary to allow resale of and/or customer support in connection with the Complainant’s pharmaceutical products does not confer the right to use the trademark as a domain name“.

A third subject on which opinions diverge is the existence of legitimate interest in the creation of fan sites. It is natural for a fan site to have the name of the name of the product or person it supports and that name is usually a trade mark. Some panelists have found that a fan site does not have legitimate rights in using the trade mark because that will be a misrepresentation for being the owner of the TM and that will also prevent the TM owner from exercising therights to the mark and managing its presence on the internet.

Early sightings of this opinino were seen in the case of Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross and The Estate of Tupac Shakur vs. R.J. Barranco in which the argument for this was nicely summarised:

The position asserted by the Claimant, if accepted, would effectively prohibit any fan club from being established on the Internet if it mentioned in the site name an artist’s name, where part or all of that name related to a registered mark or even perhaps transgressed claims of common law rights in a name. It would also permit persons in the position of this Claimant to unjustly enrich themselves by confiscating the work of fans and admirers in establishing a web site supporting their favorite artists without any opportunity for compensation.”

The second opinion was supported in the case of Dr. Ing. h.c. F. Porsche v. Georg Kohler in which it was stated that “To hold otherwise may also prevent a trademark owner from validly acquiring an identical domain name which it would otherwise be entitled to in accordance with the Policy’s aim of preventing cybersquatting, minimising confusion with established trademarks and helping to assure bona fide trademark owners’ rights”.

I am more in favour of supporting the first opinion as I believe it would hard to start a fan site without having the name of the product you support in the domain name itself. The reality of these fan sites is that their operation costs can be extremely high as a huge amount of time and effort will be required to build the content and a great amount of money will have to be paid for hosting services and bandwidth. It is funny how companies attempt to sue their fans, who are in fact doing them a favour and helping them spread their message even further for free.

The power and effect of a trademark to block others from using the trademark in the context of fansites also goes beyond the scope of protection granted by most trademark laws as trademark is not a monopoly on the use a term, but the right to stop others from using it on identical goods and services and similar goods and services could be lead to the confusion of the source, that fact that another person is making commercial benefit by the mere use of the trademark on an unrelated service (the digital publication of information) does not by itself infringe another persons trademark. (Only a few famous trademarks have the right not to be diluted, but that protection is not for the majority of trademark owners.)

{The section below will be updated soon}

Famous Persons Domain Names

Generally speaking, personal name issues are not covered by the UDRP. The UDRP only covers bad faith cybersquatting in relation to trade marks. WIPO made a report which concluded that the UDRP should be expanded to cover personal name issues because the national laws of the subject matter differ greatly. However, in some cases, example: juliaroberts.com decision, the panel held that the personal name in question qualified as a common law trademark under US law and therefore was covered by the UDRP. A similar approach was used in later cases such as the morganfreeman.com decision. This link to common law trademarks blocked the use of the UDRP for other personal names such as that of Kathleen Kennedy as her poltical fame was insufficient to create a common law trademark which requires commercial use. Though the reasoning is clear, this creates a gap in protection and incosistency for the scope of the UDRP across different jurisidctions as common law trademarks are not present in civil law jurisidctions.

Geographical Names Domain Names

Just like names of famous persons, geographical names are generally not covered by the UDRP, yet in the decision related to the Barcelona.com the UDRP was successfully used to transfer the domain name to a spanish government agency because under Spanish law it was possible for the government agency to acquire a trademark for it, however, other hurders under the UDRP require proving that the respondent had no ligitimate right to use the domain name, which is hard to establish as any business relating to Barcelona might reasonably choose to have the name of the location in its domain name, but the panel decided unreasonably to balance the rights of parties and held in favour of the complainant. However, in the majority of other cases, such as that involving Brisbane.com, it was held that geographical names were not covered by the UDRP and therefore were not to be transfered to the complainant.

Application of Other Laws to the Procedure

The rules of the UDRP permit the panelist to apply the laws of any jurisdiction when making his decision as he sees fit. The application of this rule into the decisions was done in an incosistent manner, for example, in some cases the panel explicity stated that the no jurisidction rules are to be applied to when assessing the case as the domains in question relate to a global matter (example: Shirmax Retail), this statement was made even though both parties are from the same jurisdiction. In some other cases, the panel thought it was appropriate to use laws of a certain jurisidction when both parties are from the same jurisidction (e.g. Madonna Ciccone), and in some other cases, the panel decided to apply principles of the jurisidiction of the respondent (e.g. Harrods Limited). And it does not stop here, in some other cases the panel decided to use the laws of a third jurisidction just because the panel thought it would be helpful to the courts (e.g. Wal-Mart Stores Inc V Walmarket Canada). This unpredictability in the application of other laws greatly impacts all other aspects of the proceeding as the application could be to any part of the UDRP. 

So is there a solution? It is clear that inconsistency is a major problem with the UDRP, this is probably amplified by the fact there is no internal procedure for the challenging a decision by the panel nor there is any appeal system. It is suggested that the introduction of an appeal system into the UDRP will help in building precedent binding on all initial panels and therefor rectifying incosistency issues. 

However, some think that the introduction of an appeal system will diminish the benefits of the UDRP (costs and speed), yet this damange to these benefits could be minimised by restricting the appeal procedure to issues which could affect the development of UDRP and which would be conducted through strict time limits. The costs could be minimised by the introduction of a small fee to all domain name registrations or an appeal fee added to each UDRP case.

The inconsistencies could also be resolved by curing the source of the problem: the UDRP criteria for transferring the domain names. Many terms in the UDRP are not defined. Clarifying the aspects which caused different interpreations (such as “confusingly similar”) will help minimize the opportunities for divergence.

ICANN may also develop a guideline to be used by panelists when interpreting the UDRP. WIPO publishes on its website a number of selected questions for which it provided the answers for on the basis of previous decisions, and though not binding on the panels, the publications by WIPO are regularly cited by the panels and have in fact helped reduce the inconsistency in some of the issues (example, reseller right to use the TM in the domain name most recent case). However, for several questions, WIPO acknowledges the fact that there is more than one opinion and simply provides both view points leaving it up to the panelists to pick the one he likes. The guidelines by ICANN should have definite answers for these issues and should define terms and concepts which proved to be problematice in the UDRP and specify which test are to be used for different elements.

It is widely believed that the UDRP is one of the most successful internet dispute resolution methods ever created and that the problems with it are minor in comparison to the benefit of it. That said, the UDRP is merely an administrative procedure that is not enforceable by any court, so it is not expected to have accurate standards of a judicial system, especially as any part can initiate a court action at any time.

The statement in the last paragraph might be true in theory, but in practice the majority of respondants do not usually have the resouces to litigate after they lose their domain name especially if the registrar resides in another country, that makes the majority of UDRP decisions final.

I think that the decisions of the UDRP are in fact inconsistent to a level that makes it impossible to predict what the out come will be in certain cases. I was just looking at the case of BankSohar.com and the panel held that the registration date was a factor to be taken into consideration in deciding the first element while it was clear in the WIPO publication of selected questions and many previous cases that the date at which the trade mark was registered is irrelevant to the first element and is to be considered when assessing bad faith. That point by itself meant that BankSohar lost its case.

But the fact that the UDRP survived with no changes for the past 10 years, it is very unlikely for it to be updated now, especially as ICANN and WIPO do not acknowledge the existence of the problem or at least make it sound nominal.

I Can Haz UDRP?


(Photo credits: vaXzine)

Many of you are probably aware of cybersquatting, it is an act by which someone registers a domain that includes a trade mark of another person in hope of reselling it at a profit to the trade mark owner or just harming him somehow. One of the obvious solutions to this problem is to take court action against the cybersquatter, but this is not always possible when you do not have enough funds to litigate or if the cybersquatter is a resident of another country. The Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for generic top level domain names (gTLDs), introduced in 1998 a powerful procedure called the Uniform Dispute Resolution Policy (UDRP) which lets a rightful trade mark owner transfer the domain to himself without having to resort to court.

The UDRP may cost as little as $1000 and can be used by trademark owners from anywhere in the world against cybersquatters found in any country as long as the case involves a gTLD such as .COM, .NET, and .ORG. All domain name registration contracts include a clause that allows the domain name regisrar to transfer the domain name to another person if the a decision was made with that effect through the UDRP.

UDRP can be carried out by a number of providers approved by ICANN, the most popular of these is WIPO. You do not need to travel to apply to use the procedure provided by any of these providers and all you have to do is mail then documents they need.

If you have been approached by a cybersquatter, you may wish to use the UDRP instead of succumbing to the demands of the cybersquatter or resorting to litigation as long as the domain in question is a gTLD (e.g. .COM). In order to succeed in under the UDRP you have to establish the following:

  1. The domain name is identical or confusingly similar to a trademark in which you have rights.
  2. The domain name registrant does not have any rights or legitmate interests in respect of the domain name; and
  3. The domain name has been registered and is being used in bad faith.

The UDRP was created to address blatant cases of domain name cybersquatting, so if a domainer simply bought a domain name that includes your trade mark just in hope to sell it back to you at a profit then that is a classical UDRP case, however, the issue might not be as obvious when there are competing rights such as the case where a person genuinely uses a domain to trade under his own business or when that person is using the domain name to criticise the trade mark owner’s business.

If you think you can easily prove the requirements above then you should use the UDRP to stop the cybersquatter and get that domain. Using the UDRP is pretty simple, to use it you first have to select which provider to go to from ICANN’s list of approved providers, the prices of these differ and each of them have some additional rules for the procedure. Once you select the provider you will have to provide a written complaint specifying the reasons why you think the domain name is identical, why you think that the registerant does not have any rights or legitimate interests in respect of the domain name, and then why you think that it is was used in bad faith.

The burden of proof is on you in regard of all the items mentioned above as long as the evidence to establish these is not difficult to retrieve, in that case you can make it clear to the provider that you cannot acquire the evidence you need and just submit all the information you have. When submitting this application, you may decide to have a three member panel instead of the default one member panel to examine to your case. If you make that decision you will have to pay additional costs for the extra panel members, otherwise you will just have to pay for a single panelist.

Once your complaint is made, WIPO or any other provider you choose will contact the domain owner, he will have 20 days to submit a response. If you have not asked for a three member panel, the respondent may ask for it, if he does, he will have to pay for one of the panelists and you will have to pay for two. However, most cases are in fact just examined by a single panelist.

The panel will then look into the submissions and make a decision accordingly, upon reaching a conclusion, the panel may order to have the domain name suspended, transferred to you, or simply refuse the complaint. If the panel thinks that you have made the complaint in bad faith it might make a statement of reverse domain name hijacking (RDNH) which could limit your chances of applying for a UDRP in the future.

If the panel decides in your favor, the domain name registrar will have 10 days to transfer the domain to you (or suspend it depending on what you asked for) EXCEPT if the respondent goes to court within that period, but this is very unlikely because of the high costs associated with it especially when the parties are located in different countries.

The UDRP is one of the most powerful and effective dispute procedures found online because it is fast, cheap, and self-executing as it does not require going to court or any eforncement agency to actually make the transfer because the registrar (and not just the respondend) is bound by his contract with ICANN to enforce the decision.

It is worth noting that, unlike the court litigation, it is not possible to acquire any sort of damages through the UDRP. If this is what you seek, then you will have to go to court.

Many criticise the UDRP for its inconsistent decisions, lack of an appeal system, short time limits which are unfair to respondents, and theits unfounded expansion into areas of personal names and geographical names which were never inteded to be within its scope.

It is worth noting that disputes relating to the .OM ccTLD are expected be governed through a slightly amended UDRP that will only be provided by WIPO. This was mentioned in the public consultation paper concerning the .OM framework issued by the TRA a number of months ago.

Trade Marks – Introduction

 
(Photo credits: Pattista)

Trade marks (spelt trademarks in the US) are the most visible form of intellectual property to regular consumers on daily basis. They are argued to be the oldest form of intellectual property known to man as it was used from the oldest of ages by people to identify the source of goods.

The functions of Trade mark is considered to include:

  1. A method for identifying the source of a good or service.
  2. A method to distinguish the goods of a merchant from those of others.
  3. A guarantee of quality (good and bad quality).
  4. And a branding/advertising medium

Trade marks differ from other intellectual property in that they primarily protect a consumer interested (not to have consumers misled by products using the trade marks of others) as well as the interests of businesses (the right to distinguish one’s goods from those of others). Almost all other intellectual property subjects are concerned about protecting the creative and inventive products of businesses and are not concerned with the interests of consumers. This makes trade mark law the least controversial intellectual property as it has the society benefits to all parties almost adequetly balanced.

Generally speaking, a trade mark is a sign registered by a business in a country to have the exclusive right to use that sign in a specific business type or industry. A trade mark must be registered in each jurisdiction to acquire protection in that specific area. The protection of a trade mark can be renewed forever as long as this trade mark remains distinctive and is used by the business. (Unlike patents which can only last for a maximum of years and unlike copyright which does not require registration but is also protected for a limited time period only).Once someone registers a trade mark, he will be able to stop others from using a similar mark on similar goods or service for which he regsitered the mark as long as he can prove that others will confuse the source of the goods to which the infringing sign was attached. 

Certain powerful trade marks can also be protected against the use of goods and services which are not similar if they can establish that this will dilute their trade mark. Certain jurisdictions also grant trade marks the right not to be tarnished.

Trade mark law is very much related to unfair competition law in many jurisdiction because taking an advantage someone else’s goodwill can be considered as an unfair competition practice. It is also directly related to the law of passing off in common law jurisdictions which grants protection to unregistered marks as well as the goodwill of a business.

I have already made a post about the issue of trade marks and domain names. I will talk in future posts about the technical differences between trade mark law in the US, Japan, and Europe.

Domain Names and Trademarks

There is an ever increasing number of domain name disputes relating to trademask, mostly because of incompatibility of these two systems.

What are Domain Names and Who Regulates Them?

Domain names are friendly shortcuts to web addresses, each website is actually located at an IP address made up of a string of numbers. The domain name system makes it easier to remember website addresses so that we can visit them later. There are two main types of domain names, those that end up with generic Top Level Domains (gTLDs) such as .com, .net, and .org, and those that end up with country code Top Level Domains (ccTLDs) such as .uk, .jp, and .ca.

gTLDs are regulated by an entity called ICANN (the Internet  Corporation for Assigned Names and Numbers). This is a non-profit corporation that has a contract with the Department of Commerce of the USA to regulate gTLDs. It’s supposed to *achieve global representation* of the internet community, but in practice the US government has a strong influence in it. ICANN has the ultimate control over gTLDs, it does not deal with the public directly in regard to domain names, but instead signs up registerars who them sell domain names to the public.

ccTLDs on the other hard are each regualted in a different manner depending on the country that owns the ccTLD, in the UK for example, a non-profit company named Nominet – which again, does not sell domain names directly, but instead signs up registrars who sell them. However, not all ccTLDs are handled the same way, some countries regulate and sell them through the same entity. In Oman, OmanTel used to regulate and sell them, however, the TRA is now responsible for regulating the .OM ccTLD and will soon start accepting registrars to sell domain names to the public.

What are Trademarks and What is Their Problem with Domain Names?

A registered trademark gives the right to its owner to stop people from using the same trademark on their goods. This is a state given right maid in essence to help consumers identify goods made by a certain seller.

A domain name is not a trademark, but it is a sign and a label which can be used as a trademark and its usage can in certain circumstances quailfy as a trademark infringement.

The link between the domain names and trademarks are obvious, but there is a conflict that makes this difficult, and that is the fact that trademarks are not absolute monopolies for the use of the term as the sytem allows different people to register the same trademark for two different business.  For example, the trademakr Vista might be registered by Microsoft for computer equipment and computer software, and registered at the same time by someone else as Vista for selling eye health products. This is legal in most jursdictions around the world, but has some restrictions where the use of a similar sign on an unconnected product might confuse the public to the source, or where the use of a trademark might harm or dilute the reputation or power of the trademark.

The fact that more than one person may be legally allowed to use the same trademark does not work well with domain names because only one person can register the same domain name all over the world. There is only one Vista.com, so who has the right to it?

If two people own the same trademark, usually the first person to register the domain name has the right to use it. However, there are cases when people who do not have the right to the domain name buy it, several of these incidents are described by the term below:

  1. Domain Name Squatting – This happens when someone buys a domain name in bad faith to take advantage of a trademark, either by attempting to sell it to the rightful owner later or to gain profit by advertising or attracting misled constumers to his website.
  2. Domain Name Typo Squatting – This happens when someone buys a domain name that contains a commonly mispelt version of a trademark (For example: Gooogle.com instead of Google) and then uses it in bad faith.
ICANN has a procedure called “Uniform Domain Name Dispute Resolution Policy” (UDRP)  which all of its registrars are forced by contract to submit to in the following case:
  1. A domain name is identical or confusingly similar to a trademark in which a complainant has rights.
  2. the current registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.
If all of these conditions are satisfied then the domain may be transferred to the complainant. This procedure is supposed to be a quicker and cheaper that traditional litigation. Most ccTLD registries follow a very similar procedure to the UDRP.