Categories
domain names trademarks

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.

Categories
domain names trademarks

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.

Categories
domain names trademarks

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.

Categories
design

Oman Accedes to International Design Protection Treaty

WIPO made a press release earlier this month announcing Oman’s accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. This treaty creates an international framework for the automatic registeration of designs in all members of the treaty. 

There are no local news sources regarding this subject, but the accession might have been included in Royal Decree 131/2008 on the amendments of the Industrial Property Law. The text of the decree cannot be found online.

The treaty will come into force in respect of Oman on March 4, 2009.

Categories
trademarks

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.

Categories
defamation

Internet Defamation – Comparison Between British and Omani Law


(Photo credits: Assbach)

Defamation and insults are some of the most controversial issues on the Internet. Most people think that they have an absolute right of freedom of speech to say whatever they want, but the reality is that your freedom of speech is subject to several restrictions, one of which is the right of others not to be defamed or insulted without any justification.

The anonymous nature of the Internet makes it tempting to think that defamation rules do not apply to online speech because of the difficulty to enforcing the law, but as we have seen, that is not the case, and even in Oman, people were prosecuted, fined, and even jailed for defamation related offences.

If you run a blog, a forum, or a website, or if you post comments anywhere on the Internet you have to be aware of the possible consequences of what you write. I will try to explain the differences between the defamation law in the UK and Oman and the difference in liability limits of website owners in both countries.

First of all, defamation in the UK is a civil action while in Oman it is a criminal offence. This makes it worse in Oman because the penalties for it will be criminal penalties, while in the UK it is mostly a matter of payment of financial damages.

In the UK, defamation occurs when a person makes a statement about a person and that statement lowers the opinion of that person in the mind of right thinking members of society. Only living people can be defamed, and a person can defend himself if he can prove (a) that what he said is true, or (b) that what he said was an opinion/comment and not a statement of fact. This is governed by the Defamation Act 1996.

The concept of defamation in Oman is completely different because it is considered a criminal offence. A person will be guilty of an offence if he ‘insults the dignity of any person’ through a public act, speech, shouting, writings, drawings, photography, videography, or the use of any sign. There is no definition in the law of what an ‘insult’ to someone’s dignity means. It is possible for the relatives of an insulted person to complain, even if that person was dead. A defendant may have a defence if he can prove that the other person provocated the defendant or if both parties exchanged insults.

In addition to the basic insult offence, Omani law also creates an special offence for insulting an employee in his professional capacity so that a person commits an offence is he ‘insults an employee through the speech, public acts, or publication while the employee performs his job or on the basis of his job’. �Both forms of insults are�governed by the Criminal Law 7/74.

Both of the Omani and British law are subject to changing moral values as what ‘will constitute a degradation of opinion in the mind of right thinking people’ will vary from time to time as will an insult under the Omani law. However, under British law it is clear that the matter is not subjective to what the defamed person though, but what society thought of the issue, however, under Omani law it is not clear if an insult is a subjective or objective issue. I do not have access to cases or court decisions to identify how this issue is decided in Oman.

Now that you have an idea of what is defamatory or not, you might want to know for how of much of this will you be liable for online. If you are a blogger or a website owner, defamation can occur on you website via one of two methods, the first one is when you post defamatory content on your blog, the second is when you someone posts a defamatory comment (defaming a third party, not necessarily you) as a response to a post you wrote.

If you wrote the post yourself on your own blog or website, you will be held liable for it. It is something you wrote yourself and if that post can be linked to you as an individual then you are liable, under both British and Omani law. To escape liability, you should try to use a defence such as ‘justification’ under British law or ‘provocation’ under Omani law.

However, if somebody else wrote a comment on your blog, then there is a chance that you might be liable for it even if you did not write it yourself. British and Omani laws differ completely in how this treat this liability.

British law generally realises that at many times website owners are genuinely innocent and have no control over content written by other people. They also realise that increasing the risk of liability of website owners can stifle the pace of innovation. For this purpose, the Defamation Act provides a defence for website owners if they can satisfy the following:

  1. he was not the author, editor, or publisher of the statement complained of.
  2. he took reasonable care in relation to its publication.
  3. he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement.

Not all websites will be able to use this defence because only certain websites will be not considered publishers (websites that have no effective control over actions of their visitors). An easy example of the use of this defence would be in the case of a forum moderator, who cannot practicaly monitor each single post made by the members, however, he will only succeed if he shows that he took reasonable care and did not just leave the forum without any moderation. This will obviously depend largely on the facts.

The case in Oman is very different, first of all, there is no general defence for website owners in the Criminal Law, but the Telecommunication Law makes the website owners, managers, and supervisors responsible for any statement published on their website if they incite or agree to publish that if it is contrary to public order and morality (Article 61(4)). This is NOT the same as an insult under the Criminal Law, it is a different criminal offence that does not require a defamed person and has a very wide scope. There are no defences under this section, but the requirement for consent might save a website owner if the event when someone hacks his website and puts a defamatory statement on it. In that case he obviously did not consent to that statement.

This article was clearly introduced to hold website owners liable for the content written by anonymous people regardless of whether or not the web master knew about it or not. It makes sense for a website owner to be liable because he has control over the website, but the law does not provide any defence for innocent web masters and the law does not seem to care about stifling the development of local web content.

A very interesting development happened through the passing of the Electronic Transactions Law in Oman, this law provides websites that fall under the definition of a “Network Agent” with a defence found under Article 14 to protect the Network Agent against any criminal or civil liability arising out of information included in an electronic record if the Network Agent (1) did not know any facts which could indicate the liability of this record and (2) instantly removed this information from all his systems once he knows about the liability arising out of this information.

The definition of an electronic record is very wide as it includes a “contract, record or message”, the definition of a network agent includes any legal or natural person who provides any services related to an electronic transaction, and an ‘electronic transaction’ is any procedure or contract concluded or performed fully or partially through electronic messages’.

The purpose of the Electronic Transactions Law is to provide certainty and protection e-commerce. It is based on a couple of UNCITRAL model laws and was drafted with the help of international consultants who realise the importance of such protection for businesses to operate, unlike the Telecom Law which introduced Article 61(4) explicitly to conclusively hold website owners liable without any thought to the impact of this web culture.

However, the wide scope of the nature of the Electronic Transactions Law means that any website that has a commercial nature can be covered by it. Surely an advertisement is a service related to an electronic transaction. This can make any website monetized by advertisement capable of being considered as a network agent, and from there you can argue that you should be able to use the defences under the Article 14 claiming that you are not the source of content written by other people and you merely provided access to it.

The fact that the Electronic Transactions Law came after the Telecom Law means that in areas of conflict the newer law will apply, so it does not matter that the Telecom Law says something else.

This is relatively a long shot, it has not been tested by the court and I am creatively interpreting the law in attempt to establish a defence. The court might have a completely different opinion on the matter. We will not know how it will be interpreted until somebody actually gets sued.

Categories
domain names

Our Right for Domain Names

Individuals in Oman are allowed to own real property, postal addresses, mobile phones, and emails, but not domain names. There is no justification for this prohobhition.

I wrote an article for the Times of Oman about the right of individuals to register domain names in Oman. You can view the article at the Times of Oman or you can get the PDF version of the article from here.

Categories
e-commerce e-signatures

Electronic Signatures and Authentication


(Photo credits: Viernest)

Doing business on the Internet requires two basic things to actually work: (1) legal legitimacy, and (2) trust in the identity of the other party which you want to deal with. 

It is hard to imagine nowadays anyone questioning the legitimacy of an online transaction on the basis of not having any physical being, but things were not always like this and many people used to argue that you cannot execute a contract online. In some places the courts rules that online transactions were equivalent to any other transaction if the legal fundamentals of it were satisfied (offer, acceptance, consideration, and intention to create legal relationship), however some other places did not. Eventually, all countries had to pass some sort of e-commerce legislation to ensure to everyone that a transaction will not be deemed void for the mere fact that it was conducted online. In Oman, this legitimacy was granted through Chapter 3 of the Electronic Transactions Law which simply says that the offer and acceptance of a contract will be deemed valid even if communicated online.  Chapter 2 of the same law gives digital documents the legitimacy of written document for all legal purposes as long as it is saved in the same manner in which it was created, sent, or received and as long as it can be retrieved back and can be used in a way that identifies its source and date it was sent or received.

Electronics signatures and authentication are related to the second fundamental requirement for e-commerce: identification of individuals electronically. Some laws distinguish between two types of electronic signatures, a basic electronic signature and an advanced electronic signature. A basic electronic signature is any identification method attached to a message to associate it with a certain individual in a distinguishable manner from others. This could be anything from typing your name below your message to scanning a copy of your hardwritten signature and attaching it to your email. Advanced electronic signatures are messages authenticated by a third party through stricted security system. Many legal systems do not make a distiction between these two forms in definition, but obviously in practice it is more logical to rely on an advanced electronic signature, yet a basic signature would not fail as a proof in court for just being so.

The issue of identification and advanced electronic signatures are not used by consuers as signatures per se, but are used to verify the authencity of commercial websites. Whenever you see a ‘lock’ sign in your browser this means that the website owner can be verified through a verification agency. If you click on it you should be able to check at the agency’s website the name and address of the business and when their identification certificate was made and when it will expire. The most famous authentication agency is Verisign. 

Of course, this certificate will not mean anything to you if you do not know or trust the website that actually issues it. This is why many countries regulate the industyr of online authentication and specify specific rules for practicing in this field. However, in places like the UK, this is a self regulated industry and the governmetn does not intervene. In Oman, the ITA is the government body responsible for regulating and licensing authentication agencies. This is illustrated in chapters 5 and 6 of the Electronic Transactions Law (69/2008).

Categories
patents

Invention Patents in Europe


(Photo credits: telethon)

Patents are monopoly rights for a certain period of time given by a state to those who create qualifying inventions in return of their disclosure to the public of the details of their inventions. 

This means that if you make an invention which you would like to sell and at the same time make sure that nobody else copies this invention you made, you will have to apply for a patent. The patent will usually grant you a maximum of 20 years to stop others from copying your invention. After these 20 years your patent will become public domain and anyone will be able to manufacture it without paying you any royalties or licensing fees. 

Patents grant a monopoly right only in the jurisdiction in which the patent was registered in. You will have to register in each country on its own if you wish to execrise your monopoly right in that country. This post will only talk about the patent system in Europe as the law differs from one jurisdiction to the other. I will talk about the US and Japan in later posts. (Oman’s law is very similar to American law, so I will talk about it in that post).

In the field of technology you can get a patent for a product, a manufacturing method, or a method to create a specific product. It is also possible to get a patent in certain circumates for a computer program.

There are currently two methods for getting a patent in Europe, the first is by going to each country on its own and registering for a national patent, the second is by going to the European Patent Office (EPO) and apply for a bundle of patents for all the member countries of the European Patent Convention. It is worth mentioning that this is NOT an EU intiative and it goes beyond the members of the EU. Getting your patent from the EPO is cheaper than going to all the European countries. An EPO patent is not a *super* European Patent, but a bundle of national patents from all the members. This means that once you patent is issued, if a national court decides that your patent is invalid for any reason then you patent will be invalid in that one country by itself and will not affect the validity of the patent in other places. This is pretty messed up, but because of the lack of a higher court of appeal to take care of European Patent, the industy will like to keep the current system as it is less risky than one which has a super European patent.

So what do you have to do to get a European patent from the EPO?  You simply have to fill a patent application and submit it to the EPO. However, for your patent to be granted, your creation must satisfy the requirements of the European Patent Convention (EPC), namely:

  1. It must be an invention.
  2. It must be novel.
  3. It must have required an inventive step to make.
  4. It must be industrially applicable.

We will go through these one by one:

Your creation must be an invention: The EPC does not define an invention but says that a patent may be granted for any invention in all fields of technology. However, explicity exludes inventions such as absolute theories, mathematical methods, aesthetic creations, mental acts, and mere presentation of information. The EPC also excludes inventions that contravene the public order, methods for treating the humn or animal body (methods – not products), and plan or animal varieties.

The requirement for an invention is usually not problematic, except for the fact that one of the exceptions under Art 52(2) is computer programs. The stance of the law in Europe regarding this is not clear, but I personally understand it as follows, if an invention is a pure computer application that has no novel tangible aspect then it will not be patented, however, if a computer program has some tangible aspect that extends beyound the code, then it will be patented. For example, a word processing application does not create by itself have a tangible aspect, but a program that affects the brightness of the screen depending on the time of the day has that tangible aspect. DO NOT CITE ME ON THIS, THIS IS MY PERSONAL OPINION AND I CANNOT BE BOTHERED TO DIG UP THE CASES/DECISIONS THAT SUPPORT MY OPINION AT THIS MOMENT.

The second requirement for the patent is to be novel. This is a quantitative absolute test that requires the patent to be a new. Art 54 of the EPC says that an invention is considered new if it does not form part of the state of the art.  This simply means that your invention is not like anything we have seen before the date the priority date (first filing date). This is an important because it requires the inventor NOT to disclose the functional details of his invention to the public before he files his patent application, if the information is already in the public, then the patent application will fail.

The novel will not be satisfied if a single disclosure in the relevant industry field (the fact that people from an irrelvent industyr know about it does not invalidate it) has a clear and unmistakable disclosure (the fact that it had to be *figured* out does not invalidate it) his made available  (it will be invalidated by making it available, no need to actually be seen or read) to a skilled a person (if the only person who heard or saw it did not understand what you were talking about then that will not invalidate it). 

The EPC provides an exception when the information was disclosed through an act of breach of confidence, or if the information was disclosed in an official international exhibition, if any of these two happen, the inveotor has six months from that date to make his application for that action not to invalidate his patent.

The requirement for an inventive step: This is a qualitative test. I think of it as the “It must be good enough to be protected” test. The patent will only be granted for inventiosn which are not obvious to a person skilled in the specific industry. If the invention is new, but it was an obvious progression from existing technology then it will not be protected.

Deciding whether an invention involved an inventive step requires the analysis of this step at the priority date, this is problematic because the patent examiner usaully looks at a patent months or even years after the patent was actually filed. So he must disregard all technological advancements that took place throughout that time and decide where there was an inventive step at the priority date. It is usually very easy to say in hindsight that any invention was obvious, so the EPO attempts to use a test called the ‘Problem and Solution Test”, which tries to envision the problem the invention tries to solve and see if this solution has an inventive step.

The problem and solution test consists of the following:

  1.  Indetifying the closest prior art.
  2. Determining the objective technical problem (the technical problem which the invention attempts to solve).
  3. examining whether or not the claimed solution to the problem is obvious for a skilled person in view of the state of the art.
An examiner will also look at secondary considerations IF he is not sure about the answer to the question 3 of the problem and solution test. These secondary considerations include a ‘long felt need’, ‘commercial success’, and ‘unexpected technical effect’. Secondary considerations will not rescue an invention that is obvious, but will be useful in close cases and those in doubt.

The invention must be industrially applicable: This is a requirement that is never unsatisfied because industry is defined as any industry (including agriculture – which is apparently not considered as an industry in France). But anyway, the requirement will only fail for inventions which are impossible to make.

Categories
domain names trademarks

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.