VYTAUTO DIDŽIOJO UNIVERSITETAS
TEIS öS FAKULTETAS
Rūta Sutkut ÷
IS A TRADEMARK HOLDER ENTITLED TO THE EXCLUSIVE INTERNET DOMAIN RIGHTS TO DOMAINS OF HIS OR HER TRADEMARK OR SIMILAR?
Magistro baigiamasis darbas
Teis ÷s vientisųjų studij ų programa, valstybinis kodas 60101S103
Vadovas (-÷) prof. Charles Szymanski ______(Moksl. laipsnis, vardas, pavard ÷) (Parašas) (Data)
Apginta prof. Julija Kiršien ÷ (Fakulteto dekanas) (Parašas) (Data)
Kaunas, 2011
TABLE OF CONTENTS
Abstract in Lithuanian ...... 2 Abstract ...... 3 Introduction ...... 6 1. The internet and different level of domain names ...... 9 1.1. The internet and domain names ...... 9 1.2. Different level of domains ...... 10 1.3. Domain name registration authorities and procedures ...... 12 1.3.1. Evaluating the availability of a domain name ...... 12 1.3.2. NSI and registration procedures ...... 13 1.3.3. Eurid and registration procedures ...... 14 1.3.4. Domain name registration procedure in Lithuania ...... 14 2. Domain name disputes ...... 16 2.1. Cyber squatters ...... 17 2.2. Cyber parasites ...... 18 2.3. Cyber twins ...... 18 2.4. Reverse domain hijacking ...... 19 3. Domain name and trademark rights ...... 21 4. Litigation over trademark infringement ...... 26 5. Alternative Dispute Resolution ...... 36 Conclusions and suggestions ...... 41 Bibliography...... 44
1 ABSTRACT IN LITHUANIAN
AR PREKI Ų ŽENKLO SAVININKAS ĮGYJA IŠIMTINES TEISES Į DOMEN Ą TAPA ČIU AR PANAŠIU PAVADINIMU? Santrauka Atsiradus internetui domen ų vardai buvo sukurti tam, kad palengvint ų vartotojams naudojim ąsi internetu, kadangi atsiminti įvairias skai čių kombinacijas yra sud ÷tinga. Kadangi komercin ÷ veikla ple čiasi internetin ÷je erdv ÷je, tod ÷l ir domen ų paklausa auga, ir kiekvienas tur ÷damas prek ÷s ženklą yra suinteresuotas įsigyti domen ą tapa čiu ar panašiu pavadinimu. Ta čiau, domen ų vardai yra unikal ūs ir tik vienas domeno vardas gali egzistuoti internetin ÷je erdv ÷je, o tapatus prek ÷s ženklas gali egzistuoti keliose valstyb ÷se ar skirtingom preki ų ar paslaug ų kategorijom. Tod ÷l domen ų ir preki ų ženkl ų gin čų vis daug ÷ja. Pagrindinis darbo tikslas yra išsiaiškinti ar prekių ženklo savininkas įgyja išimtines teises į domen ą tapa čiu ar panašiu pavadinimu. Darbe iškeliama hipotez ÷, kad prek ÷s ženklo savininkas ne įgyja išimtini ų teisi ų į domen ą tapa čiu ar panašiu pavadinimu. Siekiant atsakyti į užduot ą klausim ą yra išskiriamos pagrindin ÷s preki ų ženkl ų teis ÷s bei analizuojami pagrindiniai preki ų ženkl ų ir domen ų teisi ų skirtumai. Taip pat didelis d ÷mesys skiriamas domen ų ir prek ÷s ženkl ų gin čų neteisminiam nagrin ÷jimui tarptautiniu mastu. Darbo analiz ÷ parod ÷, kad prek ÷s ženklo savininkas turi išimtin ę teis ę uždrausti tretiesiems asmenims be jo sutikimo komercin ÷je veikloje naudoti bet kok į žymen į, kuris yra tapatus prek ÷s ženklui tapa čioms prek ÷ms ir (ar) paslaugoms; ar klaidinamai į j į panašus ir d ÷l to yra galimyb ÷ suklaidinti visuomen ę; ar klaidinamai panašus į j į, jeigu ženklas turi reputacij ą ir jeigu d ÷l neteis ÷to tokio žymens vartojimo įgyjamas nes ąžiningas pranašumas arba pažeidžiamas to ženklo skiriamasis požymis, arba pakenkiama jo reputacijai. Ta čiau ši įstatymais suteikta teis ÷ n ÷ra absoliuti, kadangi sprendžiant domen ų ir preki ų ženkl ų gin čus vertinama daugelis faktori ų, į kuriuos b ūtina atsižvelgti: ar domenas yra tapatus arba klaidinamai panašus į prek ÷s ženkl ą; kad atsakovas neturi teisi ų ar teis ÷tų interes ų į t ą domen ą ir yra užregistruotas su blogais tikslais. Taigi jeigu prek ÷s ženklo savininkas negal ÷s įrodyti vis ų įvardint ų veiksni ų jis netur ÷s joki ų teisi ų į tam tikr ą domen ą.
2 ABSTRACT
IS A TRADEMARK HOLDER ENTITLED TO THE EXCLUSIVE INTERNET DOMAIN RIGHTS TO DOMAINS OF HIS OR HER TRADEMARK OR SIMILAR?
Domain names are the gateways through which Internet users pass, and as such they have rapidly become valuable for companies. Domain name consists of a series of numbers but since it is difficult for a human being to remember long list of numbers so the domain name system uses letters instead of numbers. Since trademark names have become powerful tool in commerce, every legal entity or individual seeks to have an identical or similar to its trademark domain name. Unfortunately, coexistence between trade- marks and domain names has given rise to many conflicts. Laws involving trademarks are territorial in nature, while domain names have a worldwide presence. An entity attempting to register a domain name has no guarantee that after registering it a trademark holder from any country in the world will not come forward with a domain name dispute suit and force it’s registrant to give up the domain name. Unless the registrant has registered the word used as a domain name and as a trademark in every country of the world, there is no guarantee that the domain name will not be taken from the registrant in a suit brought in a national court or in an international arbitration forums such as the World Intellectual Property Organization, Czech Arbitration Court or others. The domain registry authorities’ don’t check if a new domain doesn’t infringe trademark rights. All of their procedures are carried out on the principle „first come, first served”. Based on the ongoing domain name disputes they tend to fall into four categories: Cyber Squatters; Cyber Parasites; Cyber Twins; and Reverse Domain Name Hijacking. Although all of these disputes have the same roots, they all have its specifics and it is very important to distinguish it in order to prevent domain name disputes or to solve the case and a decision may vary depending on the circumstances of each case. The difficulty of balancing the rights of trademark owners with domain name owners has caused extreme tension between competing interests and proven a major challenge for any countries legal establishment.
3 Trademark rights based on use alone are referred to in the United States as “common law rights,” and are usually limited to the geographical area in which the mark is truly used and the nature of the use. These rights can expand for example by obtaining a federal trademark registration expands these rights. It provides nationwide protection and it also creates a rebuttable presumption of the ownership, legitimacy and exclusive right of use of the mark; and after “incontestable” status is acquired under the Trademark Act, provides a definite presumption of the exclusive right to use of the mark subject to certain statutory defenses. Trademark registration is important because previously registered trademark owner may generally prohibit the use of confusingly similar or identical to those subsequently brought into service, or registered trademarks in United States, Lithuania or European Union. However, it should be noted as an unregistered trademark owner in some cases also may have the same rights as a registered trade mark owner against others. The trademark owner rights are usually defended more than domain name rights in many countries. The aim of this work to find out whether a trademark holder is entitled to the exclusive internet domain rights to domains of his or her trademark or similar. It is very important that the “monopoly” of trademark should be in balance with other constitutional values. For example article 46 of the Constitution of Republic of Lithuania determines that: the law shall prohibit monopolization of production and the market and shall protect freedom of fair competition. Unreasonably granted the monopoly rights to trademarks would infringe fair competition. A registered trademark owner has an exclusive right to prevent all third persons from using in commerce any sign in the case where, because of its identity with, or similarity to, the registered trademark for the identical or similar goods and/or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the registered trade mark. However this rule doesn’t always apply in every dispute since there are many more circumstances like: legitimate interest, bad faith and many others that should be taken in consideration when deciding who has the right to a domain name. Also trademarks rights monopoly is constrained by its validity terms which mean that the rights of the trademark holder are valid only in the case if the trademark name is being used. Based on the analysis made in this paper by analyzing American, Lithuanian and European Union laws, case law it can be stated that every domain name dispute situation is different and not always the trademark holder is entitled to the exclusive internet domain rights to domains of his or her
4 trademark or similar. By registering a domain name as a trademark name might give the owner more rights against any other third party but no way it guarantees any exclusive rights to a domain name. Many nations of Europe have had cases in their national courts concerning disputes between trademarks and domain names and most of the decisions in European national courts, like the decisions in courts all over the world, have favored the trademark holder over the domain name registrant. Notwithstanding aspirations for a unification of domain name dispute resolution policies internationally, no such unification has yet been achieved. Domain name and trademark disputes can be solved in national courts or by using alternative dispute resolution procedure (hereinafter ADR). Considering that ADR is a cheaper and faster procedure there should be and ADR institution available in every country. Unfortunately not every country in the world has this institution, like for example there is not one in Lithuania at the moment. To avoid so many domain name and trademark owners’ disputes there could be a synchronization of the international body administering the generic top-level domains, like ICANN, and an international agreement between countries to recognize each other's trademarks. There could also be a database of all the trademarks held internationally under the Madrid Agreement as well as all of the trademarks registered nationally within each country of the system so that one could check the trademarks in existence in the United States as well as the countries of the European Union and other parties. By creating such a database a registrar could conduct a search of the trademarks registered within the proposed system. If the requested second level domain name conflicted with a trademark found within the system, the domain name registrant would be prohibited from registering the domain name. In addition, the registrar could notify the trademark holder in each case that its trademark had become the subject of a domain name registration and the trademark holder would be given the chance to register the domain name first. The proposal made only constitutes the preliminary steps needed in order to construct a more efficient, more uniform system to deal with domain name disputes. It is clear that something has to be done in order to provide an easier to use system in which an entity could register a trademark and obtain an internationally legitimate domain name.
5 INTRODUCTION
We all know that today, virtually anything can be purchased online. “As the number of individuals with Internet access multiplies, the internet becomes increasingly attractive for companies wishing to exploit these potential customers.” 1 “The phenomenal growth of the Internet as a commercial medium has brought about a new set of concerns in the realm of intellectual property”. 2 Internet domain names have created a wide increase in trademark conflicts. “Conflict arises because although it may be possible for 100 million Mr. Smiths to peacefully co-exist in the world, there can be only one [www.mrsmith.com].” 3 “The debate arises, as to what takes precedence, if anything: a trademark holder's right to a domain name, or the registration of a domain name for the public good by a non-trademark owner.” 4 For example, although many people may think that United.com would correspond to United Airlines, this domain name belongs to an Internet messaging company who registered it before United Airlines. 5 Therefore, when multiple unrelated companies have the same or similar names (such as for example blue elephant and shop blue elephant), there is no good way to resolve the question of who gets the domain name www.blueelephant.com or if one registers www.ablueelephant.com will it infringe the others rights? Rather than conceding to pay for a registered domain name some companies believe to be theirs rightfully, and prefer a legal fight to acquire “their” domain name. They allege that the registrant is a cyber squatter who has no legitimate right to the name. However, the greatest difficulty arises in trying to find equity in a domain name dispute where both parties can make legitimate claims on the same domain name. 6 So many trademark holders end up with the same questions: what can you do; what rights do you have; or in what institutions do you defend your rights? So “you thought that WWW stood for World Wide Web, but it feels more like the Wild, Wild West. Friend(s)... Welcome to Cyberspace!” 7
1 Adam Chase, “A Primer on Recent Domain Name Disputes”, Virginia Journal of Law and Technology Association , 3 Va. J.L. & Tech. 3 (Spring 1998). 2 Kenneth Sutherlin Dueker, “Trademark law lost in cyberspace: Trademark protection for internet addresses”, Harvard Journal of Law & Technology, 9 Harv. J. Law & Tec 483, (Summer 1996). 3 Dana L. Hanaman, “The domain name system and trademark law, globally speaking: arbitration for increasing internet competition”, Tulane Journal of Technology and Intellectual Property (Spring 2000). 4 Ibid. 5 Ibid. 6 Ibid. 7 Nilanjana Chatterjee, “Arbitration Proceedings under ICANN's Uniform Domain Name Dispute Resolution Policy — Myth or Reality?”, Vindobona Journal of International Commercial Law & Arbitration , 10 VJ 67 (2006).
6 The purpose of the work The purpose of this work is to examine the problems arising in the field of domain names and trademarks and to find out is a trademark holder entitled to the exclusive internet domain rights to domains of his or her trademark or similar, and to offer possible solutions to these problems. Despite the fact that the number of trademarks and the domain disputes is constantly increasing some countries have not established any specific regulation and procedures in this respect. The paper will analyze possibilities of protecting trademarks owners’ rights in courts in various countries and propose solutions of the issue. The objects of the work The object of this work is comprised of the following objectives relating to the domain names and trademarks: 1) to define the internet and essential principles of different level of domain names and it’s registration procedures; 2) to analyze different types of domain name disputes and to identify potential problems with trademark interests in domain names across domains; 3) to outline the differences between domain name and trademark rights; 4) to define and compare legal acts over trademark infringement in regards to domain names in Lithuania, European Union and United States; 5) to accent the necessity to protect trademark rights on the international level; 6) to outline the different alternative dispute resolution institutions and its advantages; 7) to produce the conclusion is a trademark holder entitled to the exclusive internet domain rights to domains of his or her trademark or similar and also to propose possible legal and technological solutions to these problems. Accordingly, this work aims to provide a general, all-encompassing analysis of legal protection of trademark rights in regards to domain names. The object of this work is comprised of particular questions which arise in this field and which have been selected taking into account their novelty and importance. The reason for deciding to analyze these particular questions in a single work was the fact that they are inter-related and based on the same general principles governing the protection of trademarks. The hypothesis Every domain name dispute situation is different and not always a trademark holder is entitled to the exclusive internet domain rights to domains of his or her trademark or similar.
7 The novelty, actuality and originality of the work This work provides a comprehensive analysis of the problems arising in the field of protection of trademark right in domain name disputes in Lithuania, EU and United States. However, it must be noted that certain aspects of trademark rights in registering domain names have been addressed in the previous works by the graduates of Vytautas Magnus University. From such works the 2007 paper of Andrulis Vytautas: „Ar preki ų ženklo domeno registracija telekomunikacij ų klasei, pagal tarptautin ę preki ų ženkl ų klasifikacij ą, suteikia teisin ę apsaug ą nuo tapa čių ar klaidinamai panaši ų domen ų?“ This paper inter alia examined weather trademark domain registration in accordance with international trademark classification for the class of telecommunication qualifies juridical protection from identical or confusingly similar internet domains. These issues fall into the scope of the current work, as well. However the paper concentrated only on one of the types of domain name disputes which were cyber parasites. Legal aspect of trademarks and domain names and its problematic aspects are comprehensively examined in foreign doctrine, and not only from legal viewpoint, but also from an economic perspective. The current work gives a lot of attention to such legal doctrine. Nevertheless, it is new and original also in respect of the foreign legal literature, due to the following reasons. The analysis of protection of trademarks provided in the foreign legal doctrine is based on the principles specific to the law of the relevant countries. However, the review of national laws in the field of protection of trademarks rights to domain names has revealed that apart from the harmonized areas of law, this field has specific features in each country. The methodology The object of the current work was examined through the use of teleological, systematic, comparative, analysis and interpretative methods. The method of analysis is mostly applied in examining the case-law. Interpretative method helps in understanding about past and present domain name disputes. Teleological, systematic and comparative methods were used to analyze the legal doctrine and court practice and draw conclusions regarding various problems in the area of protection of trademarks and domain names and possible solutions to them. All the translations of the work are made by the author.
8 1. THE INTERNET AND DIFFERENT LEVEL OF DOMAIN NAMES
1.1. The internet and domain names Any analysis of the rights in cyberspace would be limited without a threshold understanding of what cyberspace is. Therefore, a short discussion of the Internet's origins and its current state of development follows. 8 The Internet as it exists today is the product of work conducted by the United States Department of Defense's Advanced Research Projects Agency (hereinafter “DARPA”) in the 1960s. The goal of that program, called “ARPANET,” was to develop a network through which the military could conduct communications through redundant channels, even if parts of the network should become damaged during a war. 9 “The ARPANET, though no longer in existence, served as a model for civilian networks that eventually joined to form the worldwide network that is the Internet.” 10 A domain name is a unique address that can be used on the Internet. It’s what you see in the address bar after the “www.” in your web browser and it’s what comes after the @ sign in an email address. 11 The Internet is not a single, massive entity; an accurate description would be a “network of networks.” Individuals and businesses can conduct commerce over the Internet through electronic mail as well as through the World Wide Web (hereinafter “WWW”). WWW refers to the group of computers that collectively hosts this system, through which commercial activity can take place. The Internet, however, is extremely vast, and means of navigation is necessary. 12 The domain name system is a system designed to make the Internet accessible to its users. The main way for computers to find one another is through a series of numbers, with each number (called an “IP address”) correlating to a different device. However it is difficult for the user to remember long lists of numbers so the domain name system (hereinafter DNS) uses letters rather than numbers, and then links a precise series of letters with a precise series of numbers. 13 Each site on the Internet has an “Internet Protocol” (hereinafter “IP”) address that allows transmission of data bundles between computers on the Internet. An IP address consists of a string of numbers. Each number is between 0 and 255, and the numbers are separated by periods. For example, the numeric string “193.219.38.111” identifies the Vytautas Magnus University intranet page. Since, these random strings of numbers are
8 Kevin Eng, “Breaking through the looking glass: an analysis of trademark rights in domain names across top level domains”, Boston University Journal of Science and Technology Law , 6 B. U. J. Sci. & Tech. L. 163 (June 1, 2000). 9 Ibid. 10 Ibid. 11 What is a domain name ; < http://chrisesblog.com/what-is-a-domain-name/ > [site visited on 12 15 th , 2010]. 12 See note 8, Kevin Eng. 13 What Does ICANN Do?;
1.2. Different level of domains Domain names are divided into hierarchies. A specific domain name can be divided into a top- level domain (hereinafter TLD); a second-level domain, and a sub-domain. Domain names usually consist of two parts. For example, in ” eurid.eu” the “.eu” represents what is known as the top level domain (hereinafter TLD) and “eurid” represents the second level domain and is the actual name. The same name, which can be up to 63 characters long, can be used
14 See note 8, Kevin Eng. 15 Ibid. 16 Ibid. 17 Ibid. 18 Ibid. 10 with different TLDs, such as .com, .org and .net. Sub-domains are the third level domains that are used to organize your web site content. They are just like folders under your root directory. But they will have a special URL to access. http://www.yoursite.com is the regular URL without a sub-domain. http://products.yoursite.com is an URL with sub-domain “products”. Here the: .com is the first level domain yoursite is the second level domain products is the third level domain. 19 There are numerous TLDs in cyberspace, generally of two different species. One of those species is the country code TLD (hereinafter ccTLD), the territorial domain of a nation, which is comprised of a two-letter abbreviation. 20 There are over 200 national TLDs in existence, such as .lt for Lithuania .fr for France and .de for Germany and etc. The maintenance and allocation of second level domain names that have a ccTLD is conducted by the governments of each country or by private entities authorized by the government of the country. The Lithuanian ccTLD indicator, for example, is “.lt”. Information Technology Development Institute at Kaunas University of Technology is an official Administrator of the .lt top level domain. The U.S. Domain Registry at the Information Sciences Institute of the University of Southern California maintains the “.us” ccTLD. “The second type of domain is the global or generic TLD (hereinafter “gTLD”). Among these are the “.edu” and “.org” domains, as well as the well-known and highly coveted “.com” TLD, which is intended for commercial use.” 21 Network Solutions, Inc. maintains each TLD. Network Solutions, Inc. (hereinafter NSI) is the Network Information Centre (hereinafter NIC) that has traditionally had sole worldwide control of the “.com”, “.net”, “.edu”, and “.org” domains. NSI plays a significant role in the continuing development of trademark disputes in domain names because of the prominence its domains have gained in the eyes of businesses. 22 EURid, the European Registry of Internet Domain Names, manages the .eu top-level Internet domain. Applications for “.eu” domain names may only be submitted by accredited registrars in the order received. EURid will then register the first application for a particular domain name received, subject to validation of the prior rights claimed. This means that is highly relevant for brand owners to submit their application to registrars as soon as possible. 23
19 What-is-a-subdomain-how-to-create-a-subdomain ; < http://www.webmasters-central.com/article-blog/webdesign/what-is- a-subdomain-how-to-create-a-subdomain/ > [site visited on 12 07 th , 2010]. 20 See note 8, Kevin Eng. 21 Ibid. 22 Ibid. 23 Eleftheriou, Demetrios et. al., “Protection and E-Commerce in the United States and the European Union”, 40 Int'l Law. 393 (2006). 11 The Internet Corporation for Assigned Names and Numbers (“ICANN”), is responsible for the upholding and administration of the gTLD directories. 24 The system by which an IP address and corresponding alphanumeric name are acquired by an entity that wants to use a particular domain name is called (DNS) registration. The extant domain names are catalogued in 13 root servers throughout the world under what is called the “root server system.” The “root server system” is a set of thirteen file servers, which together contain authoritative databases listing all TLDs. The main root server is maintained at NSI in Herndon, Virginia. “The other 12 root servers daily replicate the contents of the main root server so as to keep a continually updated collection of all the registered domain names.” 25 It is very important that there would be only one authority responsible for the main root server since otherwise it could result consumer confusion, the risk of increased trademark infringement, cyber squatting, and cyber piracy. 26 The Internet Corporation for Assigned Names and Numbers ("ICANN") is to coordinate, at the overall level, the global Internet's systems of unique identifiers, and in particular to ensure the stable and secure operation of the Internet's unique identifier systems. 27
1.3. Domain name registration authorities and procedures 1.3.1. Evaluating the availability of a domain name In order to find out if a particular top level domain name (.museum, .name, .net, .org, .pro, and .travel and etc.) is available, a person or company should check the availability of a potential domain name by going to the http://www.internic.net/whois.html site and conducting a “whois” search. In the Shared Registration System model, registrars are responsible for maintaining Whois domain name contact information. This search helps to find out whether any other party has previously been issued a particular domain name. 28 In addition, commercial search firms can provide this information. For example if anyone wants to register a ccTLD in Lithuania they must check the availability through the ICANN-Accredited
24 Katherine Meyers, ”Domain Name Dispute Resolution in U.S. Courts: Should ICANN Be Given Deference?”, 43 B.C. L. REV. 1177 (2002). 25 Rodney A. Myer, “Domains without Borders: Reconciling Domain Name Dispute Resolution Policies and Trademark Rights between the United States and the Nations of the European Union”, 20 Penn St. Int'l L. Rev. 415 (Winter 2002). 26 See note 3, Dana L. Hanaman. 27 ICANN's mission ; < http://www.icann.org/en/about/ > [site visited on 12 20 th , 2010]. 28 William A. Tanenbaum, “Rights and remedies for three common trademark-domain name disputes: (1) domain name vs. Trademark, (2) shared trademarks and (3) domain name hijacking”, Pat 281 Practising Law Institute Patents, Copyrights, Trademarks, and Literary Property Course Handbook Series PLI Order No. G0-00A2 (January, 2000). 12 Registrars. Unlike country code top-level domain names, which are issued by authorities in each country, generic top-level domains are issued by Registrars, which are accredited by ICANN. 29
1.3.2. NSI and registration procedures The main rule followed by NSI is that domain names are issued on a first-come, first-served basis. NSI does not follow the procedure of the U.S. Patent and Trademark Office (“PTO”) and examine a proposed domain name to determine if its use will infringe the trademark or other rights of any third party. Nor does it determine whether the applicant has the right to use the domain name. In registering domain names, NSI's objective is to ensure that two companies do not use the same domain name. NSI is only responsible for the registration of domain names on the Internet. NSI doesn’t have the legal obligation to check domain names to determine if the use of a domain name by an applicant may infringe upon the right(s) of a third party. 30 Nonetheless, because of increasing number of domain name and trademark disputes, NSI has adopted a policy to prevent dishonest parties from registering domain names for the purpose of holding them ransom and selling them to trademark owners or other users. That policy requires domain name applicants to represent to NSI in their domain name applications that: (a) Applicant's statements in the application are true and Applicant has the right to use the Domain Name as requested in the Application; (b) Applicant has a bona fide intention to use the Domain Name on a regular basis on the Internet; (c) The use or registration of the Domain Name by Applicant does not interfere with or infringe the right of any third party in any jurisdiction with respect to trademark, service mark, tradename, company name or any other intellectual property right; (d) Applicant is not seeking to use the Domain Name for any unlawful purpose, including, without limitation, tortuous interference with contract or prospective business advantage, unfair competition, injuring the reputation of another, or for the purpose of confusing or misleading a person, whether natural or incorporated. 31 NSI requires a domain name applicant to indemnify NSI against damages and attorneys' fees incurred by NSI in any civil court action related to the use of the domain name and to acknowledge that
29 Ibid. 30 Nsi Domain Dispute Resolution Policy Statement ; < http://www.lectlaw.com/files/inp08.htm > [site visited on 12 27 th , 2010]. 31 Ibid. 13 NSI has the right to revoke the domain name registration number if NSI is ordered to do so by a court of competent jurisdiction. 32
1.3.3. Eurid and registration procedures The similar procedure exist registering .eu domain names. Any individual or organization residing within the European Union is eligible for a .eu name. One can register a .eu domain name through an accredited .eu registrar. The same rule “first come – first served” is applied with .eu domain names and all .eu domain names are available on a first-come, first-served basis. 33 There are many names available but sometimes a name is unavailable because: • it breaks the rules for .eu domain names because of the technical limitations (such as the alphabetical characters must be a to z); • it has been blocked or reserved by the European institutions, EU Member States, EU Candidate, Members of the European Economic Area. 34 Domain name holders have the right to trade, transfer or delete their .eu domain names. They are not permitted to use their .eu names for any unlawful purpose or in any way that: • violates third-party rights; • violates any applicable laws or regulations; • discriminates on the basis of race, language, sex, religion or political views. 35
1.3.4. Domain name registration procedure in Lithuania There are four accredited .eu registrars in Lithuania: INTERDATA, ltd, JSC "Lanteka", JSC "Interneto vizija", Information Technology Development Institute at Kaunas University of Technology (hereinafter KTU ITPI) but only KTU ITPI is accredited ICANN registrar. 36 KTU ITPI is an official Administrator of the .lt top-level domain hereby performing the management functions of the .lt top-level domain. As the coordination of legal regulation and self-regulation by the competence is essential with regard to Internet, the principles, requirements and provisions for the creation, suspension, extension, transfer, cancellation and change of the domain as well as other related procedures are specified in the
32 Ibid. 33 eu.domain ; < http://www.eurid.eu/fr/eu-domain-names > [site visited on 12 20 th , 2010]. 34 Ibid. 35 Ibid. 36 Registrar list ; < http://www.eurid.eu/en/eu-domain-names/registrar-list > [site visited on 12 20 th , 2010]. 14 Procedural Regulation for the .lt top-level domain (hereinafter Regulation). The legal relationships formed using the domains, first of all in the field of information society services, are regulated by applicable law. Unfortunately, there is a limited amount of information about domain name registering rules on the web pages of Lithuanian accredited registrars’. Only KTU ITPI web page displays more information about rules and regulations needed to know when registering the domain name. The procedures are carried out following the principles hereto: 1. the principle „first come, first served”. Date and time of receipt of complete electronic application by the application processing system used by the administrator is the only reference point for setting the preference for the use of a particular label in the name of the domain; 2. the principle of the uniqueness of names. For the assurance of the integrity of Whois database the names of the existing domains cannot repeat; and etc. 3. the principle of non-discrimination. The possibility to create a domain is not related to the number of the domains held by the applicant, its legal position, citizenship, place of residence or other personal attributes, and the same rules are applied for all applications; 4. the principle of impartiality. The administrator does not have any personal interest concerning the assignment of particular names to one or another person, therefore it is not a party to a dispute solving the issue on the rights to the labels used for this. 37 So overall, neither of the domain registry authorities’ check if a new domain doesn’t infringe trademark rights. All of their procedures are carried out on the principle „first come, first served”. Domains’ database is not connected with trademark registry database therefore it is impossible to check if a domain name infringes a registered trademark rights and definitely not a chance to check if a domain name infringes a unregistered trademark rights. So regrettably the whole domain name registration procedure creates more and more disputes which rise from trademarks. Domain data databases are not connected with any trademark registry database therefore, neither of the domain registry authorities’ check if a new domain infringes on trademark rights. All of their procedures are carried out on the principle of „first come, first served”. Currently disputes which arise from trademarks and domain name registration continue to increase.
37 KTU ITPI .LT domeno proced ūrinis reglamentas (2007 03 13). 15 2. DOMAIN NAME DISPUTES
No one can argue that domain names are easy to remember and it is “precisely for this reason that they have assumed a key role in e-commerce. Thus, domain names have assumed much the same role in virtual space as trademarks in real space. These factors have fuelled the drive for domain names which has resulted in the consequential disputes.” 38 It’s understandable that every business wants to register their trade names and trademarks as domain names to make it easier for consumers to find them on the Internet. However, as it has been mentioned before domain names are assigned on a first-come, first-serve basis. Therefore it is very important to draw attention that contrary to trademark law, where multiple parties may use the same mark for different classes of goods or services, in the internet only one individual or entity can own a specific name of a domain name, such as “nike.com.” “This poses a tremendous problem for businesses all over the world scrambling to acquire a particular domain name that the public associates with their business and to extract those domain names away from people who first registered them.” 39 Looking at the resale of domains it seems like a usual business. Resale of goods is not prohibited so why should the resale of domain names prohibited? The problem is not that someone is trying to do a business but that domain name dealer looks for a wealthy company – a victim and then asks for money – for a buyout – so that is definitely not a legal business but a money extortion which is definitely under the law. For an internet domain name dealer there are four uses to which the names can be used: • to sell it to the enterprise whose name or trademark has been used, which may pay a high price to avoid the inconvenience of there being a domain name which is not under its contro; • to sell it to a third party unconnected with the name, which may sell it to the company whose name is being used, or else use it for purposes of deception; • to sell it to someone with a distinct interest of his own in the name, for example a solicitor;
38 See note 7, Nilanjana Chatterjee. 39 K.J. Greene, “Abusive trademark litigation and the incredible shrinking confusion doctrine—trademark abuse in the context of entertainment media and cyberspace”, Harvard Journal of Law and Public Policy , 27 Harv. J.L. & Pub. (Spring, 2004). 16 • it may be retained by the dealer unused and unsold, in which case it serves only to block the use of that name as a registered domain name by others, including those whose name or trade mark it comprises. 40 Based on the ongoing domain name disputes they tend to fall into four categories: Cyber Squatters; Cyber Parasites; Cyber Twins; and Reverse Domain Name Hijacking. Although all of these disputes have the same roots, they all have its specifics and it is very important to distinguish it in order to look for the best way to prevent domain name disputes, therefore I will shortly analyze it.
2.1. Cyber squatters Cyber squatting occurs when a party either registers a domain name that is the trademark of another with the bad faith intention of profiting from the mark or registers a domain name that is identical or confusingly similar to a distinctive or famous trademark. This is also known as “domain name hijacking,” and “domain name arbitrage” and is often done in an attempt to force the trademark owner to buy the domain name. “Sometimes, parties register names expecting to auction them off to the highest bidder. This practice has led to the emergence of ‘domain name brokers.’ Yet others squatters indulge in insatiable activities, eating up all names that are even remotely related to their business to pre-empt other squatters.” 41 The domain name resale business started in USA, its courts and Congress understood that there should be laws that control this conduct. At the beginning the cases involving Internet domain name infringement were adjudicated under the Federal Trademark Dilution Act, but this wasn’t very effective against cyber squatters. Then later on the “Congress of USA enacted the Anti-Cyber squatting Consumer Protection Act (“ACPA”) which, … has made cyber squatting prohibitively expensive. In lieu of actual damages, the ACPA permits a damage award of up to $100,000 per domain name” 42 or even more. In the case of British Telecommunications v. One In A Million, the defendants registered a number of domain names associated with large corporations, including marksandspencer.co, marksandspencer.co.uk, j-sainsbury.com, sainsbury.com, sainsburys.com, sainsburys.com, and britishtelecom.com, with which they had no connection. 43 ”They then offered them to the companies associated with each name for an amount: much more than they had paid for them. The Court of
40 One In A Million Judgement ; < http://www.nominet.org.uk/disputes/caselaw/index/million/millionjudge/ > [site visited on 12 28 th , 2010]. 41 See note 7, Nilanjana Chatterjee. 42 See note 39, K.J. Greene. 43 UK case: British Telecommunications plc v. One In a Million Ltd [1998] 4 All ER 476. 17 Appeal found for the plaintiff companies and upheld the mandatory injunction against the defendant registrants, requiring them to assign the domain names to the plaintiffs.” 44
2.2. Cyber parasites Like cyber squatters, cyber parasites also expect to gain financially; however, unlike squatters, such gain is expected by using the domain name, 45 or to free ride on a company’s goodwill for its own financial benefit. Cyber parasite cases are when for example a famous name might be registered by another; or, a mark that is similar to, or a commonly mistyped version of a famous name might be used. “The dispute might arise between direct competitors, between those in similar lines of business, or between those who simply wish to indulge in passing off of the name's fame.” 46 In the Yahoo! Inc. v. Akash Arora & Anr. 47 , the Delhi High Court dealt with a matter of a similar nature. The case involved a petition by Yahoo! Inc., seeking injunctive relief against the defendants who attempted to use the domain name ‹yahooindia.com› for Internet related services which means in the same field as yahoo.com. The court treated the matter as one of passing off and concluded that appropriation of the ‘yahoo’ name by the defendants justified the bringing of the action and thereby granted an injunction against the defendants. 48
2.3. Cyber twins Another dispute that can arise in connection with domain names is when two parties, each having legitimate trademark registrations for the same mark but in different classes (and/or in different countries), seek out to use the same domain name. 49 When the parties of the dispute have a legitimate claim to a domain name then they are known as cyber twins. The cases involving cyber twins are the most difficult ones, because, but for the domain name dispute, the law of trade mark and unfair competition might otherwise allow each party to enjoy concurrent use of the name. 50 Unlike the disputes between trademark registration owners and domain name owners over the trademark, the NSI Policy does not address this type of dispute. Resolution then must be in court under
44 See note 7, Nilanjana Chatterjee. 45 Ibid. 46 Ibid. 47 Indian case: Yahoo!, Inc. vs Akash Arora & Anr. on 19 February, 1999 48 See note 7, Nilanjana Chatterjee. 49 See note 28, William A. Tanenbaum. 50 See note 7, Nilanjana Chatterjee. 18 traditional principles of trademark, unfair competition and anti-dilution laws. Assuming that each of the parties has a trademark rather than service mark registration, one question that arises is whether also having a registration covering a service mark class will provide an advantage in the adjudication of the dispute between trademark registrants. 51 In the case of Indian Farmers Fertiliser Cooperation Ltd. v. International Foodstuffs Co. 52 , the dispute related to the domain name iffco.com. The defendants had registered the domain name iffco.com and had been using it with good faith. The complainant had domain names related to iffco.com and had a legitimate interest in the domain name. The complainant had alleged the defendant of diverting the net surfers to its own website. However, the Arbitration Center dismissed the case, as both the parties had legitimate interest in the domain name and the complainant had failed to prove ‘bad faith’ on the part of the defendant. Evaluating the difficulty of domain name disputes it is obviuos that the cyber twin cases are the most complicated and the most difficult ones to win since there many factors that should be taken in the account when solving the case. The plaintiff has to prove that he is the one that has the legitimate right to use the domain name. The court takes in the account the factors like: who started to use the domain name first, who registered the trade mark first, is the domain name used in bad faith, did any of the case parties knew about each other’s website when they started to use the domain name, and many others therefore it is very hard for the plaintiff to prove that they are the ones that have the legitimate right to use a particular domain name.
2.4. Reverse domain name hijacking In certain cases, the complainant may try to over extend the scope of their famous name; this makes the challengers engaged in ‘reverse domain name hijacking’. In some of the cases the complainant's behavior is plainly malicious and the claim brought without any basis. This slight lacuna has been overcome by panels, “who have stated that bad faith in this context is bringing a claim despite actual knowledge of a legitimate right, or lack of bad faith on the part of the registrant, or where it should have been obvious that the complaint had no real prospect of success.” 53 It must be noted that in these kind of cases cybersquatters may have motives beyond financial reward, such as a motive to harass or criticize a business associated with a famous trademark.
51 See note 28, William A. Tanenbaum. 52 WIPO Arbitration and Mediation Center: Indian Farmers Fertiliser Cooperative Limited v. International Foodstuffs Company, Case No. D2001-1110, 2002. 53 See note 7, Nilanjana Chatterjee. 19 WIPO panels generally find instances of reverse domain name hijacking where the complaint fails to establish that the respondent acted in bad faith, that the complainant regularly asserted its domain name rights, or that the primary purpose of the proceeding is to harass the domain name holder. “Although the filing of cyber squatting lawsuits began as a defensive strategy to combat cyber squatting, such lawsuits also can be used as a way of strong arming innocent domain name registrants into giving up domain names that the trademark owner is not, in fact, entitled to.” 54 Based on the above it can be concluded that domain name and trademark dispute involve a complex process both arbitrarily and in court.
54 Reverse domain hijacking ; < http://www.sources.com/SSR/Docs/SSRW-Reverse_Domain_Hijacking.htm > [site visited on 12 28 th , 2010]. 20 3. DOMAIN NAME AND TRADEMARK RIGHTS
As it has been mentioned before, domain names serve a function analogous to street addresses or telephone numbers. Therefore domain names, unlike trademark registrations, must be unique. While a domain name can be used as a trademark, it is important to note that having a domain name does not automatically give the domain owner trademark rights in the domain name. 55 In addition, there is no requirement to the domain name to be protectable trademark which makes sense since otherwise it would be impossible to register a domain name if one would have to register it as a trademark and also impossible since not all terms can be registered as trademark name. For example in words such as aspirin which are “generic” for trademark purposes (which means that no company can have exclusive rights in the term) can be and have been used as second- level domain names. For instance in the case SIA „Stirolbiofarm Baltikum“ v. AB „Sanitas“ 56 the Lithuanian appellate court, has decided that term “NEOCITRAMONAS” is a generic term and can not be registered as a trademark even though “citramon” is the part of the term that is widely known in Lithuania. 57 The court has decided that prefix “NEO” or the ending “as” doesn’t play any key role and doesn’t really change the term. And even though this term cannot be registered in Lithuania it can be registered as a trademark in European Union. So in general any word or a term or a combination of words can be used as a domain name but the question raises who has the right to use it: the one that registers it first, the one who owns the trade mark or anyone else? Since there has been a few papers of Vytautas Magnus University graduates written about trademarks before therefore this topic will be covered very shortly. “A trademark is any “word, name, symbol, or devise or any combination thereof” which identifies the source of origin (e.g., the manufacturer) of goods (e.g., products) with which it is used and which distinguishes the goods from the goods of others.” 58 In the United States, trademark rights arise from use and exist even if no federal trademark registration is obtained. Trademark rights based on use alone are referred to in the United States as “common law rights,” and are generally limited to the geographical area in which the mark is truly used and the nature of the use. These rights can expand for example when sales increase and consumer recognition
55 See note 28, William A. Tanenbaum. 56 SIA „Stirolbiofarm Baltikum“ v. AB „Sanitas “, Lietuvos apeliacinis teismas (2010, Nr. 2A-747). 57 Ibid. 58 See note 28, William A. Tanenbaum. 21 grows that the mark indicates a particular source of origin. Obtaining a federal trademark registration expands these rights. It gives nationwide rather than localized protection; the rights provided in the federal statute; and access to federal courts for enforcement. Besides, a federal registration establishes the filing date of the registration application as a nationwide constructive use date; creates a presumption of the ownership, legality and exclusive right of use of the mark; and after “incontestable” status is acquired it provides a conclusive presumption of the exclusive right to use of the mark subject to certain statutory defenses. 59 Under current domain name registration rules, a party can submit its federal registration in support of its application for a domain name or to oppose another party's domain name application. 60 Trademark registration is important because previously brought the registered trademark owner may generally prohibit the use of confusingly similar or identical to those subsequently brought into service, or registered trademarks. However, it should be noted as an unregistered trademark owner in some cases also may have the same rights as a registered trade mark owner against others. For example in Lithuania such a case is possible when a specific not registered trade mark is recognized as well known in accordance with the laws. 61 The trademark owner rights are defended in many countries. If it is found that the trademark holder has the exclusive protection rights it may be necessary to determine whether the trade mark owner's right is absolute, or should be subject to the limitations on the right. It is very important that the “monopoly” of trademark should be in balance with other constitutional values. For example article 46 62 of the Constitution of Republic of Lithuania (hereinafter Constitution) determines that: Lithuania’s economy shall be based on the right of private ownership, freedom of individual economic activity and initiative; the State shall support economic efforts and initiative that are useful to society; the State shall regulate economic activity so that it serves the general welfare of the Nation; the law shall prohibit monopolization of production and the market and shall protect freedom of fair competition; the State shall defend the interests of the consumer . Trademarks as an intellectual property object are governed the way that trademark owner's monopoly on the use of its mark would be limited. For example the proprietor of a registered mark shall have an exclusive right to prevent all third persons not having his consent from using in the course of trade any sign in the case where, because of its identity with, or similarity to, the registered trade
59 Ibid. 60 Ibid. 61 LR Preki ų ženkl ų įstatymas (2000 10 10 Nr.VIII-1981) 6 str. 62 LR Konstitucija (priimta 1992 m. spalio 25 d.), 46 str. 22 mark for the identical or similar goods and/or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the registered trade mark. 63 Also based on the article No. 3 of Lithuanian trademark law, the trademark holder gets the exclusive rights only when the mark intended to identify goods and/or services, for which registration is required in the application filed at the State Patent Bureau or which is registered according to this law, or which is subject to international registration of the mark, or recognised as well-known in the Republic of Lithuania. 64 Talking about trademark rights it’s very important to mention that trademarks rights monopoly is constrained by its validity terms. Based on article 35 of Lithuanian trademark law “a mark shall be registered for a period of ten years from the date of filing of the application”, 65 .and the rights of the trademark holder are valid only in the case if the trademark name is being used. 66 So based on all mentioned above it is obvious that the trademark holder doesn’t have the monopolized exclusive rights to use the trademark name at all times and forever. One of the reasons why trademark monopoly should be abridged - it’s the aim to ensure that there would be no undue restrictions on market and would infringe article 46 of Constitution. 67 For example in the case United Artist Pictures Inc. v. Pink Panther Beauty Corp. 68 the Canadian Federal Court of Appeal allowed the trade-mark PINK PANTHER to be registered for beauty products, over the objection of United Artists Corporation, the owner of the PINK PANTHER mark, registered it with motion pictures. The Court held that the difference between the parties' services was that there was no likelihood of confusion between the two marks. Because a customer of the PINK PANTHER beauty parlor most likely won’t think that the haircut received was provided by United Artists Corporation. Also unreasonably granted the monopoly rights to trademarks would infringe fair competition. Article 10 bis of the Paris convention for the Protection of Industrial Property determines that “the countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition” 69 . In addition the purpose of Regulation (EC) No 40/94 is to “promote throughout the Community a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are
63 See note 61, LR Preki ų ženkl ų įstatymas, 38 str. 64 Ibid, 3 str. 65 Ibid, 35 str. 66 Ibid, 47 str. 67 See note 62, LR Konstitucija. 68 Canada case: United Artist Pictures Inc. v. Pink Panther Beauty Corp , [1998] 3 F.C. 69 Paris convention for the Protection of Industrial Property, (March 20, 1883), article 10 bis. 23 similar to those obtaining in a national market” 70 . Furthermore the Directive 2004/48/EC of the European Parliament and of the Council of on the enforcement of intellectual property rights points out that the achievement of the internal market entails eliminating restrictions on freedom of movement and distortions of competition, while creating an environment conducive to innovation and investment. In this context, the protection of intellectual property is an essential element for the success of the internal market. The protection of intellectual property is important not only for promoting innovation and creativity, but also for improving competitiveness .71 Therefore it is concluded that the exclusive trademark rights would form its monopoly and it would be contrary to the above-mentioned legislation. There are some limitations on trademark rights that should be taken in consideration when talking about trademark name rights. Registered trademarks are subject to certain limitations. Goods and services are divided into four international categories and a trademark owner's rights are limited to the one or more classes in which it has secured a registration. In addition, trademark rights are territorial, and normally, registrations must be obtained on a country-by-country basis. However, the European Community Trademark system allows a centralized procedure for obtaining trademark rights in the European Community member countries. 72 European Council Regulation (EC) No. 40/94 73 establishes the Community Trademark. Under the Regulation, a single application submitted to a central office will result in a registration valid in all the Member States of the European Union. “The Regulation does not eliminate national trademark protection but creates a community that co-exists with national trademarks”.74 The class-by-class and country-by-country nature of trademark rights permits two companies in one country to have valid trademark rights in the same mark but in different classes and enables the same mark to be owned by different companies in different countries. It also creates a trademark dispute when the one or both of the companies' goods or services expand from existing registered classes towards other trademark classes. 75 NSI's policy of denying a domain name to an applicant if it has already been claimed, while certainly understandable from a technical perspective, conflicts with the general trademark practice of
70 European Council Regulation (EC), Community trade mark, No 40/94 (20 December 1993). 71 Directive 2004/48/EC of the European Parliament and of the Council of on the enforcement of intellectual property rights (29 April, 2004). 72 See note 28, William A. Tanenbaum. 73 See note 70, Community Trademark. 74 The community trademark ;
76 Andre Brunel, May Liang, “Trademark Troubles with Internet Domain Names and Commercial Online Service Screen Names: Roadrunning Right Into the Frying Pan”, Int J Law Info Tech (1997). 25 4. LITIGATION OVER TRADEMARK INFRINGEMENT
This section outlines the basic causes of action available against the domain name registrant. Courts in cyber squatting cases tended to focus on accessible trademark policy to control the domain space. They found that cyber squatting constituted either trademark infringement or dilution, depending on the situation. Infringement requires the trademark holder to institute a likelihood of consumer confusion as to the source of products or services. Dilution has no consumer confusion requirement and is limited to the protection of famous marks .77 “The basic federal causes of action are: (a) Trademark infringement under Section 32 of the Lanham Act; (b) Unfair competition under Section 43(a) of the Lanham Act, (c) Federal Trademark Dilution Act of 1995,” 78 (d) Anticybersquating Act All of these acts regulate the questions about domain name registration. The courts' or ADR authority’s power includes the authority to enjoin the use of the domain name and order its assignment to the trademark owner. Actions for infringement of federal trademark registrations are brought under Section 32 of the Lanham Act, which provides that any person who uses a registered mark in commerce without the consent of the trademark registrant in connection with the sale or distribution of goods or services, in a manner which is likely to cause confusion, is liable for monetary damages and/or subject to injunctive relief. 79 Likelihood of confusion, is a multi-factor test which includes the assessment of many factors like: “(i) the similarity between the trademark registration owner's mark and the allegedly infringing mark, in terms of the appearance, sound, meaning and commercial impression of the marks; (ii) the distinctiveness of the owner's mark; (iii) whether the goods or services offered under the owner's mark and the alleged infringer's mark are related rather than directly competitive, and if so, the likelihood that prospective customers would expect that the trademark owner would expand into the field of commerce of the alleged infringer; (iv) the similarity of the marketing method and channels of distribution used by the parties;
77 Jacqueline D. Lipton, “Bad faith in cyberspace: grounding domain name theory in trademark, property, and restitution”, Harvard Journal of Law and Technology (Spring, 2010). 78 See note 28, William A. Tanenbaum. 79 Lanham (Trademark) Act (15 U.S.C.) Section 32. 26 (v) the characteristics of the potential customers and the degree of care they exercise in choosing goods or services; (vi) evidence of actual confusion among customers or potential customers; (vii) the intent of the alleged infringer; and (viii) whether the trademark owner's goods or services are known in the alleged infringer's territory.” 80 No single factor is determinative, and courts look to all facts in determining likelihood of confusion. For example in the case Hasbro, Inc. v. Clue Computing, Inc. 81 , Hasbro complained that its customers were being confused by the presence of Clue Computing, Inc. Clue Computing had chosen the domain name clue.com as a joke regarding people who didn’t know much about computers. Hasbro was concerned about Clue Computing's domain name registration since it corresponded to Hasbro's registered trademark for the Clue board game. Hasbro was ineffective in its trademark infringement claim since it failed to show sufficient consumer confusion to support its claim since Hasbro had produced only a few emails in which people had contacted Clue Computing by mistake, thinking its website was related to the Clue board game. The court noted that “if another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.” 82 Causes of action for unfair competition brought under Section 43(a) of the Lanham Act 83 for both federally registered and unregistered trademarks and service marks. “It protects a trademark owner against confusion, or likelihood of confusion, between the goods and services offered under the owner's mark and the ones offered under competitor’s mark.” 84 “The Federal Trademark Dilution Act provides that the owner of a mark deemed a “famous mark” under the trademark laws may enjoin another person's use in commerce of a trademark or trade name which causes dilution of the “distinctive quality” of the famous mark, and recover damages and costs if the dilution is willful.” 85 The Act defines “dilution” as: “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of —
80 See note 28, William A. Tanenbaum. 81 USA case: Hasbro, Inc. v. Clue Computing, Inc., No.CIV. A. 97-10065-DPW (1999). 82 See note 25, Rodney A. Myer. 83 See note 79, Lanham Act, Section 43(a). 84 See note 28, William A. Tanenbaum. 85 Ibid. 27 (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” 86 The basic state law causes of action available for trademark-domain name disputes are: “(i) Common law trademark infringement (and state statutes); (ii) Dilution under state statutes; (iii) Unfair competition and deceptive trade practices under common law and state statutes; (iv) Claims under other state laws such as claims for injury to business reputation.” 87 Although the elements required for trademark infringement vary from state to state, in general the standard for infringement is similar to federal actions, whether the use of the mark by infringer creates confusion or the likelihood of confusion. The requirements for liability for trademark dilution may vary in the states that recognize such a cause of action. Dilution is usually defined in state statutes as the “blurring” or “tarnishment” of a mark or trade name. “Blurring” is when a mark or trade name is used in connection with other goods or services so that the secondary use dilutes the distinctiveness of the mark. “Tarnishment” is when a mark or trade name is used by a third party in a manner that is discordant or inconsistent with the use of the mark or name by its original owner such that the goodwill associated with the original owner's mark becomes damaged or “tarnished.” 88 The globalization and international trade relations caused the necessity to ensure that a certain minimum level of protection for distinctive signs was available worldwide. This aim was achieved by conclusion of international agreements: the 1883 Paris Convention for the Protection of Industrial Property (hereinafter – the Paris Convention) 89 , the Madrid Agreement Concerning the International Registration of Marks (hereinafter – the TRIPS) 90 establishes an obligation on signatories to protect against unfair competition. 91 TRIPS also contains rules on methods enforcement of intellectual property rights which must be existent and effective in all signatory countries without being barriers to trade. “Finally, both TRIPS and the Paris Convention offer protection to well-known and/or famous marks whether or not they are registered in every signatory country.” 92 After Lithuania ratified the Paris Convention and the TRIPS and became a member of the EU, its provisions became part of the legal regulation in Lithuania.
86 Federal Trademark Dilution Act of 1995. 87 See note 28, William A. Tanenbaum. 88 Ibid. 89 See note 69, Paris Convention for the Protection of Industrial Property. 90 Madrid Agreement Concerning the International Registration of Marks (April 14, 1891). 91 Jūrat ÷ Truskait ÷, Problems of the legal protection of distinctive signs (Doctoral dissertation, Vilnius, VU, 2009). 92 Ibid. 28 Each member of European Union maintains the responsibility to maintain a registry for domain names falling under its country-code top-level domain (ccTLD). The upholding and listing of all other generic top-level domains (gTLDs) is supervised by ICANN. 93 Unfortunately there aren’t really direct legal acts that regulate domain name registration and disputes in Lithuania. Based on Civil Code article 1.8 which says that civil relationships not regulated by the norms of the Civil law shall be governed by civil laws that regulate similar relationships (analogy of statute); in absence of relevant civil laws regulating similar relationships, general principles of law shall be applied (analogy of law). 94 Therefore gaps in the laws of such rights and legitimate interests in relation to the possible illegal use of the domain names should be protected and an analogy of law should be applied of the similar relationship between the legal governing rules. The legal acts that are regarded to in domain name and trademark disputes in Lithuania are: Lithuanian Law on Trademarks 95 , Lithuanian Law on Competition 96 , the Civil Code 97 (which can be applied indirectly or by legal analogy), and the Commission Regulation (EC) No 874/2004 98 of 28 April 2004. Unfortunately only one of them talks about domain names directly - the Commission Regulation (EC) No 874/2004 99 . On 1 October 2008 the Vilnius District Court, adopted a decision in the civil case between the claimant AB “Pieno žvaigžd ÷s” and the respondent Edvardas Kostkevi čius. 100 In 2007 E. Kostkevi čius registered internationalised .lt country code top level domain name (ccTLD) pienozvaigzdes.lt and contacted the claimant, and offered him to acquire this domain name. When E. Kostkevi čius did not respond to the message of AB “Pieno žvaigžd ÷s” to quit any use of the domain name pienozvaigzdes.lt and transfer it to AB “Pieno žvaigžd ÷s”, the claimant maid a claim to Vilnius District Court for violation of its trade mark rights and the company name. The court stated that the respondent was looking for unfair profit, didn’t have any legitimate interest in the domain name pienozvaigzdes.lt, violated trade mark rights of the claimant and rights to its company name. Importantly, the court admitted that current Lithuanian national legislation is not adequate to decide the relation between domain names and trademarks, company names and acts of unfair competition. Therefore, the court
93 See note 25, Rodney A. Myer. 94 LR Civilinis kodeksas (2000 07 18, Nr. VIII-1864), 1.8 str. 95 See note 61, LR Preki ų ženkl ų įstatymas. 96 LR Konkurencijos įstatymas (1999 03 23, Nr. VIII-1099). 97 See note 94, LR Civilinis kodeksas. 98 Commission regulation (EC) No. 874/2044 (28 April, 2004) laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration. 99 Ibid. 100 AB Pieno žvaigžd ÷s v. Edvardas Kostkevi čius , Vilniaus apygardos teismas (2008 Nr. 2-1061-623). 29 applied analogy from the international legal acts and case law. The court applied Regulation (EC) No 874/2004 of 28 April 2004 101 laying down public policy rules concerning the implementation and functions of the .eu TLD and principles governing registration.102 As it has been mentioned before anyone and at any time can register any domain name and there is no legislation or any checking procedure before registering a domain name. Information Technology Development Institute at Kaunas University of Technology (KTU ITPI) is an official Administrator of the .lt top-level domain. .LT top-level domain administration principles and procedures are described only in procedural regulation for the .LT top-level domain. Unfortunately, this regulation doesn’t really touch the questions about anyones rights when registering a domain name. The only part of this regulation, in my point of view, is informing is article No. 70, which says that “the disputes between Applicants and other persons on the right to Domains, their use or content shall be settled under the procedure established by law.” 103 This means that all disputes should be solved only in courts. However the .eu domain and trade mark disputes can be brought to The Court of Justice of the European Communities or to the Check Republic arbitration. The first case in Lithuania regarding unfair registration of domain name was solved in 2004, UAB “Kristiana” v. K ęstutis Mikoli ūnas; domain name in question – “kosmada.lt” 104 . The court decided that earlier trademark rights owner can take actions against unfair registration of domain name 105 . More and more cases reading the domain names being brought to the court. However the court still faces the same problems: 1. lack of legal acts which regulate domain name registration; 2. lack of legal acts which would transfer the domain name to be transferred to the trademark owner (since any person can register the domain name as soon as it becomes free according to the court’s ruling); 3. there is no arbitration which would solve domain name disputes (only the courts can solve these disputes at the moment). When the courts solve domain name disputes in Lithuania – they mainly rely on the legal acts: Lithuanian Law on Trademarks 106 , Lithuanian Law on Competition 107 and the Civil Code 108 . However
101 See note 98, Commission regulation (EC) No 874/2004. 102 Intellectual property Sorainen legal update ; < http://www.infolex.lt/portal/papildomiok/IP_SLU_jan.pdf > [site visited on January 15 th , 2011]. 103 See note 37, KTU ITPI .LT domeno proced ūrinis reglamentas. 104 UAB KRISTIANA v. K ęstutis Mikoli ūnas, Vilniaus apygardos teismas , (2005, Nr. 2-2265-54). 105 New domain name litigation practice in Lithuania ; < http://www.argumentas.lt/14.html > [site visited on 04 5 th , 2011]. 106 See note 61, LR Preki ų ženkl ų įstatymas. 30 in a few instances regarding gTLDs the courts also relied on provisions of the Commission Regulation (EC) No 874/2004 109 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu top level domain and the principles governing registration. This legal act is directly applicable in Lithuania, and since it regulates similar issues, the courts have the right to apply it (as legal analogy). It is very important that there is only one institution that can solve domain name disputes in Lithuania – courts (Vilnius district court as the first instance court). According to the Lithuanian legal acts, only the court can solve disputes, related to the intellectual property. Therefore the clients can defend their rights only by filing their claims in courts. Litigation in the first instance court takes about 1 year. If the trademark owner wins – he/she is entitled to compensation of litigation expenses and damages. However the court usually grants only a part of litigation expenses. As we all know that to solve a problem in arbitration is way faster in time than to solve the case in courts. So it is very unfortunate that there is no arbitration procedure possible to solve domain name issues in Lithuania and a person or a legal entity has to wait 2 or 3 years until their case would be solved and definitely has to spend more money on court fees. Based on Civil code article 2.20 describes that every natural person shall enjoy the right to a name. Right to a name includes a right to a surname, name (names) and pseudonym. It shall be prohibited to gain rights and assume obligations under the cover of other person’s name. A natural person shall have the right to use his full or abbreviated name (names) and request other persons not to use and not to act in his name without his authorisation. 110 Article 2.21 gurantees protection of the Right to a Name. Based on the civil code given rights a natural person whose right to a name has been infringed as a result of other person’s unlawful acts in his name or some other mode of unlawful appropriation of his name or he is prevented from using it, shall have the right to apply to court and request to oblige the guilty person to discontinue the said acts and redress the property and non- pecuniary damage incurred on him by such unlawful acts .111 Article 2.42 covers the right to the Business Name of a Legal Person. It should be mentioned that article 2.42 paragraph 1 declares that “it shall be prohibited to gain rights and assume obligations by using other legal person’s business name as a cover or to use other legal person’s business name
107 See note 96, LR Konkurencijos įstatymas. 108 See note 94, LR Civilinis kodeksas. 109 See note 98, Commission regulation (EC) No. 874/2044. 110 See note 94, LR Civilinis kodeksas, 2.20 str. 111 Ibid, 2.21 str. 31 without the latter’s consent.” 112 Where legal person’s right to a business name has been infringed by other person’s unlawful use of the said person’s business name or where the other person has or uses a business name, the legal person shall have the right to apply to the court and request the court to oblige the legal person to discontinue the said unlawful acts or alter the business name and to redress the property and non-pecuniary damage incurred by the said acts, or to request the person to return everything he has acquired by using other person’s name as a cover or using the said name without the latter’s consent. In the case UAB “Bald ų centras” v. UAB “Neiseris”113 , the Court ruled that the plaintiff had legally obtained its company name, and the defendant did not seek its invalidation based on descriptiveness. The Court noted that the defendant’s use of just the “Bald ų centras” part of the plaintiff’s name without the abbreviation UAB did not affect the distinctiveness of the company name. Court concluded that the defendant’s use of the symbolic part of the plaintiff’s company name at its place of business was causing confusion as to which company, the plaintiff or the defendant, was trading in furniture. The court also stated that using a domain name identical to the symbolic part of another legal entity’s company name is contrary to honest commercial practices and infringes the other parties rights to its company name. Furthermore, using a domain name identical to another legal entity’s company name may cause confusion. When entities compete, use by entity A of the symbolic part of entity B’s company name in entity A’s domain name may have commercial effects, and thus should be regarded as unfair competition. Thus, the court ruled that the defendant had infringed the plaintiff’s rights.114 In the same case the Supreme Court noted that domain name without their direct technical function carried out by the corporate identity and function is an important tool enabling operators to advertise and sell their goods and services. Therefore, a breach of using legal person’s name may be declared, the cases when the legal entity’s name is identical or similar to domain name that is being used by another person's goods or services within the meaning of separation of goods or services. The also stated that the legitimate interests of domain name cannot be, as such, the fact of registration, per se. Domain name registration may be determined by both the legal and illegal interests. In this case, when it is established third party rights and legitimate interests infringement, the principle of "first come, first served", which is based on the registration of domain names cannot be viewed as prevention to dispute the use of the domain name. Also it was noted that a long-term use of a domain
112 Ibid, 2.42 str. 113 UAB Bald ų centras v. UAB Neiseris , Lietuvos Aukš čiausias teismas (2009, Nr. 3K-3-272). 114 Legal update intellectual property , No. 5/2009; < http://www.sorainen.com/legal/legal-update/intellectual-property- august-2009/en.html#LITHUANIA > [site visited on on 03 17 th , 2011]. 32 name could lead to a legitimate interest in this name and continue to be used; for example, if there is a formed group of customers who knows and use this domain name, and reasonably expect to use it in the future.115 Another very important legal act that is usually applied in trademark versus domain names cases is law of Trademarks 116 . Article 38 paragraph 1, section 2 of the Trademark law regulates a registered trade mark owner's exclusive rights “to prohibit other persons in their commercial activities the use of any sign (without his consent) which is identical or similar goods and (or) services, or confusingly similar to it, and because of that it is possible to deceive the public, including misleading association with a registered trademark.” 117 For example there was a case in the Vilnius district court, civil case No. 2-1641-585/2009, based on the infringed trademark rights based on the plaintiff‘s H-D Michigan, Inc complaint to the respondent UAB „Vilbana“ 118 . There was a dispute whether the respondent has the legitimate right to register domain name www.harley-davidson.lt, which name is identical with the plaintiff‘s used trademark Harley-Davidson. The court noted that the dispute between the parties is primarily the domain name but the case is linked with the trade mark owner's rights. The court ordered all the rights of the Internet domain address, www.harley-davidson.lt to the applicant. Article 16 of the Law on Competition 119 establishes a prohibition of unfair competition action. Entities are prohibited from performing any acts contrary to honest practices in economic activity and good customs. The Supreme Court in the case UAB „Balion ų šalis v. UAB „Vilbalas“ 120 applied article 16, paragraph 1, section 1 of the Law on Competition 121 and explained that when deciding on whether or not the alleged conduct may be considered illegal by the use of another legal person name, it is important to look the specific facts, such as a prior list of actions cannot be determined. The Supreme Court has concluded that unlawful use of legal person’s name in another entity's website can be recognized as a violation of the legal rights of the owner of the name, regardless of the fact that the legal name of the person is used not for the purpose or meaning of legal person’s name. According to its essence and nature of the legal rules applied in Lithuanian courts, is very similar legal relationships governed directly in applicable 2004 28 April Commission Regulation (EC)
115 See note 113, UAB Bald ų centras v. UAB Neiseris. 116 See note 61, Preki ų ženkl ų įstatymas. 117 Ibid, Preki ų ženkl ų įstatymas, 38 str. 118 H-D Michigan v. UAB Vilbana , Vilniaus apygardos teismas (2009, Nr. 2-1641-585). 119 See note 96, LR Konkurencijos įstatymas, 16 str. 120 UAB Balion ų šalis v. UAB Vilbalas, Lietuvos Aukš čiausias Teismas (2004, Nr. 3k-3-408). 121 See note 96, LR Konkurencijos įstatymas, 16 str. 33 874/2004 122 , laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration. Article 21, paragraph 1, which declares that a registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or Community law, such as the rights mentioned in Article 10(1), and where it: a) has been registered by its holder without rights or legitimate interest in the name; b) or has been registered or is being used in bad faith .123 Paragraph 3 of the same article notes that bad faith, within the meaning of point (b) of paragraph 1 may be demonstrated, where: the domain name was intentionally used to attract Internet users, for commercial gain, to the holder of a domain name website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognised or established by national and/or Community law or a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the holder of a domain name .124 For example in the case Internetportal und Marketing GmbH v. Richard Schlicht 125 concerning the court followed that the appellant had acted in bad faith in applying for registration of the domain name at issue in the main proceedings. The appellant registered the domain name ‘www.reifen.eu’on the basis of its Swedish mark &R&E&I&F&E&N& by eliminating from it the special character ‘&’ in pursuance of one of the transcription rules set out in Article 11 of Regulation No 874/2004. 126 A domain name, which corresponds to a generic term, could have been registered during the first part of the phased .eu domain name registration only if a trade mark created and registered for that purpose. If it had not had a word mark registered, the appellant would have had to wait until the general opening of registration of .eu top level domain names in order to submit its application, thereby running the risk, that any other person interested in the same domain name, could have registered the domain name first, in accordance with the first-come first-served principle. So applicant has gained an advantage over others interested in the same domain name, which he would not had if he would have behaved in good faith. So based on the information covered in this section it can be stated that each country has its own legal acts to handle domain name and trademark infringement disputes. Since the USA has faced
122 See note 98, Commission regulation (EC) No. 874/2004. 123 Ibid, Article 21. 124 Ibid. 125 Case C-569/08, Internetportal und Marketing GmbH v. Richard Schlicht, 2010. 126 See note 98, Commission regulation (EC) No. 874/2004. 34 this problem earlier than other countries they seem to have more legal acts helping to regulate this field. Even though here in Lithuania, there is no direct provisions made for legal protection against unauthorized use of domain names and ways of redress, Lithuanian courts doesn’t seem to struggle too much when solving the cases and find the laws that can be applied by analogy. Every case is looked at carefully and all the facts are being taken into consideration. Based on the current state of the law, the domain name system could begin sharing in when the entities' trademarks communicate to the same or similar domain names. Trademark actions may be mostly useful against a party who has registered a domain name in bad faith in order to profit from the holder of a trademark. Nevertheless, there are cases in which two different parties could both claim a legitimate trademark interest to the same or similar domain names. “Domain name sharing is a more appropriate avenue for resolving these disputes than trademark infringement litigation.”127
127 See note 25, Rodney A. Myer. 35 5. ALTERNATIVE DISPUTE RESOLUTION
If the domain registrant can’t win over the challenger that she harmlessly registered the domain without awareness of the challenger’s asserted mark, the challenger will most likely take legal action. The civil procedure in the court might be very costly and lengthy. Therefore more and more administrative forums that can solve trademark and domain name disputes are being created. There are a number of administrative forums where an arbitration may be filed under ICANN’s (Internet Corporation For Assigned Names and Numbers) UDRP (Uniform Domain-Name Dispute Resolution Policy). 128 UDRP 129 allows trademark and service mark holders to arbitrate certain claims against a domain name registrant before an approved dispute resolution service provider. “Participation in UDRP proceedings is mandatory for domain name registrants, but optional for trademark owners (as they are not bound by contracts with domain name registrars), who may choose to take their trademark or related claims directly to court.” 130 Administrative forums are: (1) WIPO (World Intellectual Property Organization, Geneva), (2) NAF (The National Arbitration Forum, USA), (3) ADNDRC (Asian Domain Name Dispute Resolution Centre – Beijing and Hong Kong, China), (4) The Czech Arbitration Court Arbitration Center for Internet Disputes 131 (for .eu domain names) Under UDRP rules 132 , an action against a domain registrant is available because there is integrated in all domain name registration agreements are a requirement that each registrant “submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts” and can prove each of the following: (i) [that the registrant’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) [that the registrant has] no rights or legitimate interests in respect of the domain name; and (iii) [that the registrant’s] domain name has been registered and is being used in bad faith.
128 Uniform Domain Name Dispute Resolution Policy (Adopted: August 26 th , 1999). 129 Ibid. 130 See note 7, Nilanjana Chatterjee. 131 List of Approved Dispute Resolution Service Providers;
133 Ibid. 134 WIPO Arbitration and Mediation Center case: The Economist Newspaper Limited v. TE Internet Services , Case No. D2007-1652, 2008. 135 See note 128, Uniform Domain Name Dispute Resolution Policy, paragraph 4(a)(iii). 136 Ibid, Rule 1 and Rule 15(e). 137 WIPO Arbitration and Mediation Center: Goldline International, Inc. v. Gold Line, Case No. D2000-1151, 2001.
37 least 47 trademark applications filed since 1958 for “GOLD LINE” and “GOLDLINE” and Goldline International had not objected in any way to any of these applications. The panel found no evidence that respondent registered “goldline.com” to profit by selling or renting it to Goldline International, that respondent selected the domain because it was laudatory, that respondent’s goods and services were not in the same competitive market, nor was respondent trying to commercially trade on Goldline International’s reputation by creating confusion of customers.138 The registrant had no bad faith intent, then the panel reviewed the “reverse domain name hijacking” claim. The panel found that “gold line” could have few legitimate uses, that complainant’s mark was limited to a narrow field, and that under investigation, complainant could have ascertained that respondent did not register the domain in bad faith. Additionally, since respondent had notified complainant of the facts, including the GOLD LINE users, and asserted Goldline International actions abusive if they pursued any further action, the panel found that complainant had engaged in “reverse domain name hijacking.” 139 If the registrant/ respondent fails to prove its case and the panel finds for the complainant, the domain will be transferred within ten business days. The administrative proceeding is binding unless an action is brought in a court of competent jurisdiction within ten-day period. The overall burden of proof rests with complainant. However, considering that the nature of a respondent’s rights or interests is best known to the respondent, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. 140 To ensure an easier and quick resolution of domain name disputes under .eu, the EU’s legal framework for the registration of domain names under .eu provides for an Alternative Dispute Resolution (hereinafter ADR) procedure and lays down rules for implementing it. The .eu ADR is modeled on the ADR system currently applied by the World Intellectual Property Organization to solve disputes concerning domain names registered in .com, .net, .org and in a number of national top level domains. '.eu' arbitration is provided by an Arbitration Court based in Prague, via a secure online platform and in all EU languages. The .eu ADR is a fast track extra-judicial system for the settlement
138 Ibid. 139 Ibid. 140 See note 128, Uniform Domain Name Dispute Resolution Policy, paragraph 4(a)(ii). 38 of conflicts, which applies without prejudice to any Court proceedings that an interested party may initiate against a holder of a domain name or against a decision of EURid. An ADR may be initiated: • where a domain name is identical or confusingly similar to a name in which a right is recognized or established by national and/or Community law, provided that this name; and either: (a) has been registered by its holder without rights or legitimate interest in the name or (b) has been registered or is being used in bad faith. 141 The Czech Arbitration Court administers ADR Proceedings according to ADR Rules and ADR Supplemental Rules, and in line with the Public Policy Rules for .eu of the European Commission (EC Regulation 874/2004). 142 For example in the case of LIQUIMOLY.COM 143 , LIQUI MOLY is an international trademark registered in 122 countries. The complainant was founded in 1957 and since then it has been known by the name "Liqui Moly". The domain name was registered and was used in bad faith for the purpose of selling the domain name to the complainant. The panel found that the complainant has, to the satisfaction of the Panel, shown the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the respondent to have no rights or legitimate interests in respect of the domain name (within the meaning of paragraph 4(a)(ii)of the Policy) 144 ; the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy) 145 . Therefore all procedural requirements under UDRP were met and the complaint accepted and the domain name had to be transferred to the complainant. The service provided by ADR.eu offers secure electronic-only UDRP via innovative on-line platform, as well as three innovative measures: low filing fees (starting from 500 EUR) with additional fee if response is filed; class complaints featuring the filing of a single complaint on behalf of multiple complainants; the availability of master accounts for parties involved in multiple UDRP proceedings. Since all the procedure is done online it makes it easier to solve the problem and helps to save money on court fees. 146
141 An ADR may be iniciated ; < http://www.adreu.eurid.eu/ > [visited on 12 21 st , 2010]. 142 See note 98, Commission regulation (EC) No. 874/2004. 143 Czech Arbitration Court (CAC): LIQUIMOLY.COM, Case No. 100188, 2010. 144 See note 128, Uniform Domain Name Dispute Resolution Policy, paragraph 4(a)(ii). 145 Ibid, paragraph 4(a)(iii). 146 ADR innovative measures;
147 See note 7, Nilanjana Chatterjee. 148 Ibid. 149 Ibid. 40 CONCLUSIONS AND SUGGESTIONS
The purpose of this work was to examine the problems arising in the field of domain names and trademarks and to find out is a trademark holder entitled to the exclusive internet domain rights to domains of his or her trademark or similar, and to offer possible solutions to avoid trademark and domain name disputes. The question is answered and the hypothesis is approved: every domain name dispute situation is different and not always a trademark holder is entitled to the exclusive internet domain rights to domains of his or her trademark or similar. After the analysis of legal acts, case law and articles the following conclusions and suggestions may be pointed out:
1. Despite the fact that the number of trademarks and the domain disputes is constantly increasing many countries have not established any specific laws or regulations to deal with these issues. 2. An entity attempting to register a domain name has no guarantee that after registering the domain name a trademark holder from any country in the world will not come forward with a domain name dispute suit and force the domain name registrant to relinquish control of the domain name. 3. Unless the domain name registrant has registered the word used as a domain name and as a trademark in every country of the world, there is no guarantee to the registrant that the domain name will not be taken away. And also unless a trademark owner doesn’t register a domain name of his trademark name there is no guarantee that he will be able to register it later if it has been registered by another party. 4. The domain registry authorities don’t check if a new domain doesn’t infringe trademark rights. All of their procedures are carried out on the principle „first come, first served” basis. That means that there is no requirement to check if a domain name may infringe any trademarks rights and as long as a new domain name owner is honest, has rights or legitimate interests in respect of the domain name or is not using it in bad faith there will be no chance for a trademark owner to get that particular domain name. 5. The domain name registration principle „first come, first served” doesn’t grant the domain name owner extra rights to own the domain name. The rights to domain name are created by domain names owners’ honesty, good faith and legitimate interest.
41 6. Trademark registration is important because a registered trademark owner may generally prohibit the use of confusingly similar or identical to those subsequently brought into service, or registered trademarks. 7. The trademark owner’s rights are usually defended more than domain name rights. 8. Trademarks rights are constrained by its validity terms which mean that the rights of the trademark holder are valid only in the case if the trademark name is being used and on the other hand the a legitimate domain name owner has rights to a domain name as long as he or she is using it. Every country has its own terms for how long a domain name owner can have a domain inactive. 9. By registering a domain name as a trademark might give the owner more rights against any other third party but it doesn’t guarantee exclusive rights to a domain name. 10. Each country has its own legal acts to handle domain name and trademark infringement disputes. Since the USA has faced this problem earlier than other countries they have more legal acts helping to regulate this field. 11. Since USA court fees are extremely high and not every person can afford it therefore there should be a mandatory ADR institution established which could guarantee cheaper administrative fees. 12. There is a lack of legal acts which regulate domain name rights and domain name and trademark disputes in Lithuania. Solving domain name and trademark disputes courts apply laws by analogy. So there should be laws that regulate domain name and trademark infringement created and implemented in Lithuania. 13. ADR procedure is a cheaper and faster procedure therefore there should be an ADR institution available in every country. 14. There is no ADR which would solve domain name disputes available (only the courts can solve these disputes) in Lithuania. Therefore there should be an ADR institution established. 15. To avoid so many domain name and trademark owners’ disputes there could be a synchronization of the international body administering the generic top-level domains, like ICANN, and an international agreement between nations to recognize each other's trademarks. 16. There could also be a database of all the trademarks held internationally under the Madrid Agreement as well as all of the trademarks registered nationally within each country of the system so that one could check the trademarks in existence in the world.
42 17. The registrar could notify the trademark holder in each case that its trademark had become the subject of a potential domain name registration and the trademark holder would be given the opportunity to register the domain name first.
43 BIBLIOGRAPHY
Legislation 1. Commission regulation (EC) No 874/2004 (28 April, 2004) laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration. 2. Directive 2004/48/EC of the European Parliament and of the Council of on the enforcement of intellectual property rights (29 April, 2004). 3. European Council Regulation (EC) on the Community Trademark, No. 40/94 (20 December, 1993). 4. Federal Trademark Dilution Act of 1995. 5. KTU ITPI .LT domeno proced ūrinis reglamentas (2007 03 13). 6. Lanham (Trademark) Act (15 U.S.C.) Section 32; 43 (a). 7. LR Civilinis kodeksas (2000 07 18, Nr. VIII-1864), 1.8 str. 8. LR Konkurencijos įstatymas (1999 03 23, Nr. VIII-1099). 9. LR Konstitucija (priimta 1992 m. spalio 25 d.), str. 46. 10. LR Preki ų ženkl ų įstatymas (2000 10 10 Nr. VIII-1981). 11. Madrid Agreement Concerning the International Registration of Marks (April 14, 1891). 12. Paris convention for the Protection of Industrial Property, (March 20, 1883), article 9,10 and 10 bis. 13. The Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (June 27, 1989). 14. Uniform Domain Name Dispute Resolution Policy, (Adopted: August 26, 1999).
Books and articles 1. Adam Chase, “A Primer on Recent Domain Name Disputes”, Virginia Journal of Law and Technology Association , 3 Va. J.L. & Tech. 3 (Spring, 1998). 2. Andre Brunel, May Liang, “Trademark Troubles with Internet Domain Names and Commercial Online Service Screen Names: Roadrunning Right Into the Frying Pan”, Int. J Law Info Tech (1997). 3. Dana L. Hanaman, “The domain name system and trademark law, globally speaking: arbitration for increasing internet competition”, Tulane Journal of Technology and Intellectual Property (Spring, 2000). 4. Demetrios Eleftheriou, Marco Berliri, Giulio Coraggio, “Data protection and e-commerce in the United States and the European Union”, International Lawyer Vol. 40 (Summer, 2006).
44 5. Eleftheriou, Demetrios et. al., “Protection and E-Commerce in the United States and the European Union”, 40 Int'l Law. 393 (2006). 6. Geneviève Bergeron, Réa Hawi, “Dot-Ca Domain Name Dispute Resolution: Where Do We Stand Five Years after Implementation of the CIRA Policy?”, Intellectual Property Journal , (August, 2008). 7. Irina Kireeva, ”European case law and the WTO ruling on conflicts between geographical indications and trademarks”, ERA-Forum Volume 10, Number 2, 199-214 (2009). 8. Jacqueline D. Lipton, “Bad faith in cyberspace: grounding domain name theory in trademark, property, and restitution”, Harvard Journal of Law and Technology (Spring, 2010). 9. Jacqueline Lipton, Internet domain names, Trademarks and free speech, (Edgar Publishing Limited, 2010), p 194-200. 10. Julia Hörnle, “The uniform domain name dispute resolution procedure: is too much of a good thing a bad thing?”, SMU Science and Technology Law Review (2008). 11. Katherine Meyers, ”Domain Name Dispute Resolution in U.S. Courts: Should ICANN Be Given Deference?”, 43 B.C. L. REV. 1177 (2002). 12. Kenneth Sutherlin Dueker, “Trademark law lost in cyberspace: Trademark protection for internet addresses”, Harvard Journal of Law & Technology , 9 Harv. J. Law & Tec 483 (Summer 1996, No. 2). 13. Kevin Eng, “Breaking through the looking glass: an analysis of trademark rights in domain names across top level domains”, Boston University Journal of Science and Technology Law , 6 B. U. J. Sci. & Tech. L. 163 (June 1, 2000). 14. Kimberly J. Miller, “The uniform dispute resolution policy: an uphill fight for domain name registrants”, Journal of Contemporary Legal Issues (2010). 15. K.J. Greene, “Abusive trademark litigation and the incredible shrinking confusion doctrine— trademark abuse in the context of entertainment media and cyberspace”, Harvard Journal of Law and Public Policy , 27 Harv. J.L. & Pub. (Spring, 2004). 16. Nancy J. King, Gail A. Lasprogata, “What's in a domain name? Online simulation and virtual dispute resolution experience for business law students", Journal of Legal Studies Education , Volume 20 (2002). 17. Nilanjana Chatterjee, “Arbitration Proceedings under ICANN's Uniform Domain Name Dispute Resolution Policy — Myth or Reality?”, V indobona Journal of International Commercial Law & Arbitration , 10 VJ 67 (2006).
45 18. Rodney A. Myer, “Domains without Borders: Reconciling Domain Name Dispute Resolution Policies and Trademark Rights between the United States and the Nations of the European Union”, 20 Penn St. Int'l L. Rev. 415 (Winter, 2002). 19. Samuel Otim & Varun Grover, “E-commerce: a brand name’s curse”, Electron Markets 20:147–160 (2010). 20. William A. Tanenbaum, “Rights and remedies for three common trademark-domain name disputes: (1) domain name vs. Trademark, (2) shared trademarks and (3) domain name hijacking”, PLI/Pat 281 Practising Law Institute Patents, Copyrights, Trademarks, and Literary Property Course Handbook, Series PLI Order No. G0-00A2 (January, 2000). 21. William T. Fryer, III, “Handling internet domain name arbitration”, Maryland Bar Journal (January/February, 2008). 22. Yasmin R. Tavakoli, David R. Yohannan, “Personal jurisdiction in cyberspace: where does it begin, and where does it end?”, Intellectual Property & Technology Law Journal , 23 No. 1 Intell. Prop. & Tech. L.J. 3 (January, 2011). 23. Yougen Li, “Analysis on the Impact of the “Dilution Theory” on Ruling of Trademark Cases”, Front. Law China, 5(1): 27–55 (2010). Online sources 1. ADR innovative measures;
46 10. One In A Million Judgement ;
47 11. USA case: Hasbro, Inc. v. Clue Computing, Inc. , No. CIV. A. 97-10065-DPW (1999). 12. USA case: Punch Clock Inc. v. Smart Software Development , 553 F. Supp. 2d 1353 (S.D. Fla. 2008). 13. WIPO Arbitration and Mediation Center case: Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd., Case No. D2011-0005, 2011. 14. WIPO Arbitration and Mediation Center case: DFDS A/S of Copenhagen, Denmark v. Klan Jored of Kamen, Case No. D2009-0390, 2009. 15. WIPO Arbitration and Mediation Center case: Indian Farmers Fertiliser Cooperative Limited v. International Foodstuffs Company , Case No. D2001-1110, 2002. 16. WIPO Arbitration and Mediation Center case: Gulf Talent FZ-LLC v. Farshad Abbaszadeh (RWG000000000B0D5), Case No. DAE2010-0001, 2011. 17. WIPO Arbitration and Mediation Center case: Hermes International v. Yuanyuan Deng / Deng Yuan , Case No. D2011-0001, 2011. 18. WIPO Arbitration and Mediation Center case: ITT Manufacturing Enterprises, Inc. v. Nicoll , Case No. D208-0936, 2008. 19. WIPO Arbitration and Mediation Center: Goldline International, Inc. v. Gold Line, Case No. D2000-1151, 2001. 20. WIPO Arbitration and Mediation Center case: Johnson & Johnson Corporation v. Gidget's Active Organics, Janet Rossi, Case No. D2011-0015, 2011. 21. WIPO Arbitration and Mediation Center case: Orange Brand Services Limited v. Cinematurka Film Yaplm ve Organizasyon, Ismail Atil Turk , Case No. D2011-0002, 2010. 22. WIPO Arbitration and Mediation Center case: The Economist Newspaper Limited v. TE Internet Services , Case No. D2007-1652, 2008. 23. WIPO Arbitration and Mediation Center case: VIZ Media, LLC v. NarutoFan.com , Case No. D2011-0021, 2011. 24. WIPO Arbitration and Mediation Center case: Representaciones De Materias Primas Industriales Ltda. v. Names2000.com , Case No. D2011-0029, 2011.
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