The sector of intellectual property rights has seen rapid expansion particularly as a result of the increase in internet use ensuing in consolidation of trademarks, domain names and patents. The infringement of such rights is not easily recognisable as the infringers are very careful when replicating the content of a domain name holder and subsequently creating major confusion for the consumer.
In case of infringement of intellectual property rights such as the consolidation and use of a domain name, a complainant must base their case upon certain criteria. The two most commonly used are the similarity or resemblance of the domain name(s) and the abusive conduct of acting in bad faith.
Regarding the former, the Registrar of domain names has the discretion to offer future clients similar domain names with an already registered one but which is not already taken.
The hairline of legal and illegal practice lies on the possibility of occurrence of significant risk of consumers to be deceived, defrauded or at least confused by the newly registered domain name, consequently resulting in an anti-competitive practice.
With regards to the latter mentioned infringement, this encompasses the abusive conduct of a third party by acting in bad faith; this is actionable and subject to remedies. The complainant of such a case must thus prove that bad faith registrations and uses of other’s marks intend to create unfair profits to third parties from the goodwill of operations of the complainant.
The remedies offered in such cases give the domain name holder the opportunity to suppress such infringement and restore the intellectual property rights; all with a high chance of succession.
The first remedy offered is the simplest – this is to inform the Registrar of the infringer about the relevant violation. When the Registrar is notified there is obligation for further action(s) to be taken in order to suppress such infringement. Inter alia, the Registrar’s duty is to check whether the allegation of the complainant is legally based and if this is so, to initiate the procedure of taking down the cyber-squatters’ domain name.
In contrast, when the Registrar is acting in bad-faith and refuses to take steps in order to suppress such infringement, then the Registrar may be liable of contributory infringement of the complainant’s intellectual property rights. In this case, it is provided through the ICAAN Registrant Accreditation Agreement (RAA) that the complaints against the Registrar (and against the Infringer) can be filed before the Uniform Domain Name Dispute Resolution Policies (UDNDRP).
The second remedy offered is through UDNDRP. The UDNDRP is offered through WIPO and sets out the legal framework (UDNDRP Policy and Rules) for the resolution of disputes arising between a domain name Registrant and a third party regarding the abusive registration and use of an Internet domain name. The UDNDRP process is relatively quick, with decisions given within 30 – 60 days of filing the complaint. This procedure gives the complainant the opportunity to prove their case before reaching the court; this also has an international scope as it offers a sole mechanism for resolving a domain name dispute regardless of where the Registrar or the domain name holder or the complainant are located, hence, there are no jurisdictional issues. Another advantage is that filing a complaint will also temporarily prevent the Registrant from transferring a domain name to any third party until a decision has been reached.
The last option available is going before a court against the Infringer and the Registrar. If a case is decided against the Infringer and the Registrar of the domain name, the court may attribute damages to the complainant resulting from the suspension, cancellation, or transfer of the domain name. Moreover, the court may award injunctive relief to the domain name Registrant by ordering the reactivation of the domain name or the transfer of the domain name back to the domain name Registrant. In any case, going before a court is only preferable as a “last-resort option” since it is very difficult to battle the jurisdiction issues so as to ultimately decide which court has jurisdiction to resolve the case.
It is very important for the domain name holders to know that, although an infringement of intellectual property rights in this form is very hard to be recognized, attributed remedies are no longer considered intangible.
