ABSTRACT
As a natural consequence of the worldwide Internet usage proliferation, the number of registered domain names is increasing each day accordingly. Especially on the websites that provide great conveniences for advertisement and marketing, the domain names which highlight the trademarks are being preferred by the traders. The WIPO (World Intellectual Property Organization) has been established in 1967 as an organization of the United Nations to encourage the protection of intellectual property rights and the creative activity in the world and it offers regulation and protection for rights related to domain name along with trademark registration, agreements which involve patents and industrial designs and disputes relating to the artworks and copyrights. The WIPO Arbitration and Mediation Center is the primary venue to apply for a domain name dispute resolution.
1.INTRODUCTION
The need to establish uniform rules for settlement of disputes relating to domain names which are considered as intellectual property rights, has arisen due to the expansion of the Internet usage to prevent violations of the trademarks through domain names. In line with this need, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has published the UDRP and RUDRP Rules (“Rules”) on October 24th, 1999. Subsequently, the aforementioned rules of procedure was amended on October 30th, 2009. At the current practice, the Rules are still being applied to the dispute resolutions related to domain name in international scale and the World Intellectual Property Organization Arbitration and Mediation Center (“WIPO/ the Center”) is one of the centers which provides a domain name dispute resolution service in accordance with the Rules. Considering the fact that the increasing number of registered domain names also increases the possibility of trademark infringements via domain names, the resolution of these disputes before the WIPO in quick fashion carries a great importance. This paper provides a review of procedural applications of domain name dispute resolution before the WIPO within the framework of Trademark Law and pursuant to the Rules and the Supplemental Rules which are promulgated by the WIPO as well as the review of domain name infringements.
2. INTERNET DOMAIN NAMES
The domain names are the names using for determining the addresses of computers or web sites on the Internet. As is known, the Internet is an electronic communication system which connects corporate or individual computers to each other and in this system; each computer has an IP address which is the identity of the computer during its connection within the network. Since the IP addresses are not suitable for memorizing as they consist of long series of numbers, the distinguishability of these addresses are being ensured by the domain names.
As a natural consequence of the worldwide Internet usage proliferation, number of registered domain names is increasing each day accordingly. Indeed, the number of domain names with the “.com” extension has reached 112,512,281 as of the January 1st, 2014. Although it is stated that the number of registered domain names in Turkey has fallen behind comparing to other countries1, it is obvious that this number continues to increase every year. Indeed, even though the number of registered domain names with “.tr” extension was only 18,670 in 2000, this number has reached 344,547 as of 20132.
3. THE RELATION BETWEEN DOMAIN NAMES AND TRADEMARKS
The TRIPS Agreement has been drafted by the initiative of the World Trade Center due to the necessity of a uniform trademark definition requirement since the trademark concept has become a crucial element of international financial life. In line with this universally accepted agreement’s Article 15, the trademark has been defined as “Provided that it is capable of distinguishing the goods and services of one undertaking from the goods and services of other undertakings, a trademark may consist of any kind of sign capable of being represented graphically, such as words, including personal names, designs, letters and numerals, the shape of the goods of their packaging and similarly descriptive elements capable of being published and being reproduced by printing” in Statutory Decree for Protection of Trademarks numbered 556.
In accordance with the abovementioned definition, the most important function of the trademark is to provide distinguishability to products and services. In this context, traders have become known by their trademarks of the products and services they offer, rather than their commercial names, around the existing economic order.
Especially on the websites that provide great conveniences for advertisement and marketing, the domain names which highlight the trademarks are being preferred by the traders. By people taking advantage of this preference and benefitting from latency of the companies to realize the potential recognition to be gained by the domain names, both unjust enrichment is likely to be acquired by registering the domain names intended to the trademark prior to the rightful owner and the trademarks are likely to be infringed via willful misconduct3. This method is called “cybersquatting” and considered to be one of the major issues to be resolved in terms of domain name disputes4. In line with this, as explained below, the option to apply to WIPO for the ones whose trademark rights have been violated by willful misconduct has been regulated.
4. THE DOMAIN NAME DISPUTE RESOLUTION BEFORE THE WIPO
The WIPO has been established in 1967 as an organization of the United Nations to encourage the protection of intellectual property rights and the creative activity in the world and it offers regulation and protection for rights related to domain name along with trademark registration, agreements which involve patents and industrial designs and disputes relating to the artworks and copyrights. The WIPO Arbitration and Mediation Center is a primary venue to apply for a domain name dispute resolution.
4.1. Potential Domain Name Infringement to be Subject to Application
Potential domain name infrigenments which can be subject to application can be categorized under three main headings. All three types of following situations shall be established by the complainants claiming an infrigenment of a domain name to apply to the WIPO. These are, (a) the domain names that are identical or confusingly similar, (b) the absence of rights or legitimate interest of the Respondent over the domain name and (c) the domain names that are registered and used with bad faith.
a. The first reason causing the domain name disputes is that when the domain names are identical or confusingly similar to the trademark or the service that the complainant is rightfully entitled. In case the complainant bases on that claim, it is considered by the Center that whether there is possibility of confusing the product or service is highlighted by the domain name with the trademark which was registered by another undertaking or whether it is identical with this trademark5.
b. Another reason of the dispute is the existance of rights or legitimate interest of the Respondent over the domain names. As for this claim of the complainant, it is evaluated by the Center that whether there is any agreement or licensing between the complainant and the respondent, for the usage of the trademark6.
c. The third and final reason of the dispute is the domain names that are registered and used in bad faith. Although the concept of bad faith is not defined neither by the WIPO nor in the rules of UDRP, the UDRP looks for the presence of bad faith during both the registration and the usage. Although there is no clear definition on the concept of bad faith, four actions are counted as samples according to the Article 4 of the regulation of the UDRP on condition not to depend on numerus clausus. According to this;
• “In case the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark7,
• In case the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct8,
• In case the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor9,
• In case by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website, by creating a likelihood of confusion with the complainant’s mark”10 accepted the existence of bad faith.
4.2. Application and Examination Procedure before the WIPO
The application procedure to the WIPO regarding the domain name dispute is regulated by strict procedural rules by the Rules and the Supplemental Rules published by the WIPO. Accordingly, the complaint application form prepared by the WIPO must be filled and sent to the registrar of the domain name and to the WIPO with a cover page as an attachment of that petition which is printed and published by the WIPO and the documents presented as appendices. (Supplemental Rules Article 4/a-b)
After the complaint application form is submitted to the places referred to, a procedural examination is carried out by the WIPO. During this review, if the WIPO observes absence of one or more required elements for complaint, it grants an additional time to the complainant to complete the missing elements. In case the missing elements are not completed within additional due time granted by the WIPO by the complainant, the WIPO notifies the complainant, the respondent and the regis trar organization that the complaint has been deemed to withdrawn. (Supplemental Rules Article 5/a-b)
After the completion of missing elements, all the documents regarding the application are forwarded to the respondent and it is notified by the WIPO that the granted time of 20 days to submit a response has started. The administrative process begins with this notification in principle, the exchange of petitions is completed by the submission of the response/defense petition by the respondent or by the exhaustion of 20 days to respond. In other words, although the complainant’s submission of a response petition to the respondent’s petition is not allowed as a rule, an additional information and documents can be requested by the panelist who is to resolve the dispute.
4.3. Appointment of Panelists
The matter of appointment of panelists for the dispute resolutions related to domain names is regulated in Article 8 of the Supplemental Rules. The disputes to which the parties have a possibility to appoint panelists are resolved by the comittees consisting of three panelists. Accordingly, both the complainant and the respondent must send their lists of three panelists to the Center. The Center appoints one of each three names as panelists, by taking the parties’ rankings into consideration. Although it is possible that the third panelist can be appointed as a result of the parties’ agreement with common will, when the parties fail to agree on a name, the third panelist is appointed by the Center. The appointment of panelist for the disputes to be resolved by a sole panelist is carried out by the WIPO.
4.4. Application Fees
The domain name dispute resolution applications are subjected to fees and these fees are being published by the WIPO on its website pursuant to Article 10 of Supplemental Rules. The application fees vary according to the number of panelists such as a sole panelist or a committee of three panelists as well as to the number of disputed domain names.
5. CONCLUSION
In parallel to increasing number of the applications to dispute resolution methods as an alternative to the national jurisdiction each year, it is obvious that the frequency of the applications to the arbitration especially for the trademark protection will increase accordingly. The resolution of the disputes concerning the domain names by the arbitration mechanism that has predetermined rules and procedures provides an advantage in terms of cost and speed of resolution to people and corporations whose rights or interests are violated by the third parties.
The system of resolution of domain name disputes being conducted by the WIPO Arbitration and Mediation Center for many years, makes the Center reliable and preferred arbitration center in terms of required arbitration costs, and shortening the time of the dispute resolution. Although there are criticisms regarding that the decisions of national jurisdiction are more fair than the UDRP committee decisions11, it is accepted that the procedure of the WIPO and the definitions developed by the WIPO in terms of the registration of the domain names that constitutes the infringment of right or interest is a pioneer in this field, and carries the resolution of dispute to the next stage12. As a result; on this system that has more flexible procedural rules comparing to the state judgement, the party whose rights or interests have been infringed may reach the result in a much shorter time and can provide the transfer of the disputed domain names to themselves.
BIBLIOGRAPHY
Bal, Nurullah. “İnternet Alan Adları ve İnternet Alan Adı Uyuşmazlıklarının Tahkim Yoluyla Çözümlenmesi”, Gazi Üniversitesi Hukuk Fakültesi Dergisi C. XVII, 2013.
Froomkin, A. Michael. “Semi-Private International Rulemaking: Lessons Learned from the WIPO Domain Name Process.” , Regulating The Global Information Society. London: Routledge, 2000.
İdari Hakem Kararı, ACCOR v. Steve Kerry/North West Enterprise, Inc., D2006-0649.
İdari Hakem Kararı, Beckman Coulter, Inc. v. Domain for Sale, D2012-1864.
İdari Hakem Kararı, MatchNet plc. v. MAC Trading, D2000-0205.
İdari Hakem Kararı, Movado LLC v. Online Marketing Realty, D2008-0757.
İdari Hakem Kararı, Western Digital Technologies Inc. v. Yusuf Erhan Arı, Yemliha Toker, D2012-1684.
Sorkin, David. “Judicial Review of ICANN Domain Name Dispute Decisions”, Computer & High Technology Law Journal 18, 2002.
Soysal, Tamer. İnternet Alan Adları Hukuku (Domain Name Law, Ankara: Adalet Yayınevi, 2014.
Zorluoğlu, Ayça, “Alan Adlarında Kötü Niyet Kavramı”, Hacettepe Hukuk Fakültesi Dergisi, 2012.
FOOTNOTE
1 Tamer Soysal, İnternet Alan Adları Hukuku (Domain Name Law), (Ankara: Adalet Yayınevi, 2014), 299.
2 Nic.tr Alan Adları Yönetimi, https://www.nic.tr/ index.php?USRACTN=STATISTICS&PHPSESSID=1403 16774521217513021778343.
3 Ayça Zorluoğlu, “Alan Adlarında Kötü Niyet Kavramı”, Hacettepe Hukuk Fakültesi Dergisi (2012), 7.
4 A. Michael Froomkin, “Semi-Private International Rulemaking: Lessons Learned from the WIPO Domain Name Process”, Regulating The Global Information Society, (London: Routledge, 2000), 8.
5 Örn. İdari Hakem Kararı, Beckman Coulter, Inc. v. Domain for Sale, D2012-1864.
6 Örn. İdari Hakem Kararı, Western Digital Technologies Inc. v. Yusuf Erhan Arı, Yemliha Toker, D2012-1684.
7 Örn. İdari Hakem Kararı, MatchNet plc. v. MAC Trading, D2000-0205.
8 Örn. İdari Hakem Kararı, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525.
9 Örn. İdari Hakem Kararı, ACCOR v. Steve Kerry/ North West Enterprise, Inc., D2006-0649. 10 Örn. İdari Hakem Kararı, Movado LLC v. Online Marketing Realty, D2008-0757.
