Although the domain name does not belong to the objects of intellectual property, one cannot deny the fact that it serves to individualize a person in the Internet space. In this sense, a domain name and such types of intellectual property as: <a title = “Trademark Registration” class=”seolinks” href=”http://kip.ua“> brand names</a>, trademarks, indications of places of origin of goods are similar. They indicate the name of the manufacturer, the origin of its goods or services, make it possible to distinguish any person from other participants in business activities, to distinguish goods and/or services of one enterprise from another, thereby characterizing the reputation and position of the enterprise.
It is very important that the brand name of a legal entity or trademark is not used by other participants in market relations, especially with a bad reputation.
When registering a Web site as a domain name (hereinafter referred to as a domain), a foreign trademark or company name has become known worldwide as cyber capture.
The “cyber capturing” scheme is quite simple: a certain individual or company registers a domain with a popular name, and then sells it to a late owner in a profitable way and thereby blocks the ability of the rightful owner to act under his brand name or trademark. As is known, the registration of a domain name in Ukraine is carried out according to a technical procedure through the Provider, which, according to one of the conditions of the contract with the applicant, does not bear any responsibility for possible violations of the rights to trademarks and brand names.
At this time, in the legislation of Ukraine there is no direct regulation of the right to use domains.
However, legally competently using the national legislation, the owners of brand names or trademarks can justify their rights to a domain name already registered by someone else.
There is no judicial practice on disputes for the right to domain name in Ukraine, but undoubtedly, the owner of a company name or mark for goods and services will have a stronger position, using the norms of current legislation as arguments.
Based on the Constitution of Ukraine, the Paris Convention “On the Protection of Industrial Property”, the Civil Code of Ukraine, the Laws of Ukraine “On Protection against Unfair Competition” and “On Protection of Rights to Marks for Goods and Services”, the Regulations on the Company – anyone who has the right to a company name, a mark for goods and services, may require in court to terminate the use of an identical or similar designation in the form of a domain name by other persons, as well as compensation for damages caused by such use. Using without permission of someone else’s name, company name, a mark for goods and services, other signs can lead to a confusion of the activities of economic entities is illegal and qualifies as unfair competition.
A domain name may be taken from a domain owner by a court decision due to violation of exclusive rights to someone else’s verbal trademark or company name (there is also the possibility of collecting compensation for using someone else’s intellectual property).
Conflicts around domain names are possible not only between owners of brand names and “cyber trapping”. Let us analyze the situation when several owners of similar trademarks (each of which is a legitimate owner of it) claim one domain name.
According to the Law of Ukraine “On the Protection of Rights to Marks for Goods and Services,” a certificate for a trademark gives its owner the exclusive right to use and dispose of it at its discretion. However, unlike brand names, the use of a mark is recognized as using it on certain products and in the provision of certain services for which it is registered.
This means that if, for example, the sign “toe” is registered for labeling shoes, then there may be an identical sign on the market that will be used to label tobacco products or services for the carriage of goods, repairs, tourism, etc. The question arises Who should own the domain name: the owner of the “toe” mark, who registered it for marking shoes, or the owner of the “toe” mark, who registered the mark for tobacco products? Obviously, in this situation, the owner of the trademark, who first registered the corresponding domain name, will have the advantage.
To avoid this problem for firms whose activities are inextricably linked with the use of the Web site, you need to consider the following: the registration of marks is carried out according to the classes of the International Classification of Goods and Services (ICGS). To date, domain names have not yet been included in the ICGS (they are only planned to be entered), although it is still possible, using the existing list of goods and services, to identify classes that are directly related to this topic.
If you specify in the list of goods and services, for example, the use of a mark on WEB-pages or when placing advertising on the Internet, it is obvious that the owner of such a trademark will have an advantage, despite its later priority.
All this suggests that it is necessary to take seriously the correct definition of the class of ICGS in order to protect its right to a mark for goods and services in such a way as to protect itself from unnecessary conflicts in connection with the domain name.
It is possible that your domain name (or part of it) attracted someone, and they decided to register it as a sign for goods and services. Having done this operation correctly, an unscrupulous claimant can then make claims to you, using, among other things, the above methods. And even if the application for a mark for goods and services is submitted much later than you have registered your domain name, it will be almost impossible to prove the bad faith of the applicant of the mark. It is also possible that a situation will arise in which you, unaware of the existence of a similar sign for goods and services, may lose your domain name. Of course, the owner of the domain name will be very disappointed to lose it, because on the Internet it already has a certain value, and time and money have been spent on the site promotion.
There is only one way out: those sites that you intend to use for commercial or advertising (image) purposes should definitely be “tied” to the brand names or trademarks protected by law.
Of course, other conflicts are possible. In all cases, we recommend to contact all the same for advice from specialists who will help you to find the right solution to the problem.