Gradually, service providers are beginning to understand that domain names are elements of intellectual property rights and are protected by the legislation of Ukraine.
Registration of a domain name without proper confirmation that it does not conflict with these rights in the future could lead to conflict situations (described in more detail below).
The essence of rules for domain .UA, which came into force on 18.09.2001, is that before registering the domain name .UA in full, or its components of the second level, the registrant must submit proof of trademark rights, equal to domain being registered.
Although the domain name does not refer to objects of intellectual property, one can not deny the fact that it serves to individualize a person/company in the Internet. In this sense, the domain name and these types of intellectual property: brand names, trademarks, indications of origin, are similar. They point to the name of the manufacturer, the origin of its goods or services, allow you to distinguish a specific person/company from other participants in entrepreneurial activity, to distinguish the goods and/or services of one company from those of others, thus describing the reputation and position of the company.
It is important that the corporate name of legal entity or trademark is not used by other market participants, especially with a bad reputation.
Using someone else s trademark or trade name while registering Web-site as the domain name (hereinafter – the domain) in the world practice has been called “cyber-hijacking”.
Scheme of “cyber-hijacking” is quite simple: a certain person or firm registers a domain name with a popular name, and then sells it to beneficial owner who did not register it in time, and thus blocks the rightful owner to act under its own brand name or trademark. As you know, domain name registration in Ukraine is a technical procedure through an ISP, which under one of the conditions of the contract with the applicant does not accept any responsibility for possible rights violations in trademarks and trade names.
At this time, the law of Ukraine has no direct regulation of the use of domains.
However, using national legislation in a legally correct way, owners of brand names or trademarks may justify their rights to domain name already registered by someone else.
Judicial practice of the Dispute over rights to the domain name in the Ukraine does not exist, but without a doubt, the owner of brand name or mark for goods and services will be in a stronger position, using as arguments norms of current legislation.
Based on the Constitution of Ukraine, the Paris Convention “On the Protection of Industrial Property”, Civil Code of Ukraine, laws “On protection from unfair competition” and “On Protection of trademarks for goods and services”, Regulations on the Company – Anyone who has the right to brand name or sign for the goods and services may require a court order that would stop using identical or confusingly similar designation in the form of domain names by others, as well as receiving reimbursement of damages caused by such use. Use without permission of someone else s name, company name, a mark for goods and services, other designations may lead to confusion between the activities of economic agents is illegal and qualifies as unfair competition.
The domain name by a court decision can be taken away from the holder of the domain due to violation of the exclusive rights to someone else s word trademark or trade name (there is also an opportunity to recover compensation for the use of someone else s intellectual property).
Conflicts over domain names are possible not only between the owners of brand names and “cyber-hijackers”. Let us analyze the situation where a single domain name is claimed by several holders of similar trademarks (each of which is its legitimate holder).
According to the Law of Ukraine “On Protection of Rights to Marks for Goods and Services” certificate of the trademark gives its owner the exclusive right to use and dispose of them at his/her discretion. However, unlike the brand names, usage of trademarks is recognized when it is used on certain goods and the provision of certain services for which it is registered.
This means that if, for example, the sign “Zero” is registered for marking shoes, then the market may have, identical to this, sign, which will be used for labeling of tobacco products or freight services, repair, tourism, and so on. The question arises, who should have ownership of a domain name: the owner of the mark “Zero”, registered for marking shoes, or the owner of the mark “Zero”, registered for tobacco products? Obviously, in this situation owner of the trademark, who first registered the corresponding domain name, would have the advantage.
In order to avoid this problem, firms whose activities are inextricably linked with the use of Websites, need to note the following: registration of marks is made by classes of International Classification of Goods and Services (ICGS). To date, domain names are not included in the ICGS (their inclusion is only planned), although it is still possible by using the provided list of goods and services, to identify classes that are directly related to this topic.
If in the the list of goods and services you specify, for example, the use of the mark in the WEB-pages or online advertising, it is obvious that the owner of the trademark would have an advantage, despite a later priority.
All of this suggests that one should be serious about the proper definition of the class of ICGS to protect their right for the sign for the goods and services in a way that will further avoid unnecessary conflicts in connection with the domain name.
It is possible that your domain name (or part of it) is attractive to someone, and they decided to register it as a trademark for goods and services. Once this is done correctly, unscrupulous applicant could then submit claims to you, using some of the above mentioned methods. And even if the application for a trademark for goods and services is filed much later than you had registered your domain name, to prove dishonest intent of the applicant of the mark would be almost impossible. It is also possible that there will be a situation where you are unaware of the existence of a similar mark for goods and services, and may lose your domain name. Of course, the holder of the domain name will be unhappy to lose it, because in the Internet it already has some value, and time and money have been spent on the “promotion” of the site.
There is only one way out of this: those sites that you intend to use for commercial or advertising (image) purposes should be clearly “tied” to firm name or trademarks protected by the law.
Of course, other conflict situations are possible. In all cases, we recommend that you get advice from experts who will help you to find a way out of this problem.
Patent attorneys of our firm provide services for trademark registration, support on agreements on transfer of property rights or license agreements and will help protect your rights in a dispute over a domain name.