Passing off and domain names

Dilution is an issue that will require resolution. Meanwhile, new ways of impinging upon trader’s reputation continue to develop. The latest application of passing off to a similar situation comes from the adoption of well known names as domain names (addresses) for the internet by unauthorized individuals.

Source: Catherine Colston & Kirsty Middleton, Modern Intellectual Property Law, Second Edition, Cavendish publishing, 2004

In Harrods vs. UK Network Services Ltd [1997] EIPR D-106, individuals registered the domain names ‘ladbroke.com’, ‘ourprice.com’, ‘cadbury.com’ and ‘harrods.com’. After securing suspension of the registration, the plaintiff succeeded in an undefended passing off action, despite the fact that the name, once suspended, could not be used and, therefore, posed no threat of damage to the plaintiff’s goodwill.

A similar result was achieved in Glaxo plc vs. Glaxowellcome Ltd [1996] FSR 388. This case did not involve a domain name, but the creation of an ‘off-the-shelf’ company bearing the name Glaxowellcome Ltd by the defendant just as Glaxo plc took over Wellcome plc, creating Glaxo-Wellcome plc. The defendant offered to sell the new company to the plaintiffs for the 100 times the normal price. Lightman J granted an injunction, despite the defendant’s undertaking not to trade under the ‘Glaxowellcome’ name. Had he done so, and Lightman J did not find the defendant a credible witness, the necessary element of damage to goodwill would still have been nebulous as it is hard to see what damage could have been done to the plaintiff pharmaceutical multinational enterprise.

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World Intellectual Property Organisation (Wipo) says cyber-squatting is up.

World Intellectual Property Organisation (Wipo) says cyber-squatting is on the increase, according to figures from the World Intellectual Property Organisation (Wipo).
The UN-backed Wipo received 2,156 complaints alleging abusive registration of trademarks on the internet last year, an increase of 18% over 2006 and 48% over 2005. Pharmaceutical companies are the most frequent target, followed by banking and finance.
Blaming new generic TLDs, such as .biz and .mobi, is an implicit dig at ICANN, the not-for-profit California-based organisation which oversees many internet administration tasks, including name registration.
"The potentially useful purposes of any new domains would be frustrated if these get filled predominantly with automated pay-per-click content," said Francis Gurry, deputy director general of Wipo, who oversees the organisation's dispute resolution work.
"It comes down to a question of quantity versus quality. If the stated purpose of new generic TLDs is to increase choice and competition in domain registration services, due consideration must be given to ICANN's core principles during the policy development work and implementation plans.
"This is not just an issue of protecting the rights of trademark holders, but an issue of the reliability of the addressing system of the internet in matching interested parties with authentic subjects."
The ongoing trademark abuse, reflected in Wipo's rising caseload, raises concerns about the introduction of a number of new generic TLDs announced for late 2008, according to Wipo.
The UN has long maintained that it should be responsible for overseeing the administration of the internet , rather than ICANN which is perceived to be biased towards the US


Source: http://www.cia.ie/story4.asp

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Domain name and the problem of Cyber squatting

Cyber Squatting is a term used to illustrate a registration with abusive intention or bad faith an IDN which is infringing a registered TM. It happens when a famous TM is registered by a person who is not the owner of the registered TM. Cyber squatter usually may ask for an amount of money to surrender the said IDN. According to the Black’s Law Dictionary, seventh edition, squatter can be defined as a person who settles on property without any legal claim or title. When the case of cyber squatting raised, then how we can trace cyber squatters? There are three main ways to solve this problem, firstly: by using DOMAIN NAME search engine, second is by looking at the Registration for IDN gTLD – make available a search engine for DOMAIN NAME to determine whether or not certain IDN is registered or not, and lastly, WHOIS –give name and registered address for IDN.

In The Princeton Review Management Corp vs. Stanley H. Kaplan Educational Centre, Ltd. (94 Civ.1604 (MGC) (S.D.N.Y, filed March 9, 1994), Stanley H. Kaplan Centre (the centre was a purveyor of courses and material to prepare students for standardize aptitude tests) was not amused by its competitor’s use of [Kaplan.com] in connection with a website containing messages disparaging Kaplan’s educational testing services, and praising those of Princeton Review. This was a typical case of cyber squatting and was resolved in favor of Kaplan through arbitration.

How do you determine if there is an instance of cybersquatting? First, the name must be one of a famous person, company, or product. If the domain name takes you to a functional website with subject matter that seems appropriate to the name, cybersquatting is probably not an issue. On the other hand, if the domain name gets a “can’t find server” or “under construction” message or a page appears that has no relationship to the meaning of the domain name, cybersquatting might be an issue (Elias, 2000). However, there is always the possibility of an explanation such as the domain name registrant has not yet developed the site.

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