written by Noppramart Prasitmonthon
Current Thai legislation trails the US in domain name disputes
A domain name, simply, is the "address" of a Web site. Internet users need only type the domain name, for example www.hotmail.com, into a Web browser and they are able to reach the desired Web site.
Domain name disputes take place mainly due to the registration of two or more domain names that are identical or confusingly similar to existing trade names or trademarks. Those who register domain names acting in bad faith, popularly known as "cybersquatters", have no intention of using such domain names for any specific business, their motive being only to make a profit from selling them to trademark owners or speculators. John Zuccarini, one of the most notorious cybersquatters, registered several hundred domain names using well-known trademarks and the names of famous companies and people, among them Microsoft, Yahoo, Minolta, Dow Jones & Company, Twentieth Century Fox Films, and Nicole Kidman.
There are also cases where the similarity to existing trademarks is a mere coincidence, therefore those acquiring such domain names cannot be considered cybersquatters for all intents and purposes. Nevertheless, cybersquatter or not, it is inevitable that disputes will take place between trademark owners and domain name holders, even though the trademarks and domain names are employed for different purposes.
In fact, trademarks are used to differentiate goods and ideally are registered with the trademark authority of each state. As trademark law is limited to the political borders of individual countries, trademark owners usually protect their interests by registering their marks in states where they have business operations.
More importantly, trademark law adheres to the principle that common names cannot be monopolised by particular business operators. Thus, the same common name can be used as trademarks for different types of goods, such as the word "apple". In the UK, the "Apple Corp" label is affixed to the Beatles' musical recordings while in the US, "Apple" refers to the brand of a well-known US corporation selling McIntosh computers. Business operators in other countries can also use the "apple" trademark for other goods.
On the other hand, domain names function as Web site addresses only. A domain name must be unique and registered with a domain-name registry on a first-come-first-served basis. Thus, it is not possible to register two identical domain names at the same time, with the result being one www.apple.com in the US and another www.apple.com in Thailand.
However, it is important to acknowledge that apple.com and apple.co.th are different domain names; apple.com being a global domain name in the general category and apple.co.th existing on the national level. This gives rise to the problem of deciding who should be entitled to the domain names which are similar to trademarks like www.apple.com, www.apple.net, or www.apple.org, but use alternative three-letter endings.
In Thailand there is no specific law that deals with cybersquatting and domain name disputes, unlike in the US, where the Anti-Cybersquatting Consumer Protection Act was passed in 1999. However, certain provisions of Thai law may be applicable such as Sections 18, 67 and 420 of the Civil and Commercial Code concerning the misuse of individual or corporate trade names as well as using other people's names in bad faith, although their effectiveness is questionable.
Sections 272-274 of the Criminal Code and Section 46 of the Trademark Act deal with the issue of infringement but lack the legal concept of dilution. These Thai provisions, in fact, protect consumers only from being misled, but may not be able to provide any remedy in dilution cases.
At the international level, a solution is provided by the Internet Corporation for Assigned Names and Numbers (ICANN). In 1999, ICANN created the Uniform Dispute Resolution Policy or UDRP. A mandatory administrative proceeding under UDRP provides an alternative dispute resolution of domain name disputes in a quick, cheap and effective manner. The World Intellectual Property Organisation (WIPO), one of ICANN's accredited arbitration providers, has solved numerous domain-name disputes.
Under the policy, the complaining party must submit a complaint online to an arbitration forum, such as the WIPO. When the respondent is advised of the complaint and accepts the arbitrator, the complainant pays the fees of the arbitrator. If the respondent requests for a three-arbitrator panel, he is responsible for half of the panellists' fee.
To prevail in a UDRP proceeding, the complainant must establish all the following elements:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
- The registrant has no right or legitimate interest with respect to the domain name.
- The domain name has been registered and is being used in bad faith.
However, the UDRP provides no opportunity for appeal after the arbitrator's decision and can grant only two types of remedies _ either the cessation of the use of the disputed domain name or the transfer of the domain name to the complainant. No damages can be obtained from the UDRP arbitration forum, leaving national courts as the only recourse. Notwithstanding, since the UDRP's dispute resolution proceeding operates online and can adjudicate a dispute within approximately two months, this online forum may be the preferred solution for trademark owners looking for an effective way to beat cybersquatters.
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