Nowadays the internet performs a very important role, it has changed and modified so many aspects of our daily lives. Also regarding the companies, the brands, the property, the owners and its rights.
We are in the internet age so we need to establish new boundaries, be aware of the threats and the opportunities that the internet and the global era bring to us, and adapt ourselves to them. But we need to be very strict about being protected and secure against
all the cyber attacks, and to the new drawbacks that the internet and the new technologies bring with them. It is very important the regulation and control of the internet.
When it comes to the use of the domain names of a brand or company, its something very important, because with these domain names, we can identify the different business around the world and regulate the different brands that exist and that they are constantly being created by parties.
The domain names are used as types of identification labels to indicate the ownership or the control of a resource. Some examples of domain names are: .com, .net, .gov, .online, etc. These, are organized and divided by the top level domains, the generic ones and the geographic ones.
When you create a brand you need to protect it against people or other companies who will try to copy it or make one very similar using a domain name. When you have your own domain name, it makes your company look much more professional and prepared, having a domain name shows that your company forms part of the Digital Revolution and is adapting to the Internet era.
That’s why it’s a major thing to define the ownership of a brand or company when it is launched. This process is done by the registration of domain names, through the Internet Corporation for Assigned Names and Numbers (ICANN).
The ICANN is defined as a non-profit corporation, formed to control the Internet domain name management and some similar functions.
The ICANN provides technical operations of vital Domain Name System resources, and also defines policies for how the names and the numbers of the Internet should be.
At the beginning of the 21st century a big change came up: it appeared the UDRP, or the Uniform Dispute Resolution Policy. This policy was approved on August 26,1999. This policy is a new and
better way of resolving disputes, but the ICANN ones only (.com , .org).
This new policy, the UDRP, is replacing the old policy, and it was created by the ICANN, and used by all accredited registrars.
Under this new policy, a trademark owner can start an inexpensive administrative procedure to challenge the existing domain name.
It only covers the bad faith registrations, it is signed up to arbitration automatically, it is a cheap and quick way, it is also a limited policy, because it wouldn’t deal with cases such as the Pitman type scenario.
One of the most important cases with sentence was the Pitman case. It was a company build in 1849 by Sir Issac Pitman, who had different divisions.
In the year 1985 it was signed an agreement between them by which it was authorized to Pitman Training to use the name Pitman in connexion to his business.
Pitman Publishing urged the register of the domain names of pitman.co.uk and pitman.com, in February 1996. But Pitman Publishing did not try the effective use of the domains until
December 1996. When Pitman Publishing triyed to use the domain who he had obtained, he realized he couldn’t use it.
Nominet gave back the domain in Abril 1997 to Pitman Publishing and since then this company is the one who has used the name.
Pitman Publishing raised legal action based in the advantadge of the foreign reputation, non- compliance of the contract and unfair acts of confusion. Finally, the judge declared de right to use the name in favor of Pitman Publishing, who was the first one who urged the register of the domain name at issue.
Pitman was based on the common law tort of passing off as it would appear that neither Pitman publishing nor Pitman training had registered ‘Pitman’ as a trade mark.
They exist some conditions that the trademark owner must show and prove in order to go with this procedure:
First, the trademark owner must show that he/she owns a trademark, even if it’s registered or unregistered, that is the same or very similar to the registered second level domain name.
Second, that the organization that registered the domain name has no legitimate right or interest in this domain name.
Third, prove that the domain name was registered and used with bad faith. The demonstration that it was done with bath faith is
really important and there are instructions on what bath faith is considered to be.
A trademark protection can be obtained through a registration, a trademark registration will offer an exclusive right to the use of the registered trademark, implying that the registered brand can be exclusively used by its owner and he/she has the rights to.
You have to register your trade mark in order to protect your brand, for example with the name of your product or service.
The companies more and more have realized that having a domain name that is the same as their company name or the name of one of their products can be something very valuable for establishing an Internet presence of their brand or trademark.
If we take a look at some early disputes regarding the confrontation in some domain names, we see that numerous controversies have arrived around the world regarding this subject and problems.
We can take a look and analyze these different cases:
The Harrods vs UK Network Services High Court on December 9th 1996:
The Harrods case was based on trade mark infringement and passing off, although the arguments were not aired in full.
The Prince plc v Prince Sportswear 1998: It appears that Prince at least aired arguments in relation to groundless threats.