Trademark infringement in domain name registration and how to resolve it
The invention of the internet, the turning point that marked the transition to the technology age, is a milestone in human history.
The international reach and widespread use of the internet have also driven the development of commercial life. The internet has played a major role in international trade reaching a scale that surpasses even national economies. Companies operating both nationally and internationally use trademarks to market their goods, services and products. Trademarks have become intellectual assets in which companies invest substantial capital for their commercial value. The sheer scale of the internet's impact on commerce has created serious problems for the protection of trademark rights. It is therefore very important to understand how the rights in a trademark, which enjoys absolute protection under intellectual and industrial property law, bear on resolving problems that arise in domain name registration.
A proper balance between preventing the infringement of trademark value internationally and preserving the freedom to use the internet across borders can only be achieved by applying certain criteria, analyzed according to the characteristics of each specific case.
What is a trademark?
Definitions give abstract ideas a tangible, concrete form. In this way, they can also provide individuals with a roadmap for resolving problems.
Trademark: “A sign that may be described as a trademark or service mark serving to distinguish the goods or services manufactured or traded by an enterprise[1]”
Functions of a trademark
Businesses value the trademarks they use to market their goods, services or products because of the functions those trademarks perform. Trademarks therefore carry a value attributed and assigned to them. A trademark serves functions such as distinguishing goods, indicating their origin, providing a guarantee and advertising. The Directive of the Council of the European Communities No. 89/104 of December 21, 1988 on approximating the laws of the Member States relating to trademarks refers to individual marks, collective marks and guarantee marks.
Protection of trademarks
A trademark is one of a company's most important assets, because the continuity and success of commercial activity are measured by trademark value. Trademark and patent law is the field where commercial competition is fiercest, both for sustaining business activity and within a free market economy. This subject has become a separate area of specialization. The specialized field known as intellectual and industrial property law deals with the assets that companies protect by obtaining patents, and specialized courts have jurisdiction in this area.
Legislation on domain names
The internet raises distinct problems and developments in many areas of law, and it is also the most important arena of competition and display in today's commercial life. Companies that offer their goods to customers under particular trademarks want their trademark and patent rights to be protected on the internet as well. Because internet access takes place under particular names, every company wants to be present online under its own name, trade name or trademark. The importance of this is also the main reason why disputes are increasing.
What rules and principles govern the online presence of a company, a trademark or a name? On what criteria are disputes resolved?
Resolving problems between internet domain names and trademark rights is an important area of case law. Alternative dispute resolution mechanisms are available, and disputes can be resolved through applications to an arbitral panel. First, it is necessary to explain the arbitral panel, a resolution mechanism we will refer to as the administrative application route, and its legal status.
ICANN (Internet Corporation for Assigned Names and Numbers) has become the legal authority for domain names internationally. It is this body that authorizes service providers to allocate names. Although some service providers have no connection with it, ICANN has for the most part become the sole international authority in this field. In 1999 it put into effect uniform policies for resolving domain name disputes, and a set of rules prepared by the World Intellectual Property Organization entered into force. The UDRP (Uniform Domain Name Dispute Resolution Policy) was prepared by WIPO.
Approved by ICANN on October 24, 1999, this body of rules is a universally accepted legal text. It has become the main reference point in resolving disputes.
In domestic law, Decree Law No. 556 on the Protection of Trademarks was one of the first regulatory texts. This Decree Law was repealed by Article 191 of Law No. 6769 dated December 22, 2016. However, under the transitional provisions of Law No. 6769, certain provisions of the repealed Decree Law continue to apply. The Industrial Property Law (No. 6769) currently in force is the legislation governing the protection of trademarks.
In addition, the Internet Domain Names Regulation prepared by the Ministry of Transport sets out in broad terms, within the framework of international rules, the main principles for the disputes in question. Article 11 of this Regulation recognizes that arbitral decisions are enforceable. It lists the conditions under which a domain name allocation will be cancelled. The key question here is how a dispute is to be analyzed in light of the specific facts and what case law exists to resolve it.
Possible disputes
Domain names are registered on a first come, first served basis. A dispute arises when a registered domain name infringes the name rights of a company or a person. These disputes sometimes stem from bad faith registration.
In some domain name registrations, the registrant is found to be acting
- to sell the domain name back to the genuine trademark owner, often at a very high price
- to exploit the reputation of the trademark by offering internet users, under that domain name, its own goods and services in the same class as the registered trademark
- to prevent a competitor from being present online under its own trademark
- to offer the domain name for sale to third parties
- to cause confusion among the public by using the domain name on pornographic sites
or for similar purposes. Such a registration is made in bad faith, and bad faith enjoys no legal protection.
The trademark owner may apply for administrative arbitration if it claims that the registered domain name
- is identical to its own registered trademark or similar to the point of causing confusion
- was registered by a person who has no legal rights whatsoever in that name or sign
- was registered in circumstances falling within the bad faith criteria listed above.
The arbitral panel as a mechanism for resolving trademark infringements in domain name registration
The WIPO arbitral panel is an alternative dispute resolution mechanism whose decisions on this subject are recognized by the courts. It consists of arbitrators with expertise in the field. A person claiming that their rights have been infringed may apply to this panel and request that the registration be transferred to them. Decisions of the panel can be challenged in court. Applications against decisions of the WIPO arbitral panel can be made to the intellectual and industrial property courts.
[1] Regulation on the Implementation of Decree Law No. 556 on the Protection of Trademarks, Article 2, subparagraph (ğ)