CYBERSQUATTING
Te basic, systemic difference between the ‘private’ arbitration courts and the ‘public’ common courts is that the proceedings before the common courts have two instances with a limited possibility of filing a cassation pleading with the Supreme Court (as opposed to one instance in arbitration). This difference makes the proceedings in arbitration faster, but difficult to challenge should a party not be satisfied with the result, as there is no appeal proceeding available.
Irrespective of the venue, it is a disputable issue on the merits if a domain is registered and is content- free and inactive. Some years ago arbitrators interpreted the mere fact of a registration of the domain with a third-party trademark as ‘use in the course of trade’, but this approach has changed over the years. Nowadays in Poland the arbitrators take a more careful approach in interpreting the use of a trademark in a domain name in connection with the mere fact of registering a domain name identical to a trademark. In a large number of cases this activity has not been considered as an act of infringement of a trademark. In other words, a successful trademark infringement action requires proof of use of the domain name by its subscriber with respect to the same goods or services covered by the trademark registration.
“THE ENFORCEABILITY OF THE INJUNCTION MAY BE PROBLEMATIC, BUT THE OBSTACLES SHOULD NOT PREVENT IP RIGHTS HOLDERS FROM APPLYING FOR SUCH TEMPORARY MEASURES AND EXERCISING THEIR RIGHTS TO THE MAXIMUM.”
Tis restriction does not obviously apply to famous trademarks. A trademark is used by a potential infringer only if the goods or services under the mark are offered or advertised through the infringer’s website, and are destined and available to customers in the territory of Poland.
If a cybersquatter does not use the domain name in the course of trade, the rights holder should
consider legal actions on the grounds of unfair competition practices or violation of copyright or infringement of a company name. It has to be noted that some domain names may be qualified to be copyrightable items, for example, if a cybersquatter registered an original slogan. In such an event there is no need to prove use by the rights holder, but ownership of copyright would have to be proven, which in some instances is not an easy task. If the domain name is not used and it is not simple to claim copyright, the rights holder has to rely on the provisions of the Polish Act on Combating Unfair Competition, which stipulates that an act of unfair competition is an activity contrary to the law or good practice which threatens or infringes the interest of another entrepreneur or customer.
Finally, the user of a domain name identical to a company name should not be able to do it. Tis type of cybersquatter may be sued on the grounds of protecting a company name provided under the provisions of the Polish Civil Code and the Paris Convention. Te party whose rights were infringed would have to prove its prior rights to the name’s use in another domain name.
In order to be successful in such an action (when the registrant refrained from using the domain)
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Trademarks Brands and the Internet Volume 1, Issue 1
www.worldipreview.com
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