Domain names and unfaircompetition

Dr Agnieszka Sztoldman

Nature of domain names

• not an industrial property title

• trade name - an address for an online business or entity

DN issues

• Cybersquatting - preemptively registering someone else’s trademark as domain name

• Cyberjacking - registering a name similar to a well-known trademark to lure user to the registrant’s site

• Typosquatting - registering misspellings of third party trademarks

Negative business effects

• disrupt competitor’s communication

• attempt to attract internet users to online location by creating a likelihood of confusionwith competitor’s business

Assesments - factors

• seniority of a DN

• imitation of the earlier DN

• similarity of the parties’ activities

• if the earlier DN is not entirely descriptive

• if there is or could be a likelihood of confusionfor the public

• if the plaintiff has suffered a damage

• bad faith when registering a DN

Cybersquatting – case law• Polish Supreme Court, case III CSK 120/11

• Facts:– MEDianus sp. z o.o. and Medianus Agencja Reklamowa sp.

z o.o. are seated in the same city, at a location nearby; the first one uses medianus.net domain name and the second medianus.pl

– MEDianus sp. z o.o. argued the the use of the same company name caused many confusions with delivery of post or invoices.

• Held:

- cybersquatting is an unnamed delict (tort) under the Polish law on combating unfair competition

Polish Supreme Court, case IV CSK 191/13

• Facts:– The Polish company PASTA i BASTA Sp. z o.o. from Warszawasued

Restaurators Podlaszewscy Spółka Jawna from Toruń.

– PASTA i BASTA requested the court to prohibit RestauratorsPodlaszewscy the use of restaurant name Pasta & Basta and to refrain from the use of Internet domain name pastaandbasta.com

• Held:– if the competitor uses Internet domain name identical or similar to a

registered trade mark, there may be trade mark infringement if such domain use may cause the likelihood of confusion as to the origin of the goods or services, or result in violation of the advertising function of the trade mark

Cyberjacking – examples

• Danone.com; sanone.com

• Versace.com; Versate.com

• Renault.fr ; Enault.fr

Typosquatting - WIPO• Administrative panel decision; Sanofi v. Marek Zdanowicz; Case No.

D2016-2545

• Facts:

– disputed domain name

• Held:

– The disputed domain name is not identical to the Complainant's SANOFI trademark. The disputed domain name consists of the same letters as the SANOFI trademark, but reverses the positions of the letters "n" and "o".

– domain name is confusingly similar to the Complainant's SANOFI trademark : (i) SANOFI is a distinctive and invented word; (ii) the disputed domain name inverts two letters in the Complainant's trademark, which does not create any new word, or give the disputed domain name any distinctive meaning; (iii) the disputed domain name is a deliberate misspelling of the Complainant's SANOFI trademark; and (iv) visually the disputed domain name is so close to the Complainant's well-known SANOFI trademark that confusion is inevitable

Typosquatting - WIPO

• The disputed domain names , , and

• Facts:– The Complainant markets his services through several domain names;

featured in several news articles. He also regularly speaks and acts as a panelist at conferences worldwide. In July 24, 2015, the Complainant established a company in France called "Teman Michel„

– Dn were registered by the Respondent on August 8, 2016; used to resolve to websites that allege that the Complainant has committed financial crimes.

• Held:– The contents of the Websites are clearly intended to put users off

from doing business with the Complainant; the Panel finds that the DNwere registered and are being used by the Respondent to disrupt the business, which in the circumstances amounts to bad faith

Typosquatting - Germany• German Federal High Court (BGH), 22 January

(I ZR 164/12)

• Facts:– The plaintiff was an entity owning the registered domain name

“wetteronline.de”; The defendant registered the typo-squatting domain “wetteronlin.de”. All users who entered this domain name were forwarded to the website which contained advertising content from a health insurance company.

– the district court and the court of appeal granted the claim; the BGH has now overruled the judgment and dismissed the claim

• Held:– original registered domain wasn’t distinctive; the content of the website was

different; if the domain registration contains or is similar to a registered trademark, trademark law can be an effective defence against typo squatting

Typosquatting – case law

• Vulcan Golf v Google (ND Ill. 2008)

• Facts:– Defendants Dotster and domain name registrars

registered misspelled domain names

– Websites carry Google-placed advertisements

• Consequences:– User who incorrectly types plaintiff’s URL lands on

defendant’s website, clicks on advertisements (some of which may be for competitors)

– Money divided between registrant, registrar and Google

DN – new challenges• Domain name spying - third parties obtain

information about domain name searches, then preemptively register the searched names

• Domain name « kiting » - Various parties or registrars themselves taste & park DNs in bulk, drop them, then re-register again & again

• Domain name parking - Hosting webpages loaded with relevant pay-per-click ads, including on tasted DNs

Domain name parking – case law• Hôtels Méridiens v. Mr S.H. & Sedo Gmbh (Paris Court of

appeal, 7 March 2007)• Facts:

Mr. S. H. registers”hotel-meridien.fr” and sells it through www.sedo.fr

• Sedo also directly sells “méridien.com”, “meriden.de”, “meridianhotel.co.uk”, “merdien.com”, etc.

• Held:

– Infringement of famous trademarks

– Is Sedo an intermediary/hosting provider under e-

– commerce Directive 2000/31?

– Not a pure technical provider, but publisher of sedo.fr and provides for commercial hyperlinks

– In any case, knowledge of trademark (as C&D letter)

– Liability of Sedo

Dispute resolution

• 1. litigation – civil claims under unfaircompetition laws and trademark laws

• 2. arbitration

– WIPO

– National dispute resulution centers – ex. PolishPIIT (Chamber of Informatics and Telecoms), KIG (National Chamber of Commerce)

WIPO statistics (I)

• http://www.wipo.int/amc/en/domains/

• The UDRP applies to disputes in all generic top-level domains (gTLDs), as well as a considerable number of country code top-level domains (ccTLDs). Since December 1999 when the WIPO Center received its first UDRP case, trademark owners from around the world have filed nearly 40,000 WIPO cases covering some 74,000 domain names.

http://www.wipo.int/amc/en/domains/

Polish courts case law on DN• The judgment of the Supreme Court of 11 December 2013 case file IV CSK 191/13

• The judgment of the Supreme Court of 9 December 2011 case file III CZP 120/11

• The judgment of the Appellate Court in Warsaw of 1 April 2011, case file I ACa 1087/10

• The decision of the Appellate Court in Lódż of 24 March 2010, case file I ACz 232/10

• The judgment of the District Court in Białystok of 2 March 2010, case file I C 2179/09

• The judgment of the Appellate Court in Białystok of 6 May 2008, case file I ACz 364/08

• The judgment of the Appellate Court in Warsaw of 16 April 2008, case file I ACa 1334/07

• The judgment of the Voivodeship Administrative Court of 30 November 2007, case file II SA/Wa 71/07

• The order of the Supreme Court of 22 October 2007 case file III CZP 109/07

• The judgment of the Polish Court of Competition and Consumer Protection of 26 December 2006, case file XVII AmC 170/05

• The judgment of the Appellate Court in Katowice of 16 June 2006, case file I ACa 272/06

• The judgment of the Appellate Court in Poznań of 26 April 2006, case file I ACa 1228/05

• The judgment of the Regional Court for Warszawa-Mokotów, case file II C 1091/04

• The judgment of the District Court in Łódź, X Commercial Division of 22 June 2004, case file X GC 1245/03