Por Elizabeth Cazzadore

Nowadays technology is part of our lives in such a way that we rarely stop to evaluate everything that implies the use of it. When we browse the internet, we do not ask how we get to a certain website or what the legal repercussions behind each “Accept” or “I Agree with the Terms and Conditions” may be; moreover, it is not bold to think that many users are more interested in using the webpage or the application than actually knowing what they are accepting.

Domain Names

It is important to review certain basic notions on Domain Names. The Venezuelan National Telecommunications Commission (CONATEL) define domain names as “(…) an identification network associated with a group of devices or equipment connected to the Internet network. The main purpose of domain names on the Internet and the domain name system is to translate the IP addresses of each active node in the network to recallable, easy-to-find terms.”[1]

Due to the relevance and specific nature of this topic, the World Intellectual Property Organization (WIPO) in its Arbitration and Mediation Center developed a guide for the resolution of disputes regarding domain names, better known as the Uniform Domain Name Dispute Resolution Policy (UDRP),[2] in order to provide effective, efficient solution to the constant and numerous disputes arising from the legal confusion applicable the domain names.

“Cybersquatting”: What is it?

It is worth noting that the most common incidence is the “Cybersquatting”, which involves the pre-emptive, bad faith registration of trademarks as domain names by third parties who do not possess rights in such names.[3]

An illustrative case on this subject is the one involving Nike at the end on April 2018, where Nike gained possession of 20 new domains, including nikeairmax97.com, shopsnikeukoutlet.com and nike-trademark.com. Nike’s main assertion is that that the domains “contain (…) registered trademarks and as a result, run afoul of the law.[4]

 

WIPO’s Position

Panelist Wilson Pinheiro Jabur found that Nike’s “trademark is one of the most valuable trademarks in the world, and [Gueijuan Xu] [5] reproduced [its] well-known logo and products in some of the webpages to which Internet users are redirected.”[6]

However, Nike has not been the only company protected by decisions such as this one. In the recent past, luxury companies such as Prada, Balmain, Jimmy Choo, Salvatore Ferragamo, Swarovski, and Hugo Boss, have benefited from a process that focuses on satisfying needs beyond winning, within an impartial forum, which, in turn, attracts investment, which is the case of arbitration in the modern world.

The uniform policy has effectively resolved more than 5,000 disputes filed collectively, which has fostered the confidence and diligence of many companies in resorting to this method when they are affected by cybersquatting, creating global awareness of this issue and its alternative ways of resolution, also giving rise to a symbiotic relationship between Intellectual Property and Arbitration.

[1] Extracted from: http://www.conatel.gob.ve/dominios-ve/

[2] Extracted from: http://www.wipo.int/amc/es/domains/guide/

[3] Extracted from: http://www.wipo.int/export/sites/www/amc/en/docs/guide-en-web.pdf Page 3

[4] Extracted from: http://www.thefashionlaw.com/home/nike-victorious-on-domain-name-dispute-as-brands-crack-down-online

[5] Chinese resident who registered the domains in bad faith, to use for the peddling of counterfeit goods

[6] Extracted from: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0360