How sacred is a domain?
Written by: René Jakl
Photo by: Věroslav Sixt
It occurred to some scammers in the early ’90s to register protected trademarks for themselves using the names of global firms. The courts prohibited this practice, but the preying on famous names did not cease, it just shifted to the internet in the form of so-called cyber-squatting. Laws against this exist as well.
For example, the media carried disputes concerning the dagmarhavlova.cz web site, or the case when a private firm registered the name of a town as its domain. Cases in which an unauthorized subject registers as its domain name the trade name of another firm, its registered trademark, or even a well-established product name, are more significant in terms of trade and business. The rapid development of the internet outpaced the development of laws that should have regulated it. However, lawyers who deal with this issue claim that new legislation is unnecessary.
Especially in the commercial sphere, the provisions of the Commercial Code on unfair competition are sufficient. “Depending on the specific situation, an unauthorized user could engage in behavior described in §46 – False marking of goods and services, §47 – Creating the danger of confusion, or §48 – Usurping a reputation, all of course occurring together with the violation of the right of trademark, which may be penalized according to article 150 of the Criminal Code – Violating rights to a trademark, trade name, and protected designation of origin,” notes Jiří Janeba, a lawyer published on the epravo.cz web site.
For creating the danger of confusion it is enough for a speculatively registered domain name to differ only slightly from a protected name. The Commercial Code generally provides the injured party with the right to sue to force the perpetrator to desist from unfair competition and to compensate the injured party for damages incurred, and to provide appropriate satisfaction, financial, for example. However, this does not return the domain to the injured party. The important thing is that the offender must pay amends, and Janeba sets forth the following example: “There is only one way to rectify the wrongful status, which is to transfer the domain to the justified party, with the accused party being entitled at most to compensation for money spent in connection with the registration.”
This article was prepared in cooperation with Česká pojišťovna’s legal department.