One of the astringent issues faced by intellectual property rights (IPRs) holders nowadays is enforcing their rights on the Internet, whether in conflicts deriving directly from the act of selling counterfeit products over the Internet or those involving domain name disputes. This latter concern is the focus of this report.
It is generally known and accepted that holders of earlier intellectual property rights, and in particular holders of registered trademarks, can enforce these rights against the unauthorized registration and use by third parties of identical or confusingly similar domain names, when users unlawfully benefit from the reputation of the earlier trademark among Internet users.
In Romania, ccTLD (.ro) domain names are managed by the Romanian National Institute for Research and Development in Informatics – the RoTLD Registrar – a legal entity organized and functioning under the supervision of the Ministry of Communications and Information Society.
The economic potential of domain names has led to abusive registrations of .ro domain names of well-known trademarks by third parties. These abusive registrations have generated many disputes.
A dispute regarding the unlawful registration/use of a .ro domain name can be solved either by arbitration, in line with the uniform domain name disputes policy (UDRP) approved by the Internet Corporation for Assigned Names and Numbers (ICANN), or by filing a court claim in the competent Romanian courts/criminal investigation bodies.
The Romanian RoTLD Registrar has adopted the ICANN/UDRP policy by incorporating it in the registration contract that is signed by an applicant seeking to register a .ro domain name.
As opposed to pursuing a court action in relation to a disputed .ro domain name, which involves more time and increased costs, opting for arbitration offers faster results and the payment only of a fixed official fee (e.g., a UDRP complaint filed with the Arbitration and Mediation Center of the World Intellectual Property Office requires USD 1,500 in official costs for a single arbiter panel).
A party unsatisfied by the UDRP ruling can then pursue his/her claim in court: The claimant could seek the same remedies (i.e., the termination or transfer of the .ro domain name), or the defendant could seek to have the UDRP ruling overturned. In practice, however, cases involving contested decisions from the UDRP procedure are rare.
To avoid the consequences of a bad faith or unlawful registration and use of a .ro domain name, entities sometimes choose to register the domain in the name of a natural person – in many cases, one not directly linked with the entity that is actually controlling and using the website associated with the domain name. In such cases the information regarding the .ro domain name-holder will not be disclosed in the Whois database on the website of the RoTLD Registrar, pursuant to current data protection.
In such cases, until recently, trademark holders wishing to identify a natural person owning a .ro domain name and potentially pursue a legal action against that person had the option of filing a request for information with the RoTLD Registrar. In doing so, IPR holders presented their legal rights and requested the Registrar’s assistance in identifying the domain name holder.
However, apparently following discussions with the Data Privacy Authority in Romania, the Registrar recently shifted its approach, and now no longer responds favorably to such requests for assistance. In justifying its decision, the Registrar maintains that it is not able to assess whether a trademark holder’s inquiry for the information is legitimate.
Therefore, at the moment, the RoTLD Registrar offers the contact details of natural persons holding .ro domain names only to competent authorities such as the police, prosecutor’s offices, or courts of law, thus requiring IPR holders wishing to identify infringers to turn to those authorities for assistance. This approach, although allegedly justified by the observance of data protection legislation, makes the task of IPR holders seeking to defend their rights against infringements in Romania more difficult.
Time will tell whether it is the “no disclosure” approach taken by the RoTLD or the “full disclosure” approach taken by the Trademark Office – which displays all data of trademark holders – that will survive.
By Ana-Maria Baciu, Partner, and Andreea Bende, Senior Intellectual Property Counsel, Nestor Nestor Diculescu Kingston Petersen
This Article was originally published in Issue 4.5 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.