Domain name game-changers

However, they have also created an extra burden for trademark owners, who now have to secure their trademarks as domain names and ensure that they are not infringed.

The initial aim of domain names was to make navigating the Internet easy for users. Due to their directional importance and memorable length, they were adopted as commercial identifiers and, in many cases, substitute trademarks.

The use of domain names as commercial identifiers increased as commercial opportunities on the Internet expanded. Consequently, the economic value of domain names gradually grew and they have since become rentable spaces for enterprises that are looking to do business online.

Controversial cybersquatters, who register domain names for designations that are oft en trademarked, have also emerged and they can cause problems for trademark owners when they attempt to move into Internet commerce.

In Argentina, trademark owners can take rapid action should cybersquatters move in to infringe their marks. In the majority of cases, Argentinian law uniformly applies the Internet Corporation for Assigned Names and Numbers (ICANN’s) Uniform Dispute Resolution Policy (UDRP).

It is crucial for trademark owners to be aware of the diff erent national cases involving domain names so that they can eff ectively and efficiently protect and enforce their rights.

The Network Information Center (NIC) oversees the administration and registration of domain names in Argentina. This organisation can deny certain domain name registrations in certain situations, but there have been few cases in which it has been necessary to use legal proceedings to prohibit the use of a domain name.

Generally, mediation is used to achieve the same result. Argentinian jurisprudence coherently applies ICANN’s UDRP. Consensus has been reached in Argentina’s civil courts on giving a trademark owner the ability to defend its right against trademark infringement.

This includes the confusion that an illegal domain name can generate. However, it is important to highlight the difference that exists in the trademark aspect of ICANN’s UDRP, in which it is necessary to demonstrate bad faith in the use or registration of a name, or a lack of legitimate interest.

According to the rules formulated by ICANN, a domain name is registered in bad faith when:

• An off ender’s domain name is identical or similar to a trademark and causes confusion;

• An off ender has neither the rights to nor a legitimate interest in the domain name being registered;

• A domain name has been obtained with the aim of selling or transferring it to the owner of an identical or similar trademark at a higher cost;

• A domain name is used to illegally appropriate a trademark by making the public believe that a trademark owner’s products originate from the domain name owner and not the genuine trademark owner;

• The aim of a domain name registration is to prevent competitors from doing business online; or

• A domain name owner uses its registration to harm a trademark owner’s reputation with impolite images.

Importance of trademarks

Owning a trademark can provide an enterprise with sufficient force to prohibit misappropriated domain names.

Trademarks can protect enterprises, as well as the products or services that they own, on the Internet because trademark laws have developed in many jurisdictions to include the Internet as a place where the rights are protectable. Therefore, it is highly risky to own a domain name and not have it registered as a trademark.

Important Argentinian domain name cases

Freddo case Ice cream parlour chain Heladerias Freddo SA, owner of the trademark Freddo in Argentina, requested for the domain name freddo.com.ar, which was previously registered by the defendant in the case, to be transferred to it.

Complying with Freddo’s request, the judge ordered the NIC to withdraw the defendant’s domain name registration and replace it with a legitimate registration from the trademark owner. As the judgment in this case was the first of its kind, the judge outlined a precedent for the ownership of domain names that relate to registered trademarks in Argentina.

The judge stated that, as a principle, a domain name that is identical to existing trademarks can be held only by the owner of those rights. The registration that was held by the defendant prevented Freddo from registering its own trademark as a domain name and stopped it from being a part of the Internet and, as a result of the outlined principle, this could not be allowed.

PSA case

The president of Industrias Pugliese SA, owner of the trademark PSA, asked for the domain name psa.com.ar (registered by the defendant) to be withdrawn. The company president also asked for permission to register the domain name in his own name.

The judge in this case agreed with the plaintiff and the previous case law in this area, but the defendant appealed against the judge’s decision. On appeal, there was no doubt that the case involved the “protection of a trademark registration, which was being used by someone who was not the legal owner”.

The appeal court also said that “the cessation of use directed to the offender was not enough to offer the petitioner the possibility to enter the Internet market with its own trademark”. Consequently, the appeal court ratified the temporary authorisation given to the plaintiff to register psa.com.ar in his own name.

ByK Argentina SA National State case

This case has some particular characteristics. The plaintiff (owner of commercial designation ByK Argentina) applied for the domain name bykargentina.com.ar, which was denied by the NIC. This was because Argentinian law reserved domain names that contained words such as “national”, “official” and “Argentina” for public entities.

ByK filed a judicial action and asked for the domain name in question to be temporarily registered. The judge refused this request because it did not have legal credibility and there was no risk to ByK due to the delay in granting the domain name.

On top of this, the judge said that reserving domain names for public entities was a legitimate endeavour. The National Chamber of Appeals in Civil and Commercial Matters, however, invalidated this decision, by allowing a provisional registration of the domain name, as long as ByK posted a $50,000 bond in case damages were required later on.

The court considered that if the plaintiff was deprived of “utilising its commercial designation on the Internet ...the property rights would be violated by preventing its entrance to the virtual market and selling its products from there”.

These cases show that trademark owners with online presences have used different legal methods to win back infringing domain names from cybersquatters, often with much success. Trademark holders are carefully working to understand the process in Argentina and they are taking advantage of the opportunities on offer on the Internet.

However, the expansion of the Internet puts pressure on the territorial protection of trademarks and makes confrontation in court difficult to avoid.