SELECTED ISSUES REGARDING LEGAL PROTECTION OF NAME OF INTERNET DOMAINS IN POLAND
Each product and service existing on the Internet draws new customers and a website used by the entrepreneur may undoubtedly constitute their business card. Moreover, the model of advertising their business activity through web sites unquestionably is advantageous form the economic point of view.
One of the forms of advertising services on the Internet are internet domains, which in short may be described as an address, under which a website presenting certain content exists. The internet domain is a connection between IT works of the Internet network and an average user thereof, since only through the domains each of us has a chance to obtain information provided in the World Wide Web.
The process of registration of the domain is quite simple and does not require conduct of any complicated procedures. Domains, including the pl. domain names, are registered under “first come, first served” rule what renders it impossible to register two domains under the same name. This system has, however, one major flaw, namely it does not control whether entities that register a given domain have a right to this particular name. A registrar does not verify whether the entity registering a given domain has a right to the used name and if by registration of the domain third party rights are not being breached.
Polish law provides for three fundamental domain protection regimes, which comprises intellectual property rights due to the entrepreneur, i.e.:
- industrial property right act – protection of trademarks;
- act on combating unfair competition – acts of unfair competition such as, inter alia, use of a name of somebody else’s enterprise, misleading as to the source of goods or services, blocking access to market or passive blocking of domain;
- civil code – protection of a right to a company name of the entrepreneur.
One may object to registration of a domain by a third party that the entrepreneur considers as breaching their right by filing an action with a common court or court of arbitration. The Court of Arbitration on Internet Domains at the Polish Chamber of Information Technology and Telecommunications is the court that is most frequently chosen in matters regarding breach of rights due to registration of pl. domains.
The proceedings conducted before the Arbitration Court in Matters Concerning Domain Names may be divided into three stages: filling pre-trail proceedings, submit request for arbitration, which must be signed by both parties prior to initiation of an action and initiation of the action. Due to the nature of the court of arbitration the case is resolved by an arbitrator selected by the parties from a list of arbitrators provided by the Court of Arbitration on Internet Domains. On the list of arbitrators of the Court of Arbitration are prominent experts both in theory and practice from the field of intellectual property.
The proceedings before the Court of Arbitration take place approximately 3-6 months and one of its features is that hearing of evidence based in particular on documentary evidence occurs particularly efficiently. In this type of proceedings it is rather unusual that hearings are being set even though are permitted under the Rules of the Court of Arbitration. In order to be valid the awards issued by the Court of Arbitration must be approved by an appropriate court of appeal, e.g. Court of Appeal in Warsaw. After being approved the award of the Court of Arbitration is enforceable. In the event in the award the Court of Arbitration decides that as a result of registration of a given domain the exclusive rights of the plaintiff have been breached, the award will constitute a basis to change a subscriber of the disputable domain. This type of change is made under a request submitted to the Research and Academic Computer Network (pl. NASK), i.e. the Polish registrar of pl. domains.
According to the above, proceedings before the Court of Arbitration seem to be a fast alternative to the common courts that do not specialize in this branch of law.
From the year 2003 when the Court of Arbitration was established to the Court of Arbitration have been filled 950 cases, most of which ended in an award of the Court.
One of the most controversial awards published on the website of the Court of Arbitration is the award regarding chatier.pl domain dated 15th March 2015, where the Court of Arbitration decided that the defendant breached the rights of Cartier International A.G., the Swiss company manufacturing luxury goods such as, inter alia, perfumes, watches or beauty products that is entitled to numerous Cartier trademarks. This award was vividly commented due to the fact that both the sound of the business name of the plaintiff and their trademark substantially diverged from the disputable name of the domain.
It is not always easy to regain the name of a domain that was unlawfully registered, however, if the entrepreneur is aware of registration necessity and protection of their intellectual property rights, they have material arguments to fight with the entities that unlawfully register domain names.
When considering registration of a domain as a form of business investment, apart from the typical domains from the so-called top level domains(e.g.: .com, .org, .net) or the country code domains from the lowest level (e.g.: .pl, .de, .co.uk) it is also worth to consider registration of the so-called generic top level domains, among which more and more frequently appear new extensions (np. .bike, .fitness or .university), which undoubtedly may have significant business potential.
The article has been originally published in e-magazine of SPCC (The Scandinavian-Polish Chamber of Commerce).
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