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Cybersquating: legislation (2)

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The United States was the first nation to pass anti-cybersquatting legislation. In 1999, the US Congress passed the Anticybersquatting Consumer Protection Act (ACPA), allowing trade mark owners to obtain monetary damages and injunctive relief in a federal court when a third party with a bad faith intent to profit . . . registers or uses a domain name that is identical or confusingly similar to a mark. The ACPA provides a nine factor test to consider whether a person acted in bad faith, including whether the domain name is used commercially or if the domain name was offered for sale to the trade mark holder.

There is no European counterpart to the ACPA. Acts of cybersquatting are dealt with according to national laws. With respect to existing European legislation, the use of a famous trade mark in a domain name would fall under the special protection provided for well-known trade marks in Article 5(2) of council directive 89/104. This provision applies if a trade mark is infringed by use of an identical or similar sign in the course of trade with dissimilar goods provided that the trade mark has a reputation in the Member State and the use of the sign takes unfair advantage of or is detrimental to the distinctive character or the repute of the trade mark.

However, the World Intellectual Property Organization (WIPO) has now developed an international standard for dealing with cybersquatting. In 1998, WIPO established its First Internet Domain Name Process to develop recommendations for the international community concerning issues with Internet domain names, including domain name dispute resolution. In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN), the U.S. company in charge of regulating the Internet, adopted these recommendations in a Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP provides trade mark owners with an efficient administrative mechanism for resolving domain name disputes and combating cybersquatters. Under the UDRP, a complainant must demonstrate that the disputed domain is identical or confusingly similar to its trade mark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and used the domain name in bad faith. Disputes are decided by independent panelists drawn from the WIPO Arbitration and Mediation Center’s list of 400 trademark specialists from over 50 countries. An important distinction between the UDRP and the ACPA, however, is the available remedy. Under the UDRP, the sole remedy is the transference of the domain name (not monetary damages or injunctive relief). The UDRP is followed by nearly all registrars (for domain names ending in .com, .net, etc), however, for domain names ending in a country code (ie .se for Sweden and .de for Germany), different national policies apply. These policies usually mirror the language of the UDRP.

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