Domain name cases analysed




Trade marks play an essential role in domain names, and the owners of trade mark rights have been the main promoters of the regulatory process of domain names.

Likewise, in many situations, the domain name plays a role which is analogous to that of the trade name since, due to its penetration in the market, a company's website can become an online or virtual branch of it.

Since it is extremely important for companies to register as domain names their own trade names or the trade marks they market (so that internet users find it easy to locate and have access to such a website), those trade mark owners have been the main victims of the cybersquatting phenomenon – the intentional registration of a domain name including a third party's trade name or trade mark in order to block its use on the internet or to force that third party to pay to acquire it.

A person damaged by the use of his trade mark against his will on the internet, whether it is a case of absolute identity or similarity that causes likelihood of confusion, has a series of legal resources to enforce his rights.

The damaged party can resort, for example, to legal actions framed within the laws against unfair competition. These legal actions could also be grounded in Section 16 of the GATT/TRIPs, on Section 6 bis of the Paris Convention (in the case of well-known marks) and Argentine Trademark Law.

An analysis of Argentine judgments related to an unauthorised third party registering a domain name that is identical or similar to a registered mark shows that judgments have generally given priority to the registered trade mark and have ordered the suspension, cancellation or transfer of the domain name in favour of the trade mark owner.

Daniel R Zuccherino

Obligado & Cia

Paraguay 610, 17th Floor
C1057AAH, Buenos Aires, Argentina
Tel: +54 11 4114 1100
Fax: +54 11 4311 5675
admin@obligado.com.ar
www.obligado.com




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