Bulgarian Law on Marks and Geographical Indications, and most jurisdictions in the world to regulate the trade mark has not yet responded to calls from the practice needed to regulate disputes in violation of a trademark that has made the internet. The fact that businesses evidently shifted dynamic entire advertising and commercial potential of the Internet, requires adequately address the problems of the trademarks used on the web, in order to fend off unscrupulous practices of third parties in the future, geared to trademark holders. . This statement is intended to indicate some of the major problems that occur when violations of trademark rights on the Internet and provide reasonable suggestions for legislative changes and practical ways to avert future abuses.
Disputes concerning the conflict between domain name and trademark. Technical features and characteristics. In modern times, domain names have become of the business identifiers and as such is often in conflict with the system of rights, subject to intellectual property, in particular - trademarks. In most cases, disputes arise concerning domains based on good faith registration of trademarks by third parties as domain names. For example, the domain of a website for Internet services are registered as a word or a combined brand that fully includes or incorporates by word element corresponding domain.
Against this context I would like to draw attention to the phenomenon called cybersquatting - "squatting in cyberspace", which is registered and / or directing traffic, using the domain registrant has no right on it or not authorized by those who have a legal right (trade mark holder). Cybersquatting generally represents unscrupulous usurping the domain with the aim of favoring alleged popularity of the term. This is usually done by attracting traffic from visits to a particular site or domain by offering for sale the rightful owner of the inflated price. The term comes from squatting (squatting) - to stay illegally in unoccupied spaces (non-proprietary). Popular online space is the practice of so-called "contractors" or “Cybersquatters” that make extensive research and register domain names bearing the name of the world imposed brands, celebrities or businesses that have no connection first. Since the registration of domain names is facilitated by their application electronically, usually “cybersquatters” register multiple domains, which subsequently auctioned or offered for sale directly to trademark holders at prices far exceeding the cost of registration. Another illegal practice of "cyber squatters" is through the registration of these domain names to mislead consumers, they are the owners of a trademark, directing them to a business related to their own sites. This practice is called "intentional redirection". In case of any confusion between domain names, it is recommended that each affected site directory to put your home page (s) with annotated links that explain the "confusion". This may be inconvenient technical solution, but it serves to isolate all the conscious or unconscious "redirects" in the future.
This hypothesis is the case with registering domain names, business names that refer to the companies in order to attract more customers and therefore be discredited direct competitors. The first hypothesis concerns the registration of domain in the "meta keywords". By placing the names of the competitors in the header of the HTML document (eg <META NAME="KEYWORDS" CONTENT="name of the concurrent">), some search engines will return to this document when users search for the name of trademark holder. The title of an HTML document in the Internet is invisible to most users of the browser, although almost any average literate technical users can view the HTML source and see this "redirection". This type of shift in the form of using "meta key word" in the HTML code of the page leads to driving traffic to the merchant, by creating the impression that he had a business relationship with trademark holder "X". What I foresee? Assuming that the person "A" has a service and corresponding online store for computers and wants to generate traffic to a certain segment from customers who want to purchase or seek services of computers "APPLE", it will suffice to use redirection under " meta keyword "to create the impression that" A "is the trusted service and dealer of the company in Bulgaria. Therefore, in the future, I think the legal framework should be extended to the prohibition against the use of a competitor's trade mark in the tags of HTML code under "meta keyword" as this can lead to the conclusion of invalid transactions based on mistake in person (see Article 28 LOC).
Another popular practice is “cybersquatters” to register domain names in different versions, which are similar to the popular brands - this phenomenon in the Internet environment is known as "typosquatting". In these cases, relying on voluntary or involuntary mistakes of users who entered the domain name in the browser, or looking for a product under the keyword in the search engine type "Google". Today's internet searches so constructed that the user immediately falls on the closest name to that famous trademark, which in this case is "hijacked domain".
A similar strategy was monitoring of desired domain for which the deadline of their registration. If the owner fails to make their re-registration period, these "strategic domains" are available for sale. “Cybersquatters” even use automated software to instantly purchase the domain when it is released from its previous owner. This strategy belongs to the patterns of identity theft. In 'domain name hijacking "the goal is usually acquiring undue advantage through extortion of an individual, company or public organization to buy the domain, this nostrum is often used in the case of unfair trade competition between direct competitors in the market (an example of what case is the White House (The White House) and against Whitehouse.com Whitehouse.org).
The seriousness of the problem is the fact that in 1999. supporter of the campaign headquarters of George Bush (who is running for U.S. president in 2000) registered domain www.bushsucks.com and more than 60 other domain names in order to prevent them to be used in bad faith against the future president of the United States . This measure is popular among for “Cybersquatters” to approach "hijacking the name" ( "name jacking"), which technically is usually done by registering a second level domain. In this case, the creation of a website with a stolen name allows the registrant to take advantage of visiting users seeking original name. For example, if Peter Ivanov is a professional in the field and till it has a regular clientele, it is logical potential customers to seek information about him on the internet previously accumulated by a keyword that is his name. In the same vein, if your domain has been hijacked petarpetrov.com in demand it will appear among the first results for the individual (example - actor Kevin Spacey has filed suit in California against the owner of the domain kevinspacey.com in a similar hypothesis). Usually the purpose of websites that use hijacked domains to sell products with higher profit and in most cases these are products such as electronic books or ideas for business ventures. Internet statistics show that only a few are enough purchases from this site for it to become a real e-business. This attracted web traffic can be used for additional revenue from advertising, affiliate schemes, giving the franchise, etc.
Reasonable in this context is reflected in the practice of the opinion that unless the mandatory registration of the trademark, which concerns the primary domain under which the performance of a business website, it should be preserved as protected domains and a series of domain names (such rosasucks.com and rosamirishe.com), and a series of domains representing any spelling errors (eg, roza.com and roso.com) and the same second level domain (rosa-bg.com). This step is necessary rather than pragmatic reasons as annual costs for additional registrations sub domain is unlikely to exceed the amount of state and attorney's fees for filing a possible lawsuit under the conflict of rights between the mark and the domain name, but on behalf this as a precautionary brand will lead to avert the possibility of future litigation.
The reason this is possible is the lack of a legal international agreement within the community "Internet", which legally allows organizations registering domain names, monitor and control the process of applying for potentially problematic names. The reasons range from several factors - such as the fact that it allows easy domain name registration for the promotion of global e-business, in practical circumstances difficult to find who actually has the rights to a trademark, given that it can not recorded (just stated) or business identifier, represents the category of business names such as.
Unfair trade messages and comments. Internet allowing to every single member of electronic services to author critiques and comments on any topic. A few years ago, you had to pay for this type of publication in a newspaper or other media, as personified it personally. Natural result of the new opportunity provided by the internet is that a few "disgruntled customers" can not publish anonymous or pseudonymous signed material on the Internet that is highly critical of the goods or services of the trademark owner.
For example, a registered trademark of sheep cheese "Rosa" can be combined with the word "sucks" or "smell". Such use is neither a brand nor a violation of a trademark already registered, in which case it is assumed that one " critic "can even legally registered domain www.rosasucks.com or analogue www.rosamirishe.com. All this, combined with a shift of traffic to certain malicious comments about the quality of the product would certainly damage the commercial image of trademark holder or manufacturer and brand of "Rosa." In the Constitution of the Republic of Bulgaria has a basic rule of Art. 41, namely that everyone has the right to seek, receive and impart information. realization of this right can not be exercised against the rights and best behalf of others, as well as against the national security, public order, public health or morals. Though described provisions of the Constitution and the prohibition of false speculation, manipulation or immoral information in Bulgaria is still no texts to incriminate similar behavior to provide for such an offense such as aggravated art.172b of the Criminal Code. these changes are necessary because distribute false, defamatory or immoral data trademarks on the Internet has practically constitutes an improper commercial use of commercial mark, without the consent of trade mark holder (for the sale of goods and services). Against this background is not applicable civil law and prevention based on breach of a trademark under Article 73 of the Trademark Law, as there are no grounds specified therein, namely:
- setting the mark to material intended to be used for labeling or packaging, commercial papers or advertising of goods or services if the person who performs such acts knows or has reason to believe that the mark has been affixed without the owner's consent ;
- development of a tool specifically designed or adapted for the reproduction of the mark, or the possession or storage of such vehicle if the person who performs the action, knowing or having reason to believe that this tool is used or will be used for production of goods or material by section 1 without the owner's consent.
However, a positive step has been the creation of a web portal http://www.cybercrime.bg, administered by CDCOC whereby each user may refer to "Department of cyber crimes" for intellectual property violations in the network.
As a global problem and its administration was resolved by creating a so-called "system of domain names DNS" (Domain Name System). It is a distributed database for computers, services, or other resources connected to the Internet or private networks with which care is provided to convert hostnames into IP-addresses. This simplifies the user experience of Internet services. Instead of introducing IP-address (combination of numbers) to reach the resource in the network, the user can simply enter their name (domain).
Information on IP-addresses and domain names are stored in a DNS-servers. DNS is a distributed system of tree bound by a logical hierarchy of servers. The basis of this structure are the servers that store: top-level domains (called top-level domains) - eg. Com,. Org,. Net etc. and many state-level domains (country-level domains) -. bg (for Bulgaria),. fi (for Finland),. fr (for France), co.uk (for England), etc.
The next level domains registered form (registered domains) such about.com, abv.bg, pirin.com etc. Local domain (local domains), also known as second-level domains or sub domains, as compnetworking.about.com, higi.pirin.com, are determined and administered by the owners of the major domains. To separate the different levels used dot (.).
The organization, which deals with the registration and administration of top level domains is Internet Corporation for Assigned Names and Numbers (Corporation for Assigned Names and Numbers) (ICANN).
Depending on whether to register a top level domain (eg www.kokacola.com) or second level domain (www.kokacola.org.uk), organizations, domain registrars, have adopted internal rules based on the possession of intellectual property, whether a domain is treated as protected respectively by unprotected one.
Disputes over ownership of the domain name can not be resolved by ICANN (Internet Corporation for Assigned Names and Numbers) a special procedure called UDRP (Uniform Dispute Resolution Process). It is applicable only for domains registered in the namespace some of the common top level domains controlled by ICANN (. Com,. Net,. Info, etc.). Namespace or regional level domains have chosen to adopt the procedure - as Register.BG has - for the regional level domains with extension ".bg". In some countries like the United States has already adopted special legislation against “cybersquating” in the states is adopted in 1999. Act as the Anticybersquatting Consumer Protection Act.
National practice for protection of domain names. Register domain names in ". Bg" was established in 1991. by then the only internet service in the Republic of Bulgaria - "Digital Systems" Ltd.. In 2001. functions of registration and maintenance of domain were separated from the "Digital Systems" Ltd. and transferred to the newly established company Register.BG has. And to date, this is the company which has delegated management of domain names in top-level country code ". Bg".
In the 90 years of global and national scale, numerous fraudulent practices, which focused on the purchase of domain names imposed on companies, products or products marketed for these domain names to be offered for sale after the fact and extortion of real owners a profitable business. Therefore, in order to limit such attempts in the future, companies that sell domain should have taken adequate measures to protect intellectual property to business identifiers and consumer brands. An example is the rule implemented in general conditions of REGISTER. BG, which states that the registration of domain names in the top level with the extension ". Bg", the registrant may choose one of two options:
- The first option is to give the registry documents proving ground for using the name. The ground must be present at the time of registration of the domain, with subsequent changes in circumstances affecting the registration only as provided in the general Register.BG has conditions for this cases. In this case, the domain is registered as protected. Undoubtedly formulated certain general conditions give protection to the registrant, but I think it must be explicitly adjusted correctly in the direction of a full display of the required documents, namely:
- Filed an application for a trademark or a certificate of a registered trademark;
- Document keep the company name and / or business decision that shows that the applicant owns a company under the relevant corporate name;
- Copies of personal documents (which do not contain personal data under the Privacy Act), from which it appears that the requested domain name is the personal name of the applicant;
- Other commercial documents (invoices, contracts, etc.) from which it appears that the requested domain business identifier (name logo, product, good or service) that the applicant used a legal basis in its business in good faith .
Register.BG has held that the right to provide secure domain only deposit of these specifically mentioned documentary evidence:
- A copy of the document certifying that the registrant has registered trademark or geographical indication at the time of filing.
If a mark or geographical indication in the process of registration, the registrant shall submit a certificate from the Patent Office with attached bibliography of the preliminary investigation.
- A copy of the award ISSN or ISBN (if the domain concerns title printed).
- Proof of certain facts (if the domain name concerns a program or project of the state, county or municipal administrations and institutions in a country member of the EU or an EU body).
- A copy of the license (if domain concerns licenses valid in the Republic of Bulgaria).
- A contract to a firm or consortium / original or notarized copy / from which to see people representing the name of the company / consortium / UIC certificate (VAT number) and proof of the right to exercise a profession, if it is requires special law.
- A copy of the license or certificate of the media for its registration under Article 125 of the Law on Radio and Television, the representative of the relevant certificate (s) of media that show a corresponding name and producer - registrant is included in the scheduling of the media ( If the domain concerned media program or transmission).
- Constitution of the organizing committee for the event, which are prominent representing the name of the event (if the domain concerns cultural, scientific or sporting event).
- Certificate issued by the Election Commission for registration of coalition or initiative committee of which are prominent and its representatives (if the domain name concerned party).
- A certified true copy of the franchise agreement and all other agreements thereto, which are certified for use human name.
- Certificate from the Ministry of Culture under Article 7 of the Regulations for the registration of the names of artistic groups (if the domain name refers artistic group).
- Certificate of categorization of objects (if the domain concerned tourist site).
- A copy of the building permit (if the domain name refers to a construction site).
- Extract from the relevant Register of Shipping (if your domain name refers vessel).
- The second option is registrantat not provide registry documents proving ground for using the name. The reason for this option lies in the significant increase in popularity and use of a domain ". Bg" in 2008. Due to this fact, apparently mostly for commercial reasons Register.BG has expanded the possibilities for registration of domain names in the top level with the extension ". Bg", allowing registrants of a risk register domains without providing justification for use of Internet name. In this case the domain name is registered as unprotected. Target hypothesis, however, lies the danger to any other person said in a later stage of the domain name as a trademark and request a plea as a trademark holder to be prohibited from using the Internet name in question (chl.76zh of Indications) this action be suspended (Article 76, Paragraph 1, Item 2 Indications). Trademark holder hinting the domain may request same tap transferred to him as the owner of the intellectual property rights on it (Article 76, Paragraph 2, Item 1 Indications).
In this context, to resolve any disputes between registrants and domain name applicants, Register.BG attach themselves "Arbitration Committee" (which really should be a tribunal in its pure form), consisting of three independent external experts - two lawyers and an expert on intellectual property. In case of disputes concerning domain names and trademarks, respectively, Register.BG convene the Arbitration Committee by providing meeting place, technical secretary and documents necessary for the proceeding. The dispute is being dealt with on the basis of the written documents and submissions of the parties, the arbitration reasoning based on Indications and general conditions for registration and maintenance of domain names in the extension ". Bg" and sub him. You should make several important clarifications on the Arbitration Commission to Register.BG has and its legal structure.
Option provided by Register.BG has to "arbitrate" cases concerning domain is more "wishful" as the targeted site and its operations are owned by the company, which does not have the function of a particular jurisdiction because several reasons. Administrative courts are part of the structure of the executive (usually created by law) to act in accordance with the principles of justice. Given to those usually appealed individual administrative acts - such as the Commission for Protection of Competition / CPC / jurisdiction in disputes on the basis of the Law on Protection of Competition, Law on Public Procurement and Concessions Act and the Department of the Patent Office - rule on the administrative acts of the Patent Office. In this sense, the judiciary arbitration to Register.BG has stemmed from voluntarily expressed will of the disputing parties, not by the law formulated jurisdictional competence of a particular jurisdiction. Arbitration (including that of Register.BG has) generally has the judiciary only in the event that all stakeholders act issued have expressed desire to confer the right to resolve the dispute, while special jurisdiction judiciary is mandatory and arises under the law. Another difference relates to the fact that written documents issued for the registration of domain Register.BG has a strength of private documents testifying, not an administrative act, as they are issued by a company, not jurisdiction. From this perspective, the document to obtain a domain can not be subject to administrative proceedings before a special court, since the first is not issued by a public authority and not a second will, expressed in an individual administrative act.
Why can not point out the fact that arbitration is to Register.BG has seemingly effective legal instrument to discharge judicial system too specific disputes concerning intellectual disputes over domain due to several circumstances. First - Register.BG has to arbitration proceedings is one level of authority and its decisions may be appealed in court. There is only extraordinary control over arbitral awards, which limits the validity of the arbitration agreement (in the case of a dispute concerning a domain) and compliance with the arbitration procedure without accuracy control its substance. This is a laid down in article 47 ICAA specifically, claims one level of authority control procedure enacted judicial act of non-state institution. Second - all these circumstances cause the trust to the Arbitration Commission of Register.BG has to now be a stable value, which is supported by the fact that arbitration awards the target organization are rarely challenged in court by the intended extraordinary control.
- How Arbitration Committee is structured to Register.BG has such a legal structure? This is a "national institutional arbitration." What does this mean? This arbitration in disputes between Bulgarian natural or legal persons having permanently established at governmental organization (in this case a company). Arbitration Commission to Register.BG has no rules and arbitration arises to address a particular dispute, the subject of rights in a domain name. Parties themselves agreed with procedure for arbitration and what would be the applicable law, and what is at issue. The language of the proceedings is Bulgarian. The seat of the arbitration is in Varna. Arbitration Commission to Register.BG has been called the category of arbitration as disputes within the industry - in this case - on the intellectual property domain names.
Arbitration disputes concerning domain names offered by Register.BG has can be real only if it is a voluntary resolution of the dispute. This type of arbitration is based on acceptance of a general arbitration agreement must be concluded in writing. It is believed that the agreement is in writing if it is contained in a document signed by the parties, and is implemented in an exchange of letters, telex, telegrams or other means of communication. Arbitration agreement Register.BG has to occur when the defendant or written statement, recorded in the minutes of the arbitration hearing, accept the domain name dispute to be dealt with exactly this or when arbitration has commenced participation in the arbitration proceedings, without challenging the jurisdiction of the Arbitration Commission to put Register.BG has otherwise valid arbitration agreement certifying the consent of the parties to submit to arbitration all or certain disputes which have arisen between them on set (in the case of non-contractual) relationship disputes concerning the domain name. By its nature this legal agreement is procedural - derogation contract because it derogates from the state authority of the court and creates private voluntary arbitration, which was created for a trading company.
For its part, the Arbitration Commission, which exists at Register.BG has been adopted in practice several specific rules for arbitration of disputes. One of the most important of them is that reasons of legal certainty and the successful arbitration of disputes concerning domain names Arbitration Commission for arbitration has introduced more stringent conditions than in the very process of domain registration. It is also because the applicant for arbitration may request withdrawal of a domain only if the domain name matches the word element with an already registered trademark. Otherwise trademark holder can make existing rights described by the court with envisaged Indications claims, such disputes in Bulgaria are cognizable to the Sofia City Court.
- Procedure for Arbitration of disputes to arbitration committee of Register.BG has. That referred to arbitration before the Commission is subject to all relevant domains of the field ". Bg" extension. Production is initiated by filing electronically (on-line), each request for arbitration of a particular dispute domain name is assigned a unique number and dates. In 15 / fifteen / days of the establishment of the arbitration claim is paid a fee determined by the rate of Register.BG has. In case you do not pay a fee within, Register.BG terminate the procedure. Payment of the fee accordingly leads to administer application of arbitrated dispute in domain names and case begins.
After the stage of administering arbitrated application, Register.BG notify registers domain beginning of the arbitration procedure. The notification is done via email. Within 30 days after filing the application, the applicant shall provide written evidence of the alleged ground of the domain. If it does so, the Arbitration Commission clears the case only on the basis of available documents filed Register.BG has. If you register a domain wishes to provide response and Register.BG has documents that can be used in his defense outside the documents provided during registration or change it, then it must do so within 30 / thirty / days of sending the notice by e -mail. Otherwise Arbitration Commission shall decide on the basis of currently available expiration documents Register.BG has.
As a result of arbitration registered domain name can be withdrawn in favor of initiate an arbitration procedure in the following cases:
- The domain is unprotected and the applicant challenged the arbitration procedure, has grounds to use this website name with an earlier priority register a domain with the extension "bg". When the latter does not or Register.BG has provided the legal basis for the use of the domain to the Arbitration Commission priority is given to the date of his application for registration of a domain name.
- The domain is registered as protected (by providing justification for use), but the registrant has submitted false documents, registered domain name which is contrary to the public interest or morality, or could lead to consumer confusion. The last reason is obviously of particular relevance as it meets the criteria advocated in the national and international case law establishing the similarity between the trade mark, namely to what extent use of the name would be confused the user.
After thirty (30) days to answer and send documents Arbitration Commission ruled in a closed session of the dispute based on the received documents on both sides of the relevant termination date. Based on the opinion of the Arbitration Committee, Register.BG decide the dispute within thirty / thirty / days after the deadlines for providing documents. Both parties to the dispute shall be notified of the decision by email. If the decision is Register.BG has the registered domain registration remains. But if the decision is in favor of the said request for arbitration shall be given the opportunity to make payment of fees for registration and maintenance of domain 15 / fifteen / days of sending the notice by e-mail. If this deadline is not received payment Register.BG has considered that the applicant had waived its registration, the domain remains the property of its registrant.
Arbitral award rendered by the arbitration to Register.BG has no state and private act, it has a public impact. This decision is the force of res judicata and It is binding on the parties and must be respected by the state courts and other state bodies such judgment. As in the case of transfer of a domain based on his one legal change occurs in the sphere of any party to the arbitration, the decision has constitutive effect. Award of Register.BG has a damning dispositive, so enjoy and enforceable. As soon as an award is enforceable, based on what may be issued a writ of SCC.
Given this procedure Register.BG has clarified it is noteworthy that despite the Arbitration Commission and seemingly established rules for independent arbitration of disputes by an independent body, it appears that the general rules of Register.BG has the competence of the Arbitration Commission to consider the dispute and only to give an opinion on it, but the final decision is taken by the company Register.BG has. This circumstance in my opinion, completely distorts the concept of arbitration and should be changed or refined, as otherwise this kind of "house" arbitration of disputes would be deprived of any legal content. Funny how none of the solutions is not attacked as the SCC on the basis that the formation of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties. I personally wonder how one trademark holder, requesting arbitration procedure or the registrant of domain signed arbitration agreement, which stated that the dispute will be arbitrated by the arbitral tribunal shall deliver its opinion on it, and the decision will be held on the basis that opinion of one company. Another strange thing is that the successful issue of the brand owner must purchase the domain in aquarium, otherwise it remains Owned the registrant. This view as a practical decision contradicts the purposes of arbitration and also housed its purpose because trademark holder can no interest in buying this domain, and he just wants to be there or not be used, which are two different things. For example, if a brand trademark holder "Koka cola" and consequently domain www.kokasola.com he just has no interest in registered domain www.kokasola.bg not to be misdirecting traffic from users to fraudulent acquired domain. I understand Register.BG has commercial motives, but they conflict with any rule of logic, because the purchase of the domain should be inspirational and it is observed in trademark holder interests or rights owner of the business identifier, and not that of the organization trading in domain names. In other case would be an abuse of rights, which can be qualify as monopolistic behavior and this fact can be a danger to themselves Register.BG has.
In the said context, the case law of Varna Administrative Court shows that several decisions of the Arbitration Committee to REGISTAR.BG were attacked in front of him. One of these cases is that Administrative Case № 716/2010g. the inventory of Varna Administrative Court brought by judgment against 10.02.2010g. an arbitration case № 44/2010g of Arbitration Commission in "Register.BG" Ltd., Sofia, with that plea Article 126 paragraph 1 item 4 of art.128 APC. With its award decision, the Commission has granted the request for arbitration № 67/22.12.2009g of "PRIMA-Production Information and Media Advertising Agency" JSC, being asked "Register.BG" Ltd. to terminate the registration of the domain "www.drugatabulgaria. bg ", after deletion to register the same name of" PRIMA "AD-Sofia.
Individual applicant I.P.K. argues that the decision of the Arbitration Committee has the characteristics of an individual administrative act art.21 vr.al.3 Paragraph 1 of the APC - it is creating the relationship of employer and employee, as stakeholders are not allowed to participate in the production before the arbitration committee, whose decisions are binding on the parties shall enter into force subject to immediate execution. It also shows that the commission actually act as an administrative body that imposes its will with the act giving rise to legal consequences directly affecting the rights of the registrant. In this connection point and the vices of the decision resulting from the violation of fundamental principles of law. Sought annulment of the decision and award made in production costs.
In its statement to the Varna Administrative Court President of the Arbitration Commission for arbitration case № 44/2010g states that "Register.BG" Ltd is a trading company which belongs to the executive power, nor has administrative powers under as per the law. § 1 item 1 of the APC ETC - and therefore its decisions are not administrative in art.21 by APC and can not be appealed against this order, which he characterized the appeal as inadmissible. President also highlights the fact that the regulation of domain names in Bulgaria provides the existence of administrative authority to interfere in relations between individuals equal contracting parties, in particular - the general conditions for registration and maintenance of domain in the field ". bg."
In view Varna Administrative Court found that the case lacks subject to challenge an administrative act. According t.1.13 the general conditions for registration and maintenance of domain names in ". Bg" and sub, the Arbitration Commission was formed by "Register.BG" Ltd. - a company that has been delegated the registration of Internet domain names. Bg, by to resolve the dispute between the applicant and the domain registrant (person whose name is a registered domain). Arbitration Commission, a body of private company (without state and / or municipal participation), which specializes in disputes between equal entities under contract concluded between them - the above terms and conditions. Therefore, the committee has no administrative authority as referred to in § 1 item 1 of the Additional APC, respectively - it has issued administrative acts are not in sm.chl.21 of APC and is therefore not subject to judicial review under this Code before the administrative courts. In view of these considerations, the control in this way and not be a legal person acts "Register.BG" Ltd. Varna. This conclusion is not altered by the fact that in reality the commission has authority over the disputing parties - its decisions creating rights and obligations for them, take effect and enforceable. That is the idea of arbitration - dispute resolution between equal footing without the intervention of the court, but by an act which has the same meaning and effect as a court for them. In this regard, one of the main principles for the convening of arbitration provides that before submitting the dispute before it, the parties agree to comply with the decision of the chosen arbitration and it is their power of judgment. This does not give the tribunal or commission as an administrative body under the APC, which is why their acts are not subject to challenge before the courts under the Code. Finally, the Administrative Court is Varna reasons for its decision and opportunity applicant to exercise his rights under the Special Law on Marks and Geographical Indications.
Foregoing reasons conclusion of Varna Administrative Court for the presence of termination pursuant to section 1 of Article 159 in relation to APC brought by I.P.K. proceedings for lack of subject to challenge an administrative act, therefore, and according to its powers under the court quoted text dropped the administrative case № 716/2010g the inventory of Varna Administrative Court, Division III., XXVI with- on the basis of appeals from I.P.K., against a decision of 10.02.2010g arbitration case № 44/2010g of Arbitration Commission in "Register.BG" Ltd. Varna.
Similar case is that of the administrative case № 3389/2009. described in the Administrative Court, Varna. Production originated in an application of the "DA MODEFINE" SA - 6850, Mendrisio, Switzerland, represented by attorney Yu.V. against the decision of the Arbitration Commission to "Register.BG" Ltd. from 13.11.2009g. rendered in arbitration case № 36/2009
In the contested decision, the arbitration committee of the "Register.BG" Ltd. was rejected the applicant's request for termination of registration of the domain "emporioarmani.bg", which is registered by the individual Ilian Todorov, Sofia. Under this factual context, the Administrative Court, Varna has found that the complaint before it is unacceptable and should not be considered. The reason is that Article 128 of the APC explicitly listed cases which are under the jurisdiction of the administrative courts. The appeal of arbitral awards rendered by arbitral tribunals or commissions not among those mentioned in the text. The very idea of a settlement between the two subjects excluded from arbitration court intervention. Therefore a basic principle of law is that before submitting the dispute to arbitration, the parties agree to comply with the decision of the chosen arbitration and it is their power of judgment.
It is true that the appellant cited and applied in the case of "good practices ccTLDs prevention and resolution of disputes relating to intellectual property" recommended procedure for disputing not replace court proceedings and be an additional option and losing country to have the opportunity to appeal the decision in court. In applicable Bulgarian legislation has not been provided an opportunity to appeal the decision of the arbitration in court, except the cases of article 47 ICAA and referred to by this rule grounds for appeal to the SCC. Introduced other option recommended in the "best practices" which refers to the protection of the courts covered in Trademark Law.
Based on these considerations and on the basis of Article 159 section 1 of the APC, Varna Administrative Court is left without consideration of the complaint "GA MODEFINE" SA - 6850, Mendrisio, Switzerland, represented by attorney Yu.V. against the decision of the Arbitration Commission to "Register.BG" Limited on 13.11.2009, rendered in an arbitration case № 36/2009, and eventually dropped the administrative case № 3389 on the docket for 2009, XXIV a-c, Varna Administrative Court.
These two definitions of the Varna Administrative Court by giving me a clear vision of two circumstances. First - it is unreasonable to seek protection through the judicial decisions of the Arbitration Committee to Register.BG has more administrative law courts, because apparently the only option in this case is the matter be referred to the SCC and only for specific reasons already given expression . Second - to clarify the gaps in arbitration proceedings conducted before Register.BG has related to the fact that the Arbitration Committee shall deliver its opinion on the case, and the very real decision is made by the company "Register.BG" Ltd. (which in my opinion is a legal Know Sense) should look at possible options for international arbitration of disputes concerning domain names and trademarks as an apparently more practical working and guaranteed legislative option.
International aspects concerning the protection of domain names. Along with domestic disputes on unfair practices in applying for domain names and the wide range of internet services, it should be noted that a particular growth in this direction and show a cross-border disputes. With the support of the Member States, the World Intellectual Property Organization (WIPO), which is mandated to promote the protection of intellectual property globally, has consulted extensively with the Internet community worldwide. Based on these was prepared and published a report with recommendations to address the problems related to conflict between trademarks and domain names internationally. Based on the recommendations of the report, Corporation for Assigned Names and Numbers (ICANN) adopted the "Uniform rules for resolving disputes concerning the domain" so-called "UDRP" (from English Uniform Domain Name Dispute Resolution Policy). This happened on 25 and 26 August 1999 in Santyago, Chile, where the board of directors of the Corporation for Assigned Names and Numbers (ICANN) adopted the "UDRP" rules based primarily on the recommendations of the WIPO and expert comments and observations made by the companies domain registrars and other stakeholders. Currently all accredited registrars of domain names by ICANN, which are authorized to register a top-level sub domain, must adopt "Uniform rules for resolving disputes concerning domain" and have agreed to abide by them as refers to e-commerce domains. Therefore, any individual or company wishing to register and purchase a top level domain, or Sub domain are required to give advance written consent (usually included in certain general conditions), it will comply with the terms and conditions of the "UDRP".
In the said context, I would like to mark the fact that at present fully WIPO administers disputes arising based on the "Uniform Rules for the resolution of disputes concerning the domain" (UDRP). In the event that the holder of a trademark believes domains violate its trademark holder, it can initiate to WIPO. "Uniform rules for resolving disputes concerning the domain" (UDRP) allow applicants to file a lawsuit against an Internet service provider, as specified by the supplier registered domain name, the name of the defendant, the owner of the domain and the grounds for the appeal. It should be highlighted on the criteria and considerations that justify the similarity or identity of domain trade mark application - usually seen as the domain name registered and used in bad faith. The defendant is offered an opportunity to defend himself against charges that are associated with it in bad faith registration of a domain name. What exactly is the procedure?
Disputes concerning the conflict between domain names and trademarks arbitrate by specially created to WIPO arbitration under the name ""Center for Arbitration and mediation - WIPO " It represents an international institutional arbitration with a special expertise in the field of intellectual property. Initiation of proceedings before the "Center for Arbitration and mediation - WIPO " " starts with a written complaint - electronically, by mail or by courier. The appeal shall be filed in one copy for the other side and one copy for the arbitrator (depending on how the arbitrator is selected). Complaint to WIPO in this background may submit any natural or legal person in the world, regardless of nationality or residence. From the "Center for Arbitration and mediation - WIPO " necessarily requires prior parties had entered into an arbitration agreement (English arbitration agreement) the fact that exactly WIPO and its specialized arbitration will solve your dispute concerning domain name and trademark. This text recommended by WIPO template agreement noted that the procedure must go through mediation phase. In it the parties are able to agree in advance to avoid the dispute between themselves and save the administrative fees. After this phase, we proceed to the actual arbitration of the dispute, the parties can choose whether the case will be reviewed by one or three arbitrators to choose the language of the proceeding and where meetings will be held. WIPO is the language accepted rule that the language of the arbitration proceedings shall be one "which was adopted by the parties to the arbitration agreement language." It is recommended that this language is not French or English, it is not specifically pointed out. As to the place of arbitration of the dispute, WIPO has taken the view that this should be the seat of the "Center for Arbitration and mediation - WIPO "," which is housed in the World Intellectual Property Organization in Geneva, Switzerland. The tribunal, after consultation with interested parties "may hold hearings in every place they have chosen to be appropriate." Arbitration decision, however, should "be deemed given, where the seat of arbitration." The production itself purely procedural obey the "rules of arbitration of disputes WIPO" (English WIPO Arbitration Rules).
In the context of the agreement of the parties, "the Center for Arbitration and Mediation WIPO" appoint one or three arbitrators to decide whether the domain should be transferred to the complainant.
What are the big advantages of the proceedings before WIPO? World Intellectual Property Organization offers highly qualified and neutral arbitrator participants that based on thorough research and expeditious administrative procedures decide on the dispute over intellectual property rights over the domain, which is characterized by impartiality and reliability. Another privilege commented method for solving cases is that the settlement of disputes by WIPO is done much faster than normal court procedures. The process is characterized by short term - up to two months to resolve disputes over domain names (because no hearing of the parties, etc.). Complaints and documentation for them is online by paying some pretty reasonable administrative fees. For example, to solve a case involving 1 to 5 domain with an arbitrator - the fee is $ 1,500 and, if the case is examined by three arbitrators total price is $ 4,000. In the event that the case is related to the arbitration of a dispute involving between 6 and 10 domains, which must be decided by an arbitrator's fee 2000 dollars, and if the same case is decided by three arbitrators $ -5000.
"Uniform rules for resolving disputes concerning the domain" (UDRP) as a process administered by WIPO, has been used in many well-known cases such as Madonna Ciccone against Dan Parisi and "Madonna.com" Case № D2000-0847 (judgment of 12 October 2000). In this case, the arbitrator at WIPO ruled against the defendant registrant, the domain name was transferred to Madonna as Mr. Parisi failed to demonstrate a legitimate interest in registering your domain madonna.com. An interesting fact is that the site under that domain during its use by g.n Parisi was pornographic content, and is currently the official website of world famous pop icon Madonna. This case served as a precedent for many other cases involving a dispute over a domain based on the registered trademark are arbitrated to WIPO.
I would like to draw your attention to more detail about the details of just such arbitration proceedings before WIPO initiated by actor Robert De Niro against Lorenzo Brusasko Mackenzie, owner of website "tribecafilmcenter.com". The dispute concerns the case № D2000-1772, which is a request to obtain ownership of all domain names incorporating the text "Tribeca" in favor of De Niro represented by company "Tribeca Film Center". These domains relate to claims for breach of intellectual property De Niro related Film Festival "Tribeca." A little background. The term "Tribeca" (in English "Tribeca") has established itself in the public domain thanks to a well-known neighborhood in New York (located geographically in Manhattan and describes the triangle between Canal Street, Church Street and Broadway). In the recent years this place has become a true trademark, which means everything that embodies the artistic essence of New York. In this neighborhood now lives artistic elite of New York - artists, filmmakers, actors, producers, rock and pop musicians, architects etc.
On this occasion, "Center for Arbitration and mediation in WIPO" is seized of a dispute between the company "Tribeca Film Center" and face Larentso Mackenzie concerning the use of the word "Tribeca" in the brand name of the company and the domain of the individual.
The appeal on the case is filed by the applicant "Tribeca Film Center" by email on 21 December 2000. and on paper of 22 December 2000. Before the procedure for examination of the case, "Center for Arbitration and mediation in WIPO" consider the complaint to the formal requirements for its administration. They are related to the legal criteria for deciding whether the complaint meets the "Uniform rules for resolving disputes concerning the domain" (UDRP). WIPO Arbitration to notify the applicant of any deficiencies in his complaint that are removed on January 16, 2001 deposited within amend the complaint. This administrative procedure before WIPO officially begins on January 17, 2001, when the "Center for Arbitration and mediation - WIPO " sent the defendant Lorenzo Brusasko Mackenzie has managed and regularly amended complaint.
Mackenzie response is timely, as it is derived from the "Center for Arbitration and mediation - WIPO" e-mail on February 2, 2001. and the paper on 6 February 2001. On February 8, 2001., To arbitrate was appointed David Bernstein.
Factual circumstances of the case. Applicant "Tribeca Film Center" ("Tribeca Film Center") was founded in 1989., Jane Rosenthal and famous actor, director and producer multiple winner of "Oscars" - Robert De Niro. Applicant provides facilities for entertainment companies and directors including office space, office services, rental equipment, and facilities for screening, own production, banquet halls, kitchen facilities and conference rooms.
Brusasko defendant Lorenzo Mackenzie worked as an unpaid intern at "Tribeca Film Center" for four months in 1997. It is recommended to sign the contract on a full-time "Tribeca Film Center" by Trina Waite - Chief Financial Officer, but instead It enrolled as a student in the theater of the Lee Strasberg Institute in New York.
Deposited in the file evidence that the applicant has submitted a national trademark registration "Tribeca Film Center". Application is filed with a Feb. 22, 2000. U.S. Patent Office has issued a preliminary decision to refuse registration of the mark on 28 August 2000. the ground that is geographically descriptive and there is potential for consumer confusion between the trade mark applied for both the applicant and the other earlier a mark of a third party ("Tribeca Records"). On February 28, 2001., By "Tribeca Film Center" and a request is made on the file declaring the brand acquired distinctiveness (renown) under section two of the The Lanham Act, and on this basis was also requested reconsideration of the decision of the U.S. Patent Office, expressed in terms of the earlier mark.
The website of the applicant through individualized domain "tribecafilm.com". The home page of this site contains numerous photographs, including those of Robert De Niro, and the building that apparently housed "Tribeca Film Center". The site contains several internal link such as "Robert De Niro" ("Robert De Niro"), "Tribeca Screening Room fil Center" ("Tribeca Film Center / Screening Room"), "Tribeca Productions" ("Tribeca Productions") and " neighborhood "(" neighborhood "). Internal web page "Tribeca Film Center" emphasizes cultural organization that combines the charm of the neighborhood "Tribeca" with the latest audio-visual services "building art." Website of the applicant marked with the advertising slogan "Not only place. Environments "(from the English" More than a place. An environment "). I think all these motives are exposed in order to justify the fact that the applicant "Tribeca Film Center" is seeking to build an overall concept (based on copyright and trademarks) to offer a new and modern artistic product that not only is under a certain name, but also carries the semantics of a particular artistic center so called neighborhood "Tribeca."
On the other hand the defendant Lorenzo Mackenzie Brusasko registered domain name "tribecafilmcenter.com" on 10 November 1999. It is important to note that Mr. Mackenzie has not started the actual use of the purchased domain. As of 18 December 2000., Selecting the said internet domain the message: "This site is currently under construction." In explaining this, Lorenzo Mackenzie claimed that he had intended to use the domain "tribecafilmcenter.com" in connection with the construction and promotion of a fan site that serve "for comments and criticism of the activities of the" Tribeca Film Center " .
The applicant claims that the word element of the domain "tribecafilmcenter.com" is identical to the word element of the mark "Tribeca Film Center". In this context, the applicant also suggests that his trademark "Tribeca Film Center" has become well known and has become synonymous with Robert De Niro as a film producer and representative of that corporation. From "Tribeca Film Center" also say that they have spent considerable resources to develop branding and marketing of cultural events, in this context, the use of a similar domain name may cause confusion among consumers. Therefore, appellants contend that the defendant Lorenzo Mackenzie has rights over the domain "tribecafilmcenter.com", because it is never used, nor plans to use the domain name in connection with the supply of goods or services related to cinema . The complainant also alleged that Mr. Mackenzie has never been associated with the domain name or trademark contained therein. Lawyers for the "Tribeca Film Center" humbled by the fact that the argument of the defendant, alleging that the domain used in conjunction with a website for fans is not a legitimate business practice in itself is a pretty slippery theory which does not reflect reality situation. This is because Mr. Mackenzie does not sell or offer goods or services under that name to justify rights or legitimate interests in the domain because it there's really no "commercial advantage."
On bad faith in filing the domain appellants argue that the registration and the purchase is done mainly for commenting and criticizing the trademark holder "Tribeca Film Center", which actions are directed to diversion of traffic from the website of that company. These actions alone are classified as fraudulent within the meaning of the "Uniform rules for resolving disputes concerning the domain name." In this vein, the appellants also claim that the true purpose of the defendant in registering the domain "tribecafilmcenter.com" is it be resold after the fact by the applicant, with the act of registration prevents the possibility of the "Tribeca Film Center" to purchase or used this particular domain. Appellant presents proofs that defendant McKenzie with face Makuilan Dara is working purposefully towards to derive commercial benefit from the purchase and registration of domain pointing. Proof of this fact is that for a period of thirteen months, Mr. McKenzie has failed to develop a web site associated with the acquired domain, which in itself is an indication that there was no will in this regard nor any and investment interest to justify his own statement that creates a "fan website".
In this light, the defendant Mackenzie acknowledges that the domain name is "similar" to the trademark applicant. The defendant also acknowledged that "Tribeca Film Center" is known cultural istituttion in New York, especially among those employed in the film industry. However Mackenzie disputed that "Tribeca Film Center" has gained wide enough popularity secondary or indirect public importance, to establish reputation in terms of its brand. Mackenzie defendant claims that the applicant requested brand is trying to cope with the problems that the latter is on registering domains, representing variations of groups of words "Tribeca Film Center", "Robert De Niro" and "Canal Productions", all of which has led to the failure of the applicant to take action against persons registered domains based on those names.
Mackenzie defendant claims that the use of the domain name "tribecafilmcenter.com" information and criticism of the applicant is a legitimate non-commercial activity that is permitted by the "Uniform Rules for the resolution of disputes concerning the domain name." Defendant alternatively argues also that it has a legitimate interest in using the domain "tribecafilmcenter.com", because he "lives near the neighborhood" Tribeca "in New York City and chose the domain name in good faith for the fan site dealing with films and film industry, including films involving Mr. Robert De Niro. "
Mr. McKenzie also stated that the applicant can not establish bad faith as to whether the domain name "tribecafilmcenter.com" violates the business of a competitor - in this case "Tribeca Film Center", because the applicant and the respondent is not competing retail. The defendant McKenzie says he could not justify the bad faith registration of its domain name because at the time of his nomination he knew on an application concerning the trade mark applicant. Defendant argues that the applicant has not nominated as a national brand query "Tribeca Film Center" before February 2000., When the domain of Mr. Mackenzie "tribecafilmcenter.com" has already been purchased. Finally, McKenzie argues that its proposal is affiliate partnerships and / or sponsorships made to "Tribeca Film Center", significantly mitigates the likelihood of alleged bad faith on him.
Discussion and findings of the case by the "Center for Arbitration and mediation - WIPO" .
Paragraph 4 (a) of the "Uniform rules for resolving disputes concerning domain names" provided that the applicant must prove each of the following reasons individually and as a whole in order to attain the domain, namely :
- The domain name registered on the basis of the written records of the case by the respondent is identical or similar to the trade mark on which the complainant has rights, and
- The respondent has no rights or legitimate interests in the domain;
- The domain name was registered and used in bad faith.
Correct would be noted that the burden of proof rests with the applicant in support of his opinion, he should provide the preponderance of the evidence to justify a particular legal conclusion (see case "Madonna Ciccone against Parisi, Case № D2000-0847 , decided on 12 October 2000.). Given the comments made on the actual stock that should be subject to proper proof in the case, "Center for Arbitration and mediation - WIPO" held following the following reasons:
- Mackenzie appellant domain is identical to the trade mark application. The arbitrator in the case found that the first element of the applicant's claim is proven because the domain "tribecafilmcenter.com" is identical with the trade mark "Tribeca Film Center", on which the complainant has rights.
Written evidence of the deposited arbitrator also found that "Tribeca Film Center" is a trademark that is the subject of intellectual property rights of the applicants and although it is potentially geographically descriptive Mackenzie defendant admitted that the brand is well known in New York and then particularly with regard to the impacts associated with the film industry. In terms of the Anglo-Saxon legal system to prove popular among potential users of the services of the applicant is sufficient to establish the existence of a common law precedents concerning trademark rights (see Lane Capital Mgmt., Inc. V. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999) 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15.46 (4th ed. 2000). Secondly, with regard to the alleged identity assumes that a product has become well known and only if "it is determined sigment aware of the general public." In this line of thought, the applicant has deposited sufficient documentary evidence that its trademark has acquired distinctiveness, the defendant had not denied this evidence.
For his part, Mr. Mackenzie bent statement that the applicant has not yet acquired the rights to the brand because it was legal problems yet from the actual ordering and production is not brought to an end, ie in it has no solution for registration. In this circumstance the defendant argued the failure of the "Tribeca Film Center" to take effective legal action against offenders registered domains "robertdeniro.com", "robertdeniro.net", "robertdeniro.org" and "canalproductions.com". Arbitrator rejected this confused opinion of the defendant with the view that the applicant had no locus stand to challenge these domains (which is represented by Mackenzie as a passive attitude towards the "other offenders") as dump several domain names relate dissimilar word elements with those relating to alleged trademark rights "Tribeca Film Center."
For all those reasons, "Center for Arbitration and WIPO to mediation" concluded that the complainant has rights to the trademark "Tribeca Film Center" and from this point of view there can be no dispute about the fact that the word element of the domain "tribecafilmcenter . com "is identical with the trade mark application, which is more than an obvious fact. defined in the" Uniform Rules for the resolution of disputes concerning the domain name "the arbitrator found that the applicant had established the first constituent elements - the identity of the domain and commercial brand.
- The defendant has a right and legitimate interests in the domain? The arbitrator found that the second element of the applicant's claim is also present because the defendant Mackenzie no rights or legitimate interests in respect of the acquisition of domain ownership "tribecafilmcenter.com".
Paragraph 4 (c) of the "Uniform rules for resolving disputes concerning the domain" provides that the defendant may have rights and interests in respect of the relevant domain only if:
- Before initiating the dispute over the domain name, the respondent has done enough to start a "use and / or has taken demonstrable preparations to use the domain name or a name corresponding to the word element of the domain, and then in connection with bona fide offering of goods or services ";
- The defendant was "well known under the domain name";
- The defendant has engaged in "legitimate non-commercial or business (a" fair use "), without intent for commercial gain or misleadingly divert consumers to fraudulent prejudice rights foreign trademark or service mark at issue."
In this case there is no evidence that these three conditions have been met to justify the arbitrator in the opinion that there is a complete legally required composition. However, Mr. Mackenzie said that he intended to conduct legitimate noncommercial use of the domain name pursuant to paragraph 4 (c), and build a website for fans, by which to publish the criticisms and comments regarding applicants from " Tribeca Film Center ". these 'alleged intentions" are not sufficient to justify the presence of the defendant Mackenzie hypothesis of paragraph 4 (c) of the "Uniform rules for resolving disputes concerning the domain name." An example is the Judgment Van Halen (Van Halen) against Morgan (Morgan) - case № D2000-1313 (Van Halen v. Morgan, WIPO Case No. D2000-1313 (Decided December 20, 2000), in which the "Center for Arbitration and mediation - WIPO" took the view that the mere intention to develop a fan site, it is not enough to prove a legitimate interest in the domain ownership. Contrary to the defendant's theory of the case presented written evidence objectifying project KAI which was never published. This fact proves that never came to actual use of the site "tribecafilmcenter.com". arbitrate held that if hypothetically this had happened, the publication of the Home site would lead to consumer confusion because it would look like official home page of the "Tribeca Film Center", not as a site for comments and criticism directed against him and his activities. Given what "Center for Arbitration and mediation - WIPO" concludes that the applicant has demonstrated the absence of rights or legitimate interests of the defendant in respect of the Mackenzie domain name, thus the arbitrator held that the applicant had established the second element of the factual.
III. The applicant has failed to establish his alleged bad faith in Mr. Mackenzie in the registration and use of domain "tribecafilmcenter.com". As already mentioned, the last of the required legal fact the actual stock that must be proven is whether the process domain registered in good faith or not, the applicant bears the burden of proof for this part of his claim. Paragraph 4 (b) of the "Uniform rules for resolving disputes concerning the domain" lists the following circumstances as grounds for the existence of bad faith:
- Circumstances indicating that a domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of a similar or identical trademark.
- Domain registration is done to prevent the owner of the trademark to bind the respective domain (buy it). Thus violates strategic and purposeful option for a logical step (from a commercial perspective) to the applicant, he actually prevented circle of business model - brand name - brand - domain. My practice as a lawyer in intellectual property imposed view that these three components must always be bound by one common name for hindsight to prevent attacks from unscrupulous legal person established third parties to develop appropriate practical for certain commercial companies against his trade mark or for apparently wishes to acquire domain.
- Domain registration is made with subversive aim to upset the business of a competitor. This only confirms what grounds a little above.
The applicant submitted that all the three legal facts that are related to bad faith are present case, but evidence in the case does not support his position.
The parties presented conflicting evidence on the fact whether the defendant McKenzie has offered to sell the domain name to the complainant. Two officers of the applicant "Tribeca Film Center" - White and Sandra Triana O'Heran submitted written affidavits, which showed that after applicant contacted defendant to discuss the transfer of ownership of the domain Dara Makkuilan (Fellow of the Mackenzie) sent a message to the applicant, stating that "Mr. Mackenzie would consider any offer." Although it seems unlikely that White employees O'Heran to err Makkuilan himself (in a sworn statement filed case) claims that never leave such a message. Due to the circumstances described remains an open question whether "someone left a message?" This issue is of particular importance for the outcome of the case as if it is proved that Mr. McKenzie or his agent have proposed an offer to sell, that fact would help to substantiate the applicant's alleged bad faith in acquiring the domain of Mr. Mackenzie. applicant in this situation continues to insist that it is proven "Who else could have left message "and defendant did express the opinion that" he is not interested in selling. "In the absence of any documentary evidence, such as the simultaneous exchange of written correspondence, records of archived emails or memoranda signed between the parties to the WIPO arbitration held that not possible to establish legal grounds only submitted affidavits by the parties as the "Uniform Rules for the resolution of disputes concerning the domain name" does not exist institute the "beginning of the documentary evidence." In this context, the arbitrator failed to reach reasoned legal opinion on whether the offer was made to sell the domain or not. burden of proof on this unknown fact situation falls on the applicant as under paragraph 4 (a) of the "Uniform rules for resolving disputes concerning the domain" he party bearing the burden of proof on alleged barratry precisely and because the arbitrator had to determine that the applicant has not demonstrated circumstances in his burden of proof, which is essentially related to the desired preponderance of evidence to the claim that offer was made to sell the domain of the defendant to the complainant (similar judgment in this case "TABCORP Holdings Ltd. v. Hertzberg", WIPO Case № D2000-0566, decided on September 20, 2000.).
The appellant's argument based on paragraph 4 (b) of the second proposal "Uniform rules for resolving disputes concerning the domain name" has developed as a procedural argument is not better. The rate of paragraph 4 (b) provides that the registration of a domain name, which is designed to prevent the owner of a trademark to acquire identical brand domain should be considered deception, provided that defendant has deliberately taken similar action. There is no documentary evidence of the alleged bad faith by the defendant in this case, so that the applicant's arguments under paragraph 4 (b) have been rejected as untenable.
The applicant's claim under paragraph 4 (b) of the third proposal "Uniform rules for resolving disputes concerning the domain name" that the defendant registered the domain name primarily to sabotage a competitor's business also appears unsubstantiated. "The Center for Arbitration and WIPO mediation" the view that there is some inconsistency in the case law of arbitration of how generally should interpret the phrase "sabotage the business of a competitor." For comparison, if you look at the case № D2000-0279 (see Mission KwaSizabantu v. Rost, WIPO Case No.D2000-0279, Decided June 7, 2000), the arbitrator in this case held that a defendant who does not compete directly with the applicant for specific goods or services (adopted as part of the competitive environment), to criticize the applicant through published articles and materials on the Web because "the nature and meaning of the word" competitor "is related to the idea that someone acts directly in opposition to the other. " "Center for Arbitration and mediation - WIPO" the view in that context that not every form of oppositional behavior (such as between a trademark owner and author of a critical website) can become complainant and respondent "competitors". The defendant could "sabotage or disrupt the business of a competitor" if it provides goods or services that can compete with identical or similar goods or services offered by the trademark owner. Any other advice would barratry entering foreign legal field and distortion of competitors in too many cases, the reasons for barratry in this line of thinking would increase beyond recognition, leading to totally contradictory jurisprudence and dilution already established criteria. For the reasons as arbitrator held that the defendant did not file Mackenzie domain "tribecafilmcenter.com", to disrupt the business of a competitor, or in case the company "Tribeca Film Center".
Given also clarify the situation and although the applicant has proved that the defendant registered the domain name identical to his mark, and that Mr. Mackenzie has no legitimate interest in the domain, the arbitrator makes a ruling in which it noted the fact that the "Tribeca Film Center" failed to demonstrate circumstances in their burden of proof, namely, that the defendant Mackenzie had registered and used the domain name "tribecafilmcenter.com" bad faith. For these reasons, "Center for Arbitration and mediation - WIPO" was refuse the transfer of the domain name "tribecafilmcenter.com" to the applicant "Tribeca Film Center".
Since 1999. Since the arbitration proceedings before WIPO has benefited thousands of applicants - statistics show that "Center for Arbitration and mediation - WIPO" arbitrate an average of 2,000 complaints a year. Each year the interest in this arbitration procedure is increasing by 25% compared to the previous year, on average about 84% of complaints are resolved in favor of the appellant.
One of the most famous cybarsquoter who are led to many times of arbitration proceedings of "Center for Arbitration and mediation - WIPO" is a Canadian citizen Jeff Bargar. He was a defendant in arbitration proceedings in following cases:
- Tom Cruise against Jeff Bargar on domain TomCruise.com
- Bruce Springsteen v Jeff Bargar on domain BruceSpringsteen.com
- Kevin Spacey against Jeff Bargar on domain BruceSpringsteen.com
Applicants against Jeff Bargar were also stars Selion Dion, Pierce Brosnan and script writer Michael Creighton.
Who are actionable decisions of "Center for Arbitration and mediation - WIPO" and what is their legal effect in Bulgaria? The answer to this question is related to the so-called "principle of reciprocity", which is known as the Institute of International Private Law (IPL). Reciprocity is a legal instrument to provide entities with foreign nationals of certain rights provided that the contracting entities of a country - in this case founder and / or member of an international body to protect Intellectual Property Organization (WIPO), used in another Member State the same or similar rights granted. In this case, arbitration decisions concerning the "Center for Arbitration and mediation - WIPO" in my opinion it is a mutuality of mixed material or so-called de facto reciprocity in law enforcement. What does this mean? Substantive or known in the theory as "strict" mutuality - in some sources known as "reciprocity law against law" gives copyright holders a range exactly right circle, used as a legal entity of a Member State to another. This kind of reciprocity is governed by the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards in her art. 3 advocate the rule that a foreign arbitration decisions are recognized in the Member states under strict reciprocity. On the other hand, think about choices of "Center for Arbitration and mediation - WIPO" disputes concerning the conflict between domain names and trademarks, and in fact there is reciprocity, which does not require the conclusion of an international agreement as law recognizes that sufficient factual findings to the competent authority for the existence of reciprocity. My thesis for any reciprocation mixed concerning the trademark is supported by Article 2 of the Trademark Law, which embodies the rule that the provisions of this Act shall apply to Bulgarian natural and legal persons, as well as foreign natural and legal persons from countries participating in the international treaties to which Bulgaria is a party. In terms of foreign natural and legal persons from other countries (obviously these are countries that are not members as WIPO) This Act shall apply, subject to reciprocity, to be determined by the Patent Office.
Since Bulgaria is a member of the Stockholm Convention establishing the World Intellectual Property Organization, the decisions of the "Center for Arbitration and mediation - WIPO" , in the context of the aforementioned strict reciprocity, have the force of the territory of Bulgaria, as they are given a body created based on an international treaty to which Bulgaria is a party. This fact is evidenced by the fact that Article 12 of the Convention establishing WIPO said that the territory of each Member State and in accordance with the laws of that State, WIPO has such capacity as may be necessary for the objectives of the organization and implementation of its function. Here I would like to mark the fact that in addition to the established practices positive enforcement of New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, a European scale also diligently working on the creation of modern conflict norms that facilitate mutual recognition of arbitral awards. An example is Regulation 593/2008 (Rome I), in his resourceful part agrees that the European Community has set itself the objective of maintaining and developing an area of freedom, security and justice, the gradual establishment of these criteria should adopt measures relating to judicial cooperation in civil matters having cross to the extent necessary for the proper functioning of the internal market.
How exactly is done in practical enforcement of arbitral awards "Center for Arbitration and mediation - WIPO" in Bulgaria? Enforcement of the award is guaranteed by the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards of 1958., Ratified by Bulgaria in 1961. (Promulgated SG. 2 08.01.1965g.) 118, para. 1 of the Code of Private International Law (KMCHP) said that recognition of a foreign decision is made by the body to which it is submitted. Authority to recognize foreign arbitral award or to prevent its implementation in the Republic of Bulgaria is Sofia City Court (SCC). The Court granted the request of the interested party writ of execution on the basis of the final award of the "Center for Arbitration and mediation - WIPO" . The application shall be award and proof that it was delivered to the debtor under implementation (Article 51 of the Law on International Commercial Arbitration). The recognition and enforcement of a foreign arbitral award shall be applied by Bulgaria signed treaties - in particular hypothesis, the Stockholm Convention establishing the World Intellectual Property Organization. Claims for recognition and enforcement of a foreign arbitral decisions of courts and concluded before them in arbitration proceedings are brought, unless otherwise provided in an international treaty to which the Republic of Bulgaria, the Sofia City Court, for examining them apply the provisions of Art. 118 to 122 of the Code of private international law, with the exception of the right to lodge an objection to the debtor for repayment of the claim that it is a CPC. Described procedure is analogous to the exequatur on the recognition of foreign judgments in Bulgaria, which is governed by art.621 and following of Civil Procedure.
Award to the "Center for Arbitration and mediation - WIPO" is final and ends the dispute. It is not subject to appeal, ie was stable. If wicked, revocation can be achieved only in a civil action. Article 5 of the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards embodies the rule that the recognition and enforcement of an arbitration award can be challenged through an application filed by the party against whom it is made if it is demonstrated to the competent authority of the Member (Supreme Court), that:
- a) the parties to the agreement were under the law applicable to them incapacitated or that the agreement is null and void under the law to which the parties have obeyed it, and if no indication in this respect under the law of the country where decision was made, or
- b) that the party against whom the judgment is asserted, was not duly notified of the appointment of the arbitrator or of the arbitration proceedings or otherwise it is impossible to assert their protective equipment or
- c) that the decision was rendered in a dispute is not covered by the arbitration agreement, or do not even belong to the disputes under the arbitration agreement in the contract, or that contains provisions that go beyond the terms of the arbitration agreement or the arbitration agreement in the contract, in any case, if the provisions the decision relating to the matters subject to arbitration can be separated from those which relate to matters not subject to arbitration, the rulings on matters subject to arbitration may be recognized and enforced, or
- d) the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties or, failing that were not in accordance with the law of the country where the arbitration took place, or
- e) that the decision has not yet become binding on the parties or has been set aside or execution has been suspended by the competent authority of the country in which or under the law of which it was given.
Recognition and enforcement of the award may be canceled if the SCC found:
- a) that under the law in Bulgaria matter of the dispute is not capable of settlement by arbitration or
- b) the recognition or enforcement of the judgment would be contrary to public policy in Bulgaria.
Meaning embedded in the New York Convention is incorporated in the provision of Art. 47 of the Law on International Commercial Arbitration (LICA), which relates to the grounds for revocation of international arbitral awards in the Republic of Bulgaria. In this case, the arbitration award may be set aside by the Supreme Court if the party requesting the cancellation proves any of the following grounds:
- she was incapable at the conclusion of the arbitration agreement;
- arbitration agreement has been concluded or is not valid under the law chosen by the parties in the absence of choice - under this Act;
- the subject matter not subject to arbitration or award is contrary to public policy of the Republic of Bulgaria;
- she was not properly informed of the appointment of the arbitrator or of the arbitral proceedings or for reasons beyond its control could not take part in the proceedings;
- decision allowed a dispute not contemplated by the arbitration agreement or decision on matters outside the scope of the dispute;
- formation of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties unless it is contrary to mandatory provisions of this Act, or failing such agreement - if not implemented the provisions of this Act.
Action for annulment may be brought within 3 months from the day on which the applicant received the decision by WIPO. When a request for correction, interpretation or completion of the award period runs from the day the 'Center for Arbitration and WIPO to mediation" acted on the request (Article 48 ICAA). The state fee for the processing of claims for annulment of an international arbitration award pursuant to Art. 47 of the ICAA is determined in accordance with Art. 71 of the Civil Procedure Code.
If SCC with effective decision annul the award of the "Center for Arbitration and mediation - WIPO" on the grounds of Art. 47 § 1, 2 and 3 ZTMA, any party may bring an action in the dispute before the competent civil Court (SCC), and when the award is set aside on the grounds of Art. 47, § 4, 5 and 6 ZTMA, SCC returned the case to "Center for Arbitration and mediation - WIPO" for reconsideration. In the latter case, either party may request that the case be heard by other arbitrators in the arbitration at WIPO (Article 49 ZTMA).
As a final topic I would like to note that the Bulgarian Law on Trademarks and Geographical Indications (Article 73 and Article 76 respectively) and thus CC (art.172b) has not met the requirements of Internet crimes and unfair trade practices concerning intellectual property - particularly domain names. This may be due to the lack of established yet structured and detailed legislative framework in the world, which would become the basis for legislative changes in this country. However, shedding light on what is happening in the "Center for Arbitration and mediation at WIPO", I think that there are enough points for reflection that denigrate underpin some appropriate legislative changes that will lead to concrete results and enforcement in Bulgaria.
However, each holder of intellectual property rights can protect your business online, with a few pragmatic rules:
- Protection of a trademark on the domain
- Choosing and registering a domain protected by the production of documents filed or registered trademark, trade name, etc.
- Purchase of several similar sub domains and second level
- Setting a sign ® following a first expression of a registered trademark on the Internet
- Affixing of the sign ™ after each first use in commercial practice of an unregistered trademark for both the latter cases, a clear identification of the trademark owner.
Author: Mr.Atanas Kostov – European trademark attorney