What is the definition of a domain name?
The World Intellectual Property Organization (WIPO) – offers a rather coherent explanation on the subject, stating that a domain name is formed by -“easily remembered forms of internet addresses commonly used for web-finding purposes” or, in short, that it is a sequence of alphanumeric characters that allows for the identification of an internet address.
This being so, a domain name allows for the identification of an internet address – the content may be any, whatever the name. However, it does not give the registrant an ownership right but a mere right of use (this right of use being part of the much broader right to ownership).
Some clarifications are needed.
The registration procedure of a domain name at national level in Romania is carried out through the national Institute for Research and Development in Informatics (ICI) – as registrar – which carries out registration in the RoTLD (Romanian Top Level Domain).
The conditions to be met in order to register a domain name are quite simple, the procedure’s main characteristic being its fastness. In the first phase, a check-up on whether the name to be registered is free/non-reserved (“first come, first served” principle) is made. If the name is free, it is to be booked for the person requesting it and a fee is to be paid in a fixed amount of time – until not long ago, the domain name was “bought” for a single payment and the purchase was “for life”; however, the procedure has been amended and a successive annual fee is now required in order to maintain said domain name in force.
The chosen denomination must, of course, not violate public policy rules, comply with the moral standards, and not violate prior rights which are rightfully held by other natural/legal persons.
However, if the domain name infringes an earlier right – such as a trademark ownership right (and the relevant practice has shown us that this does indeed happen quite often – e.g. the conflict between the proprietor of the trademark ”Subaru” and the Romanian distributor who had registered www.subaru.ro), ICI cannot refuse registration on this ground, for it has neither any power/knowledge when it comes to intellectual property matters, nor does it have any personnel specialized in intellectual property matters. Therefore, there is no prior procedure with regard to possible infringements of earlier rights.
According to Romanian civil law, only the proprietor of a right – a trademark right being a genuine ownership right, absolute and enforceable against all other subjects of law (erga omnes) – may demand that the infringement be brought to an end.
It is therefore up to the trademark proprietor to challenge the registration of a domain name (if said domain name infringes the prior right) – but do bear in mind that the analysis of whether it does so or not is always at the discretion of the holder.
What is the definition of a trademark?
The definition is laid out in Art. 2 of Law No 84/1998 on trademarks and geographical indications, which provides that a trademark is “any sign susceptible to graphical representation […] provided that […] it allows for the products or services of one undertaking to be distinguished from those of other undertakings”.
From the outset, trademarks appear as a more complex concept, the legislator choosing to regulate the existence, conditions for registration and all other elements by act of law (stricto sensu, normative act of the Parliament as legislative body).
By comparison, the registration of a domain name takes place through the conclusion of a pecuniary contract, unnamed by law, with rights and obligations holding both parties to the contract, namely between the Registrar (ICI) and the person that requests said registration, be it a natural or a legal person, subject to rules imposed by ICANN (Internet Corporation for Assigned Names and Numbers).
Therefore, it is not enough that a fee be paid and the conditions regarding good morals and non-infringement of general public policy rules be met for a trademark registration to be successful. In order to register a trademark, there are specific complex procedures – as the denomination/sign must not fall under the auspices of absolute or relative grounds for refusal and must always be distinctive in respect to the goods/services in question and, what is more, it must not infringe an earlier right (the decision of whether or not an opposition to the registration is in order – as this falls under relative grounds for refusal– is at the discretion of the prior right holder).
A trademark confers upon its proprietor, as mentioned above, an (absolute) ownership right. Therefore, the proprietor of the mark has, in accordance with Art. 36 (1) of Law 84/1998 “an exclusive right of use regarding the trademark”, by virtue of which it may demand compliance with its right from any other right holder, the cease of any unauthorized use and the cease of any infringement – as the aforementioned article 36 does not contain exhaustive details with regard to the manner in which the proprietor may exercise his absolute ownership right.
Such an exclusive right is absent from the estate of the domain name holder. Its right (mere right of use of a domain name) does not have the prerogative of exclusivity and can only be used in compliance with the applicable law. It is precisely for this reason that both normative acts in this specific area of practice and jurisprudence have constantly stated that, if the person who has registered a domain name is responsible for acting in an unlawful capacity, said person may, considering the specific circumstances of the case, be liable for committing a criminal offense, or that its actions may meet the constitutive elements of the illegal act of counterfeit.
Practice has shown that a trademark – domain name conflict presents itself with no simplicity. What matters in such cases is which of the rights in conflict had been registered first, how well known the trademark is, what the domain name is used for, who the holder of the domain name is and what purpose did the registration have. All of this considered, perhaps the most important aspect is if bad faith can be established concerning registration of the domain name by its holder (bad faith both at the moment of registration and at the time of use)?
Being in the position of a trademark proprietor or a domain name holder is no easy task. It is always better that attacking such infringements is done with the prior consultation with an intellectual property advisor or lawyer who, depending on the specific details and nature of the situation, can offer relevant and coherent advice regarding the correct path of defense to be taken.