It is essential that any company with internet presence have a domain name that contains their business name or brand. This gives them a competitive advantage when attempting to acquire the best positioning in the digital world. However, we have to understand that there is a chance that malicious individuals will commit fraud by trying to take advantage of your brand on the web.
Every brand on the internet generally has a web address or domain that includes the company name or brand. For example, if a business has the domain name www.abcd.com, the owner can get one or several email addresses like [email protected]. To acquire this domain, you simply need to request the desired name from an internet registrar, determine if it is available, and pay for the period of time you wish to use it.
Cybersquatting or domain squatting occurs when someone registers, handles, or uses a domain name, in bad faith, to reap benefits from a brand name that belongs to another company under which it was previously registered. For example, someone could register the domain name guccishoponline.org, with the intent of earning money fraudulently from the brand name Gucci.
That said, there are several ways to protect brands against cybersquatting here in Colombia. As a general rule, every brand must be registered with the Superintendence of Commerce and Industry, making it a unique brand. By doing so, the owner of the brand can prevent third parties from using their name for economic gain.
The registered brand can be protected against fraud like cybersquatting. The use of the domain name by a third party would be a trademark violation under the laws in the Andean Community’s Decision 486 from the year 2000. By committing this crime, one would be subject to the usual jurisdiction according to the law.
The company being cybersquatted can be protected in the court of law. In addition, the Internet Corporation for Assigning Internet Names and Numbers (ICANN) has developed a powerful set of laws to resolve domain name disputes. It is known as the Fair Policy for Dispute Resolution.
This policy prohibits registering a domain, in bad faith, to sell or rent it to the owner of the brand. In effect, the offender is attempting to prevent the brand owner from using the domain. This obstructs their business activity by attracting users to the domain in order to cause confusion about the brand origin. As a result, this prohibition leads to the transfer of the domain name to the plaintiff, or the domain name can be canceled altogether.
To carry out this procedure before the ICANN, it is necessary to file the lawsuit before the Mediation and Arbitration Center in the World Intellectual Property Organization (OMPI). They, in turn, will designate a panel of expert intellectual property arbitrators. Based on the supplied evidence, this panel will determine the fate of the domain name in question and whether it was registered legally. Or, if the registration was determined to be made in bad faith, it would be transferred to the appropriate party.
The ICANN procedure is relatively fast and could take from two to four months. It is an quick and effective mechanism to prevent third parties from using a brand name to take advantage of the market position that they have acquired.
Author: María Alejandra Gómez