Estonia Estonie Estland. Report Q173. in the name of the Estonian Group by Ott MOORLAT

Transcription

1 Estonia Estonie Estland Report Q173 in the name of the Estonian Group by Ott MOORLAT Issues of co-existence of trademarks and domain names: public versus private international registration systems 1. Analysis of current domain name registration procedures 1.1 Nature of signs What is the status of a domain name in your country? Does the registration of a domain name confer exclusive rights to the proprietor? Can domain names be the subject of dealings such as assignment, mortgage and the like? Top-level domain.ee is a symbol representing the Estonian State. The domain name clearly and singularly identifies the organization (legal or physical person) that administrates it. Registration of domain name only serves the purpose to exclude the possibility of registering an identical name. Registration of a domain name does not provide or stand for any new rights to name that the registrant didn't hold prior to its registration. The registration will not limit the rights of others to the name used as a domain name. It is possible to assign a registered domain name to another organization when presenting a written application. Also it is possible to change an already registered domain when presenting a well-grounded application. 1.2 Legislation Is there any legislation in your country dealing specifically with domain names and the domain name registry? If so, please describe it. In Estonia the administration of domain names is not subject to specific legislation. Domain names indicate part of the name or address of a site on the internet. 1.3 Type of registry Which organisation has been assigned responsibility for the cctld domain in your country? Is this organisation a public or a private entity? If it is a private entity is it subject to a regulator? Is the registry's conduct of business (e.g. the setting of registration fees) subject to judicial or independent review? Estonian Educational and Research Network (EENet) is a governmental non-profit organization established in 1993 by the Ministry of Education with the task of managing, coordinating and developing the computer network of science, education and culture. The activity of EENet shall be guided by the Constitution of the Republic of Estonia, other laws, decrees and resolutions of the President of the Republic, regulations and orders of the National Government, regulations and decrees of the Minister of Education, inter- 1

2 national conventions and agreements, EENet Statutes and other current legislative acts of the Republic of Estonia. 1.4 National treatment Does the applicant require legal or natural status in your country to register a domain name? Domain registration under.ee is open only for institutions registered in Estonia that hold permanent Internet connectivity or virtual server in Estonia. 1.5 Bars to registration Is the domain name registry in your country entitled to reject applications on public policy grounds? If so, on which grounds (e.g. immorality or generic terms)? The applied second level domain should refer to the organization's name or to it's principal activities. It should not be misleading and should not be with prejudice to other person's interests. If the second level domain coincides with a well-known trademark or international company name, the applied domain will not be registered (except when the trademark belongs to the applying organization itself). When applying for 2-3 letter domain name it is recommended to follow that it refers uniquely to the abbreviation used by the applying organization. One letter domain names are not registered. The name of the sub domain should not refer to anything obscene in languages represented in Estonia. 1.6 Appeals Does the applicant for a domain name have the right to appeal against the refusal of the registry to register a domain name? If so, to which entity and based on what kind of procedure (e.g. arbitration or administrative procedure)? If the upper name server administrator refuses to register a domain name the applicant for a domain name has the right to appeal the decision by to admin@eenic.ee. The final decision will be made by a person who is registered as an administrator of the.ee domain in INTERNIC. 1.7 Publication, opposition and cancellation Is the application for or registration of a domain name made public in your country? Is there any procedure available to third parties to oppose such application (prior to registration) or registration? If so, on what (relative or absolute) grounds (e.g. prior trademark registration or generic term) and based on what kind of procedure (e.g. arbitration or administrative procedure)? Is it possible for a registered domain name to be cancelled? If so, by whom and on what (relative or absolute) grounds (e.g. prior trademark registration or generic term)? Is it possible to request cancellation of a domain name based on general statutory law (e.g. unfair competition law)? Which procedure is followed, in the case that cancellation is required? Is the cctld registry liable for domain names which infringe trademarks? Registration applications are not published, yet the list of domain names registered under the.ee domain is available for the public. Opposition of a domain name will be conducted between the parties. In case the opposition is taken to court the owner of the opposed domain name is obliged to inform the Registrar within 2 days. The opposition of a domain name may be based on general statuto- 2

3 ry law, e.g. unfair competition law. The Registrar will always be guided by the court decision. Based on court decision the Registrar may choose to limit usage of a domain name or cancel it. The Registrar may take part in court proceedings. Full liability for infringing the rights of a third party lies with the applicant of the domain name registration. 1.8 Maintaining the registration Must use requirements be satisfied in order to maintain the domain name registration? If so, is there any definition of what constitutes use? Is a renewal fee payable, in addition to, or in place of, a maintenance fee? The administrator requires use of the domain name. A registered domain name may cancelled after "at least 90 days of non-use". Under 'non-use' it is assumed that the domain has not been technically usable - lacks correct entries and corresponding name servers. The registration is free of charge in Estonia. The registration of domain names under.ee is indefinite thus there are no renewal requirements. 1.9 Generic Top-Level Domains (gtlds) Are gtlds subject to regulatory control in your country? If so, in what ways? Are there any differences to the treatment of cctlds? If so, what are they? The gtlds are not administered by national operators. 2. Proposals for adoption of uniform rules 2.1 Nature of signs Should the registration of a domain name confer exclusive rights to the proprietor? Should domain names be subject of dealings such as assignment, mortgage and the like? Yes on both accounts. 2.2 Legislation Should legislation be enacted to deal specifically with domain names and domain name registries? Yes 2.3 Type of registry Do you think the domain name system should be administered by public or private entities? It may be either, though policy functions should be carried out by governmental institutions. If you think that the DNS should be administered by private entities should they only perform technical functions or should they also perform policy functions? If you think that they should only perform technical functions who should perform the policy functions? What do you think Government's involvement in a privately administered DNS should be? If the DNS is administered by private entities do you think that their actions should be subject to a regulator and to an independent review? If so, which institutions should perform these functions? If you think that the DNS should be administered by public entities which institutions should perform the technical and policy functions? Should the assignment of gtlds and the key internet co-ordination functions (e.g. the stable operation of the Internet's root 3

4 server system) be performed by a treaty based multi-governmental organisation? If so, should an existing organisation such as WIPO or ITU be tasked with these functions or should a new one be created? Key internet co-ordination functions should be performed by a multi-governmental organization. Respective policy and technical functions could either be divided between WIPO and ITU or alternatively assigned to a new organization. 2.4 National treatment Do you think domain name registries should be entitled to impose restrictions on the application process based on the nationality of the applicant? The nationality of the applicant should be irrelevant, however the technical entrance to the domain should reside within the IP-space of the country. I.e. should be accessible using national as opposed to international Internet services. 2.5 Bars to registration Do you think domain name registries should be entitled to reject applications on public policy grounds? If so, on which grounds (e.g. immorality or generic terms)? Immoral, vulgar and/or misleading or confusing domain names have to be forbidden. 2.6 Appeals Do you think that the applicant for a domain name should have the right to appeal against the refusal of the registry to register a domain name? If so, to which entity and based on what kind of procedure (e.g. arbitration or administrative procedure)? An organization applying for a domain name is liable for the presented information and that it corresponds to the law and good practice. This responsibility stays with the applicant also after the domain is registered. In case the applicant has presented false data the host master may annul the registered domain. The appeal procedure should follow the same or similar administrative path intellectual property appeals do. 2.7 Publication, opposition and cancellation Do you think that the application for or registration of a domain name should be made public? Do you think that there should be a procedure available to third parties to oppose such application (prior to registration) or registration? If so, on what (relative or absolute) grounds (e.g. prior trademark registration or generic term) and based on what kind of procedure (e.g. arbitration or administrative procedure)? Do you think that it should be possible for a registered domain name to be cancelled? If so, by whom and on what (relative or absolute) grounds (e.g. prior trademark registration or generic term)? Do you think it should be possible to request cancellation of a domain name based on general statutory law (e.g. unfair competition law)? If so, which procedure should be followed? Do you think domain name registries should be liable for domain names which infringe trademarks? Domain names have become a province of intellectual property. A domain name enjoys trademark protection if it is registered as a trademark. The registration of a domain name as such does not create any trademark rights. Publication of domain name registration applications should be considered superfluous in favour of post registration opposition through administrative procedure. It is necessary that the possibility of cancelling registrations exist both on relative and absolute grounds, 4

5 based on either specific domain name, IP or general statutory law. Domain name registries should be liable for possible infringing registrations. 2.8 Maintaining the registration Do you think that use requirements should be satisfied in order to maintain the domain name registration? If so, what should constitute use? Should a renewal fee be payable, in addition to, or in place of, a maintenance fee? Use requirements should be satisfied. Technical availability of the domain should be sufficient. A renewal fee, even if symbolic, should be used. 3. Assessment of the trademark registration system Do you think that the publicly administered trademark registration system is adequate and sufficiently efficient as compared with the privately administered system of domain name registration? If not, please explain. A simplified version of publicly administered trademark system should/could be used for domain names. 4. Miscellaneous Domain names have a key role in corporate communications strategy. Protection of domain names have to be linked with trademark protection and a kind of legal protection have to obtain new forms, like protection both trademark and domain name. There are some legal modifications necessary, because both trademarks, both domain names have some common features: a) good domain name or good trademark is a valuable immaterial property b) both can belong to the owner without time limits, if maintenance fees are paid c) in general exact coincidence should be avoided (in the field of trademarks coincidence is allowed only, when different trademark classes are designated or trademark applicants/owners have agreement). A flawless domain names system can co-exist with traditional trademark law. A trademark identifies a product or service (Class system - 45 classes); a domain name identifies an entity's presence in the Internet (No Class system). A trademark bestows enforceable rights under national and international legislation; a domain name bestows rights, which may be enforceable under e.g. trademark law. A trademark must be distinctive; a domain name must be different by just one character. 5