The Internet is a rather young, but a very popular source of information for Ukrainian businesses and consumers. The Internet segment of the market has been actively developed recently and has acquired a high level of commercialization. According to the Ukrainian mass media, the number of Internet users in the Ukraine increased by over 70 % in 2002.
As everybody knows the domain name system has been introduced to simplify the identification of different information sources on the Internet. Later, domain names acquired a further commercial importance as widely available and effective business identifiers. It is generally recognized by IP professionals that domain names can now have the same features as trademarks and service marks have in identifying the origin of products and services. However, the appearance of domain names as new business identifiers has resulted in direct conflict with more traditional commercial identifiers protected by intellectual property rights (e.g. trademarks, service marks, company names, appellation of origin, etc.).
Trademark protection in the Ukraine
The Ukraine has a rather stable and developed system of industrial property protection, in particular the trademark protection system, which is consistent with the generally recognized international principles and practice of industrial property protection. Trademarks in the Ukraine are protected mainly by the Trademark Act1. In addition, in certain cases some other acts may be applied for the purpose of trademark protection, for example, the Unfair Competition Act2.
As regards international trademark protection, it is worth noting that the Ukraine is a party to fundamental international treaties in this field, e.g. the Paris Convention3, the Madrid Agreement4, the Madrid Protocol5, the Nice Agreement6 and the Trademark Law Treaty (TLT).
Domain names in Ukrainian law
Until recently Ukrainian legislation lacked any specific acts and regulations governing trademark protection on the Internet in general and domain name protection in particular. But, in July 2002 the Verkhovna Rada of the Ukraine adopted amendments to the Trademark Act, which included several provisions relating to the Internet and domain name protection (the Amendments Act)7. The Amendments Act introduced the term domain name for the first time in Ukrainian law. This term is defined as a name designated for the identification of resources on the Internet8. Furthermore, the Amendments Act provided a more clear definition of the utilization of a trademark. Previously, Ukrainian legislation failed to properly determine whether the use of trademarks on the Internet qualifies as common use of trademarks in terms of legal protection of intellectual property. Pursuant to the Amendments Act, the utilization of a trademark on the Internet as well as utilization of a domain name, which is confusingly identical or similar to a trademark, shall be qualified as their common utilization9. This provision applies to trademarks, which are protected in the Ukraine according to national legislation, as well as to trademarks, which are protected in the Ukraine according to international treaties to which the Ukraine is a party.
The procedure for registration of domain names in the .UA domain zone is provided by the Rules of Domain .UA (the Rules), which were developed by the Administrator of the .UA domain and came into force in June 200110. In general, the Rules were developed on the basis of regulations and recommendations of the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (WIPO). The Rules contains specific provisions concerning delegation of domain names in the .UA domain zone and certain provisions relating to the procedure of resolving domain name disputes through mediation and arbitration.
In particular, one of the substantial provisions of the Rules applies to probable conflicts between domain names and trademarks. This provision establishes certain restrictions for cyber squatters to register domain names without a proved lawful interest in such registration. In order to protect lawful interests of the members of the Ukraine’s Internet community regarding their intellectual property rights, private second level domain names within the .UA domain shall be delegated only if the spelling of a respective domain name in full or its second level component (up to the “.” mark) corresponds to the trademark the right of use to which on the territory of the Ukraine is held by a respective registrant. In particular, it means that the delegation of a private second level domain name shall be done by the Registrar and Administrator only on the basis of one of the following documents which confirms the right to use a trademark in the Ukraine:
_ an extract from the Official Bulletin of the WIPO certified by the State Department of Intellectual Property of the Ukraine (the IP Department) on registration of a trademark in accordance with provisions of the Madrid Agreement or the Madrid Protocol;
_ duly certified copy of the certificate on national registration of a trademark issued by the IP Department;
_ duly certified copy of a trademark license agreement, which provides the registrant with the right to use a certain trademark on the territory of the Ukraine.
The resolving of domain name disputes in the Ukraine
Domain name disputes arise mainly from the practice of so-called “cyber squatting”. Cyber squatters take advantage of the first come, first serve principle of the domain name registration system to register as domain names the names of trademarks, service marks, to which they have no rights. In the United States of America and in European countries resolution of domain name disputes has become a rather popular area of intellectual property practice. In contrast to the USA, European countries, and even Russia, domain names disputes in the Ukraine arise very rarely. As far as we know, none of famous multinational companies doing business in the Ukraine has faced cyber squatting practice in the .UA domain zone. But, taking into account the rapid development of the Internet in the Ukraine in recent years, it appears that domain names disputes will become more widespread in the Ukraine in the near future.
However, domain name disputes may be resolved in Ukrainian courts (courts of general jurisdiction and commercial courts) as well as through mediation and arbitration. Besides, it appears that in certain cases cyber squatting practice may be subject to administrative procedures carried out by Ukrainian competition authorities (the Antimonopoly Committee of the Ukraine and its local branches). |