It is not always straightforward to deal with a ‘cybersquatter’, but in Poland, a raft of remedies is available. Jaromir Piwowar and Bartek Kochlewski take a look.
Cybersquatters register domain names in bad faith, containing trademarks owned by a third party. Needless to say, the trademark used in the domain name is either commonly known or famous and the cybersquatter usually then off ers the domain name for sale to the rights holder at an extortionate price.
In Poland, such examples of IP infringement are not subject to separate regulations. IP infringement in e-commerce is dealt with on similar legal grounds as classic ‘off -line’ IP infringements. The holders of rights have the same remedies available ‘online’ and ‘off -line’.
In principle, where cybersquatting is concerned, trademark owners in Poland may protect their rights mainly in civil proceedings on the grounds of:
• Trademark infringement;
• Unfair competition practices;
• Protection of company names; and
• Copyright infringement.
Poland is a signatory to several relevant treaties which have the same legal eff ect as acts directly established by the Polish parliament. Among others, these treaties are:
• Th e Paris Convention;
• The Madrid Agreement and Protocol; and
• The agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Poland, as a member of the EU, is bound by all acquis communautaire including the Council Regulation (EC) No. 207/ 2009 of February 26, 2009 on the Community Trade Mark (codifi ed version).
The main national legal act on trademark protection is the Law on Industrial Property. Th e other main Polish and Community legal acts in force in Poland, regarding anti-counterfeiting or piracy on the Internet, are:
• The Civil Code (governing company names and their protection);
• The Act on Combating Unfair Competition Practices; and
• The Copyright Law.
Protection of IP rights against cybersquatters and the enforcement of rights require a creative approach due to the fact that infringers continue testing brand owners. The issue is how to act quickly and efficiently against those who try to take advantage of third party rights on the Internet.
If the domain owner has its place of residence in Poland the traditional venue for resolving domain names disputes in Poland is the Arbitration Court at the Polish Chamber of Information Technology and Telecommunication (PCITT), or the Court of Arbitration at the Polish Chamber of Commerce (PCC).
The proceedings before those arbitration courts are similar to the proceedings conducted under the Uniform Domain Name Dispute Resolution Policy (UDRP). From a practical perspective we can say that the Court of Arbitration at the PCC has not resolved many domain name disputes. Over the years the Arbitration Court at the PCITT has become the main forum in Poland for resolving such disputes.
"The enforceability of the injunction may be problematic, but the obstacles should not prevent IP rights holders from applying for such temporary measures and exercising their rights to the maximum."
The advantages of litigation before this court include the speed of the proceedings—usually the Arbitration Court hands down verdicts following in-chamber sessions without the participation of the parties based on documents delivered by the parties. The procedure is also less formal compared with proceedings before the common courts, and cases are examined by professionals who specialise in IP and IT.
Common courts are the alternative to the Arbitration Court at the PCITT—in particular, for Community Trademark infringements, the Court for the Community Trademarks and Designs in Warsaw. The advantages of litigation before the common courts include the possibility of obtaining an interim injunction under which the website operating under an infringing domain name may be taken down as a preventive measure imposed by the court. The enforceability of the injunction may be problematic, but the obstacles should not prevent IP rights holders from applying for such temporary measures and exercising their rights to the maximum.
The basic, systemic difference between the ‘private’ arbitration courts and the ‘public’ common courts is that the proceedings before the common courts have two instances with a limited possibility of filing a cassation pleading with the Supreme Court (as opposed to one instance in arbitration). This difference makes the proceedings in arbitration faster, but difficult to challenge should a party not be satisfied with the result, as there is no appeal proceeding available.
Irrespective of the venue, it is a disputable issue on the merits if a domain is registered and is contentfree and inactive. Some years ago arbitrators interpreted the mere fact of a registration of the domain with a third-party trademark as ‘use in the course of trade’, but this approach has changed over the years.
Nowadays in Poland the arbitrators take a more careful approach in interpreting the use of a trademark in a domain name in connection with the mere fact of registering a domain name identical to a trademark. In a large number of cases this activity has not been considered as an act of infringement of a trademark. In other words, a successful trademark infringement action requires proof of use of the domain name by its subscriber with respect to the same goods or services covered by the trademark registration.
This restriction does not obviously apply to famous trademarks. A trademark is used by a potential infringer only if the goods or services under the mark are offered or advertised through the infringer’s website, and are destined and available to customers in the territory of Poland.
If a cybersquatter does not use the domain name in the course of trade, the rights holder should consider legal actions on the grounds of unfair competition practices or violation of copyright or infringement of a company name. It has to be noted that some domain names may be qualified to be copyrightable items, for example, if a cybersquatter registered an original slogan.
In such an event there is no need to prove use by the rights holder, but ownership of copyright would have to be proven, which in some instances is not an easy task.
If the domain name is not used and it is not simple to claim copyright, the rights holder has to rely on the provisions of the Polish Act on Combating Unfair Competition, which stipulates that an act of unfair competition is an activity contrary to the law or good practice which threatens or infringes the interest of another entrepreneur or customer.
Finally, the user of a domain name identical to a company name should not be able to do it. This type of cybersquatter may be sued on the grounds of protecting a company name provided under the provisions of the Polish Civil Code and the Paris Convention. The party whose rights were infringed would have to prove its prior rights to the name’s use in another domain name.
In order to be successful in such an action (when the registrant refrained from using the domain) the rights holder has to perform additional research, usually on the Internet, in search of evidence of the subscriber’s bad faith. Often such a subscriber is active on various forums, blogs or in social media (Facebook, Twitter, Goldenline, etc).
With some effort and skill such an individual is traceable and his or her Internet activity should be recorded and delivered to the court. The main purpose of such actions—prior to undertaking legal steps—is to find evidence confirming the bad faith of the subscriber seeking to take advantage of the trademark owner who ‘overslept’ during registration of a domain name or lost the domain due to technical failures or mistakes.
We believe that some, however rare, instances of use of a trademark on the Internet may be classified as criminal offences and, following a careful review, may be prosecuted with the help of authorities such as the police and prosecutor’s office.
Jaromir Piwowar is a legal advisor at Patpol. He can be contacted at: email@example.com
Bartek Kochlewski is an advocate at Patpol. He can be contacted at: firstname.lastname@example.org
This article was first published on 01 January 2012 in World IP Review
Poland, cybersquatting, domain names, PCITT, Polish Civil Code