Sunday, January 2, 2011

Domain Name vs. Trademark Registration

Cybersquatting is the act of using or registering a domain name which infringes upon a registered trademark for the purpose of earning profit from the goodwill of the trademark. In 2009, Verizon was awarded an incredible $33M against a domain registrar who issued more than 600 domain names which were confusingly similar or identical to Verizon's trademark.

In the Philippines, PLDT was able to shut down a site registered by Philippine League for Domestic Telecommunications, Inc. (PLDTI) under the domain name More than using an identical domain name, PLDTI used its site to upload harsh comments and criticisms against PLDT, intentionally smearing PLDT's reputation. Rightly, PLDT prevailed. Try entering PLDTI's former domain name and you will automatically be redirected to which is PLDT's real website.

The above cases show us that both in the international and national sphere, trademark registration wins over domain name registration in cybersquatting cases.

But note, the trademark registration system in the Philippines is not only a first-to-file system but is also a registration-required system. In other jurisdictions, there are trademarks which don't require registration but these don't exist in the Philippines. Therefore, absent a trademark registration, a product or service name can't win over a domain name. This brings us to the case of Air Philippines.

The domain name (see the left image) doesn't belong to nor is it commissioned by Air Philippines (AirPhil). The site only has links to websites of international air carriers for other Asian countries. Is this cybersquatting? NO. Why? An element is missing. There was no registered trademark! A quick online search on the IPO website shows that AirPhil either failed to maintain its old trademark or to register its new logo. Thus, Airphil had to settle for a harder-to-associate domain name: (see the right image in the above picture). Happily, AirPhil learned its lesson and the trademark application for its current domain name is under way.

Cybersquatting continues both nationally and internationally. Businesses of whatever size - as long as they are or can be affected by the online community - should learn from the mistakes of the past and start applying for trademarks!

Maricris L. Real
Entry No. 6