Thailand: How To Defeat Cybersquatters

Article by Ms Tananya Huyanan and Mr Jeremy Golden

In the rapidly expanding realm of cyberspace, the need for a relevant, recognizable and memorable Internet address is apparent. It should come as no surprise that businesses establishing their presence on the Internet desire addresses similar to their company name. However, cyber-squatters in Thailand often make these addresses difficult and expensive for companies to obtain. This article will give an overview of how a company can register its domain name in Thailand, problems they might encounter and why the current Thai laws regarding domain registration, and in particular cyber-squatting, need to be updated.

For a business to secure a desired Internet address they must register a domain name. In Thailand, registration of domain names is done through Thailand Network Information Center (THNIC). There are seven categories, or Top Level Domain Names (ccTLDs), that THNIC has made available. (see box)

The 7 ccTLDs in Thailand:

• .co.th – for commercial entities and business entities. This is similar to the .com category.
• .ac.th – for academic institutions.
• .go.th – for government use, such as ministries or agencies of the government.
• .net.th – for Internet or network service providers.
• .or.th – for non-profit organizations.
• .mi.th – for military use
• .in.th – for individuals or corporations

The centre administers top-Level Domains on a first-come first-served basis. Foreign companies that wish to register a domain name in Thailand can do so if they meet the criteria in one of the following three ways.

First, a foreign company may register a domain name if they have a local representative in Thailand. The local representative must be a registered entity with the same name as the company seeking to register the domain name. It must provide written authorization that it can act on behalf of the foreign company. Also, it is required that specific details regarding its background and business are to be provided. Furthermore, the local representative must provide THNIC with an administrative contact, a billing contact and a technical contact within the company.

A foreign company may also register its exact name as a domain name. Similarly, a company can register a domain name under a trade mark or trade name. The trade mark must be registered with the Department of Intellectual Property, or if it is a trade name it must be registered with the Ministry of Commerce. The full name of the trademark or trade name must be used for the domain name.

Finally, a foreign company may register under the ".in.th" domain. There is little commercial value in this domain name as a company may not use this domain name on the Internet. But it is useful for foreign companies who do not have a presence in Thailand but wish to secure an address. Additionally, it is also used for companies with a presence in Thailand to secure more than one address.

The procedures set forth in the previous section are not where the majority of problems with domain registration arise. In Thailand, and around the world, cyber-squatters are the most common impediment to a smooth domain registration process. Briefly defined, a cyber-squatter is someone who has registered another’s name or trademark as a domain name with the prospect of selling it to the rightful owner. Numerous Thai businesses including The Bangkok Post and the Thai Silk Co. have been victimized by cyber-squatters. Cyber-squatters are on the rise and are costing Thai businesses large sums of money. Moreover, a cyber-squatter can damage a company’s reputation if it designs a false web-site under a company’s name.

While the problem of cyber-squatting exists in Thailand, the same cannot be said about laws directed against cyber-squatting. Thailand currently has no specific piece of legislation aimed at combating the problem. This does not mean that there is no legal recourse against cyber-squatters in Thailand, but because of the secondary nature of the laws they are often ineffective at deterring or punishing cyber-squatting. Some of the laws that have been used have been imported from the Penal Code, the Civil Code and the Trade mark Act of 1991.

Criminal law in Thailand has been used against cyber-squatters that use blackmail and extortion to obtain money from companies who may want a specific domain name similar to their name. The Penal Code of Thailand Section 309 allows for punishment when someone threatens another’s property or reputation and that is essentially what a cyber-squatter threatens. Section 272 (1) is also applicable in the context of cyber-squatting because it allows for punishment for passing off. Passing off essentially occurs when someone uses a corporate name, trade mark or service mark, without permission, with the intention to mislead the public. Section 272 (1) falls short of being an effective law to deter cyber-squatting because intent to mislead the public must be shown. Oftentimes, the unauthorized user only registers the domain name in hopes to sell it to the rightful owner, and since no business is conducted the public has not be mislead.

The Civil and Commercial Code of Thailand allows the rightful owners of corporate names, trade marks and service marks to be compensated by unauthorized persons who register those names/marks as domain names for the purposes of conducting business. Similar to the flaws in the Penal Code, the Civil and Commercial Code cannot be applied to cyber-squatters that register a domain name but do not conduct business using it.

Another piece of legislation used to solve problems encountered with domain registration is the Trademark Act of 1991. The Trademark Act also imposes criminal sanctions on offenders who use another’s registered trademark or service mark to mislead the public. However, once again, this is only applicable when the cyber-squatter conducts business from the counterfeit web-site.

To effectively deter cyber-squatting there needs to be specific legislation passed aimed at eliminating the problem. The Penal Code should enforce punishment upon anyone who registers a domain name similar to a company name or registered trade mark with the intention of selling it to that company at an inflated price. The criminal intent should not be limited to misleading the public, because often that is not the intention of the cyber-squatter, but should also be extended to include the intention to exploit a name or trademark for profit. Therefore, the exploitation can not only be from misleading the public but also from obtaining payment from the rightful owner of the corporate name or trade mark.

The reforms suggested to the Penal Code should also be applied in The Civil and Commercial Code; therefore, the company or trade mark owner can institute a private right of action to recover compensation from the cyber-squatter. Furthermore, Thailand should pass a trademark dilution act. Currently there are no laws that refer to the dilution of trade marks in Thailand. But with a trademark dilution act cyber-squatters could be liable for using a trade mark as a domain name even if they do not use it for commercial purposes. Furthermore, unlike the law of passing off, a dilution law would not require proof that the domain name confused the public, but only that it resulted in the dilution of a famous mark.

Evidentiary laws should also be updated to keep pace with the increase in e-commerce. Currently, only the Intellectual Property and International Trade Court allow e-mail and other forms of electronic communication to be admitted as evidence. In order to catch and prosecute cyber-squatters all courts should allow e-mails and other electronic communications to be admitted as evidence. Allowing this evidence is necessary in order to assure the proper prosecution of cyber-squatters who can be very difficult to find given the vastness and anonymity of cyberspace.

The best way to solve the problems associated with domain name registration and cyber-squatting is to address them directly. Laws specifically aimed at eliminating cyber-squatting should be passed. This would not only give the police and courts direct enforcement measures but it would also provide sure compensation to companies that have been violated by these unfair business tactics.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.