ARTICLE
25 July 2023

Domain Names And Trademarks: Legal Regulation Of Conflicts

Currently, one of the most rapidly evolving areas in jurisprudence is IT law, which governs legal relationships in the digital space.
Kazakhstan Intellectual Property

Currently, one of the most rapidly evolving areas in jurisprudence is IT law, which governs legal relationships in the digital space. This area encompasses a broad range of issues related to the use of information technology in both business and daily life. Unfortunately, legislation often struggles to keep up with the rapid pace of technological advancement. This issue is highlighted in this article, which is dedicated to the legal regulation of domain names and trademarks.

To begin, we need to provide definitions as per the legislation of the Republic of Kazakhstan:

A trademark means a sign registered according to the law or protected without registration by virtue of the international agreements to which the Republic of Kazakhstan is a party, serving to distinguish goods (services) of certain legal entities or individuals from goods (services) of the same kind of other legal entities or individuals1.

A trademark is an object of intellectual property that has legal protection against unauthorized use by third parties from the moment it is registered with authorized bodies. The law expressly establishes that the holder of a trademark has exclusive rights to use and dispose of the trademark in relation to the goods and services they have chosen2.

A domain name is a symbolic (alphanumeric) designation formed in accordance with the rules of addressing the Internet, corresponding to a certain network address and intended for named access to an object of the Internet3.

Unlike a trademark, a domain name does not belong to objects of intellectual property and a means of individualization in the market, and its registration serves only technical purposes. A domain name is not legally protected in terms of protecting its uniqueness and exclusivity.

Moreover, the legislation of the Republic of Kazakhstan in the field of registration of domain names does not provide for any requirements and obligations of the domain name registrar to check for any violations of third-party rights. For the registration of a domain name, any individual or legal entity submits an application with basic data in the prescribed form, after which it awaits a response from the registrar.

The registrar will only verify the following data:

  • The accuracy and completeness of the information specified in the application;
  • The availability of the requested domain name for registration at the time of application;
  • The correspondence of the requested domain name to Internet standards;
  • The absence of the requested domain name in the list of reserved (by the state - author's note) domain names according to the legislation;
  • The absence of a legally binding court decision on the prohibition of the use of the registered domain name;
  • The absence of information prohibited by the laws of the Republic of Kazakhstan in the content of the requested domain name4.

Therefore, the applicant has the autonomy to determine the future domain name address. However, conflicts may arise between trademark holders and holders of identical or similar domain names due to the lack of proper interaction between information systems containing data on the registry of means of individualization in the market and the registry of domain names. In such situations, either party may act in bad faith. When investigating the dispute, the court considers the arguments of both parties and seeks to prevent the abuse of rights.

Given the uncertainty surrounding the status of domain names in the Republic of Kazakhstan, resolving disputes related to them is not yet uniform. An analysis of judicial practice5 has identified several key points that the court considers when evaluating such cases:

Exclusive Rights

Trademark holders focus on their exclusive rights, which allow them to independently determine the use of their designation and prohibit any third-party use of the designation without the holder's consent. Legislation defines the use of a trademark as any introduction of it into circulation, including manufacturing, application, import, storage, offering for sale, sale of a trademark or goods designated by this mark, use in signs, advertising, printed materials, or other business documentation6. The court examines the circumstances of the emergence of the exclusive right to the designation and circumstances indicating its violation.

Similarity of Activities

Although exclusive rights are not entirely absolute, trademark holders have the right to protect their designation from unauthorized use only within the goods and services which they registered under their trademark in the form of selected classes of the International Classification of Goods and Services (ICGS).

The court considers it a violation of the trademark holder's exclusive rights when similar goods and services are offered under one trademark and identical or similar domain names are registered to another person. In such situations, the court recognizes such an identical or similar domain name as a circumstance that misleads buyers of goods and services, as well as a tool of unfair competition and unfair entrepreneurship.

It is noteworthy that in the absence of the sign of homogeneity of goods and services, even a domain name that fully duplicates a trademark may not be recognized by the court as invalid or illegal. The final decision in such situations remains with the court and may vary.

Well-Known Trademark

When a well-known trademark is involved in a conflict with a domain name, the trademark has the right to protect itself from unauthorized use in relation to any goods and services, not just within similar spheres of activities.

In conclusion, it's important to note that the status of a domain name in Kazakhstan is still not clearly defined. This lack of definition makes it difficult to consider domain names as a means of individualization in the market, which in turn means they don't have the same level of protection or opportunity to use exclusive rights as other designations. Additionally, there are significant gaps in legislation regulating the registration of domain names, which can lead to conflicts with trademark, violating their exclusive rights to use their registered designations. Currently, all disputes arising between trademark and domain name holders are subject to judicial review. The final decision is made by the court, taking into account the emergence of exclusive rights, the presence of circumstances of its violation, and the signs of unfair competition and entrepreneurship.

Footnotes

1. Subparagraph 8) of paragraph 1 of Article 1 of the Law of the Republic of Kazakhstan dated July 26, 1999 No. 456 "On Trademarks, Service Marks, Geographical Indications and Appellations of Origin"

2. Paragraph 4 of Article 4 of the Law of the Republic of Kazakhstan dated July 26, 1999 No. 456 " On Trademarks, Service Marks, Geographical Indications and Appellations of Origin"

3. Subparagraph 2) of paragraph 2 of Chapter 1 of the Rules for Registration, Use and Distribution of Domain Names in the Kazakhstani segment of the Internet, approved by the order of the Minister of Defense and Aerospace Industry of the Republic of Kazakhstan dated March 13, 2018 No. 38 / NK

4. Paragraph 5 of Chapter 2 of the Rules for Registration, Use and Distribution of Domain Names in the Kazakhstani segment of the Internet, approved by the order of the Minister of Defense and Aerospace Industry of the Republic of Kazakhstan dated March 13, 2018 No. 38 / NK

5. Decision of the Specialized Interdistrict Economic Court of Karaganda Region No. 3514-20-00-2/3771 dated February 8, 2021; Resolution of the Judicial Collegium for Civil Cases of Almaty City Court No. 2a-10444/2019 dated December 18, 2019; Decision of the Specialized Interdistrict Economic Court of Almaty Region No. 1912-22-00-2/215 dated April 8, 2022

6. Paragraph 2 of Article 1025 of the Civil Code of the Republic of Kazakhstan

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.

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