By Ronald E. M.
The rapidly growing field of Information Technology (IT) has made the conduct of business convenient in various ways. One everyday example is enabling the ownership of specific domain names as an address for websites, which has become a key digital strategy for companies to provide detailed information of their products and/or services to consumers and build a reputation.
According to Indonesian Electronic Information and Transactions Law No. 19 of 2016, Article 1 No. 20, the term “domain name” refers to an internet address of a state administrator, person, business entity, and/or the public that can be used for communication over the internet, in the form of unique character code or set to identify a certain location on the internet. In Indonesia, the registration of country code top-level domains (ccTLDs), such as .id, .co.id, .net.id, .or.id, and .go.id, has been administered by the Indonesian Internet Domain Name Registry (PANDI) since 2014.
As internet usage increases in the country, there have been more reports of cybersquatters – third parties who register domain names using well-known trademarks in bad faith. According to Trademark Law No. 20 of 2016, Article 21 Section 3, the concept of “bad faith” refers to having improper or dishonest motives to duplicate the trademark of another party for the interest of his/her business which creates unfair business competition, and deceives or misleads consumers.
According to PANDI’s naming guidelines, if an applicant claims a domain name in association with their trademark, then a trademark registration is needed. But this is not the case in practice – where only a copy of the registrant’s ID is required to register the .id domain name. It is this loophole that allows infringing acts by cybersquatters.
To solve this issue, people or business entities can file an assignment or objection – seeking to take-down or transfer the ownership – of .id-related domain names that violate their trademarks registrations without the lengthy litigation process in court. The objection can be made through PANDI’s Domain Name Dispute Resolution (PPND) section.
Let’s take a look at a case of domain name dispute involving Aktiebolaget Electrolux vs Eko Apriyanto from PT. Domain-Name dot Indonesia, to understand the issue deeper.
Background
On 13 January 2017, Aktiebolaget Electrolux (the Complainant), a leading global appliance company, filed an objection with PPND against the registration of ELECTROLUX.ID by Eko Apriyanto of PT. Domain-Name dot Indonesia (the Respondent).
As a well-established business in the home appliances sector, the Complainant possessed a track record of more than 60 million product sales yearly in over 150 cities, and also owned several famous trademarks including ELECTROLUX which had been registered in Indonesia and many other countries. In addition, the trademark had been actively and consistently used in the commercial market on many products. The Complainant also contended that it owned several active websites under domain names such as electrolux.com, a generic Top-Level Domain (gTLD), and electrolux.co.id, a ccTLD, to market its products online.
The Complainant argued further that the Respondent did not conduct any business or activities related to “ELECTROLUX.ID”. On top of that, the Respondent’s failure to acknowledge that the trademark “ELECTROLUX“ was well-known when registering the domain name, rendered the registration invalid. The Complainant subsequently asserted that the Respondent intended to gain financial benefits by reselling the disputed domain name.
To prove bad faith in the use of the disputed domain name, the Complainant argued that it was justifiable to conclude that the Respondent knew about the existence of the Complainant’s trademark given its reputable position in the market. Furthermore, the website registered under the disputed domain name had been inactive, which was clearly an indication of bad faith by the Respondent.
On the other hand, the Respondent failed to respond to the arguments brought forward by the Complainant.
Decision
After examining all information and evidences regarding the registration and use of the disputed domain name, the Panel found that:
a. The domain name registered by the Respondent was identical or very similar to a trademark owned by Complainant;
b. The Respondent had no rights or legitimate interests in respect of the disputed domain name ELECTROLUX.ID;
c. The domain name had been registered and was being used by the Respondent in bad faith.
As such, the Panel ordered the transfer of the domain name “ELECTROLUX.ID” to the Complainant.
Conclusion
The lesson to be learnt from this case is that it is important for brand owners to be aware of irresponsible parties intending to free-ride on one’s reputation using a domain name. A comprehensive trademark strategy must be prioritized to manage all of your current and future assets, including domain names. Similarly, if you are a brand owner who wishes to register a domain name, it is advisable to conduct thorough research beforehand to be aware of names that are related to well-known trademarks to avoid any domain name disputes.
If you need any advice regarding your trademark or IP matters in Indonesia, please feel free to email us at kass@kass.asia.
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