A recent decision by an arbitral panel appointed invoking Kenic’s Alternative Dispute Resolution Policy (ADRP) has affirmed the rights of exclusive use of trademarks when registering domain names.
The decision is based on a dispute by a Claimant seeking a transfer of a domain name registered by the Respondent on the grounds that:-
- The Respondent lacked trademarks rights at the time of the registration of the domain name which was vested in the Claimant;
- The registration and use of the domain name were abusive and offensive. The registration amounts to a misrepresentation of the domain name passing it off as though it belonged to the Claimant.
- The Respondent had registered the same trademark gained substantial geographical recognition. Therefore the Respondent’s continued use of the domain name amounted to illegitimate use.
The decision has reinforced KENIC’s position as a vital actor in compliance with trademark regulations and policy given its critical unique role in the registration of domain names and the resolution of disputes arising out of registration and use of domain names.
Specifically, the decision:
a) has affirmed the place of internationally recognized trademarks in WIPO treaties-ratifying countries in claiming domain names that KENIC’s ADRP identify as abusively or offensively registered;
b) has informed on the need for registrants of domain names to establish and secure rights for the exclusive use of their marks by registration with WIPO to avoid deregistration or transfer of their marks to the legitimate claimants. This can be done through the local branches of the Organization in the country;
c) has reinforced the critical importance of the ADRP in resolving disputes of registration and use of domain names. This has emphasized KENIC’s place in regulating the sector.
d) has identified KENIC’s ADRP as an effective dispute resolution mechanism for such sector-specific disputes in an independent manner.
In summary, KENIC is cognizant of its critical role in the data-intensive world. As such, the Organization is guided by various statutes and decisions like the one in the discussion here. Legislations like the Data Protection Act 2019, the Access to Information Act 2016 and the Trademarks Act CAP 506 are some of the legislations that guide the activities of KENIC.
The decision in the Arbitral proceedings above also covers aspects of compliance with these statutes specifically the Trademarks Act. The following aspects stood distinct in the decision as to capture the roles of KENIC in the registration and use of domain names.
- Abusive and offensive registration of domain names
Paragraph 3 of the ADRP requires any domain name being registered not to infringe upon or violate the rights of any third parties. The registration of a domain name with intentions other than for lawful activities is considered abusive and offensive registration.
Abusive and offensive registration may portend in the form of domain name profiteering, malicious registration, and habitual abusive registrations.
- The role of KENIC under the Trademarks Act CAP 506
Under the Act, a ‘trademark’ is defined as any mark used for purposes of indicating that a particular person is in the course of business of the provision of certain products which could take the form of, among other things, a distinguishing guise, slogan, name, word or letter.
The decision emphasized the importance of the adherence of a domain name registration to regulations for the protection of marks. Any infringement of such marks attracts repercussions such as the ones meted on the Respondent as will be seen later in this publication.
Having considered the Claimant’s case, the Arbitral panel came up with the following issues for determination:-
a) Whether the Claimant had a right to the trademark, being the name;
b)Whether or not the Claimant had the rights to the mark at the time the Respondent registered the domain name;
c)Whether then, the Respondent’s Registration amounted to Abusive registration; and
d) Whether the Claimant is hence entitled to the transfer of the name from the Respondent.
- Exclusive right of use
As to whether the Claimant had a right to the trademark, the Respondent led evidence to the effect that the Claimant had wide geographical recognition of the name which apparently was illegitimately used by the Respondent in Kenya.
According to the Sole Arbitrator’s decision in the cited proceedings based on Section 7, 15A, 15A (2) and of the Trademarks Act, the rights of such a registered owner are protected under the Paris Convention and the WTO Agreements.
As such, the Arbitrator noted with finality that the registered owner of a trademark reserves the exclusive use of any registered marks to the exclusion of any other similar or identical mark resembling it.
- Protection of good-will for well-known marks
In answering whether the Claimant had rights to the disputed name before the Respondent registered the mark, the Arbitrator recognized that the Claimant had already acquired good-will to the name. The Claimant adduced unrebutted evidence of recognition of its name through continuous, exclusive, and extensive use of the trademark in several jurisdictions over a considerable length of time before the Respondent registered the disputed name in Kenya. This is in addition to the value associated with the Claimant’s name.
The pertinent question in the decision was the issue of infringement of the rights to the trademark which the Arbitrator decided as summarily set out below.
- What constitutes an infringement of exclusive right of use?
The Arbitrator relied on the Trademarks Act and set out the elements of infringement of a proprietor’s rights as (a) Illegitimate use and (b) Misrepresentation and passing-off.
On the question of illegitimate use, the arbitrator incisively stated that an unregistered mark or domain name cannot purport to exercise rights on that name. The Trademarks Act specifically abhors the use of a mark by a person who is not the proprietor of the mark as it tends to deceive or cause confusion in the course of trade in connection with the services in respect of which it was registered.
That notwithstanding, the Arbitrator noted that even a registered proprietor is also under an obligation to use their mark in such a way as to avoid misrepresentation that might lead to the name passing-off as another’s.
On the other hand, in analyzing and deciding on misrepresentation and passing-off, the Arbitrator found the Respondent’s intention for registration of the domain name as guilty of misrepresenting the domain name. The Arbitrator found the mark to involve the use of a mark so identical with or so nearly resembling it as to be likely to deceive or cause confusion in the cause of the trade in connection with the services in respect of which it was registered. This sought to render the use of the mark to be mistaken as being used a trademark, or to be perceived as one of the trademarks in a particular class or to cause injury or prejudice to the proprietor.
Passing-off is the use of a mark in such a manner as to be rendered as a trademark, confused with another product of similar description or cause injury or prejudice to the proprietor.
The art of representing a mark, say a name on products from company A as if those products were actually from company B and not Company A implies that that the products from Company B are actually passed-off as those from Company A to the detriment of Company B.
The ADRP sanctions the registration, operation and use of a domain name as to lead people to believe that the domain name is registered to, operated by, or otherwise connected with the Claimant.
In finding the Respondent’s registration guilty of breach of the Claimant’s trademark rights, the Arbitrator relied on the position held by the tribunal in Stoneygate 48 Limited and Mark Wayne Rooney v Huw Marshall Case No. D2006-0916 cited severally in the Final award.
The Arbitrator, in reinforcing the material breach by the Respondent, concurred with the Panel in Accor v Everlasting Friendships Trust, WIPO Case No. D2005-0288 which opined that alterations of suffixes only do not constitute a distinguishing format of a mark as to justify any passing of Claims.
In this regard, the Arbitrator found the Respondent guilty of infringing trademark rights because the registered name passed off as the Claimants.
- The burden of proof
It was the Arbitrator’s reasoned decision that in any dispute arising out of registration and use of domain names, the Claimant bears the burden of proving abusive registration. Thereafter, however, Clause 5(1)(c) of the ADRP shifts the burden to the Registrant to show that the domain name is not abusive.
Conclusion
The decision of the Arbitral tribunal has demystified the place of KENIC in domain name registration. Implicitly, KENIC reserves the right to deregister a domain name or deny a registrant registration of any names which KENIC deems abusive or offensive. The case study above provides such a scenario.
The Arbitral Tribunal has recognized KENIC as a major player given its role in partnership with WIPO and KIPI in enforcing trademark rights. This extends to the prevention of infringement of trademarks and the exercise of the necessary measures in safeguarding a registrant’s exclusive right of use of their domain names.