Domain names versus trademarks
Domain names are creating new challenges for Turkish trademark law, says Ersin Dereligil of Destek Patent
Domain names and websites are a constantly developing field of intellectual property protection and enforcement, particularly against infringements of trademarks, and even of designs and copyright, due to global e-commerce growing vastly over the last decade.
Unlike trademarks and designs, which are covered by legislation on how to register and protect them in a national or regional territory, domain names can be registered and websites providing non-stop service for companies in marketing and sales activities can become active even in global scale within minutes, with no review or approval.
Turkey has strict policies in place against bad faith attempts, particularly on second level domain names, including .com.tr, .biz.tr, and .info.tr, dedicated to commercial activities of real and legal persons. This can be achieved thanks to requirements for official documents indicating an application for trademark registration, a commercial activity document from the chamber of commerce, and/or an identity document during the domain name filing stage. Besides, a strict dispute resolution mechanism exists based on objections filed by interesting parties within a six-month opposition period after the grant of a conflicting domain name.
As a final option, such domain names can also be invalidated through a legal action before the specialised IP court. But the burden of proof rests with the plaintiff and the case may need to be supported evidentially with other IP rights, including copyright, trademarks and designs.
A striking recent example showing the issues raised by domain name registration was the infringement action by Cable News Network Inc, which is among the world’s leaders in news and information programming services, against two defendant sister companies, CNNTUR Motorlu Araclar Insaat Ltd and Cadde Travel Turizm Ltd, which are touristic tour operators, ground handlers and travel agents offering a variety of travel services throughout Turkey and abroad.
This is one of a few recent important decisions on bad faith trademark dilution attempts also involving registered domain name and company name conflicts, and which has been concluded within six months before the specialised IP court. Preliminary injunction claims also help a plaintiff to stop infringement at the early stages of such a proceeding.
‘CNN’ is a registered, well-known mark in Turkey, whereas both defendants’ registered company names begin with CNNTUR and they had been using the ‘CNN’ mark on their websites, .cnntur.com.tr and .caddetur.com, which apparently indicates the real intent and bad faith of the defendants. Their device marks include each other’s short name ‘CADDETUR’ and ‘CNNTUR’under the generic TUR expression, in all their services and printed matierials.
This use was determined to be a breach of trademark rights and unfair competition, and so was brought to a halt.
In particular, the defendants were permanently enjoined from any use of the ‘CNN’ mark in their business affairs, including but not limited to use as a non-registered mark, trademark, trade name, company name, or any other term confusingly similar to the CNN mark; use of.cnntur.com.tr as a domain name or website; use of metatags that contain ‘CNN’ as a trademark or trade name, included also in www.caddetur.com; and from the use of certain welcoming messages accessible through contact telephone numbers listed on their websites.
It was also decided that their company names would exclude the ‘CNN’ mark at the Commercial Registry, and all kinds of printed documents, advertisements, brochures, declarations, banners, and other presentation materials, as well as invoices and other commercial documents and printed materials carrying the sign ‘CNN’, would be seized and confiscated.
Furthermore, the court decision given against the defendants for unfair competition and breach of trademark rights was published in nationally printed newspapers at the defendants’ expense. The plaintiff was also awarded damages as a consequence of the defendants’ willful illegal acts.
Before enforcing rights against an alleged infringer, the rights holder should check whether the other party has registered the disputed mark and used it appropriately in Turkey. Turkish IP legislation has strong provisions against bad faith, unfair competition and infringement issues. However, infringement actions cannot be initiated against genuine commercial use based on a registered trademark or design right, unless the right in question is invalidated by a court.