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26-04-2021
Industrial property in the domain of domains
Today, as we celebrate World Intellectual Property Day, which marks the importance of protecting copyright and industrial property rights around the world, we will look at some good practices, recently issued by the European Union Intellectual Property Office (EUIPO), regarding the registration and use of domain names that hypothetically infringe industrial property rights. We will also see how this same issue is dealt with in the framework of the .pt registry.

After conducting a study among several European registries1, last March EUIPO published a reflection document which brings together a set of good practices for these entities and their registrars2 in order to prevent the violation of industrial property rights.

It is common knowledge that the registration and use of domain names to operate activities that infringe third parties industrial property rights, particularly trademarks, is not uncommon in the digital space. The problem may arise on two levels, with regard to the domain name itself, including cases of cybersquatting - registration in bad faith of a domain name coinciding with someone else's trademark - and also with regard to the website associated with the domain name in situations where, for example, it is used to sell counterfeit products. It is usual for these two levels to go hand in hand.

At .PT we are not indifferent to this reality, we recognize, and even call upon ourselves, a support function for the prevention of the illicit use of domain names, from the start, applying the .pt Terms and Conditions on a daily basis. The provisions of this regulatory instrument at national level for the registration of domains under the .pt ccTLD, in line with the best practice identified by the EUIPO, provide for a mechanism to block the illegitimate registration of domain names that coincide with names of origin and geographical indications and the removal of the illegitimate registration of domain names that coincide with names, company names and trademarks, provided that a series of conditions considered determinant to balance, on the one hand, the protection of third party rights and, on the other, competition, freedom of expression, the free flow of ideas, businesses and initiatives and, with this, the growth of an Internet of opportunities, innovation and creativity, are cumulatively verified.   At the same time, an alternative means of resolving conflicts over domain names is provided for, with recourse to voluntary arbitration, which is available to all those who, as holders of industrial property rights, see their rights possibly infringed as a result of the registration of any .pt domain.

EUIPO also emphasized the importance of registries maintaining up-to-date databases with correct and complete data from registrants3, although it recognizes that usually those who register a domain for illicit purposes do not indicate their true data. We are aware of this circumstance and, for that reason, we have implemented mechanisms to notify those responsible for the domain name whenever there is a lack, incorrectness or falsity of their identification data, regardless of the stage of the domain life cycle. We will not go on here, because this whole framework has already been done elsewhere.

On the other hand, the reflection paper highlights the importance of guaranteeing the full availability of the WHOIS database, and only with the restrictions arising from the law. And one can understand why, as this is a privileged vehicle for the owners of industrial property rights to be able to question possible infringers.  It should be noted that .PT, following the internal implementation of the RGPD, now makes available an anonymized contact option for possible infringements or abuses, in case the registrant has not given consent for the disclosure of their personal data. We remind you that the data of legal entities associated to .pt domain names is always disclosed in the WHOIS.

In the list of good practices, the adoption of "notice and takedown" procedures is also identified, which roughly translate the solution of removing a domain name when notified by an entity with legal competence to do so, namely for violation of industrial property rights, already set out in the .pt Registry Rules. Here we would also like to highlight the detection and reporting procedure operated by our Security Operations Centre (PTSOC) regarding domains used for malware, pharming, botnets, spam and/or phishing activities, with particular emphasis on the latter case often associated to fakeshops.

The .PT domain was highlighted by EUIPO as a good example in providing information to the national community about the importance of intellectual property rights within the partnership developed with the General Inspection of Cultural Activities (IGAC) through the initiative "ofertaslegais.pt", a portal that allows searching legal sites of music, cinema and television, e-books, video games and sports events. 

The recommendations published by EUIPO are especially valuable in a period where it is easy to see that the proliferation of online content, reflecting much of the growth of more generalized access to the Internet, is not always followed by the best intentions. 

However, it is reiterated that, as we have already had the opportunity to frame in another moment, it seems absolutely fundamental to recognize the obvious limitations that impose on registries in the protection of industrial property rights. 

With the drafting of the Registration Rules in force, an attempt was made to safeguard the security and trust that must be guaranteed here to the parties in hypothetical litigation, with the application of criteria which are expected to be more objective, leaving the decision on cases where doubts exist to the legally competent bodies, which are always available as a solution for appeal. It was considered in this context that a different solution could have a highly pernicious effect and, ultimately, subvert the basic principles of the Rule of Law, with the consequences that each of us may conjecture. Attributing binding legal effects, and with special impact, to a pure Soft Law instrument and, even worse, literally subjecting its enforcer to a wide interpretative possibility is a possible path, but one that may easily jeopardize the rights of those who wish to have their presence on .pt. 

On the other hand, the protection that industrial property rights deserve, the illegal contents published online do not only infringe this type of rights, but many others, such as personality rights, consumer rights, contractual rights and many more, and it does not seem to us that, from the point of view of competence and responsibility, every registry should be qualified to identify all these situations and be able to act on them. 

We could not conclude otherwise, all of us, participants in the digital ecosystem, have a role to play: not to admit online behaviours that we censure offline and make the Internet a safe space for all. The end is the same, the way to get there is often different, and this happens because the realities also take different forms. If this were not the case, we would not be witnessing the whirlwind of diplomas from a community source that will shape the legal framework in which Europe will move in the area of ​​digital in the coming years.


1Entity responsible for managing an Internet Top Level Domain.
2Entities specialized in the registration of names under Internet Top Level Domains.
3Owner of the domain name.

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