Taking counsel: Does Estonian law provide legal remedies for protecting the domain name owner's rights?

  • 2006-08-16
  • by Silja Elunurm
Web pages and domain names referring to them are among the most visible areas of Internet advertising. The great economic value of this advertising tool poses different challenges for all parties involved. Entrepreneurs struggle every day with different domain name registration questions: misuse of a domain name, infringements of trademarks, domain name-grabbing, etc. What exactly is the legal status of a domain name? Is it considered as a business name, an Internet ad or a visualization of the trademark?

The Supreme Court of Estonia has described the domain name flowingly: "While the domain name helps to distinguish and memorize, give information, show the bonds or origin and also carry the advertising function, then it should also have an asset value and can be considered an object of intellectual property rights." The court emphasizes that if the trademark is registered then the use of the identical domain name can be considered as an infringement of the trademark owner's rights.

The conclusion is acceptable, but it doesn't solve the question what rights the domain name owner has if the mark isn't protected within the trademark law. Estonian law doesn't have specific regulations that deal with domain name issues. The only option to learn a domain name owner's rights is through interpretation of the advertising law, competition law and the trademarks act.
The Advertising Law Act stipulates that misleading advertising is advertising that in any way deceives or is likely to deceive the public, or which, for those reasons, injures or may injure a competitor. The domain name owner can claim that another domain name that is registered later is deceiving the public and disrupting one's business. According to the Advertising Law Act, the entrepreneur can turn to the Consumer Protection Board and administrative proceedings can be conducted. On the basis of the Advertising Law Act civil action cannot be initiated.

In the case of a dispute between competitors, civil action is also possible. For example, we can easily visualize a situation whereby one competitor tries to enter the market using the other entrepreneur's advertising success or fame, using exactly the same or misleading domain name and relatively similar web-page design. These factual circumstances might be considered as unfair competition. The entrepreneur can demand the termination of the infringing activity on the basis of Competition Law and Law of Obligations Act. Depending on facts, a compensation claim can also be submitted.

The ICANN (Internet Corporation for assigned Names and Numbers) has elaborated the uniform domain name dispute resolution policy. Usually these rules are incorporated in an enterprise's domain name registration agreement, setting forth the terms and conditions in connection with a dispute between the person wishing to obtain the domain name and any party other than the registrar. These rules can be valuable interpretation material even if the registrar doesn't add them to the agreement.
Regulation no. 733/2002 of the European Parliament and Council on the implementation of the .eu top-level domain makes a resolution in reference to the ICANN rules. Even the Supreme Court of Estonia has referenced them as useful material for interpreting the national legislation, at the same time also remarking that these aren't directly applicable.

According to these rules, one can file for the cancellation of the domain name that is identical or confusingly similar to your trademark or service mark; the other user has no rights or legitimate interest in respect of the domain name and the domain name has been registered and is being used in bad faith. ICANN rules also describe in detail which evidence can show the registration and use in bad faith and how to demonstrate rights and legitimate interest in the domain name. All of these aspects are also relevant to interpreting the national legislation and can be used for reasoning one's claim.

At the same time it must be noted that while the Supreme Court hasn't discussed any such cases yet, the perspective and success of any claims cannot be forecasted. One must keep in mind that rapid development of new technology might leave the respective law regulations a few steps behind, but eventually regulations have tendency to modify themselves according to the factual economical activities and relationships. It usually needs pioneers to fight for their legitimate rights and also the knowledge of the functioning of the Internet communication systems and principles of e-society.

Silja Elunurm is an associate of the Teder, Glikman & Partnerid, a leading Estonian law firm and a member of Baltic Legal Solutions, a pan-Baltic integrated legal network of law firms including Kronbergs & Cukste in Latvia and Jurevicius, Balciunas & Bartkus in Lithuania.