Under the Law on Intellectual Property, registered mark owners, as well as holders of well-known unregistered trademarks, enjoy protection against unauthorised use of their trademarks as domain names.
Furthermore, under the Law on Electronic Communication and the Regulation on the Registration and Administration of Domain Names, domain names should not infringe third-party rights, such as copyright, IP rights and trade names. The regulation stipulates that within four months from the entry into force of the regulation (the sunrise period), special protection is granted to the owners of IP rights and trade names. During such period any party wishing to register a domain name must prove that it is the owner of the relevant IP right or trade name.
To date, the Albanian courts have not dealt extensively with the unauthorised use of trademarks as domain names; in this respect, a recent court decision on this issue is noteworthy.
The Coca-Cola Company has registered two COCA-COLA trademarks in Class 32 with the Albanian Patent and Trademark Office. In addition, since 2001 it has owned the domain name 'cocacola.al'. In 2008 a natural person registered the domain name 'coca-cola.al' with the Electronic and Postal Communications Authority.
In 2009 Coca-Cola filed a claim with the Tirana District Court against the owner of 'coca-cola.al', requesting the cancellation of such domain name and its transfer to Coca-Cola on the grounds that the unauthorised use of such domain name infringed its IP rights.
The Tirana District Court rejected Coca-Cola's claim, arguing that the COCA-COLA trademark covers the production and distribution of a certain product and it is not related to the use of the trademark in other fields and for other products. There were no grounds to justify unfair competition and customer confusion, therefore there was no trademark infringement. Furthermore, the court argued that the sunrise period had lapsed and that parties could freely register domain names.
Coca-Cola appealed to the Tirana Court of Appeal.
In November 2011 the Tirana Court of Appeal accepted the appeal and ordered the cancellation of the domain name 'coca-cola.al' on the following grounds:
- COCA-COLA is a well-known mark in the sense of Article 6bis of the Paris Convention, and as such it enjoys protection under Albanian law.
- The registration of the domain name 'coca-cola.al' may cause confusion to customers and may damage Coca-Cola's reputation.
- The sunrise period was introduced in the regulation in order to facilitate the domain name registration procedure for owners of trade names and IP rights, preventing third parties from registering such domain names on their behalf. The court explained that the lapse of such transition period does not mean that owners of trade names or IP rights lose the right to register their domain names.The court stressed that in accordance with the regulation, domain names should not infringe third-party rights; therefore the defendant should cease its infringement of Coca-Cola’s IP rights.
The decision has been appealed to the Supreme Court.
Even though Court of Appeal decisions do not create judicial precedent in Albania, this decision is of great importance as it helps to familiarise the Albanian courts with the protection of trademark owners against the unauthorised use of their trademarks in domain names.
For further information please contact:
Drakopoulos Law Firm
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This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.