The protection of country code top level domains (ccTLD) in Guatemala

The domain names are those that identify a person or an entity in the Internet. In general there are 2 types of Top Level Domains, the Generic Top Level Domain (gTLD) which, among others, include: .com; .net, .org; .aero; .biz; .coop; .info; .museum; .name and .pro. These names are registered by entities duly authorized by the Internet Corporation for Assigned Names and Numbers (ICANN).

The other types of Top Level Domains are the country code Top Level Domain (ccTLD) which are registered and administrated by local authorities in the corresponding country, which must be authorized by ICANN.

In Guatemala, in 1992, the Internet Assigned Number Authority (IANA), delegated to Universidad del Valle de Guatemala (UVG), the registration and administration of the ccTLD. A company or person can file before the UVG the corresponding request by written petitions and of course by Internet at (www.gt).

Based on the above and due to circumstances as globalization, there are many companies that have timely registered their gTLD at any of the entities authorized by the ICANN. However, some of companies are omitting the registration of their ccTLD in the countries in which they develop their commercial activities. In this case, third parties commonly known as ?Cybersquatters? have registered in various countries worldwide (including, Guatemala) ccTLD that are similar or identical to trademarks or other distinctive signs of a third party or company. This practice is known as ?Cybersquatting?.

This unlawful registration occurs because the registrars of the gTLD and ccTLD do not require that a previous right be proven, even more, such registrars register the domain names based on the principle ?first one to register, first one entitled to the right? and under the presumption of good faith.

The lack of rules was used for years by cybersquatters who violated industrial property rights such as trademarks or distinctive signs of third parties. Then they sell them to the true holders or to third parties for a price beyond the cost of registration.

In this case, the true owners of such industrial property were forced to buy these domain names not only because they were identical to theirs, and as a result they could not register their own names. In other cases, the domain names were similar to theirs and therefore the internet users could maliciously be directed to a web page that was not the one that they indeed were looking for.

Based on the above and with the intention to avoid cybersquatting, in 1999, the ICANN decided to create the Uniform Domain Name Dispute Resolution Policy (UDRP). Through this proceeding a person or company is allowed to file the cancellation or transfer of a domain name if he, she or it, considers that such registration infringes his, her or its rights under a trademark or other distinctive sign.

In Guatemala, the UVG also decided to adopt the UDRP in order to avoid the cybersquatting in our country by granting to the true holders the right to file the cancellation or transfer of a domain name registered by a cybersquatter.

Therefore, if an applicant applies for a domain name or tries to renew it, the UVG based on the UDRP will force her, him or it, to follow a mandatory administrative proceeding in which she, he or it will have to expressly declare, among other issues, that the domain name registration does not infringe or violate the rights of a third person or company.

Once such policy is accepted by the cybersquatter, if that is the case, acceptance which is essential in order to obtain the registration or renewal of the ccTLD, the true holder of the trademark or distinctive sign, that is, the plaintiff, may file the cancellation or assignment of the wrongful domain name by proving that: a) The domain name is identical or confusingly similar to a trademark or service mark in which the plaintiff has preexisting rights; b) the third party has no rights or legitimate interests in the domain name; and c) that such third party owns a domain name which has been registered and is being used in bad faith.

Among others, the following shall be evidence of the registration and use of a domain name in bad faith: a) Circumstances that suggest that the domain name has been registered or acquired primarily for the purpose of sell, lease, assign or otherwise transfer the domain name registration to the plaintiff who is the owner of the trademark or service mark or to a competitor of that plaintiff, for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or b) The domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the cybersquatter have engaged in a pattern of such conduct; or c) The domain name has been registered primarily for the purpose of disrupting the business of a competitor; or d) If by using the domain name, the cybersquatter has intentionally attempted to attract, for commercial gain, Internet users to her, his or its web site or other on-line location, by creating a likelihood of confusion with the plaintiff's mark as to the source, sponsorship, affiliation, or endorsement of their web site or location or of a product or service on your web site or location. In the case of our country, this proceeding must be submitted before the World Intellectual Property Organization (WIPO), process that could be resolved in a period between 2 to 4 months, clearly a faster process than the normal procedures at the Civil or Criminal Courts. In consequence, the recommendation to foreign and national individuals or entities, interested in protecting their industrial property rights in Guatemala against cybersquatters is to register its own ccTLD, through a very short and inexpensive process. It is also important to highlight that in order to cancel or transfer a ccTLD registered in Guatemala by a cybersquatter, the UVG has adopted the UDRP. Therefore, if all the legal requirements of such Policy are satisfied, as well as the terms of the Rules of the UDRP, it probably will be much easier to cancel the domain name of the cybersquatter than to negotiate with him or her.