CYBERSQUATTERS and BRANDING TECHNOLOGY

“A man may die, nations may rise and fall, but an idea lives on.
Ideas have endurance without death” - John F. Kennedy.

(photo courtesy of Clipart.com)

Isn’t that what intellectual property (IP) all about? If an idea is life-long and can surpass the creator is it not fair to have it protected ? The answer should be “Yes”.

Developing countries, including Indonesia, cannot understand why they have to respect IP when the IP rights owners have benefited so much from the high margins derived from a large market.

Multinational corporations (MNC) in industrialized countries, including 157 MNCs controlling the commodity economy in the USA, perceive developing countries such as Indonesia as half-hearted in the implementation of IP commitments that they have entered into legally.

According to the United States Agency for International Development (USAID), many countries have been making progress in the protection of IP rights. Indonesia, however, is considered as remaining passive in the tackling of IP issues and the agency has warned Indonesia that its market share in the world economy could consequently shrink.

A study held by the University of Indonesia states that most prominent US products have entered Indonesia at low tariffs and that the US has little interest in entering Indonesia’s markets for commodity trade deals and is more interested in providing services.

If so, Indonesia would have more to gain and less to lose in allowing its products to enter the US market. It is estimated that Indonesian businesses involved in around 50 different types of products (e.g. textiles, apparels, electronics, telecommunication appliances, furniture and some nature-related products) are eager to expand their markets in the US.

A. Trademark branding vs. Internet branding
Due to the rapid rise of inventions and developments in global technology, there are numerous areas where IP rights are not yet well protected, especially in information and communication technology (ICT).


Trademark is one of the IP rights which are protected in Indonesia, under Law No. 15/2001. This was enacted as part of Indonesia’s commitments under the Trade Related Aspects of Intellectual Property Rights (TRIPs) agreement. Indonesia also adheres to the Paris Convention for the Protection of Industrial Property (ratified in Indonesia by Presidential Decree No. 15/1997) and a Trademark Law Treaty (ratified by Law No. 17/1997). While trademark branding has evolved in the marketplace, Internet branding, particularly of domain names, is still evolving.

Given the different targets, Internet branding has developed expansively so that one name is eligible for registration by many different parties, provided that the name is connected with domain name extensions (DNE) such as ‘.com’, ‘.net’, ‘.org’, ‘.ws’ or any other DNE made available in support electronic commerce transactions (ECT).

Among other things, this includes electronic data interchanges (EDI), electronic bulletin boards (EBB) and electronic funds transfers. While historic World Trade Organization IP accords such as TRIPs have not yet dealt with this, disputes over Internet branding are usually closely related to trademark branding.

There have been many attempts to take advantage of the existing loopholes in trademark branding by registering notorious trademarks as domain names. If a trademark is registered as a domain name, it will have no difficulties if it does not involve a well-known trademark. If it does, the well-known trademark will be protected by the TRIPs agreement and local trademark laws, even though the domain name and well-known trademark are registered for different kind of goods. If, the domain name registered trademark is not related to the well-known trademark and both are registered for different kind of goods, the same trademark could be registered and used by each party as a trademark or a domain name.

B. Media
Unlike trademarks, patents and industrial designs, which are administered, managed and controlled by local governments, no government has absolute control over the media or forum of ICT products.

Under the Internet domain name service (DNS), Internet Corporation (Internic),


a private and non-profit international institution, has the authority to assign a series of Internet protocol number (IPN) to its accredited registry administration. This body acts as Internic’s agent in administering top-level domains (TLD) such as:
Ø American Registry for Internet Numbers (ARIN);
Ø Asia-Pacific Network Information Center (APNIC);
Ø Internet Corporation for Assigned Names and Numbers (ICANN) and
Ø Indonesian Domain Network Information Center (IDNIC).

The domain name registration service (DNRS) is identified according to each country code under the DNS. For example, the US uses ‘.com’, and Indonesia uses ‘.co’. Apart from the unrestricted domains, restricted domains are subject to specific local requirements, such as local presence, in order to have a domain name with that country’s extension. Nevertheless, even unrestricted domains are very broad.

Also, registry administrators vary by the individual country codes of TLDs. For example, ICANN’s registry administrator is Network Solution. For the TLDs using ‘.com’, ‘.net’, and ‘.org’, Network Solution’s accredited domain name register is Register.com. All of such administrators are private institutions authorized to assign IPNs under the DNS maintained by Internic.

C. Forum
Disputes on IP matters are traditionally handled, settled and resolved by local judiciary courts and legally enforceable by such courts with all the consequences and sanctions for any failure thereof.

DNS and DNRS are maintained on: a geographical basis, a first-to-file basis, a non-geographical basis and on the basis that it is not under the control of any government and only under the World Intellectual Property Right Organization (WIPO).
WIPO handles domain name dispute settlements between IP rights owners and domain name infringers, which are known as “cybersquatters”. After its establishment in Marakesh on April 15, 1994 WIPO adopted the Rules for Uniform Domain Name Dispute Resolution Policy on August 26, 1999 for the administration of disputes. These rules, along with the implementation documents, were approved by ICANN on October 24, 1999 through the WIPO Arbitration and Mediation Center (WIPO Center) as the dispute settlement forum, effective from December 1, 1999.
The WIPO Center forms part of WIPO’s international bureau, acting as a dispute resolution service provider and offering advisory and resolution services for disputes arising from the registration and use of Internet domain names. There are four options for settlement under the WIPO Center: mediation, arbitration, expedited arbitration or a combination of mediation and, in the absence of a settlement, arbitration.

At present there are no local trademark laws to prevent or solve the ramifications of Cybersquatting, and we have yet to see whether the WIPO Center can eliminate this. Even the TRIPs agreement has not adequately dealt with these problems, except for the settlement rules which were issued on December 1, 1999.

These rules resulted in the first settlement of a domain name on February 18, 2000 when Telstra Corporation, a well-known Australian telecommunication company and the registered holder of numerous similar domain names (i.e., telstra.com, telstra.net, telstra.com.au, telstranic.com and telstraine.com), made a claim against Nuclear Marshall, which had registered ‘telstra.org’ as a domain name with the US-based registry administrator Network Solutions.