Ecuador: Andean Community Trademark - Domain Name Disputes

One of the more salient issues in intellectual property law has been the resolution of conflicts between rights holders in trademarks and domain name registrants. With the entrance into force of Decision 486 of the Andean Community Commission, the Andean Community nations (Bolivia, Colombia, Ecuador, Peru and Venezuela) have begun to implement measures which may address this issue. Article 233 of Decision 486 provides that if a distinctive well-known sign is unlawfully registered in a member country as part of a domain name or electronic mail address by an unauthorized third party, the competent national authority may, at the request of the titleholder to the mark, order the cancellation or modification of the registration of the domain name or electronic mail address. The national authority may only order cancellation or modification if use of the domain name or electronic mail address may cause confusion regarding identical or similar business, activities, products or services or, with regard to different businesses, activities, products or services, if such use may cause "passing off", "blurring" or "tarnishing" as understood in U.S. federal trademark law.

The enforcement of this provision would bring the Andean Community member nations into alignment with both the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights. However, as of the writing of this document, a few of the member nations have failed to implement Article 233. The failure to apply the article results from several factors, one of which is the supposed confusion as to the competent body for enforcement. Peru has taken the position that its Office of Distinctive Signs of the Institute of Defense of Competence and of the Protection of Intellectual Property is the competent authority. In other countries, implementation has become a political football. The intellectual property agencies argue that the change in language from "competent national office" in several provisions of Decision 486 to "competent national authority" in Article 233 also constitutes a change in the governmental agency with enforcement authority. Such officials contend that the trademark enforcement authorities are not empowered to cancel or modify domain names, but rather an internet authority must be created to enforce the provision.

At present, in those countries in which no law has been clearly articulated, parties must result to arbitration through an arbitral forum approved by The Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit corporation that assumed responsibility from the United States government in 1998 for, among other things, the management of the domain name system. As part of its domain name management function, ICANN adopted a Uniform Domain Name Dispute Resolution Policy according to which parties may arbitrate domain name-trademark disputes. The most commonly used arbitration organizations are Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF).

Article 233 has also been criticized for its faults outside of the absence of clarity with respect to a competent authority. Detractors point to the lack of clear proceedings for cancellation of a domain name and highlight the unnecessary broadness of the provision due to its protection of not simply well-known marks but well-known distinctive signs that are used not only in domain names but also electronic mail addresses. To date, no cases have been brought before the Andean Community Court. However, the importance of this issue and the dearth of clarity among jurists and functionaries on application of Article 233 should occasion litigation within the near future.