res judicata

Can a domain name be used to prove a trademark infringement?

YYes. Determining who is the natural or legal person who benefits from the use of a website identified with a domain name similar to a trademark, constitutes a relevant indication to identify the author of a trademark infringement. This was ordered by the Court of Justice of the Andean Community in May 2022.

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Below we reveal details of such pronouncement:

Origin Court of Justice of the Andean Community. Prejudicial Interpretation 140-IP-2021. Official Gazette of the Cartagena Agreement 4476 of May 25, 2022.

Date May 6, 2022

Magistrate Hernán Rodrigo Romero Zambrano

Sending authority

Civil Chamber of the Superior Court of the Judicial District of Bogotá of the Republic of Colombia.

Thesis 1 Domain names, specifically Second Level Domains (SLDs), are often identical or similar to the word mark that distinguishes a particular product or service. In these events, they fulfill a distinctive function since they make it easier for clients and consumers to locate the virtual establishment in which a product or service is marketed (directly or indirectly). In that case, domain names operate as a business name.

Thesis 2 A domain name that fulfills a distinctive function similar to that of the trade name may infringe a previously obtained trademark right (unless they are well-known and renowned trademarks, because they receive greater legal protection that extends to non-commercial uses). Trademark infringement occurs when the infringer, “in order to illegally increase their sales, uses a domain name identical or similar to a registered trademark. Thus, consumers could be led to think (by mistake) that the virtual establishment identified with the domain name belongs to the owner of the trademark registration, when in reality it belongs to, or simply benefits, the infringer”. Thesis 3 “In application of the principle of primacy of reality, the judge, whether it is an administrative or jurisdictional authority, faced with a conflict between the reality of the facts and the fiction contained in documents or legal acts, must prefer what happens in the reality, that is, the real truth over the legal fiction”.

Thesis 4 Trademark infringements can be proved not only with direct evidence, but also with indirect evidence (indications and presumptions). In this sense, to determine a trademark infringement, more relevant than finding out who is the natural or legal person who owns the domain name that acts or fulfills the function of a trade name, is to identify the natural or legal person who benefits from the use of the website identified with the domain name. The individualization of the beneficiary constitutes a relevant indication to identify the author of the trademark infringement.

Thesis 5 Decision 486 does not contain any provision that sets forth the procedure that the owner of a trademark, trade name or other distinctive signs could initiate to prevent their improper use through a domain name. Each case must be analyzed to determine what would be the internal procedure that can be followed; or, failing that, verify the possibilities offered by some international organizations specialized in the matter to solve this type of dispute (Principle of the indispensable complement).

Decision Preliminary interpretation

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