01-12-2012
Ma. Consuelo Agno
Domain names have become an important issue in the protection of intellectual property rights.
US courts have held that a website’s domain name signifies its source of origin, and is therefore an important signal to Internet users who are seeking to locate a web resource. Because of the importance of a domain name in identifying the source of a website, the use of a trademark within the domain name of a uniform resource locator (URL) can constitute a trademark violation.
Registration of domain names in the Philippines is quite easy. If a rightful owner finds its domain name already registered or being used in the Philippines by an unauthorised person or entity, the usual recourse is to notify the website’s host to remove or take it down. The owner may also file a case for infringement or unfair competition of a trademark or trade name under Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IPC).
The Cybercrime Prevention Act of 2012 (Republic Act No. 10175) was approved on September 12, 2012, and took effect on October 3, 2012. While the cybercrime law focuses on the regulatory policy of the Philippines government on the use of the Internet in disseminating information, it also incorporates a salient provision on IP protection for domain names.
Cybersquatting is among the cybercrime offences enumerated under Section 4 of the law: “(6) Cybersquatting—The acquisition of a domain name over the Internet in bad faith to profit, mislead, destroy reputation, and deprive others from registering the same, if such a domain name is:
1. Similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration;
2. Identical or in any way similar with the name of a person other than the registrant, in case of a personal name; and/or
3. Acquired without right or IP interest in it.”
Section 8 provides the penalties for cybersquatting and other cybercrime offences: “Penalties— Any person found guilty of any of the punishable acts enumerated in Sections 4(a) and 4(b) of this Act shall be punished with imprisonment of prisión mayor (imprisonment ranging from six years and one day to 12 years) or a fine of at least 200,000 pesos (US$5,000) up to a maximum amount commensurate to the damage incurred, or both.”
“FURIOUS CIVIL LIBERTARIANS BELIEVE THAT IT IS A WAY OF SILENCING POLITICAL ADVERSARIES BY USING CERTAIN AMBIGUOUS AND OVERLY STRICT PROVISIONS.”
The adoption of the cybercrime law enhances protection against cybersquatting by giving stronger teeth to enforcement.
Prior to this law, the remedies available to prosecute similar offences included the filing of civil or criminal complaints for infringement and unfair competition in conjunction with a trademark or trade name. Additional reliefs for injunction, issuance of search warrants and damages may likewise be resorted to. The penalties imposed for these offences under the IPC are imprisonment and a fine.
No doubt this new law will render enforcement against cybersquatting more effective. Several provisions in the law render this attainable. Sections 4(c)(4) and 5(a) and (b) would make the service provider liable as well as those who wilfully attempt to commit the offence. Section 6 increases the penalty by one degree higher than those provided under the existing laws. Prosecution under this law shall be without prejudice to any liability for violation of the other laws under Section 7.
Corporate liability is defined under Section 9. A special unit for enforcement to exclusively handle the violations for this law is established under Section 10. A cybercrime investigation and coordinating centre is created under Section 24. The implementation of this law is funded under Section 27.
The cybercrime law has, however, caused a tempest among the huge number of Internet users in the Philippines, mainly because it applied the traditional law on libel to the Internet. Furious civil libertarians believe that it is a way of silencing political adversaries by using certain ambiguous and overly strict provisions and through the lack of comprehensible standards for the implementation of the law. People marched on the streets protesting loudly against it.
The decision of the Supreme Court on the petitions to declare it unconstitutional is keenly awaited. The president of the Philippines signified the willingness of the government to amend this law. If it is amended, there is a high probability that the provision on cybersquatting will remain in place.
Ma. Consuelo C. Agno is a junior partner at Sapalo Velez Bundang & Bulilan. She can be contacted at info@sapalovelez.com