Cybersquatting and the Jordanian Trademarks Law By Rami Olwan E-commerce legal consultant Jordan was the first

among the Middle East countries to issue an electronic transactions law. The Law (No. 85 of 2001) regulates electronic contracts and electronic signature and gives a certain value to e-business transactions. Although the Law was a step in the right direction towards regulating electronic commerce in Jordan, and in conformity with King Abdullah’s directions to qualify Jordan to become an important Internet and IT hup, the solutions it presents are still far from expectations. Cyberspace poses serious challenges to traditional legal theories such as the conflict that arises between domain names and trademarks, or what has been known as cybersquatting. Cybersquatting is the act of registering famous trademarks as domain names in order to sell these domain names to the rightful trademark owner. This article attempts to answer an important question: Is the Jordanian Trademark Law No. 34 of 1999 in its current situation capable of dealing with the cybersquatting phenomenon?

National Information Center (NIC) Country Code Top Level Domains (ccTLDs) ending in (jo) are allocated by the National Information Center to any legal or natural person applying for a domain name registration. However, the NIC does not specify any certain legislation or provision that clearly states what happens in a situation where someone registers others’ famous trademark as (jo) domain name. The NIC did not adopt the Uniform Dispute Resolution Policy (UDRP) approved by the Internet Corporation for Assigned Names and Numbers (ICANN). Also, there is no special dispute resolution procedure to solve domain name disputes, and the only solution left is the local courts and the trademark law. But can the trademark owner rely on this Law or do we need to amend it?

Laws and Cybersquatting Countries differ in their approaches to cybersquatting. Certain countries issue special legislations that deal specifically with cybersquatting (e.g. US Anti Cybersquatting Consumer Protection Act 1999), while others amend traditional trademark or unfair

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competition laws as to state that registering a famous trademark constitutes a trademark infringement and unfair competition (e.g. Japanese amendment of Unfair Competition Prevention Act 1993). Other countries, however, neither issued new cybersquatting laws nor amended their current trademark laws. Instead they relied on the decisions of their courts that considered cybersquatting an act of trademark infringement and passing off (see One in a Million Case, U.K). So far, there have been no decided cybersquatting cases before Jordanian courts. Limitation and Inadequacy of Jordanian Trademark Law Generally, protection of trademarks in Jordan is either civil or criminal. While unregistered trademarks do not qualify for civil protection, the owner of a registered trademark has the option to file either a civil claim or a criminal one. Article 34 of the Jordanian Trademark Law states that “No person shall have the right to file a lawsuit to claim damages for any infringement upon a trademark not registered in the Kingdom…” Article 26 of the Trademark Law states that “If the trademark is famous but not registered, then its owner may demand from the competent court to prevent third parties from using it on identical goods or services…” Article 38 of the Law specifies trademark infringement as one of the following acts: A) Counterfeiting a registered trademark under this Law, imitating it in any other way that misleads the public, or affixing a counterfeit or imitated mark on the same goods for which the trademark has been registered. B) Illegally using a trademark owned by others in the same class of goods or services for which that trademark is registered. C) Selling, possessing for the purpose of selling or offering for sale goods bearing a trademark whose use is regarded as an offence under Paragraphs (A) and (B) of this Article. However, a trademark owner whose trademark has been infringed through registration as a domain name with the NIC cannot rely on the above provisions. Basically, an unregistered trademark is not protected in Jordan (Article 34) unless it is a famous mark (Article 26); nevertheless, such a registration is no guarantee against cybersquatting since the provisions of these articles are not inclusive of domain names. Conclusion and Recommendations Jordan is not a common law country that depends merely on cases and judgments, but a civil law country that depends on laws.

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The addition of a new provision to the Jordanian Trademark Law stating that registering a domain name identical with or confusingly similar to a registered trademark with bad intent constitutes a trademark infringement would be a step in the right direction towards making Jordan a secure e-business environment. This step can be enhanced by adding a new provision on cybersquatting to Article 2 of the Unfair Competition and Trade Secret Law No.15 of 2000. A coordination relationship between the NIC and legislators is most necessary for developing new domain name regulations. The NIC should also guide trademark owners to the legal remedies available when their trademarks are infringed through registration as (jo) domain names. In this regard, the expertise of IP and e-commerce legal consultants can be so helpful.

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