Superintendence draws line between domain names and trademarks

The Superintendence of Industry and Commerce has issued an opinion that draws a clear distinction between trademarks and domain names. In recent years there has been a dramatic increase in the number of cybersquatting cases - and the opinion appears to be an attempt to clarify the grounds on which such cases are decided.

The distinction set out in the opinion is based on the definition of 'trademark' found in Article 134 of Decision 486 of the Andean Community, which provides that "a trademark is any sign fit for distinguishing products or services in the market" including words and phrases, and graphical representations.

The superintendence maintains that domain names are simply identifiers (which can imply commercial activity or not) understood as addresses on the Internet. Article 1 of Resolution 001455, which was issued by the Ministry of Communications last September, defines a 'domain name' as an:

"identifier common to a group of computers or pieces of equipment connected to the network, and constituting a form of address that permits users to easily locate internet websites."

In other words, the concepts of trademarks and domain names are quite distinct in the eyes of Colombian regulators. Consequently, domain names cannot constitute commercial trademarks, even though a domain name may eventually constitute an indication of the use of a trademark, provided that this use complies with the requirements set out in Article 166 of Decision 486.

This is the first such opinion to be published since the Ministry of Communications took over the regulation of the country-code top-level domain '.co' last year.

Daniel Peña, Cavelier Abogados, Bogota