Decision 486 of the Andean Community Commission, the new Intellectual Property Law for the member countries of the Andean Community (Bolivia, Colombia, Ecuador, Peru and Venezuela), grants additional protection for well-known trademarks. This protection guards well-known signs against unauthorized registration of a domain name, in all countries of the Community.
Decision 486 provides that the owner of a well-known distinctive sign can ask the authorities to cancel or modify a registered domain name if:
- it is identical to the well-known sign or its essential part; if it is a reproduction, imitation or translation of the sign, and is used for the same activities, products, services or stores as the well-known sign; or if it is a reproduction, imitation or translation of the sign even if it is used for different activities, products, services or stores than the ones of well-known sign, or if it is used for non-commercial purposes, if the use;
- causes confusion in relation to the sign owner or its activities, products, services or stores;
- causes economic or commercial damage to the sign holder because of the sign's dilution; and
- constitutes an unfair exploitation of the good will and prestige of the sign holder.
It is important to bear in mind that the provision will only be in force for domain names registered before the national NIC registrars of the member countries of the Andean Community .
The protection for well-known signs against unfair registrations in the generic Top Level Domain names (gTLD) should continue to be governed by ICANN´s Uniform Domain Name Dispute Resolution Policy (UDRP) adopted in August 1999, or its future amendments.
Mauricio Jaramillo and Juan Carlos Torres