By means of a recently published Prejudicial Interpretation (PI), the ACJ set guidelines for resolving cybersquatting cases in the Andean Community countries.
The PI was issued within a Colombian trademark infringement case, where the Defendant allegedly infringed Plaintiff’s rights over the trademark “LILASH”, due to the registration of the domain name [lilashcolombia].
The rules, which primarily refer to well-known distinctive signs (WKDS), can also be applied when it comes to more conventional signs:
1. If the WKDS precedes the domain registration or acquisition, IP rights should prevail.
2. If the domain registration or acquisition precedes the WKDS, the national authority may review: (a) whether the domain titleholder has a right or legitimate interest over the domain; and (b) whether the domain has been registered or used in bad faith.
3. If unfair competition behaviors are foreseen, the national authority may also consider: (a) whether the domain registration or acquisition aims to obstruct competitor activity or; (b) whether there are misleading activities taking place through the webpage involved (e.g., suggestions that the online products are sponsored by or linked to the WKDS).
