Co-author: Micaela Kristina V. Galvez l February 28, 2025 l Manila Times
There is growing complexity and competitiveness in brand management in the global market.
While trademarks are the foundation of brand identity, domain names have become increasingly significant in brand management. Domain name disputes involve a complex intersection of issues concerning intellectual property rights and cybersecurity.
The World Intellectual Property Organization (WIPO) has reported a steady rise in domain name disputes. In 2023, there were 5,928 complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), a 7-percent increase from 2022.
It is inevitable that, as the Philippines sees exponential growth in its digital economy, players in the market likewise face an increasing risk of trademark dilution due to poor domain name management. Businesses are prone to suffer in fighting cybersquatting and domain name hijacking.
Cybersquatting
Cybersquatting means registering domain names to profit, mislead, destroy the reputation of others, or deprive others from registering the same name. While there is no express protection against this practice in the Intellectual Property Code of the Philippines or Republic Act (RA) 8293 (IP Code), the Cybercrime Prevention Act of 2012 or Republic Act (RA) 10175 may fill in the gap by prohibiting and penalizing such bad faith registration when there is intellectual property rights affected.
Meanwhile, domain hijacking occurs when cybercriminals gain unauthorized access to an entity’s domain name, often through hacking or fraudulent domain transfer requests. This allows the hijacker to commit various crimes, including trademark infringement and unfair competition, depending on the circumstances.
Unfortunately, the Cybercrime Prevention Act lacks clear language to prohibit and penalize it. Nonetheless, insofar as trademarks and business identifiers are diluted through domain hijacking, such conduct may qualify as trademark infringement or unfair competition, which is prohibited in the IP Code.
In view of these unlawful practices, brand managers must remain vigilant in monitoring unauthorized use of their brand names, logos, and overall brand identity. Failure to address impersonation and similar threats can significantly harm a business’ reputation and market position.
Although legal remedies exist to combat cybersquatting and domain hijacking, swift action is nonetheless essential to prevent long-term damage. Proactively registering relevant domain variations and actively monitoring the online landscape can further enhance a brand’s defenses against these vulnerabilities.
Businesses often struggle to maximize their brand potential due to inadequate planning. While the IP Code provides exclusive rights to trademark owners, registrants of domain names do not enjoy the same legal protection.
The global domain name system has evolved as a private initiative, rather than through a formal treaty or legal framework. Consequently, domain name disputes are typically addressed through the Uniform Domain Name Dispute Resolution Policy, which is widely adopted by domain name registrars. This policy serves as a critical mechanism for resolving conflicts over domain ownership and usage.
The differences in regimes for trademarks, on one hand, and domain names, on the other, reveal that there are various protections that may be applied in a brand. Businesses are thus encouraged to maximize these regimes, by considering the following:
1. Before establishing a brand, conduct trademark and domain name searches;
2. Prioritize registering your trademark before acquiring a domain name;
3. When entering into licensing agreements involving brands, ensure that provisions governing conduct concerning both trademarks and domain names are included.
***The views expressed herein are their own and do not necessarily reflect the opinion of their office as well as FINEX. For comments, email msgorriceta@gorricetalaw.com and mvgalvez@gorricetalaw.com. Photo is from Pinterest.