An action was filed by Coca-Cola through its lawyer, Yiannos Georgiades, against an individual who had applied to the competent authority to register the name on his website. Coca-Cola objected to this use alleging, that it amounted to an action in passing off and trademark infringement, an intellectual property right. The defendant argued that the domain was only to be used for his personal use. Georgiades & Mylonas argued that this was in fact a case of cyber squatting and that the defendant was attempting to prevent Coca-Cola from using the domain name and was trying to make money out of the famous brand name, with which he had no connection. The Court, however, did not accept this argument and the appeal is now pending. It is the first time that the Cyprus Supreme Court will decide on the issue of domain names and passing off.
Coca-Cola succeed in their appeal against a decision made by a Cyprus Court:
An action was filed by Coca-Cola in 2007 through its lawyer, Mr. Georgiades, of the law firm Georgiades & Mylonas, in the District Court of Nicosia, against a Cypriot individual from Limassol who had applied to the competent authority to register the Internet Domain name of Coca-Cola www.coca-cola.com.cy. Coca-Cola objected to this use alleging that it amounted to an action in passing off and trademark infringement, these being intellectual property rights as well as raising concerns of unfair competition. It also meant that Coca-Cola could not register this name in Cyprus. Coca-Cola sought an order forcing the defendant to give back the name. The defendant argued that the domain was only to be used for his personal use. Mr. Georgiades argued that this was in fact a case of ‘cyber squatting’ and that the defendant was attempting to prevent Coca-Cola from using the domain name and was therefore trying to make money out of the famous brand name, with which he had no connection.
The Court of First Instance, however, did not accept the Plaintiff’s argument and would not approve the application and so an appeal was raised to the Supreme Court. It was the first time that the Cyprus Supreme Court would examine such matters of domain names in such circumstances.
According to the evidence given by one of Coca-Cola’s witnesses, the Defendant’s aim was to sell them the name, when they asked him to release it, he asked them for money. During the cross-examination of the Defendant by Mr Georgiades, although he originally mentioned that he had not registered any other Internet domain names of well-known companies and that he had registered the name without any commercial gain, the Defendant eventually admitted that he had also registered Pepsi-Cola’s name in Cyprus. Furthermore, he avoided responding to Mr. Georgiades’ submissions that the reason why he registered both Coca-Cola’s name and that of Pepsi-Cola was to sell them to those companies, something which is prohibited.
This phenomenon, which has become known as “cyber squatting” reached its peak internationally in around the mid-1990s. The English Courts decided that it constitutes unfair competition and a trademark infringement. Mr. Georgiades referred the court, in support of his arguments, to the case British Telecomunications PLC v. One In A Million Ltd CA (1988) 4 All ER 476 as well as to other English cases and explained that the naming of an Internet domain name is in essence a translation of a numerical address of a computer system into words so that it can be easily understood by the average user.
The harmonious functioning of the domain name and of addresses of Internet numbers are monitored by the organisation ICANN (Internet Co-operation for Assigning Names & Numbers).
Mr Georgiades acknowledged that the providers of domain name naming now protect holders of trademarks from this kind of cyber squatting. In Cyprus, the country provider for registering domain names ending in “cy” is the University of Cyprus, which gets its powers from the Telecommunications Regulator, which was established in Cyprus in 2005. The provider has the power not to register or to strike out a domain name which is registered if the Applicant is not the owner of the trademark and he is not authorised by the latter to register it. Parallel to this, if they wish to do so, owners who are entitled to intellectual property rights can seek recourse in the courts and claim remedies, including damages for unfair competition and the infringement of a trademark.
The appeal was heard and the Supreme Court brought justice to Coca-Cola by issuing an order in which it ordered the defendant to return the name to Coca-Cola.