Thailand’s Legal Framework on Cybersquatting
Following the global trend, Thailand is seeing more and more retail trade in goods and services being conducted online. So it is unsurprising that counterfeiters and other intellectual property ( IP) infringers also move their operations from the street corners to the internet. While on the street corner, counterfeiters cannot conceal their true nature from knowledgeable consumers. Their fly- by- night physical operations put consumers on notice that the goods provided are counterfeit and/ or unauthorized.
However, the internet offers counterfeiters more than just anonymity to conduct their unlawful transactions. Cunning operators can create websites that will fool even the most knowledgeable of consumers into believing they are dealing with a legitimate and authorized reseller. They take advantage of recognized online advertisers or marketplaces to lend themselves even further credibility.
Most recently, we have observed an increasing number of websites which are cybersquatting and/ or typosquatting on domain names identical or very similar to famous registered trademarks. We expect to see more of this in Thailand and SE Asia owing to the absence of clear and effective legislation.
As is the case of Cambodia, Malaysia, Indonesia and Singapore, Thailand does not have an express anti- cybersquatting law. So as in those jurisdictions, enforcement against cybersquatters must be accomplished through the existing trademark and IP laws. However, such enforcement is difficult as trademark infringement laws do not fully apply in the case of cybersquatting.
AVAILABLE LEGAL MEASURES
Three legal measures are available in Thailand for the enforcement of trademark rights against cybersquatters:
( i) Trademark Act;
( ii) Penal Code Sec. 272; and
( iii) Civil and Commercial Code ( CCC) Sec. 420.
The Trademark Act is the strongest of the three, making the counterfeiting or imitation of registered trademarks a criminal act subject to incarceration and fines. However, this will only apply for the benefit of trademarks registered in Thailand. Penal Code Sec. 271 is more general, prohibiting any use of a name or wording or imitative signboard which will mislead the public. This does not require a registered trademark, and is also punishable by fine and incarceration. Finally, there is the general catch- all language of CCC Sec. 420 which generally prohibits any injury to the “rights of another person”. Claims under this provision are limited to civil damages.
However, a common obstacle in all three enforcement provisions is the requirement for evidence of “infringing use”. Where an operator in Thailand registers a domain similar or identical to a registered trademark, but uses it to conduct business in a different class of activity, there is little that the trademark owner can do under Thai law.
For example, there is the recent Thailand case brought by the publishers of Penthouse Magazine ( registered owners for the trademark “Penthouse”) against the owner of the domain “www. Penthousehotel. com.” The case was dismissed by the Thai Intellectual Property and International Trade Court on the grounds that the registered trademark was for “magazines, casinos, nightclubs and TV programs” but not for “hotels”. The defendant’s registration of the domain name, despite having the identical trademark, was not deemed unlawful.
Similarly, unscrupulous operators may register domain names for the sole purpose of blocking legitimate trademark owners, in the hopes of reselling the domain to the trademark owner for a profit. While anti- cybersquatting laws such as those enacted in the U. S. prohibit such activity, the existing legal framework would be ineffective to take any action.
The mere act of registration of a domain name that copies the registered trademark, even if done in bad faith, is not enough to come within the scope of Thailand’s trademark, penal or civil laws. Absent some proof of infringing use, a cybersquatter can register a domain and do nothing with it ( or use it for some alternate, non- infringing use) without repercussion.
In one notable circumstance, however, a cybersquatter was prosecuted in Thailand without having effected an infringing use for the registered domain. In 2000, when a cybersquatter sent an email to trademark owners threatening to post pornographic images on the websites linked to their trademarks as a means of diluting their value, the Thai police effected an arrest based on charges of extortion and blackmail - but notably, not for trademark infringement.
While alternate proceedings are available under the Internet Corporation for Assigned Names and Numbers ( ICANN) for Uniform Domain- Name Dispute- Resolution Policy ( UDRP) proceedings to block cybersquatting, these proceedings will only apply to generic Top Level Domains ( e. g. . com, . biz, . net, . info). However, UDRP proceedings will not apply relative to Thai local domains (. co. th or . in. th) which are registered under the Thai Network Information Center ( THNIC). THNIC restricts local domain registrations to either ( a) owners of registered trademarks; or ( b) operators who have a registered partnership/ company with the same/ similar name. While this is somewhat helpful, it does not prohibit a cybersquatter from forming a new company using the registered trademark ( or part of it) and then registering the trademark as a domain name via that shell company. The time and cost in setting up and maintaining a company is nominal. Copying a trademark as part of a company name, without evidence of an infringing use, is also not actionable under the Thai legal framework.
Unless THNIC establishes an enforcement proceeding akin to the UDRP ( something both Malaysia and Singapore have recently introduced), or unless Thailand enacts an expansive anti- cybersquatting law, any enforcement within Thailand against cybersquatters who are blocking trademark owners ( without infringing use) will become a growing problem— inviting more and more cybersquatters to take advantage of the current gap in the law.
John Fotiadis is Senior Member and Tichachad Yingluecha is IP Counsel at Atherton. They can be contacted at: Johnf@ Athertonlegal. com or Tishay@ Athertonlegal. com.