The UA domain administrator, Hostmaster limited liability
company (48/52, Feodosiyska Str., Kyiv, 03028) has developed
and effected the UA Domain Rules.
In compliance with Section 1 of Chapter 3 Peculiarities
of administering the UA public domain, for the purpose of
protection of the lawful interests of the members of the
Internet-Union of Ukraine as to intellectual property thereof
the private domain names of the second level in the UA domain
shall be delegated exclusively when the respective domain
name, fully or a component thereof of the second level (till
the symbol . but not including the above symbol), in writing
or when pronounced, concur with a verbal mark for goods and
services (hereinafter - the trade mark, TM) registered in
Ukraine the rights for application of which in the territory
of Ukraine belong to an appropriate registrant. Such
delegation shall be exercised irrespective of the MKTP classes
under which TM has been registered. The above delegation shall
be exercised exclusively under the condition of submission of
duly notarized copies of the below listed documents:
1.
A Certificate of Ukraine for a mark for goods and
services issued by the central executive body in charge of the
legal protection of intellectual property;
2.
An agreement on delegation of the ownership right on
the mark or a license contract (in case a registrant is not a
holder of the Certificate);
3.
Certificates of a translation office evidencing that
the applied domain name or a part thereof concurs by its
writing or pronunciation with the appropriate TM.
The above section of the UA Domain Rules restricts
the rights of citizens and legal entities, and conflicts with
the legislation of Ukraine in force on the following grounds:
1.
The persons desiring to obtain a domain name are
obligated to have a certificate for a mark for goods and
services - in compliance with the Paris convention on
protection of industrial property as of March 20, 1883, the Law
of Ukraine On Protection of Rights on Marks for Goods and
Services the legal protection of the mark for goods and services
through registration thereof with an appropriate Agency is
the right but not an obligation of a person.
2.
Citizens-entrepreneurs and legal entities are deprived
of their right to use the company name in the domain name -
in compliance with Articles 6sexies (Service marks),
8 (Firm-names) of the Paris convention on protection of
industrial property as of March 20, 1883, the countries of the
Union bind themselves to protect the service marks and
firm-names (irrespective of the fact that it is a part of a
trade mark) with no compulsory submission of an
application or registration.
3.
Citizens and legal entities are deprived of their
right to use in the domain name the words and word combinations
that cannot enjoy the legal protection as the marks for goods
and services - in compliance with Article 6 of the Law of
Ukraine On Protection of Rights on Marks for Goods and Services
the legal protection cannot be obtained for the markings that:
are commonly used as the names of goods and services
of a specific type;
indicate the kind, quality, quantity, properties,
designation, value of the goods and services as well as the
place and date of manufacture or sale of the goods or of
rendering the services;
are the commonly used symbols and terms.
4.
The right of citizens of Ukraine to obtain the private
domain name of the second level in the UA domain is restricted
- in compliance with the Paris convention on protection of
industrial property as of March 20, 1883, the Law of Ukraine On
Protection of Rights on Marks for Goods and Services the legal
protection of the mark for goods and services can only be
obtained the persons that exercise entrepreneurial activities.
According to Article 42 of the Constitution of Ukraine
exercising entrepreneurial activities is the right but not the
obligation of a citizen. In compliance with Article 22 of the
Constitution of Ukraine the rights and liberties of a citizen
vested by this Constitution are not exhausted.
5.
Contrary to the legislation in force the above Rules
vest the registrators of domain names with the powers of
exercising control over compliance with the Law of Ukraine On
Protection of Rights on Marks for Goods and Services. In
compliance with Section 3 of Article 16 of the Law of Ukraine On
Protection of Rights on Marks for Goods and Services only
the owner has the right to prohibit other persons to use
the registered mark with no permit thereof. Article 20 of the
Law of Ukraine On Protection of Rights on Marks for Goods and
Services prescribes that any offence of the rights of a
certificate holder stipulated by Article 16 of the above Law is
considered as violation of the rights of the certificate holder
that involves responsibility under the legislation of Ukraine in
force. Such responsibility is specially stipulated by Articles
21-23 of the Law of Ukraine On Protection Against Unfair
Competition, Article 512 of the Code of Ukraine on
administrative infractions (violation of the rights on an object
of the intellectual property right), Article 229 of the
Criminal Code of Ukraine (unlawful use of a trade mark).
Only upon the demand of a certificate holder such
offence must be dismissed and an offender has to indemnify the
losses inflicted to the certificate holder. Disputes related to
application of the Law of Ukraine On Protection of Rights on
Marks for Goods and Services shall be resolved by a common law
court, by an arbitration court or tribunal through the procedure
prescribed by the legislation of Ukraine in force.
In compliance with Article 19 of the Constitution of
Ukraine the legal procedure in Ukraine is based on the
principles according to which nobody can be forced to do the
things that are not stipulated by the legislation. The UA Domain
Rules do initially restrict the rights of citizens and legal
entities as guaranteed by the Constitution and the Laws of
Ukraine. They are deprived of such rights fully (citizens and
legal entities that exercise no entrepreneurial activities) or
partially when they are obligated to have a registered mark for
goods or services as a precondition for implementation of such
right. The domain of UA top level is an integral part of the
world system of domain names, and the Ukrainian portion of the
Internet network is not the property of Hostmaster LLC. Under
such circumstances Hostmaster LLC had no right to include the
above provisions into the UA Domain Rules. Moreover, by their
content the above Rules are a statutory act that covers an
indeterminate circle of persons. Under Article 75 of the
Constitution of Ukraine the only body of the legislative
authority in Ukraine is the parliament - the Verkhovna Rada of
Ukraine. All other bodies of the state authority and
administration issue statutory acts exclusively on the basis and
in pursuance of the Constitution of Ukraine and the Laws of
Ukraine. The analysis of the Constitution of Ukraine evidences
that only the bodies of the state authority and administration (Hostmaster
LLC is not such a body) have the right to issue statutory acts
in Ukraine.
So far that the norm of the UA Domain Rules under which
the domain name of the second level is delegated only under the
condition of availability of a certificate on registration of
the mark for goods or services, is contrary to the Constitution
and the Laws of Ukraine, does initially violate the rights of
citizens and legal entities, the heads of registration offices
have no right to obligate the persons that desire to obtain such
domain name, to submit a certificate for the mark for goods or
services, or to deny citizens to delegate the domain name. In
case of committing such deeds the officials of the registration
offices can be subject to institution of criminal proceedings
for abuse of power under Article 365 of the Criminal Code of
Ukraine.
Volodymyr Yablonsky
19/12/2001
Reproduction in the press, public execution or public
notification with no permit of the author is prohibited.
