IN GENERAL
It is possible for a sign identical to a trademark to be used as an internet domain name for the same goods and/or services within the scope of the trademark’s registration. The scope of this use is determined by the second paragraph of Article 7 of the Industrial Property Law. According to this scope, without the permission of the trademark right owner, the use of internet domain name within the scope of the trademark right against the use of third parties can be prevented by the trademark right owner.
CONDITIONS
In order for the trademark to be used as an internet domain name and to be protected within the scope of IPL, both the trademark and the internet domain name must be “same”, and the goods or services where the trademark is used and the internet domain name must be used in “the same goods or services”. An important point at this point is what the internet domain name is in the content of the website to which it is directed. If the domain name of the redirected website is only registered but does not contain anything in its content; Since there can be no use in the “same goods or services”, there will be no use in this context. Therefore, in this case; The trademark owner will not be able to make a request within the scope of Article 7/2 of the IPL.
In order for the trademark right holder to exercise the right to demand under the said article, firstly; using the same trademark as an internet domain name for similar goods or services, secondly; the use of a similar trademark as an internet domain name for the same goods or services, and finally; one of the situations where a similar trademark is used as an internet domain name for similar goods or services should occur and there should be a likelihood of confusion.
If we look at what the likelihood of confusion is, the Supreme Court of Appeals adopted this concept in its General Assembly decision dated 09.03.2016: “The important point in the likelihood of confusion is the possibility of the public to connect these two signs for any reason whatsoever. The word ‘likelihood’; here is a word that has been used carefully and especially, and the shape, sound, meaning, general appearance, connotation and the impression of being in a series are evaluated within this scope.
Similarity analysis should be carried out not by dividing the elements of the trademark, but by considering the public impression left as a whole, and the descriptive elements within the trademark should not be ignored in the similarity assessment.
CONCLUSION
As a result, even if a domain name is the same as a registered trademark, apart from the well-known trademark status, the website content should be examined, and if the goods and services are found to be the same or similar, the use of the trademark as an internet domain name may be prevented based on the provisions of the trademark law.
Harun DEMİR
