Countries differ in their approaches to cybersquatting. Certain countries issue special legislations that deal specifically with cybersquatting (e.g. US Anti Cybersquatting Consumer Protection Act 1999), while others amend traditional trademark or unfair competition laws as to state that registering a famous trademark constitutes a trademark infringement and unfair competition (e.g. Japanese amendment of Unfair Competition Prevention Act 1993).
Other countries, however, neither issued new cybersquatting laws nor amended their current trademark laws. Instead they relied on the decisions of their courts that considered cybersquatting an act of trademark infringement and passing off (see One in a Million Case, U.K).
So far, there have been no decided cybersquatting cases before Jordanian courts.
Limitation and Inadequacy of Jordanian Trademark Law
Generally, protection of trademarks in Jordan is either civil or criminal. While unregistered trademarks do not qualify for civil protection, the owner of a registered trademark has the option to file either a civil claim or a criminal one.
Article 34 of the Jordanian Trademark Law states that “No person shall have the right to file a lawsuit to claim damages for any infringement upon a trademark not registered in the Kingdom…”
Article 26 of the Trademark Law states that “If the trademark is famous but not registered, then its owner may demand from the competent court to prevent third parties from using it on identical goods or services…”
Article 38 of the Law specifies trademark infringement as one of the following acts:
A)Counterfeiting a registered trademark under this Law, imitating it in any other way that misleads the public, or affixing a counterfeit or imitated mark on the same goods for which the trademark has been registered.
B)Illegally using a trademark owned by others in the same class of goods or services for which that trademark is registered.
C)Selling, possessing for the purpose of selling or offering for sale goods bearing a trademark whose use is regarded as an offence under Paragraphs (A) and (B) of this Article.
However, a trademark owner whose trademark has been infringed through registration as a domain name with the NIC cannot rely on the above provisions.
Basically, an unregistered trademark is not protected in Jordan (Article 34) unless it is a famous mark (Article 26); nevertheless, such a registration is no guarantee against cybersquatting since the provisions of these articles are not inclusive of domain names.
Conclusion and Recommendations
Jordan is not a common law country that depends merely on cases and judgments, but a civil law country that depends on laws.
The addition of a new provision to the Jordanian Trademark Law stating that registering a domain name identical with or confusingly similar to a registered trademark with bad intent constitutes a trademark infringement would be a step in the right direction towards making Jordan a secure e-business environment.
This step can be enhanced by adding a new provision on cybersqatting to Article 2 of the Unfair Competition and Trade Secret Law No.15 of 2000.
A coordination relationship between the NIC and legislators is most necessary for developing new domain name regulations.
The NIC should also guide trademark owners to the legal remedies available when their trademarks are infringed through registration as (jo) domain names. In this regard, the expertise of IP and e-commerce legal consultants can be so helpful.