Unprecedented decision regarding domain names

In a final decision announced on March 8, 2001 by Federal Judge Daniela Milanez, of Rio de Janeiro, it was ordered that the trademarks AOL and AMERICA ONLINE be included in the list of the well-known trademarks of Registro. BR, the Brazilian agency responsible for domain name registration.

The court action that originated the ruling, which was not handled by our office, was filed by America Online Inc. and its subsidiary AOL Brasil Ltda. against the INPI (Brazilian Patent and Trademark Office) with the purpose of obtaining a declaration that the trademarks AOL and AMERICA ONLINE are well-known for Internet-related activities. The Judge determined that Registro.BR, managed by Fapesp (Fundação de Amparo à Pesquisa do Estado de São Paulo) include the above mentioned trademarks on its list of marks not allowed to be registered as domain names by unauthorized parties (well-known and famous trademarks), which grants more protection against the so-called "cybersquatters."

The ruling, however, could have been broader, since the current Registro.BR system only allows domain names which are identical to the famous trademarks to be blocked from registration. Since the ruling dealt with well-known trademarks, the Judge should have determined that domain names which are also similar to the trademarks should be blocked from registration as well. This would prevent the action of the "typosquatters" and would work as an efficient deterrent tool against Internet piracy.