Dominican Piracy Control Policies

[Fabio J. Guzman]

Law #20-00 penalizes the usage of names similar to those that have been registered:

"Art?culo 166.- De las sanciones.

Incurren en prisi?n correccional de tres meses a dos a?os y multa de diez a cincuenta salarios m?nimos o ambas penas quienes intencionalmente:

a) Sin el consentimiento del titular de un signo distintivo use en el comercio un signo id?ntico o una marca registrada, o una copia servil o una imitaci?n fraudulenta de esa marca, en relaci?n con los productos o servicios que ella distingue, o a productos o servicios relacionados;

b) Sin el consentimiento del titular de un signo distintivo realice respecto a un nombre comercial, un r?tulo o un emblema con las siguientes actuaciones:

i) Use en el comercio un signo distintivo id?ntico, para un negocio id?ntico o relacionado;

ii) Use en el comercio un signo distintivo parecido, cuando ello fuese susceptible de crear confusi?n."

....

In summary, a person who intentionally uses a "commercial name,? similar to one that has been duly registered, is subject to imprisonment of 3 months to 2 years and/or fines of 10 to 50 times the minimum salary (currently approx. $2000 to 10000 US) plus any damages caused to the owner of the name.

I advise clients who do business in the Dominican Republic to register the name of their web sites as a commercial name under Dominican law in order to have a recourse locally against imitators.

 

[Andy B]

Thank you Fabio for your informed reply. Samana.Net, S.A. has been duly registered as a Dominican corporation since our inception and we will prosecute anyone who uses our material or name without our permission. I, too, advise all other website owners doing business in the DR to register their websites and do the same.

 

[Andy B]

I forgot to add that now that the DR congress has recently passed the electronic business law, framework has been provided for internet violations to be easily prosecuted. Fabio, would you please comment further on this?

 

[Fabio J. Guzman]

I haven't seen the new law since it has not been officially published but from what I've learned it has more to do with establishing the conditions for electronic contracts (digital signatures, etc.) than with intellectual property violations.

There is a procedure in place to chase so-called "cybersquatters" and others involved in trademark infringement by improperly using domain names. The procedure, however, is quite costly for a guy in Las Galeras to implement.

Anyone who registers a domain name consents, as part of the registration agreement, to be brought before the arbitration board of the World Intellectual Property Organization (WIPO), a dependency of the United Nations, in case of trademark infringement. The Arbitration and Mediation Center of the WIPO is based in Geneva, Switzerland. Therefore, to file and proceed with a complaint you most probably have to hire a lawyer to represent during the arbitration hearings in Geneva, not an inexpensive proposition.

An easier and cheaper route would be to sue the cybersquatter in the D.R. for trademark infringement under Dominican trademark law. This would only work, however, if the defendant has some assets in the D.R. that can be ultimately seized after obtaining a judgment. Recently, a District Court in the U.S. held that U.S. trademark law could be applied to a cybersquatter based overseas if the site was trying to draw customers in the U.S.