Intellectual Property - Lithuania

Introduction
Protection against infringing domain names
Protection under unfair competition rules
Administrative and criminal liability

Introduction

Lithuanian law does not regulate the registration and use of '.lt' domain names. The management functions of the '.lt' top-level domain have been delegated to the Information Technology Development Institute at Kaunas University of Technology. The creation, suspension, extension, transfer, cancellation and alteration of domain names are determined by the institute's Procedural Regulation for the '.lt' Top-Level Domain, which states that '.lt' domains are registered on a 'first come, first served' basis - the institute checks only that the domain name complies with technical requirements and is not contrary to public morals. An applicant is personally liable for its assertion that a domain name does not infringe a third party's industrial property rights or copyright, and the institute does not monitor compliance. As there is no specific procedure for opposing the registration of a '.lt' domain name, anyone can register a name that infringes a third party's rights in a trademark, corporate name or personal name.

The Supreme Court has recently determined that the 'first come, first served' principle does not prevent a third party from challenging the use of a domain name. However, the legal remedies available to challenge infringing use remain unclear. As the regulation does not provide a specific domain name dispute resolution procedure, claims against '.lt' domain names must be based on general rules on trademarks, corporate names and personal names. In some cases the lack of regulation regarding '.lt' domain names has led the Lithuanian courts to draw and apply analogies with EU Regulation 874/2004 on the '.eu' top-level domain and the principles governing trademark registration.

Protection against infringing domain names

Trademarks
Trademarks can be protected against infringing '.lt' domain names under the Trademarks Law. Article 38(1) of the law allows the owner of a registered mark to prevent unauthorized third parties from using in the course of trade a sign which:

• is identical to the registered mark and is used in relation to goods or services that are identical to those for which the mark is registered;
• being identical or similar to the registered trademark and being used in relation to identical or similar goods or services, gives rise to a likelihood of confusion on the part of the public, including the likelihood of association with the registered trademark; or
• is identical or similar to the registered mark and is used in relation to dissimilar goods or services if (i) the registered mark has a reputation in Lithuania, and (ii) the use of the mark without due cause takes unfair advantage of, or is detrimental to, its distinctive character or reputation.

A domain name is a 'sign' within the meaning of these provisions.

Vilnius County Court recently issued a landmark judgment in which it held that 'www.burgerking.lt' was identical (and therefore confusingly similar) to the trademark BURGER KING, which was registered in Lithuania. The domain name owner was held to have taken unfair advantage of the plaintiff's trademark and was ordered to cease its use of the mark in Lithuania. However, the court found that this was not an optimal legal remedy and further ordered the defendant to transfer the disputed domain name to the plaintiff without charge.(1)

Corporate names
Corporate names can be protected against infringing '.lt' domain names under the Civil Code. Article 2.42(1) prohibits a party from obtaining rights or assuming obligations by (i) using another legal person's corporate name to conceal its identity, or (ii) exploiting such a name without consent. Article 2.42(2) provides that where a legal person's right to a corporate name has been infringed by another party's unlawful use - or where the latter has or uses a corporate name that fails to meet the requirements stipulated in the code - a court ruling may be sought to compel the infringer to (i) cease its unlawful acts or alter the corporate name, and (ii) redress the material and non-pecuniary damage resulting from its actions. If the provisions of Section 1 have been violated, the court may order the infringer to relinquish its gains from the unauthorized use. It is accepted that using a corporate name in a '.lt' domain name without authorization may be regarded as unlawful use and may constitute grounds for seeking legal remedies.

The Supreme Court recently held that rights in a corporate name are infringed if an identical or similar domain name is used for the purpose of distinguishing another party's goods and services - that is, if it is used as a form of business identification. The court held that the defendant's domain name, 'www.balducentras.lt', was similar to the plaintiff's corporate name, UAB Baldų Centras. It therefore ordered the defendant to terminate the registration of the domain name (for further details please see "Supreme Court rules on corporate names, trademarks and domain names").

Personal names
Personal names can be protected against unauthorized '.lt' domain names under Article 2.21(1) of the code. A natural person whose rights in a name have been infringed as a result of another party's unlawful acts in his or her name (or any other form of unlawful appropriation), or who is prevented from using his or her name, may ask the court to order the infringer to cease the infringing acts and redress the material and non-pecuniary damage incurred thereby. The use of a personal name in a '.lt' domain name may be regarded as unlawful appropriation in certain circumstances, but there has been no significant case law on the issue.

Protection under unfair competition rules

A mark having a distinguishing feature and in which priority may be claimed - including a trademark - can be protected against infringing use in a '.lt' domain name under the Competition Law. Article 16(1)(1) prohibits acts that are contrary to honest business practices and may be detrimental to the competitive potential of another undertaking. This includes the unauthorized use of a mark that is identical or similar to an undertaking's name, registered trademark, unregistered well-known trademark or any other sign that bears the distinguishing feature of another undertaking where such use:

• causes or is likely to cause confusion with the undertaking or its activity;
• seeks to take undue advantage of the undertaking's reputation, mark or reference;
• may be detrimental to such reputation, mark or reference; or
• may diminish the distinctiveness of the undertaking's mark or reference.

The unlawful use of a '.lt' domain name falls within the meaning of 'unauthorized use of a distinctive mark' for the purposes of the law. Article 17(1) entitles undertakings whose legitimate interests are violated by acts of unfair competition to bring an action before the court seeking:

• termination of the illegal acts;
• damages;
• an order that the infringer make one or more statements - their content and form to be stipulated therein - retracting the false information or providing an explanation of the identity of the undertaking and its goods; and
• the seizure or destruction of the goods, packaging and means of production that are directly related to unfair competition, unless the infringement can be remedied in another way.

In a recent case it was held that the registration of the domain names 'www.urvinemoteris.lt' and 'www.urvine.lt' - including the Lithuanian words for 'cavewoman' and 'cave', respectively - was a prohibited act of unfair competition in respect of the plaintiff, who held the copyright in a play called Urvinis Zmogus ("Caveman").

Administrative and criminal liability

In certain circumstances infringed rights may also be protected by provisions on administrative or criminal liability. The unlawful use of a '.lt' domain name may be deemed to constitute (i) performance of commercial or economic activities through the unlawful use of a corporate name,(2) or (ii) infringement of industrial property rights or use of another party's trade or service marks.(3) However, these remedies remain theoretical, since they are as yet untested in case law and the enforcement agencies are generally unwilling to apply the provisions in this way.

For further information on this topic please contact Edita Ivanauskienė or Julius Zaleskis at Lideika, Petrauskas Valiunas ir partneriai LAWIN by telephone (+370 5 268 1888), fax (+370 5 212 5591) or email (edita.ivanauskiene@lawin.lt or julius.zaleskis@lawin.lt).

Endnotes

(1) Decision of June 26 2009. The judgment was made in absentia and was not appealed.

(2) Article 172(11) of the Code of Administrative Offences.

(3) Articles 195 and 204 of the Criminal Code.