A superior court judge yesterday called for a law specifically regulating the issue of domain names.

Mr Justice Geoffrey Valenzia, sitting in the First Hall of the Civil Court, made the recommendation in a judgment in which he ruled that the registration of an internet domain name by Mark Vella Gera constituted an act of unlawful competition.

This judgment was handed down following a writ of summons filed by Clamus Ltd against Vella Gera. The company claimed it had for many years operated under the name "Clamus" and that it ran a prestigious complex in Valletta known as "The Clamus Centre". Defendant, claimed the company, had registered an internet domain site named "clamus.com" and had requested payment of Lm2,000 from the company in order to relinquish this site.

The registration of the domain site, claimed Clamus Ltd, constituted an act of unlawful competition and constituted a violation of the company's intellectual property rights. Vella Gera, claimed plaintiff company, was guilty of cybersquatting, but this was regulated by the normal rules protecting against unlawful competition, for a company's name was one of its intangible assets.

The court was requested to order Vella Gera to cancel the internet registration and to make good the damages the company had sustained. Defendant pleaded that the name "clamus.com" had been acquired legitimately by him and that it was distinct from the name "The Clamus Centre". Furthermore, this registration did not constitute an act of unlawful competition.

In its judgment the court noted that the registration of domain names had given rise to trade mark issues on a worldwide basis. Domain names could be classified as either generic top level domain names (gTLD's) such as ".com" or ".org", which had a worldwide application. The other classification was that of country code top level domains (ccTLD's) such ".it" for Italy and ".com.mt" for Malta. This had a more territorial application. The domain name in this case was a gTLD, for it had been registered with an accredited domain name registrar as ".com".

A number of issues had arisen in connection with the registration of domain names, and these were now divided into three categories - cybersquatters, cyberwildcatters and cyberspoofs. There was also the case when a person registered a domain name in good faith as he had a genuine interest in such name and was unaware that another person had rights to such name.

Cybersquatters covered the case of a person who registered a domain name with the intention of selling it for a profit to the owner of the trademark that formed part of the domain name.

Cyberwildcatters were persons who registered a domain name hoping that another person would wish to acquire it in the future.

The case of a cyberspoof occurred when a domain name was registered as a spoof or parody site and where there was no intention of making a financial gain.

This case, said Mr Justice Valenzia, concerned the allegation that Vella Gera was in effect a cybersquatter who had registered the domain name "clamus.com" with the intention of selling it to plaintiff company. This was clearly substantiated from the evidence produced, for Vella Gera had written to the company requesting payment of Lm2,000 for the name. Furthermore, Vella Gera had admitted that he had never made use of his domain name for commercial purposes.

Vella Gera, said the court, was in bad faith, for he had registered the domain name with the sole intention of obtaining payment from plaintiff company.

In examining what was the applicable law to deal with this particular case, Mr Justice Valenzia referred to foreign case law, which in the absence of specific legislation, had regulated the issue of domain names. A prominent judgment delivered by the English Court of Appeal had established that the law regulating Passing Off was applicable to the case of a cybersquatter who had registered, as a domain name, a trademark owned by British Telecommunications plc.

Mr Justice Valenzia declared that the principles of unlawful competition, that were very similar to the English concept of Passing Off, were applicable to this case. It did not result that the word "Clamus" was registered as a trademark, and therefore there was no infringement of trademark by defendant. It however resulted that plaintiff company owned the name "Clamus" and had been using it for many years.

The court also suggested that it was time that ad hoc legislation regulating the issue of domain names was enacted.

In conclusion, the court upheld plaintiff company's writ and ruled that the registration of the domain name "clamus. com" was an act of unlawful competition. Vella Gera was ordered to effect the cancellation of the registration of this domain name within one month, and in default was to pay a penalty of Lm10 per day of default to plaintiff company.

Mr Justice Valenzia dismissed plaintiff company's claim for damages on the grounds that no evidence was produced to show that any damages had been sustained.