Disputes on.eu and.com domains before the Czech Arbitration Court

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1 Disputes on.eu and.com domains before the Czech Arbitration Court September 24, 2012, Parma Tereza Bartošková Czech Arbitration Court Head Case Administrator

2 Czech Arbitration Court Arbitration Court attached to the Czech Chamber of Commerce and the Agricultural Chamber of the Czech Republic Founded in 1949 as the standard arbitration court More than disputes in last 10 years (more than in last 5 years) Extensive competence in domain name disputes (.cz,.eu,.com,.net, ) 2 / 31

3 Domain name disputes 08/2004.cz domain name disputes 04/2005 CAC selected as the exclusive ADR provider for.eu 02/2006 first.eu disputes (launch of TLD.eu) 01/2008 CAC approved by ICANN 01/2009 first gtld disputes All disputes handled via an online platform 3 / 31

4 .eu disputes CAC is the only.eu domain names alternative dispute resolution centre in the world Competence based on Regulation (EC) No 733/2002 of the European Parliament and of the Council of 22 April 2002 on the implementation of the.eu Top Level Domain Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the.eu Top Level Domain and the principles governing registration 136 panellists from 29 countries 21 languages more than eu domain names disputes since 2006 currently EUR 600 per 1 domain name dispute solved by single panellist / 31 4

5 Number of.eu disputes All Against registrants Average length of an ADR dispute: 108 days (compared to 45 days in UDRP) 5 / 31

6 Languages of ADR disputes (paid and against registrant) Czech Italian Polish Dutch French Spanish German English English German Dutch Polish Italian Czech French Spanish Greek Swedich Slovak Hungarian Estonian Lithuanian Portuguese Latvian 6 / 31

7 Country of the ADR Parties (paid disputes against registrants) Complainants Respondents Denmark Poland Germany France UK Austria Belgium Czech Republic UK Czech Rep. Italy Austria Netherland s US Poland Italy France Netherlands Sweden Cyprus Germany 7 / 31

8 UDRP one of 2 UDRP providers in Europe one of 4 UDRP providers in the world.aero,.asia,.biz,.cat,.com,.coop,.info,.jobs,.mobi,.museum,.name,.net,.org,.pro,.tel,.travel,.xxx based on UDRP (Uniform Domain-Name Dispute-Resolution Policy) issued by ICANN appointed by ICANN (Internet Corporation for Assigned Names and Numbers) 38 panellists from 12 countries EUR per 1 domain name dispute solved by single panellist 8 / 31

9 Number of UDRP disputes Average length of a UDRP dispute: 45 days (compared to 108 days in ADR) 9 / 31

10 Country of the UDRP Parties Complainants Respondents United states United States United Kingdom Italy China France Denmark Italy UK 10 / 31

11 Languages in UDRP 2 English French / 31

12 Dispute results comparison ADR UDRP Revocation 7% Rejected 16% Settlement 1% Rejected 13% Cancelled 2% Settlement 2% Transfer 76% Transfer 83% 12 / 31

13 .eu Dispute Grounds UDRP domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a member state and/or Community law either the domain name has been registered by the respondent without rights or legitimate interest in the name or and domain name has been registered in bad faith a trademark or service mark in which the.eu complainant protected has names: rights registered trademarks, geographical indications or designations of origin, unregistered the holder has no rights or legitimate interests in respect of the domain name trademarks, trade names, business identifiers, company names, family names, and distinctive and titles of protected literary and artistic works or and domain name is being used in bad faith. 13

14 .eu prior to any notice of an ADR procedure, the holder of a domain name has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so the holder of a domain name, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and/or Community law the holder of a domain name is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and/or Community law Demonstration of legitimate interest UDRP before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue 14

15 Demonstration of bad faith.eu circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognised or established by national and/or Community law or to a public body UDRP circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name 15 / 31

16 Demonstration of bad faith.eu the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognised or established or a public body, from reflecting this name in a corresponding domain name, provided that: a pattern of such conduct by the registrant can be demonstrated; or the domain name has not been used in a relevant way for at least two years from the date of registration; or in circumstances where, at the time the ADR procedure was initiated, the holder of a domain name in respect of which a right is recognised or the holder of a domain name of a public body has declared his/its intention to use the domain name in a relevant way but fails to do so within six months of the day on which the ADR procedure was initiated UDRP you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or 16

17 Demonstration of bad faith.eu the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor the domain name was intentionally used to attract Internet users, for commercial gain, to the holder of a domain name website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognised or established by national and/or Community law or a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the holder of a domain name the domain name registered is a personal name for which no demonstrable link exists between the domain name holder and the domain name registered UDRP you have registered the domain name primarily for the purpose of disrupting the business of a competitor by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location 17

18 ADR decision overview The overview shall help anyone interested in.eu ADR to understand how ADR Panels deal with specific issues in.eu disputes. It shall be of great assistance to parties to.eu proceedings, ADR Panels, and other professionals in the field. Created in cooperation of the CAC with Prof. Thomas Hoeren (CAC ADR and UDRP panellist) of the Münster University Published on 7 September 2012 Provides consensus/majority/minority views on specific issues Where the view as such cannot be tracked, specifies so 18 / 31

19 Procedural issues

20 ADR (Language trial) UDRP Complaint submission + fee payment 5 working days 3 days (Notification of deficiencies) 7 days 5 days Notification of respondent 30 working days 20 days Response submission (Notification of deficiencies) Panel appointment 1 month 14 days Decision 20

21 Language of the proceeding Rule for.eu language of the registration agreement exceptions agreement of the parties provision of the RA stating differently different decision in language trial Rule for UDRP - language of the registration agreement exceptions agreement of the parties provision of the RA stating differently different decision of the Panel (in the course of the proceeding, no special procedure) PRELIMINARY TASK Finding out what is the language of the registration agreement 21 / 31

22 UDRP finding the language Difficult as there is no obligation for the registrars to publish this information in the WHOIS database Advisable to consult ICANN website (ICANN Internic) at where it is possible to find the language supported by that particular registrar (most registrars only support one language and it usually corresponds with the language of the registration agreement) The language is certain only after the proceeding is initiated when the registrar provides its verification Asking for a different language of the proceeding is possible directly in the complaint (amended complaint) Deciding on the language is the Panel's task as a part of decisionmaking The Panels usually decide that the language of the proceeding can remain the language of the complaint where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate 22 / 31

23 What about annexes filed in wrong language? The Panel may request a translation but it may simply disregard any document filed in other language without requesting a translation and without a notification to the complainant that the filing will not be taken into account recommendation is to translate all the relevant parts 23 / 31

24 Identity of the domain name holder In both proceedings the identity of the domain holder should be published in WHOIS database kept by: EURid in.eu ADR Issue: Personal data protection (but EURid can reveal the data to those who plan to file an ADR complaint) Specific registrars in UDRP Issues: Inaccurate WHOIS information Privacy/proxy registration services 24 / 31

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26 UDRP No centralized WHOIS database Basic information available on ICANN Internic ( mainly serves to find the registrar Information not always reliable Privacy/proxy registration services widely used Complainant can be 100 % sure of the domain holder's identity only after the registrar provides its verification during the proceedings BUT: Based on previous case law the CAC does not require the complainant to amend his complaint if filed against the person that appeared as a registrant in the WHOIS database at the moment of filing the Complaint 26 / 31

27 Preliminary control of the complaint (UDRP only) Tool designed for complainants not familiar with the procedure The complainant may ask the Czech Arbitration Court to preliminarily review his complaint for administrative compliance before initiating the proceeding 27 / 31

28 Class Complaint (UDRP only) An effective measure to fight serial cybersquatters designed for several right holders (the number is not limited) whose rights were infringed by a single domain holder in a similar manner Conditions The disputed domain names are held by a single person (entity) Legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names A common representative of all the complainants Every transfer request must be specified for one complainant only Advantages Single representative Easier to prove the pattern of conduct The same panel decides over all the domain names Substantial reduction of costs (the same fees apply as for standard complaints) 28 / 31

29 ADR: All fees paid in the beginning of the dispute Currently starting of EUR 600 (temporary discount) Fees UDRP: The fees for single member panel disputes divided into Initial fees Paid at the moment the complaint is filed (starting from 500 EUR) Additional fees Paid if An administratively compliant response is filed The panel concludes that the case is too complex and the issuance of a detailed decision is necessary to substantiate the decision 29 / 31

30 Lower fees in simple cases with no response decided by a single panellist = In simple cases with no response the fee can be lower and the decision briefer ( simplified ) 19% "Standard" 81% "Simplified" 30 / 31

31 Thank you! Tereza Bartoškov ková ADR.EU Czech Arbitration Court