Domain name ADR Practical experience 1 CZECH ARBITRATION COURT LENKA NÁHLOVSKÁ CAC ARBITRATION COURT ATTACHED TO THE CZECH CHAMBER OF COMMERCE AND THE AGRICULTURAL CHAMBER OF THE CZECH REPUBLIC FOUNDED IN 1949 ADR CENTER (2004 CZ, 2006 EU, 2009 UDRP) UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY UDRP ‣ generic domain names (gTLDs) - com, .net, .org, .info… ‣ outcome: transfer of the domain name (98%), cancellation of the registration ‣ cost varies among Providers (6 providers in total) ‣ duration: 40 – 50 days (the average duration of proceedings in 2020 before CAC was 44 days) EU - .EU - ELIGIBILITY CRITERIA - ARTICLE 3 REGULATION (EU) 2019/517 - UNION CITIZEN - RESIDENT OF A MEMBER STATE - UNDERTAKING THAT IS ESTABLISHED IN THE UNION - ORGANISATION THAT IS ESTABLISHED IN THE UNION - ALL OFFICIAL LANGUAGES - ONLINE PLATFORM - 2 PROVIDERS (CAC AND WIPO) - 2 CRITERIA TEST CZ NATIONAL DOMAIN NAME (CCTLD) CZ.NIC 2 CRITERIA TEST ONLINE PLATFORM 1 ADR PROVIDER - CAC URS THE UNIFORM RAPID SUSPENSION SYSTEM (URS) SUSPENSION OF DOMAIN NAME ABUSIVE USE ADVANTAGES AND DISADVANTAGES ‣ Fast resolution of the dispute. ‣ On-line resolution (efficient, less expensive and COVID-proof). ‣ Cost- efficiency of the disputes. ‣ Experienced panelists. ‣ Transparent decision making (all decisions are publicly available). ‣ Predictable. ‣ Automatic execution of decision. ‣ No claim of damages or costs of proceeding ‣ Great emphasis on the Complaint (no additional fillings) ‣ Not meant for big business disputes (OUT OF SCOPE OF UDRP) ‣ Single instance (no possibility of appeal) CASE LAW WIPO OVERVIEW OF WIPO PANEL VIEWS ON SELECTED UDRP QUESTIONS, THIRD EDITION (“WIPO JURISPRUDENTIAL OVERVIEW 3.0”) CAC: COMMENTATED AND CATEGORIZED .EU DECISIONS, 2ND EDITION ALL DECISIONS IN EU AND UDRP PUBLICLY AVAILABLE 1) COMPLAINANT TRADEMARK RIGHTS 2) NO LEGITIMATE INTEREST OR RIGHTS OF THE RESPONDENT 3) BAD FAITH OF REGISTRATION AND USE OF THE DOMAIN NAME BY THE RESPONDENT. THREE PART TEST UDRP UDRP TRADEMARK RIGHTS ‣ a trademark or service mark - Registered anywhere in the world - “unregistered mark” or “common law trademark right” - distinctive ‣ identical or confusingly similar ‣ typosquatting – an intentional misspelling of a trademark ‣ COVID cases ( case 103459) ‣ Phishing cases (103234 ) PRIORITY OF RIGHTS, LOCATION 103718: IN ORDER TO ASSESS THE FIRST REQUIREMENT UNDER THE POLICY IT IS NOT STRICTLY NECESSARY TO VERIFY THE STATUS OF THE OWNER'S RIGHT BEFORE THE DATE OF REGISTRATION OF THE DOMAIN NAME IN DISPUTE. THIS EVALUATION MAY HAVE AN IMPACT ON THE ASSESSMENT OF THE SECOND AND THIRD POLICY REQUIREMENTS, BUT FOR THE PURPOSES OF IDENTITY OR CONFUSINGLY SIMILARITY WITH A COMPLAINANT'S TRADEMARK, UDRP PANELS HAVE CONSTANTLY HELD THAT IT IS SUFFICIENT TO ESTABLISH THAT TRADEMARK RIGHTS ARE IN EXISTENCE AT THE TIME THE COMPLAINT IS FILED LOCATION POLICY IT IS NOT A REQUIRED THAT THE COMPLAINANT HOLDS TRADEMARK WITHIN THE TERRITORY WHERE THE RESPONDENT IS LOCATED DISTINCTIVENESS AN ORDINARY WORD OR NUMBER CANNOT FUNCTION IN THAT WAY FOR OBVIOUS REASONS. THAT IS, UNLESS THEY HAVE WHAT WE CALL “ACQUIRED DISTINCTIVENESS” OR SECONDARY MEANING SO THAT THEY ARE SO FAMOUS THAT IT IS THE BRAND THAT THE RELEVANT PUBLIC BRING TO MIND AND NOT THE DICTIONARY TERM. ACRONYMS (AVK.COM) HTTPS://WWW.DOMAINTIMES.INFO/POST/ACRONYMS-AS-DOMAIN-NAMES-AS-EASY-AS- ABC-AS-HARD-AS-XYZ-OR-JUST-QED UNREGISTERED TRADEMARK BOOKING.COM CASE IN USA TRADEMARK LAW BARS REGISTRATION OF GENERIC TERMS, BUT IT PERMITS THE REGISTRATION OF MERELY DESCRIPTIVE TERMS IF THEY HAVE ACQUIRED ENOUGH SECONDARY MEANING. THE U.S. PATENT AND TRADEMARK OFFICE REFUSED TO REGISTER BOOKING.COM AS A SERVICE MARK FOR HOTEL RESERVATION SERVICES. THE U.S. COURT OF APPEALS FOR THE 4TH CIRCUIT HELD THAT THE MARK WAS ENTITLED TO REGISTRATION, AND THE SUPREME COURT AGREED TO REVIEW THAT DECISION. WHETHER A BUSINESS CAN CREATE A REGISTRABLE TRADEMARK OR SERVICE MARK BY COMBINING AN UNPROTECTABLE GENERIC TERM FOR THE SERVICES IT OFFERS WITH THE GENERIC TOP-LEVEL DOMAIN NAME “.COM (COMMON LAW) TRADEMARK MARK HAS BECOME A DISTINCTIVE IDENTIFIER WHICH CONSUMERS ASSOCIATE WITH THE COMPLAINANT’S GOODS AND/OR SERVICES IDENTICAL OR CONFUSINGLY SIMILAR NAME CONFUSING SIMILARITY TEST UNDER THE UDRP TYPICALLY INVOLVES A STRAIGHTFORWARD VISUAL AND AURAL COMPARISON OF THE TRADEMARK WITH THE DOMAIN NAME IN QUESTION ADDITION OF DESCRIPTIVE TERMS TLD´S NOT TAKEN INTO ACCOUNT LEGITIMATE INTEREST ‣ providing information for consumers about the brand, ‣ critique of the trademark, brand or its owner (.SUCKS cases 103141 MIRAPEX.SUCKS vs 103142 BIODERMA.SUCKS) ‣ legitimate purposes ‣ selling of goods or services, ‣ blog of articles, passive holding ? DOMAIN NAMES AS BUSINESS NAMESCON GLOBAL 2020 UDRP BAD FAITH ‣ Awareness of the trademark right ‣ Cybersquatting (passive holding) ‣ Registration for abusive purposes ‣ Gaining illegitimate profits etc. ‣ Cyber criminality ‣ Illegal content SCOPE OF DOMAIN NAME ADR THE PANEL BELIEVES THAT OVERALL COMPLEXITY OF THIS CASE PUTS IT OUTSIDE THE UDRP SCOPE. 103423: IF THE COMPLAINANT HAS AN ISSUE WITH ITS REPUTATION IT MUST TAKE IT UP WITH THE COURTS IF IT CROSSES THE LINE INTO DEFAMATION. PANELS HAVE REPEATEDLY HELD THAT A UDRP PROCEEDING IS NOT THE PROPER FORUM FOR ADDRESSING CLAIMS OF DEFAMATION. REVERSE DOMAIN NAME HIJACKING BAD FAITH OF THE COMPLAINANT WHILE BRINGING UDRP COMPLAINT BRINGING TWO UDRP ACTIONS 16 YEARS AFTER THE REGISTRATION OF THE DISPUTED DOMAIN NAME AND FAILING TO CONFORM TO THE SIMPLE UDRP REQUIREMENTS WITHIN THE FIRST PROCEEDING HAS COST THE RESPONDENT SUBSTANTIAL SUMS TO BE PAID FOR THE LEGAL ADVICE OF HIS COUNSEL, WHEN THERE WAS VERY SMALL CHANCE OF PROVING THAT THE RESPONDENT HAD ACTED IN BAD FAITH AND WITHOUT HAVING ANY RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME (BECAUSE OF THE EXISTENCE OF THE PREVIOUS DECISIONS OF THE UDRP PANELS AND THE LACK OF THE EVIDENCE PROVING THE EXISTENCE OF RESPONDENT’S BAD FAITH). PROCEDURAL ISSUES STANDARD OF PROOF – BALANCE OF PROBABILITIES THE ONUS IS ON THE COMPLAINANT X IMPOSSIBLE TO PROOVE NEGATIVE INFORMATION – IF THE COMPLAINANT PROVIDES EVIDENCE FOR PRIMA FACIE CASE THE ONUS SHIFTS TO THE RESPONDENT (TO PROVE ITS RIGHTS AND GOOD FAITH) CONSOLIDATION LANGUAGE OF THE PROCEEDINGS ADDITIONAL SUBMISSIONS PANEL ACTIVITY IN EVIDENCE SEARCH DISCUSSION LOSER PAYS MECHANISM APPEAL SYSTEM INTERIM MEASURES RDNH PENALISATION VOAMUNDI.COM case 102298 AMUNDI TRADEMARK ‣ International word trademark "AMUNDI" ‣ based on the French trademark, designating under the Madrid Protocol Australia, Bahrein, the EU, Japan, Republic of Korea, Norway, Singapore, Turkey, the US, Switzerland, China, Egypt, Liechtenstein, Morocco, Monaco, Russian Federation, Ukraine, Vietnam. VOA MUNDI - TO FLY THE WORLD ‣ legitimate business offering of the travel businesses (bona fide offering) ‣ Brazil - the Complainant had not had any establishment there ‣ Different from Complainant's business !!NOW FOR SALE!! .SUCKS CASES ICANN APPROVED THE .SUCKS GTLD IN 2015 ARGUMENTS FOR TRANSFER RESPONDENT HAS NOT ACQUIRED TRADEMARK RIGHTS IN THIS TERM THE RESPONDENT IS NOT THE PERSON WHO IS SAID TO BE MAKING THE ALLEGEDLY FREE SPEECH COMMENTARY OR CRITICISM. THE RESPONDENT IS A THIRD PARTY RESPONDENT IS NOT AFFILIATED WITH THE COMPLAINANT NOR AUTHORIZED BY IT IN ANY WAY TO USE THE TRADEMARK RESPONDENT’S CRITICISM MUST BE GENUINE AND NON- COMMERCIAL COMMERCIAL USE BY REGISTERING AND OFFERING THE DISPUTED DOMAIN NAME FOR SALE NOT CONTAINING GENUINE CRITICISM CONTENT BUT ONLY AUTOMATICALLY GENERATED LINKS LOOSELY RELATED TO THE COMPLAINANT'S PRODUCT ARGUMENT AGAINST TRANSFER RIGHT TO PROTECTED SPEECH SUCH AS CRITICISM AND COMMENTARY FREEDOM OF EXPRESSION IN DOMAIN LAW CASES CRITICISM BY THE USERS (NOT DOMAIN NAME HOLDER) - USERS CREATE WIKI PAGES ON THE PLATFORM ON A PARTICULAR SUBJECT/SUBJECT MATTER THE .SUCKS CLEARLY SIGNALS THAT THE PAGE/SITE TO WHICH IT RESOLVES WILL BE A GRIPE OR SUCKS SITE PURPOSES OR INTENTIONS OF CRITICISM ARE TYPICAL TO SUCH “.SUCKS” DOMAIN NAMES COMMERCIAL MOTIVATION IS NOT DETERMINATIVE: A NEWSPAPER PUBLISHER IS ENTITLED TO EARN REMUNERATION AND SO IS A PLATFORM UDRP DOMAIN NAME DISPUTES (BEFORE CAC) ‣ CZ – 2004, only ADR provider for .cz domain names ‣ EU – 2006 first to operate EU domain name disputes (now two providers CAC and WIPO) ‣ UDRP – 2009 .EU DOMAIN NAMES .CZ DOMAIN NAMES GENERIC DOMAIN NAMES UDRP THANK YOU!