The Czech Republic's resolute court for domain disputes
As a result, domain name disputes are on the rise.
A particular feature of these disputes is the need to solve them promptly—in the rapidly changing Internet world, days and weeks can make a vital difference. This means that for most domain disputes, the normal procedures in a general court are too slow, rigid and cumbersome.
In the Czech Republic, an alternative process that deals with domain name disputes has existed since 2004. The arbitration proceeding, conducted through the Arbitration Court, which is attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic, saves time and money for both parties.
.eu in court
In 2004, the Arbitration Court was granted permission to decide disputes over .cz top-level domain names (TLDs). The proceedings in these cases are currently being conducted online, using a designated secure platform that enables quick resolutions to disputes. Proceedings concerning domain names take place through the Arbitration Court according to the Order for Resolving Disputes Concerning .cz Domains.
The Arbitration Court has earned a reputation for credibility over the years in the Czech Republic and abroad. An increasing number of plaintiffs have chosen this method to resolve their domain name disputes. Arbitration Court’s decisions are not limited to domain names within the .cz domain (domény.cz).
As early as April 12, 2005, .eu domain administrator EURid commissioned the Arbitration Court to formulate an Alternative Dispute Resolution (ADR) system for .eu domain name disputes. The Arbitration Court is responsible for maintaining the authorised proceedings under the ADR Rules and Supplementary Rules in accordance with the principles and rules of the European Commission.
The applicability of these rules to .eu disputes, as well as the Arbitration Court’s authority to provide an ADR system for the .eu TLD, was reviewed and substantiated in the European Court of Justice (CJEU) because of a case that involved the name of web portal Reifen and the corresponding domain reifen.eu.
During the sunrise period for the .eu TLD, Austrian company Internetportal und Marketing GmbH registered 33 trademarks that were made up of commonly used terms, but individual letters in the trademarks were separated by the ampersand symbol (&).
‘&R&E&I&F&E&N&’ was registered as a trademark and Internetportal subsequently registered the generic domain reifen.eu with the right of priority. Richard Schlicht, the owner of the Belgian trademark for Reifen, requested that the domain reifen.eu be transferred and filed suit in the Czech Republic Court of Arbitration.
The court ordered the transfer of the domain, but Internetportal responded by challenging the Arbitration Court judgment and submitting the case to the Austrian courts. The Austrian Supreme Court has subsequently referred the issue to the CJEU.
In its response the CJEU, inter alia, confirmed the admissibility of the application of the EURid registration provisions of the applicant’s domain, the competency of the Arbitration Court to decide over ADR proceedings for the .eu domains and the applicability of the ADR Rules.
Strength to strength
Since it handled its first .eu case in March 2006, the Arbitration Court has dealt with more than 1000 domain name disputes and has issued more than 900 decisions. Proceedings, which can be heard in 21 of the 23 languages of the EU (Maltese and Irish are the exceptions), are conducted by arbitrators selected from a board made up of a wide range of experts from different European countries.
These proceedings take place via a secure online platform that allows electronic signatures to be used instead of original, physical signatures. In 2008, the Arbitration Court obtained authorisation from the Internet Corporation for Assigned Names & Numbers (ICANN) to conduct Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings, which is an alternative dispute resolution system for all TLDs.
The Arbitration Court became the fourth organisation in the world to conduct UDRP proceedings. The Arbitration Court now offers alternative dispute resolution proceedings for TLDs such as: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, and .travel. The Arbitration Court also has jurisdiction over domain name disputes involving the .co and .nl TLDs, which are adjudicated on the basis of the UDRP.
The court was entrusted with these disputes in May 2009 by EuroDNS SA, a domain administrator for the .co and .nl TLDs. Arbitrators for these disputes are selected from the same pool of experts who arbitrate disputes under the UDRP.
Domain basics
Domain names are registered on a first-come, first-served basis. The domain name has little legal standing, even if it is identical to a trade name, trademark, brand mark or other distinguishing mark. The registration of a domain name is legally weak because a domain does not enjoy the same protections as a trademark or a trade name.
The registrant has to bear in mind protected trademarks that its registrations could infringe. In the event of an infringement, the trademark owner may protect its interests, either through the general court or the Arbitration Court.
According to the Arbitration Court, when a domain name registration is challenged by a third party with an arbitration accusation, it is necessary to examine whether the third party, which must be the owner of a right that relates to the domain name being challenged, fulfils the provisions of Article B11( d )(1) of the ADR Rules and Article 21(1) EC Regulation 874/2004.
The third party must show that: 1) a domain name is identical or interchangeable with a denomination, on which the national law of a member state or Community Law recognises and protects the right; and either 2) a domain name was registered by the defendant without the existence of rights to the domain name or without the existence of legitimate interest in the domain name; or 3) a domain name was registered or is being used in bad faith.
When the court finds the cumulative fulfilment of the first and at least one of the other two conditions, it grants the applicant’s petition and transfers the domain name to the plaintiff. The court can award compensation for damage to the plaintiff that arises from unfair competition or infringement of trademark rights by the defendant.
