Introduction to .eu domain disputes

The creation of the .eu domain was endorsed by the European Parliament back in March 2000, but took 5 more years to become a reality. The motive for introducing a European TLD was to "accelerate electronic commerce" in the EU; it was also part of the effort to promote Community-consciousness, both within the EU and without. The domain has certainly been a success, quickly becoming one of the world's most popular TLDs; but with that success has come conflict.

Institutions

In May 2003 the European Registry for Internet Domains (EURid) was selected as the .eu registry, and was entrusted with the organisation, administration and management of the new .eu domain. EURid is a not-for-profit organisation whose fees are intended only to cover its costs.

EURid has appointed the Arbitration Court attached to the Czech Chamber of Commerce as its provider of .eu ADR services. In principle it could appoint more providers in future.

Procedures

Under the .eu Regulation, ADR proceedings may be initiated by any person: you do not need to be the owner of the trade mark or name upon which a complaint is based.

The ADR proceedings will usually be conducted in the language specified in the registration agreement, and in practice that often means English.

The complainant files a complaint in the requisite form and pays the up-front fees. The fees vary with the number of domain names at issue and the number of panellists chosen, and range between Euros 1300 and 7100+. After the complaint is filed and the fee paid, a block is put on the domain name preventing transfer for the duration of the proceedings. The respondent's case is set out in its response, which must be filed within 30 working days of the date of receipt of the complaint. If no response is received, the expert is empowered to consider this as a ground to accept the complainant's arguments. In most cases there will be no opportunity for the complainant to reply to the respondent's response.

However, the ADR panel does have the power to request further information and/or documents from the parties. Oral hearings may be ordered in "exceptional circumstances", but in practice that is likely to mean almost never.

The remedies available are revocation and transfer or the domain name(s) at issue; the remedy will be implemented by the domain registrar. There is no appeal from a panel decision (unlike, for instance, at Nominet). However, an aggrieved party is free to initiate court proceedings

Substantive rules

The substantive rules governing .eu domain name arbitrations are set out in Article 21 of the .eu Regulation:

"A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or community law ... and where it: (a) has been registered by its holder without rights or legitimate interest in the name; or (b) has been registered or is being used in bad faith."

Providing there is identity or confusing similarity between the domain name and someone else's name or mark, you only need to establish one of the other criterion - a lack of rights/legitimate interest upon registration or bad faith - to succeed in the ADR proceedings.

The UDRP contains much the same criteria, but under the UDRP both need to be established to ground an action. It is unclear why the Commission decided to treat these criteria as disjunctive, given that the Recitals to the Regulation highlight the UDRP (as administered by WIPO) as an example of best practice - and given the trenchant criticism from many quarters that the UDRP is (or has been applied in a way that is) excessively pro-complainant.

Respondent's rights and legitimate interests

How can a respondent demonstrate rights or legitimate interests in a domain?

"Rights" usually means trade mark rights, registered or unregistered. An issue here will be whether names used in a non-commercial context can give rise to relevant rights.

"Legitimate interests" is a more nebulous concept. In order to demonstrate a legitimate interest, a domain name registrant will need to show: (i) commercial use of the domain name (or demonstrable preparation for such use), (ii) "legitimate and non-commercial or fair use of the domain name, without intent to mislead customers or harm the reputation of a name on which a right is recognised or established by national and/or community law", or (iii) that the domain name designates the registrant. So, the "legitimate interest" criterion is a low hurdle, but it is a hurdle nonetheless, and can be expected to trip up some registrants.

The two main problems with this definition, in our view, are that demonstrable preparations to make "legitimate and non-commercial or fair" use of a domain do not constitute a legitimate interest; and that any "harm" to a trade mark undermines a claim to legitimate interests notwithstanding a fair use. Don't hold your breath for www.euridsrulessuck.eu.

Bad faith

The Regulation says that bad faith "may be demonstrated" in the following circumstances:

(1) "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"; or

(2) "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 by national and/or Community law, 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 established by national and/or Community law 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";

(3) "the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor"; or

(4) "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 of a product or service on the website or location of the holder of a domain name"; or

(5) "the domain name registered is a personal name for which no demonstrable link exists between the domain name holder and the domain name registered".

The circumstances are presented as little more than guidance, but there is a tendency for panellists to interpret these in the same way at they would an ordinary legislative provision. In particular, it is a rare panellist who will find that a case falling squarely within one of the examples of potential bad faith does not involve bad faith.

Some of the circumstances which are indicative of bad faith have been carried over from the UDRP; however, several are novel. Most interesting is the suggestion that a declaration of an intention to use a domain name "in a relevant way" might protect that domain name from an allegation of bad faith (at least one based on there having been no relevant use) for a six month period from the date of initiation of the ADR procedure.

Conclusions

The .eu domain name dispute procedure has now been operational for 6 years. At the time of writing there are around 1000 decisions published on the website of the Czech Arbitration Court, concerning around 2000 domains.  According to a Commission report on the implementation, functioning and effectiveness of the .eu TLD published late in 2011, however, during the preceding 2 years only around 13 cases were filed per quarter: in other words, the bulk of the disputes related to the sunrise period.  The Commission states in the report that "in the current system, individuals and small and medium-size enterprises in the EU do not take full advantage of the ADR mechanism given its high entry cost."  This despite a number of fee reductions since 2006. 

This is an updated version of an article originally published on www.website-law.co.uk in September 2006.

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