Domain disputes in Ukraine have always been notable for a variety of approaches and opinions. For a long time, lawyers could not reach (to be honest, never reached) common ground, and courts, common practice, on such issues:
- the status of a domain name registrar - should the registrar be a defendant in such a dispute or a third party?
- the future of a disputed domain name - should the delegation of the disputed domain name be cancelled or should the disputed domain name be re-delegated to a claimant?
- the "inviolability" of contractual relations between a registrant and a domain name registrar - does a court intervenes with its decision in economic relations between the defendant (registrant) and the domain name registrar?
Needless to say that the mere process of obtaining data of a registrant – an individual, is a quest. It still presents a number of challenges as far the domain name registrars have a position of impermissibility of disclosure of personal data of the registrants who are individuals. In opinion of the registrars, the personal data of such registrants are protected by Personal Data Protection Law and may not be disclosed in response to an attorney's request.
Only one thing was common - such a dispute should be resolved in a court without any alternative. Taking into account the real time for consideration of the case, the cost of the court proceedings, the duration of delivery of a final decision, not to mention an actual execution of the decision, not every right holder was ready to choose a judicial remedy to defend its rights.
Therefore, conclusion of an agreement between the World Intellectual Property Organization (WIPO) and the Administrator of the .UA top-level domain, Hostmaster Ltd., was a long-awaited and promising event. In accordance with the mentioned agreement, the WIPO Arbitration and Mediation Center is an exclusive authority competent to consider any disputes regarding private second-level domain names in the .UA domain based on the UA-DRP policy.
It is worth reminding that the second-level domain name is a part of the domain name separated by a dot from the top-level domain immediately following it. For example, it is a designation “hostmaster” in the domain name hostmaster.ua.
The .UA Domain Name Dispute Resolution Policy adopted in accordance with this agreement is a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP), which is applied to all the generic Top-Level Domains (gTLD) with some peculiarities of functioning of the country code top-level domain (ccTLD) .UА.
One of these peculiarities is a requirement to delegate the private second-level domain name in the .UA domain only in the event, when it or its component (before the symbol “.”, but not including it) coincides in spelling with a trademark, the rights to use of which within the territory of Ukraine are owned by the appropriate registrant.
Of course, it’s a good peculiarity. However, as is usual with lawyers, there is a wrinkle here. In our opinion, it is this peculiarity of functioning of ccTLD.UA that raises questions of the implementation and successful functioning of the UA-DRP policy.
As is known, the main purpose of the UDRP is a struggle against the unfair use of someone else's trademarks in domain names.
When submitting a complaint, the Complainant should describe, in accordance with the .UA Policy, the grounds on which the complaint is made including, in particular,
(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered or being used in bad faith.
At the same time, in cases with the second-level domains in the .UA domain, the violator will always have the right or legitimate interest in respect of the domain name(s) that is/are the subject of the complaint.
As mentioned above, the registration of the second-level domain in the .UA domain is possible only provided that the registrant owns a certificate of Ukraine for the corresponding trademark.
Thus, when it comes to the disputes regarding the second-level domains in the .UA domain, it should be remembered that, as a matter of fact, this is always a dispute between the trademark of the Complainant (right holder) and the trademark of the Respondent (domain-name holder).
According to Article 495 of the Civil Code of Ukraine, proprietary intellectual property rights in a trademark shall be, in particular, the right to use a trademark.
Within the meaning of Articles 16 and 20 of the Law of Ukraine "On Protection of Rights in Trademarks and Service Marks", use of a mark shall include, among other things, the use thereof on the Internet and in domain names.
As a result, the registration by an actual right holder (the future Respondent (domain-name holder) of a domain name on the basis of a trademark owned by it and the subsequent use is an inalienable right of the trademark owner. In this case the Respondent (domain-name holder) will be able almost always to prove that it has a legitimate right or interest in the disputed domain name.
This is also stated in clause 2.7. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:
Panels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.
WIPO provides the following cases as examples:
- Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, <madonna.com>, Transfer;
- Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379, <cavinton.com> inter alia, Transfer, Cancellation in Part;
- British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, <skytravel.com>, Denial.
Returning again to the Ukrainian law enforcement practice, we believe that the cancellation or re-delegation (by the way, it's high time to decide, which of these remedies is optimal in terms of defense of the infringed right) of the domain name from the right holder of one trademark to the right holder of another trademark carried out within the framework of a “non-judicial” procedure will be most likely annulled judicially.
In similar disputes, which have so far been considered exclusively in courts, the courts always point out the valid intellectual property rights in the defendant’s trademark and the impossibility to restrict the right holder in its disposal of the intellectual property rights owned by it.
In this connection, in a situation, when each of the parties to the conflict has a title of protection for its trademark (yes, such things happen), and the second level domain in the .UA domain is only one and it is already occupied by a potential defendant, the claimant intending to defend its rights and “recapture” the domain, first of all, be ready for the necessity of contesting the opponent’s trademark registration (invalidation of the certificate), which, again, is possible only judicially.
For illustration purposes, we would like to focus on one of the practical cases. PPG Industries Ohio, Inc., Delaware corporation, is a right holder of several trademarks with a word element "PPG" in Ukraine. The goods, such as paints, vanishes, lacquers, bearing this trademark are sold in the Ukrainian market and are known to consumers.
Not long ago, some native person registered a trademark "PPG" for services of Class 36 of the ICGS and the domain name ppg.ua.
The situation was ambiguous because the web site hosted on the mentioned domain name, among other things, offered for sale the claimant’s products marked by the claimant’s trademark (after filing the claim, the offer for sale disappeared).
Despite the duration of the proceedings, the case ended with a successful result for the real right holder. The disputable trademark was fined invalid and the domain was re-delegated in favor of the claimant.
And we are well aware that without choosing an option of “invalidation of the certificate” the company would have hardly obtained the desired domain.
Based on this, as we can see, the application of the UA-DRP policy procedure most likely will not achieve the desired goal. That is, the cheap and quick consideration of disputes regarding the illegal use of a trademark in the second-level domain name in the .UA domain, since each of such domains is based on the valid trademark, the cancellation of which is possible only in courts.
At the same time, it would be logical to extend this procedure to third-level domains (com.ua, kiev.ua, net.ua, etc.), since the registration of these domains does not require the obligatory ownership of a trademark. It is these domains that are usually registered for unfair purposes, and the rights of the trademark owners are infringed mainly on the web sites assigned to them.
As soon the UA-DRP policy is expanded on third-level domains in the .UA domain, we will be able to say that there is a real alternative to domain name disputes in Ukraine.
Victoria Sopilnyak, Partner, Doubinsky & Osharova
Anastasia Kazankina, Attorney-at-Law, Doubinsky & Osharova