IP: Dispute resolution for the .eu generation
More than a year on from the launch of .eu, 'the domain name for Europe', many brand owners have successfully registered their key brands. Others, however, were either not aware of the launch or were poorly advised and their applications were unsuccessful, losing out to unscrupulous third parties or competitors.
July 04, 2007 at 08:04 PM
5 minute read
More than a year on from the launch of .eu, 'the domain name for Europe', many brand owners have successfully registered their key brands. Others, however, were either not aware of the launch or were poorly advised and their applications were unsuccessful, losing out to unscrupulous third parties or competitors.
Aggrieved parties have the option of using the specifically-designed .eu alternative dispute resolution (ADR) procedure, which has a unique set of operating rules. Since 1 January, 2007, it is the only such ADR procedure that allows wholly electronic filing; the first all-electronic filing of a .eu complaint was submitted by Lovells on 10 April, 2007.
Parties to a .eu ADR proceeding are able to submit all the necessary documentation electronically, using an advanced electronic signature based on a qualified certificate and created by a secure signature creation device (SSCD). European Directive 1999/93/EC of 13 December, 1999, sets out a Community framework for electronic signatures and lays down stringent requirements in this regard, particularly in relation to advanced electronic signatures created by a SSCD.
Regulation (EC) No. 874/2004 sets out the public policy rules concerning the implementation and functions of the .eu top-level domain, including
the revocation and settlement of conflicts, modelled on the uniform domain name dispute resolution policy (UDRP) and rules.
The UDRP, introduced by the Internet Corporation for Assigned Names & Numbers in 1999, is designed to serve as a simple and cost-effective remedy for clear cases of cybersquatting. It applies to certain generic top-level domains such as .com and .net and has also been adopted by various countries to apply to their country code top-level domains. The UDRP has proved popular, with 28 countries adopting it in its classical form, while another 20 have adopted a variation of the UDRP.
The .eu ADR rules provide the complainant must prove that:
- the domain name is identical or confusingly similar to a name in respect of which a right is recognised or established by the national law of a member state and/or Community law; and either
- the respondent has no rights or legitimate interests in respect of the domain name; or
- the domain name has been registered or is being used in bad faith.
Although these conditions appear to be identical to those of the classical UDRP, the .eu ADR rules process has subtle yet significant differences. Firstly, the .eu ADR rules only require a complainant to prove the first element and then either of the second two, whereas the UDRP provides that a complainant has to prove all three of its elements. This could have significant ramifications as a .eu domain name registrant could have his registration revoked even in the absence of any kind of bad faith if he has no demonstrable rights or legitimate interests in the name.
Thus, the element that is arguably the critical element in the UDRP, is actually optional in the .eu ADR rules.
Secondly, the elements themselves are more widely drafted: the UDRP requires a complainant to prove that a disputed domain name is identical or confusingly similar to its trademark or service mark. The scope was deliberately restricted to trademarks or service marks on the basis that the international framework for certain other rights – such as trade names, personal names and geographical indications – is not as well developed, with national approaches differing significantly.
However the .eu ADR rules cover not only trade or service marks but names in respect of which right is recognised or established by the national law of a member state and/or community law. The breadth of recognised rights across 25 member states will give rise to considerable scope for complainants but also for respondents.
In addition, the UDRP provides that the complainant must prove both registration and bad faith, whereas the .eu ADR rules provide for registration or use in bad faith. This will place less of a burden on complainants and should avoid them having to prove passive bad faith in the event that the domain name was registered in bad faith but is not being used.
This second means of protection for intellectual property (IP) rights owners is proving popular, with more than 750 proceedings having been brought before the Czech Arbitration Court, the provider for these disputes, and some 500 decisions in a little over a year.
In proceedings against registrants themselves the success rate for complainants is just over 50%. This is a considerably lower success rate than with the classic UDRP, where the success rate for complainants is in the realm of 80%.
It is perhaps an indication of the difficulties complainants encounter due to the complex nature of the eligible rights under the .eu ADR rules. It will be interesting to see how the upcoming launch of .asia copes with these same issues.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View All'Almost Impossible'?: Squire Challenge to Sanctions Spotlights Difficulty of Getting Off Administration's List
4 minute read'Never Been More Dynamic': US Law Firm Leaders Reflect on 2024 and Expectations Next Year
7 minute readTrending Stories
- 1Decision of the Day: Judge Reduces $287M Jury Verdict Against Harley-Davidson in Wrongful Death Suit
- 2Kirkland to Covington: 2024's International Chart Toppers and Award Winners
- 3Decision of the Day: Judge Denies Summary Judgment Motions in Suit by Runner Injured in Brooklyn Bridge Park
- 4KISS, Profit Motive and Foreign Currency Contracts
- 512 Days of … Web Analytics
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250