Member Article

The top level domain .УКР was delegated to Ukraine by the Internet Corporation for Assigned Names and Numbers (ICANN) on 28 February 2013. The Ukrainian Network Information Center (UANIC) became administrator and manager of .УКР domain. Registration in the .УКР domain opened on 22 August 2013. Thus, this domain became the fourth Cyrillic domain of top level after the Russian .P$, the Serbian .CPS and the Kazakh .КАЗ. In the time since its incorporation, more than 8,000 web-sites have been registered with the .УКР domain.

This article examines the Dispute Resolution Procedure for the .УКР domain (DRP .УКР) which was adopted on 28 February 2014, with the most widely used domain names dispute resolution policies in the world: ICANN's Uniform Dispute Resolution Policy (UDRP) and UK Nominet's Dispute Resolution Service (DRS).

The core of any dispute resolution policy for domain names are the circumstances under which reference to and the application of the dispute resolution service is possible. DRP .УКР stipulates that the following should be shown so as to proceed with dispute resolution:

1) the disputed domain name reproduces or imitates a trademark (a service mark), commercial (company) name, the geographical location, the name of a world well-known person, the earlier registered domain name, for which the applicant has rights; and

2) the respondent does not have rights or legitimate interests in respect of the disputed domain name; and

3) the disputed domain name has been registered in bad faith.

As with UDRP and DRS, DRP .УКР provides that all of the above-mentioned requirements be present simultaneously in order to prove the validity of the complaint.

First requirement

Special attention should be given to the first requirement. In contrast to UDRP and DRS, which deal with an identical or (confusingly) similar trademark and service mark (name and mark), the scope of the corresponding provision of DRP .УКР is considerably broader. Moreover, DRP .УКР contains some valuable criteria regarding the application of the first requirement, which can be summarized as follows:

— the disputed domain name should be identical, which means concurrent in all elements, or similar to the extent of confusion with a trademark (a service mark), commercial (company) name, the geographical location, the earlier registered domain name, which have built a reputation and are known in Ukraine;

— the disputed domain name should be identical or similar to the extent of confusion with the name of an internationally well-known person, whose accomplishments are recognized by humanity and whose name or surname cause the only possible association with the activity of such person in a particular area;

— the disputed domain name should be identical or similar, to the extent of confusion with the name of a well-known person in the area of art, science, education, literature, politics, sport, etc., information about whom is included in encyclopaedias, reference books, dictionaries, manuals, and also widely promulgated in the media.

Whilst not being specifically mentioned anywhere in UDRP or in DRS, the disputes resolved under these policies indicate that the same guidance is followed by the panel and the expert when resolving disputes1. At the same time, the panel and the expert are not limited to such guidance and can employ various criteria in order to decide whether the first requirement is applicable. In this respect, DRP .УКР operates with the exhaustive list of criteria, which will make it difficult for the arbiter to reach a sound decision when dealing with non-standard situations (for example, domain names that are formed by a combination of the name of a trademark and negative wording).

Second and third requirements

The second requirement of DRP .УКР is the exact equivalent of the requirement included in UDRP2. Moreover, the list of circumstances, this time non-exhaustive, that prove the existence of rights or legitimate interests in the disputed domain name is also the same as in UDRP (i.e. use of the domain name in connection with a bona fide offering of goods and services, non-commercial or fair use of the domain name, etc.).

The third requirement of DRP .УКР is the translated reprint of the requirement included in UDRP regarding registration and usage of the domain name in bad faith. This is a requirement where approaches under UDRP and DRS slightly differ (DRS uses the wording "the domain name is an abusive registration").

DRP .УКР contains a non-exhaustive list of factors of registration or use in bad faith which is the same as in UDRP (e.g., registration primarily for the purpose of disrupting the business of a competitor, etc). However, DRS, in addition to abusive registration factors, also provides a non-exhaustive list of factors which may be evidence that the domain name is not an abusive registration. Amongst these factors particular attention should be given to (a) trading in domain names for profit, and (b) criticism of a person or business.

Trading in domain names for profit

Trading in domain names for profit is specifically forbidden by UDRP and is recognized as evidence of a bad faith registration and use. The resolved disputes show that the mere offer to the complainant to buy a domain name3 or rejection of any counter-offer that amounts to the price of registration of a domain name would be regarded as a bad faith registration4.

In the modern world domain names have become as valuable an asset as intangible goods and this is fully recognized in UK Nominet's DRS in that the trading of a domain name for profit is not considered illegal per se5.

Criticism of a person or business

In DRS one of the factors of a non-abusive registration is that the respondent is making a legitimate non-commercial or fair use of the domain name. It is explained that fair use may include sites that operate solely in tribute to, or in criticism of, a person or business. For example, in DCM (Optical Holdings) Limited, v Sasha Rodoy6 the domain name in dispute was opticalexpress-ruinedmylife.co.uk. It was found that the trademark was similar to the domain name. Nevertheless, the expert stated, that despite a pattern of critical domain name construction, presenting a common critical opinion does not automatically render a domain name an abusive registration.

Whilst the criticism of a business or a person is recognised under DRS to be a lawful purpose of establishing a domain name, even if such a domain name is similar to the trademark being criticised, there is no express provision in UDRP about this. Based on cases resolved, it can be said that the decisions of panels under UDRP can vary on this question, but mostly the criticism is not welcomed as an aim of establishing a domain name7.

Policies' differences and DRP .УКР approach

Other differences between UDRP and DRS include:

— no appeal review under UDRP. The only way for a losing party to appeal in UDRP is to go seek a judicial review. However, under DRS it is possible to appeal against the decision of an expert to a panel of three experts;

— a mediation stage under DRS. Disputes have been settled at the informal mediation stage in approximately half of all cases8; and

— issues of abusive registration cannot be resolved in the courts, if UK Nominet's DRS procedure has been used. In the UK High Court Michael Toth v Emirates9 Mann J. stated that despite a complainant not being prevented from filing a claim for infringement of the trademark, a brand owner can be confident that if the expert appointed by Nominet or the subsequent Nominet appeal panel decide that a domain name is an abusive registration in the hands of a registrant, the registrant cannot appeal this decision in English Courts. Under UDRP a court can decide the case de novo without any reference to a UDRP decision.

In respect of all the above-mentioned points, DRP .УКР adopts the UDRP model.

On the issue of the appointment of arbiters DRP .УКР also takes the UDRP approach: each party can decide whether the dispute is heard by one or three arbiters. There is a possibility for the parties to choose the arbiters from the list of available arbiters, while under DRS it is for Nominet exclusively to appoint an expert or a panel of experts in the event of an appeal.

Controversial issue

However, there is one principal procedural difference between DRP .УКР and UDRP and DRS, which can undermine the whole procedure.

Both UDRP and DRS state that decisions of panels (experts) are final. Interestingly, the decision of the arbiter under DRP .УКР is not final; the decision along with other materials of the case is submitted to the Commission on Domain Dispute Resolution (the Commission), which is the ultimate body with the authority to render a final binding decision. There are seven members of the Commission (only four required for a quorum), which are appointed by the UANIC Coordination Council, which is comprised of the representatives of business and state authorities in the sphere of intellectual property and information technologies. Thus, the arbiter's decision is merely additional evidence for the Commission and can, theoretically, be completely disregarded. This shortcoming could be very harmful to DRP .УКР, because the initial arbitration proceedings which involve submission of a complaint, writing a response to such complaint, appointing arbiter(s), and submission of documents in support of each party's statements is undermined if the final decision is made at the Commission's meetings with no prescribed procedure for such meetings and an absence of the right to appeal if the Commission's decision is different from that of the arbiter(s).

Conclusions

Overall, DRP .УКР was drawn up under the considerable influence of UDRP. Many provisions of DRP .УКР represent the exact wording of UDRP or are quite close to it. This gives some guidance about what to expect from the decisions of arbiters under DRP .УКР, because there is a developed array of resolved disputes on various issues under UDRP, while so far not a single dispute has been conducted under DRP .УКР.

At the same time, UDRP was adopted in 1999 and has not changed since the day of its promulgation, whereas DRS has been amended several times, with the latest amendments in 2008. Thus, the latter seems to be more flexible and updated in accordance with the latest developments in information technology areas. Therefore, it would have been beneficial for DRP .УКР to include some provisions which are absent in UDRP, but are often referred to when resolving disputes under DRS (e.g., mediation stage, appeal review, trading in domain names, criticism of a person or business, etc.).

The main drawback of DRP .УКР seems to be the fact that the arbiter's decision is not final and the Commission acts as the final arbiter in resolving disputes.

Despite some shortcomings, DRP .УКР might establish a valuable precedent for other Ukrainian alternative dispute resolution policies for domain names, in particular the .UA domain. The .UA domain administrator neither offers any dispute resolution service nor issues any guidance about it. In addition, disputes relating to the domain .UA are not resolved under ICANN's UDRP at the most popular platform for dispute resolution — World Intellectual Property Organization (WIPO), because ccTLD.UA is not on the list of the WIPO's country code top level domains. Therefore, whilst most of the disputes regarding domain names with ccTLD.UA are resolved in courts, where judges do not possess the required knowledge about relevant aspects of domain names and it can take years to get a final ruling, an alternative dispute resolution for .UA domain would be widely welcomed. Successful implementation and use of DRP .УКР may speed up the adoption of such alternative dispute resolution for the .UA domain.

1 Prada S.A. v. Mark O'Flynn [2001] WIPO PANEL DECISION, No.D2001-0368, Expedia, Inc. v. European Travel Network[2000] WIPO PANEL DECISION, No.D2000-0137,Volvo Trademark Holding Aktiebolag v City Motor Holdings [2011] DRS D00009730, Barclays PLC v. Mr Martin Sayers [2012] DRS D00010802, Stoney-gate 48 Limited and Wayne Mark Rooney v. Mr. Huw Marshall, [2006] DRS 03844

2 Note that no such requirement is present in DRS.

3 CBS Broadcasting, Inc. v. GaddoorSaidi[2000] WIPO PANEL DECISION, No.D2000-0243.

4 Hearst Communications, Inc. and Hearst Magazines Property, Inc. vs. David Spencer d/b/a Spencer Associates, and Mail.com, Inc. [2000] NAF PANEL DECISION, No.FA0093763.

5 The Game Group plc v. Garth Sumpter[2005] DRS 2166

6 [2012] DRS D00011271

7 See The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez[2002] WIPO DECISION, No.D2002-0823,Wal-Mart Stores, Inc. v.Richard MacLeod d/b/a For Sale[2000] WIPO PANEL DECISION, No.D2000-0662, America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM[2001] WIPO PANEL DECISION, No.D2001-0918, National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd[2000] WIPO PANEL DECISION, No.D2000 — 0636.

8David Engel, 'Domain name recovery-the tactical options', Communications Law 10(4) (2005), p.122.

9[2012] EWHC 517(Ch)

 

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