Alternative dispute resolution mechanism (ADR)

• Author: Paulovics, Ivett
• Pages: 60-94

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10. ALTERNATIVE DISPUTE RESOLUTION MECHANISM (ADR)

Since the Internet has a global reach and the resolution of cross-border domain disputes

through court proceedings is costly and time-consuming, alternative dispute resolution

(ADR) mechanisms to resolve such disputes are internationally recognised as effective

curative measures against speculative and abusive domain name registrations.

After a brief overview of the international context, this Section will analyse the ADR for the

resolution of .eu domain name disputes (.eu ADR) and compare it with the ADR

procedures referable to a number of selected ccTLDs (.be, .dk, .hu, .it, .uk) with a view to

identify good practices which might assist EU policy-makers in improving the existing

domain name resolution policy and procedure for the .eu domain name.

10.1 International backdrop

In the late 1990s, in response to the commercialisation of the Internet and subsequent

widespread phenomenon of abusive registrations by third parties who had intentionally

registered domain names confusingly similar to trade marks in bad faith for profit

(cybersquatting), ICANN, through a formal policy development process, adopted the

UDRP as consensus policy, implemented on 24 October 1999.141 In developing UDRP

international best practices, ccTLDs’ experience regarding intellectual property issues

raised by domain names were especially taken into account.

UDRP is a “quick, efficient, cost-effective” and “uniform administrative dispute-resolution

procedure” that required domain name holders “to submit to the administrative procedure

only in respect of allegations that they are involved in cybersquatting, which was

universally condemned… as an indefensible activity that should be suppressed”.142

The UDRP applies to all gTLDs and some ccTLDs.143

Several European ccTLDs adopted domain name dispute resolution policies similar to the

UDRP, adapting this latter to their national legal environment and, thus, such policies can

be considered UDRP-variants (inter alia, .ch, .es, .fr, .ie, .nl, .se, etc.).

The UDRP is incorporated by reference into all gTLD registration agreements. Therefore,

the domain name holder is required to submit to a mandatory administrative procedure in

the event that a third party (complainant) states that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark

in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the

domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The mandatory administrative procedure is without prejudice to recourse to competent

courts.

UDRP is conducted before one of the domain dispute resolution service providers144,

approved by ICANN in accordance with the Rules for UDRP145, and the provider’s

Supplemental Rules.

Over the years, the UDRP has proven an efficient remedy against bad faith, abusive

registration of domain names infringing trade mark rights.

141 https://www.icann.org/resources/pages/policy-2012-02-25-en

142 WIPO Final Report “The Management of Internet Names and Addresses: Intellectual Property Issues”, 30 April 1999:

https://www.wipo.int/amc/en/processes/process1/report/finalreport.html

143 Currently: .ag, .ai, .as, .bm, .bs, .bz, .cc, .cd, .co, .cy, .dj, .ec, .fj, .fm, .gd, .gt, .ki, .la, .lc, .md, .me, .mw, .nr, .nu, .pa,

.pk, .pn, .pr, .pw, .ro, .sc, .sl, .so, .tj, .tt, .tv, .ug, .ve, .vg, and .ws

144 https://www.icann.org/resources/pages/providers-6d-2012-02-25-en

145 https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en

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WIPO, the main dispute resolution service provider for UDRP, has administered over

42,500 disputes since 1999, encompassing over 78.500 domain names.146

Over the course of 20 years the UDRP developed considerable case law that rendered

the procedure highly transparent and the outcome predictable. The consensus views of

UDRP panels are often referenced in ccTLD ADR procedures as well.

Starting from 2005 a development process was initiated by ICANN in order to introduce

into the domain name space new gT LDs to allow more innovation, choice and change to

the Internet’s addressing system. The new gTLD program was launched in 2011 and the

application f or new gTLDs began in January 2012. First, new gTLDs were delegated in

October 2013 and over 1.300 new extensions became available147.

By introducing the new gTLDs, ICANN implemented a number of new rights protection

mechanisms, among which the Uniform Rapid Suspension System (URS). The URS is a

trade mark-related rights protection mechanism, implemented to supplement the existing

UDRP. URS is a lower-cost, faster path to relief f or rightsholders experiencing clear-cut

cases of trade mark infringement caused by domain name registrations.

URS is not intended to replace the UDRP, but to complement it. The URS and UDRP

have separate procedures with distinct timelines and remedies. The UDRP is designed to

result in the cancellation or transfer of the domain name, whereas the URS results in the

suspension of a domain name for the balance of the registration period. Right holders

might resort to either or both procedures. Neither procedure is prioritised over the other.

URS applies to all new gTLDs, some of the “legacy gTLDs” (.asia, .biz, .cat, .info, .jobs,

.mobi, .museum, .org, .pro, .tel, .travel, .xxx) and some ccTLDs (.pw).

URS is conducted by the ICANN-approved dispute resolution service providers pursuant

to the URS Procedure, URS Rules and the provider’s Supplemental Rules148.

10.2 .eu ADR

10.2.1 Overview of the .eu ADR

Rules and regulations

The .eu ADR is foreseen by Article 22(1)(a) of Commission Regulation (EC) No

874/2004149 and Regulation (EU) 2019/517 as a curative measure against speculative and

abusive registrations150. The .eu ADR is governed by the ADR rules (.eu ADR Rules).151

Such rules were inspired by the UDRP152.

Claim requirements

Pursuant to Article 21 of Commission Regulation (EC) No 874/2004 and under the .eu

ADR Rules, complainants must prove that the disputed .eu domain name is identical or

confusingly similar to the name or names in respect of which a right or rights are

recognised or established by national and/or European Union law, such as the rights

mentioned in Article 10(1) of the cited Regulation and as specified and described in

accordance with Paragraph B1(b)(9) of the .eu ADR Rules, and either the disputed

146 https://www.wipo.int/pressroom/en/articles/2019/article_0003.html

147 https://newgtlds.icann.org/en/program-status/delegated-strings

148 https://www.icann.org/resources/pages/urs-2014-01-09-en

149 Article 22 Alternative dispute resolution (ADR) pr ocedure 1. An ADR procedure may be initiated by any party where:

(a) the registration is speculative or abusive within the meaning of Article 21; or (b) a decision taken by the Registry

conflicts with this Regulation or with Regulation (EC) No 733/2002.

150 Article 21 of Commission Regulation (EC) No 874/2004

151 https://eurid.eu/d/7770495/EN_ADR_English_rules.pdf

152 Recital (17) of Commission Regulation (EC) 874/2004 and recital (17) of Regulation (EU) No 2019/517.

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domain name has been registered by its holder without the right or legitimate interest to

do so or the disputed domain name should be considered as having been registered or

used in bad faith.

Rights protected

The protected rights include registered national and European Union trade marks,

geographical indications or designations of origin, and, insofar as they are protected under

national law in the Member State where they are held: unregistered trade marks, trade

names, business identifiers, company names, family names, and distinctive titles of

protected literary and artistic works.

Remedies

The remedies available are the transfer or revocation of the disputed domain name. If a

complainant requests the transfer of the disputed domain name, the complainant must

provide evidence to satisfy the general eligibility criteria for the registration set out in

Article 4(2)(b) of Regulation (EC) No 733/2002 (as amended by the new Regulation).

Dispute-resolution provider(s)

The .eu ADR is provided by independent dispute resolution providers. The Czech

Arbitration Court (CAC) has been operating as dispute resolution provider for .eu domain

names since 2006.153 The World Intellectual Property Organization (WIPO) has been

providing the domain name dispute resolution service for .eu since June 2017.154

Length of the procedure

The procedure lasts approximately 3 months. The procedure occurs as follows:

 The complaint is filed;

 The ADR provider notifies the .eu Registry and the .eu Registry blocks the

disputed domain name – 5 days from receiving the complaint;

 Administrative review of the complaint - if non-compliant, 7 days are provided to

rectify any deficiency;

 The administratively compliant complaint is notified to the domain-name holder –

within 5 working days of receiving fees;

 Response period – 30 working days from receiving the complaint by the domain

name holder;

 If a response is provided, administrative review of the response occurs: if non-

compliant, 7 days to rectify any deficiency;

 If no response is provided, a notice of default is sent to the parties;

 Appointment of the Panel;

 The decision is issued within 1 month of receiving the response or after the time

period for submitting the response has elapsed.

Lock of disputed domain name

Pursuant to Paragraph B(1)(e) of the .eu ADR Rules, the domain name is locked by

EURid during the .eu ADR. Such measure guarantees that neither changes in the

ownership of the domain name (“cyberflight”), nor other changes with regard to the

domain name occur during while the .eu ADR procedure is ongoing.

Registrant data disclosure

153 https://eu.adr.eu/index.php?lang=en

154 https://www.wipo.int/amc/en/domains/cctld/eu/index.html