In Conversation With Stefanie Efstathiou
Foreign Associate at Hogan Lovells
I. Basics
How did you end up in Domain Name Arbitration?
So basically, I didn’t find domain name arbitration, domain name arbitration found me. 4 years ago, when I decided to continue my career in Munich (because I am originally coming from Greece), I was about to start in a law firm specializing in IP, since I come from an IP law background. But this firm didn’t have the capacity last minute and offered me a position in another partnering law firm. This other boutique law firm I joined back then was also focusing on IP law, data protection, etc. but one of the partners was a domain name arbitrator/panelist (as we call arbitrators in domain name arbitration). And I am very fortunate to have worked with him, since he is not just a brilliant domain name and certainly an IP lawyer but also one of the kindest persons I have met, who is genuinely supporting his colleagues.
And since my two passions in law are IP and arbitration this was a very nice way to combine those two in the form of domain name arbitration!
What is Domain Name Arbitration? / What are domain names? / What is a Top-Level Domain Name? / What is ICANN?
Domain name arbitration is basically trademark-based disputes that are usually resolved through the widely used “golden standard” named “Uniform Domain Name Dispute Resolution Policy” (UDRP).
Domain names are a proprietary string of language that is registered and recognized by the Domain Name System (DNS).
A Top-Level-Domain (TLD) is the last level of a URL as we see it today on the internet. Let’s take for example the URL www.google.com. The last part <.com> is the TLD, and there are tons of top-level domains out there. Depending on which TLD is used, the respective dispute resolution rules apply to the dispute. The UDRP is used for the majority of TLDs, and also some ccTLDs (country-code TLDs, which are the TLDs assigned to a country based mostly on the international country code).
Now, when it comes to countries the ccTLD system is a more complicated thing. It depends then on the respective Registry since every country has a Registry for creating or accommodating its domain names. And if that Registry has opted for another type of dispute resolution policy and not for the UDRP, then this shall apply. For the same reasons, certain countries resolve their domain name disputes by way of court litigation. An example is Germany and Greece, which do not have arbitration under the UDRP as a means of dispute resolution for their ccTLDs. Germany uses court proceedings for its <.de> TLD and Greece has a mixed system of an administrative proceeding in front of a specialized committee for the legal arguments stage and court proceedings for the enforcement stage.
The Internet Corporation for Assigned Names and Numbers (ICANN) helps coordinate the Internet Assigned Numbers Authority (IANA) functions, which are key technical services critical to the continued operations of the Internet’s underlying address book, the Domain Name System (DNS).
What Rules are applicable in Domain Name Arbitration proceedings? Do the various rules have major differences?
Depending on the country, there are certain rules that are being applied to the ccTLD disputes. However, for all the other generic TLDs (that do not represent a country) the UDRP is indeed the most popular instrument. In addition, there are even other policies out there, that are usually mirroring the UDRP and its elements with no major differences.
Which are the different resolution centers for Domain Name Arbitration?
Domain name disputes are resolved by approved dispute resolution service providers (when not in court). Those are indeed just a handful in the world. The Czech Arbitration Court, located in Prague and the Canadian International Internet Dispute Resolution Centre (CIIDRC) are some of them. Others are inter alia the Asian Domain Name Dispute Resolution Center, the National Arbitration Forum and WIPO.
Is Domain Name Arbitration cost-efficient?
Yes, indeed. Domain name arbitration is cost- and time-efficient. It depends on the number of the disputed domain names consolidated in one Complaint but for up to 5 domain names it is usually under 1500,- EUR, which (usually) also includes the remuneration of the arbitrator and the administrative fees.
How fast are Domain Name Disputes resolved?
It certainly depends on the complexity of the case but most of the time Respondents do not react to the Complaint and therefore fall in default. And this makes things way easier, and the decisions are usually out in 2-3 months from filling.
II. Legal grounds
What is cybersquatting?
Cybersquatting is the practice of registering names, especially of well-known companies or brands as internet domains, (usually) in the hope of reselling them at a profit.
Is there any case law in Domain Name Arbitration?
Yes, indeed WIPO has collected over the years through its decisions a Jurisprudential Overview, as it is called, and the domain name panels rely heavily on the case law and principles that have been created thereof.
What type of trademark rights are encompassed by the expression in the UDRP “trademark or service mark” (para. 4(a) UDRP)?
The term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. (WIPO Jurisprudential Overview 3.0, sec. 1.1.1)
Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. (WIPO Jurisprudential Overview 3.0, sec. 1.1.2)
Also, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements. (WIPO Jurisprudential Overview 3.0, sec. 1.1.2)
While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the Complaint is filed.
The fact that a domain name may have been registered before a Complainant has acquired trademark rights does not by itself preclude a Complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
Where a domain name has been registered before a Complainant has acquired trademark rights, only in exceptional cases would a Complainant be able to prove a Respondent’s bad faith. (WIPO Jurisprudential Overview 3.0, sec. 1.1.3)
A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(I). (WIPO Jurisprudential Overview 3.0, sec. 1.1.4)
Do also misspellings of a trademark count as a ground for a Complaint?
A domain name that consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the Respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the Complainant. (WIPO Jurisprudential Overview 3.0, sec. 1.9)
How do panels assess whether a Respondent lacks rights or legitimate interests in a domain name?
The UDRP Rules in principle provide only for a single round of pleadings, and do not contemplate discovery as such. Accordingly, a panel’s assessment will normally be made on the basis of the evidence presented in the Complaint and any filed response.
While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a Respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. So here it’s a prima facie case of the Complainant and the burden of proof shifts to the Respondent. (WIPO Jurisprudential Overview 3.0, sec. 2.1)
What does a Complainant need to prove, so as to successfully plead a case?
Basically, the UDRP and pretty much every other policy with slight modifications have 3 legal grounds that have to be proven cumulatively (or depending on the policy with the third ground being optional or at least one of its two elements – bad faith registration / bad faith use – being optional):
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent 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.
Where do most Respondents come from? / Is there a tendency in regard to being a Respondent coming from certain countries?
It is hard to say, but from my experience, there is a clear tendency coming from China, but I will just say that this goes in proportion to the world’s population. However, a lot of Respondents sit also in the USA, UK, India and off-shore islands that no one has ever heard of. Sometimes Respondents do not even register their actual address and therefore there can be no accurate statistics on that.
III. Future of Domain Name Disputes
What are the new developments (e.g. WIPO Service for .CN domains, New dispute service for .SA domains etc.)
There is certainly a lot going on in the domain name world – every single day! But WIPO’s ant-cybersquatting service for <.cn> and <.cn> in mandarin is certainly something that in the past 2 years has drawn attention. WIPO’s service for the Chinese TLD is the only non-Chinese service from an entity that is not coming from China. And it recently reached and even passed its 100th milestone case.
Then there are several other policies that have been updated in the past year, like the one for the Ukrainian TLD <.ua> and new resolution services, as for example WIPO’s Launch of the Domain Name Dispute Resolution Service for <.sa> and السعودية. (Saudi Arabia).
What is happening in the domain name scene now that we have GDPR?
Well…at first it was a very intriguing matter, but in practice, the contact and personal details of registrants are privacy shielded due to the GDPR only when it is a natural person. But then again, once starting the Complaint, the Registrar and the Registry are giving out the personal information since there is a valid ground under the GDPR for it, meaning for the sake of the legal proceeding. Interestingly enough this does not help when someone wants to find evidence for a “pattern of conduct” behavior of the Respondent, which is an element under the UDRP, but sometimes there are other tools that can be helpful in this regard.
What would be the possible progress of the domain name dispute resolution in the future?
I believe that the UDRP is a great basis to start, similar to the status that the New York Convention in International Arbitration has, and that slowly but steadily every country should move towards this direction in terms of policy. Furthermore, it has become very clear in the past years and also even more during the pandemic that cybersecurity issues arise more often and as we move along to an even more digital economy/world it will be of utmost importance to regulate the internet and safeguard IP rights in domain names or in any other form with efficient and tailored policies.
Did Covid-19 somehow affect Domain Name Arbitration?
Yes, it has certainly affected it. The pandemic appears to have fueled an increase in cybercrime. This is also true for cybersquatting cases filed with WIPO’s Arbitration and Mediation Center and I believe with any dispute resolution service provider, since there was a steady increase as compared with the same period last year. According to WIPO’s statistics, the Center had 511 cases more in 2020 compared to 2019 and in 2021 already almost 200 cases more compared to the year before.
ABOUT
Stefanie Efstathiou is a Foreign Associate in the arbitration team of Hogan Lovells in Munich and an Arbitrator/Panelist for domain name disputes at the Czech Arbitration Court (CAC) and the Canadian International Internet Dispute Resolution Centre (CIIDRC). Ms. Efstathiou is admitted as an Attorney-at-Law in Greece and is in the process of also becoming a German qualified lawyer. She holds three LL.M. titles and specializes in international and domestic commercial dispute resolution, as well as in domain name arbitration disputes under the UDRP, the .eu Rules and the CIRA domain name policy. She is also an ambassador of Arbitrator Intelligence and a member of several arbitral organizations for young practitioners, as well as a member of Arbitral Women.
