On April 28th, the Commission adopted Regulation 874/2004, which provides for a specific extra-judicial dispute resolution procedure in regard to speculative or abusive registrations of Internet addresses using the EU’s nascent website suffix, .eu.
The procedure is designed to provide trademark owners with an effective opportunity to challenge registrations of Internet addresses (properly called domain names, for instance www.company.eu) similar to their trademark name. A documents-only process, it may be conducted online - using emails - or offline using ordinary postal mail.
The Regulation provides for procedural rules that are very similar to those of the Internet Corporation for Assigned Names and Numbers’ (ICANN) Uniform Dispute Resolution Policy (UDRP), which currently governs most disputes over alleged abusive registrations of international domain names (Internet addresses in .com, .org, .net, .biz, .info, .name, etc). The UDRP has been widely praised for its effectiveness as it provides for a fast and low-cost process, but it is also meeting increasing criticism with regard to the quality of its justice. The .eu dispute resolution policy shows some improvements, but not as many as some critiques called for.
The main aspects of the procedure may be summarized as follows :
Article 22 of the Regulation provides that the dispute resolution may be initiated by "any party" claiming that a domain name registration is "speculative or abusive". Once the dispute resolution procedure has been initiated, participation of the domain name holder and the European Registry of Internet Domain names (EURid) is compulsory.
If a domain name registration is found speculative or abusive, it may be transferred automatically to the trademark holder, or be cancelled altogether. Such a registration is "speculative or abusive" if (art. 21) (a) the domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, (b) the domain has been registered without rights or legitimate interests in the name, and (c) if it has been registered or is being used in bad faith. A legitimate interest is for instance provided if the domain name holder has used it in connection with a commercial activity, if he or she has been commonly known by the domain name, or if he or she is making a "legitimate and non-commercial or fair use of the domain name". Bad faith is for example shown if the domain name was acquired with the purpose of selling it to the holder of a name in respect of which a right is recognized, to prevent the holder of a name from reflecting it in a corresponding domain name, or to mislead Internet users.
One may further note that Article 22(10) provides, in what seems at first glance to be a systematic violation of the respondent’s procedural rights, that "failure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty".
As in the UDRP, the dispute resolution provider will be selected by the claimant from a list of (soon-to-be) accredited dispute resolution providers (art. 22(5) and 23(1)). Much of the criticism concerning the UDRP is precisely based on this ability of the claimant to choose among the dispute resolution providers, as this allegedly creates competition among these providers in regard to attracting claimants.
The panel deciding on the case may be composed of one or three panelists (the situations in which there will be one, respectively three panelists is as of yet undefined). The selection of the panelists will be made "in accordance to the internal procedures of the selected ADR providers" (art. 22(9)).
The documents-only procedure may be conducted online or offline, as Article 22(9) provides that "any written communication to a complainant or respondent shall be made by the preferred means stated by the complainant or respondent, respectively, or in the absence of such specification electronically via the Internet, provided that a record of transmission is available".
The decision must be rendered within one month, be duly motivated, and will be published (art. 22(11)). It will be "binding" on the parties unless court proceedings are initiated within 30 days of the notification of the outcome to the parties. To what extent they will be binding (like a contract or like a judgment or arbitral award) is as of yet undefined. This also implies that the legal nature of the process (arbitration, expertise arbitrale, arbitrato irrituale, binding advies, etc) is currently unclear.
Finally, one should note that the .eu registry is not operational yet, which means that Internet addresses ending in .eu cannot be obtained yet. According to the current timetables, the first phase of the registration period will begin in December of this year, and it will be fully operational by April 2005.
Reproduction autorisée avec indication de la source :
Thomas Schultz, www.unige.ch/ceje, actualité n°: 108 du 3 juin 2004.