Moeller’s regional advice regarding cybersquatting with ccTLDs domain names: Consolidate disputes at WIPO whenever possible.
In March 2008, WIPO informed that during 2007 “a record 2,156 complaints alleging cybersquatting -or the abusive registration of trademarks on the Internet- were filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (Center), representing an 18% increase over 2006 and a 48% increase over 2005 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes”1
Overall, problems don’t seem likely to diminish in the short and medium term, given the rising number of DN available to be registered, like happens with ccTLDs as well as some new gTLD. The reason is that the online presence that some years ago was commonly limited to a single gTLD DN (usually a “.com”) has now expanded to the registration of ccTLDs, which therefore broadens the number of DN that can be cybersquatted or object of conflicts with third parties.2
In our view, disputes related to ccTLDs in Latinamerica represent one clear opportunity to benefit from the increasing harmonization among domestic IP laws and procedures, which overall results in less costs to register, prosecute and enforce IPR.
Particularly regarding cybersquatting of ccTLDs in Latinamerica, we want to highlight the possibility of using the Uniform Domain Name Dispute Resolution Policy (UDRP) in many countries of the region and even consolidate in a single form disputes over ccTLDs faced by the same parties in different countries.
1. How Latinamerican countries have (or have not) tackled cybersquatting.
It is worth noting that even after the boom of Internet in the middle of the 90’s, almost all Latinamerican countries had not approached this problem, with the exception of Chile where a particular local mediation and arbitration system was set up.
However, different factors (one very important being the rising number of ccTLDs filings seeing in the region) demanded particular solutions and up to date continue to demand new measures to deal with cybersquatting and cyberpiracy in a reasonable and fair way.
1.2. Relevance of imposing ease/tough requirements for registering ccTLD in Latinoamerica
Unsophisticated measures that some countries in the region consider discouraging for abusive domain registrations, would be establishing registration fees upon ccTLDs (measure not in practice currently) and restrictions for getting (or assigning) ccTLD such as it happens in Brazil where having a local presence is required in order to get a ccTLD “.br”.
The rationale behind such vision is that there is a direct-proportional relationship between the practice of cybersquatting and the level of simplicity- complexity to register a ccTLD because the simpler the filing the more likely a cybersquatter may be behind the registration.
The problem with this sort of solution is that they have social costs such as hurting certain desirable goals like promoting access of people and business to the Internet.
1.3. Existence of WHO is databases.
Despite some potential concerns such as issues with privacy and the like, having databases of ccTLDs registrants with easy access as well as complete and reliable information still require further improvements in our region.
Illustrating some of the problems with WHOis databases in the region, in some countries like Argentina it has been seen that in very particular situations third parties are allowed to register ccTLDs that were previously checked by an interested party using the online systems of NIC-Argentina.
2. Administrative and legal mechanisms to solve disputes available in the countries of the region.
Generally speaking, there are 2 possible domestic mechanisms to fight cybersquatting3:
Sort of administrative-judicial procedures: Conducted either locally (like mediation and arbitration in Chile, which is conducted before NIC Chile) or internationally (like using the UDRP before WIPO).
Traditional judicial actions: The most important being preliminary injunctions to stop third parties from using a ccTLD during the treatment of the dispute and/or to request the provisional assignment of the particular ccTLD to the claimant until a final decision is reached (possible in certain occasions).
3. Solving disputes with ccTLDs at WIPO: consolidate disputes whenever possible.
At this point it is worth noting the widely accepted opinion that traditional local mechanisms (either the administrative one when available or the traditional judicial actions before local courts) in principle do not provide with the required levels of celerity, economy and effectiveness to properly fight cybersquatting.
This is so because in solving DN conflicts there are some particular factors to be considered such as the multiple territorial effects of on-line activities, the potential geographical dispersion of the parties (likely located in different countries) and thereinafter the need of avoiding contradictory solutions. All these goals serve the purposes of diminishing the public and private costs of fighting cybesquatters while respecting the legitimate rights of ccTLDs holders.
Thus, the importance of having an international flexible system such as the UDRP, which is more and more used by companies and individuals interested in overcoming cybersquatters in the most effective, fast and efficient possible way.
Nevertheless, local administrative and judicial mechanisms are still necessary in some situations such as when monetary relief is requested or when there are certain particular circumstances affecting social values or public policies of a country affected by the dispute (such as liberty of expression, privacy issues).
Despite the importance of a system such as the UDRP, the main problem in Latinamerica is that in countries like Argentina and Brazil the only possible way to combat cybersquatting of ccTLDs is through the traditional judicial local systems.
However, so far 12 countries have agreed that disputes related to their ccTLDs can be handled through the UDRP by submitting a request with the Mediation and Arbitration Center at the WIPO, which are:
AG (Antigua and Barbuda)
PR (Puerto Rico)
TT (Trinidad and Tobago)
Moreover, the number of countries may be higher in the medium term given the clear advantages of systems such as the UDRP.
Thus, if a trademark holder considers that his or her rights over ccTLDs have been affected in multiple countries of the region by the same or related parties, it is to be more efficient to consolidate the resolution of as many of these local disputes as possible on a single international proceeding.4
Notes: Author: Mariano Municoy, lawyer Moeller & Co.
1 “DNS Developments Feed Growing Cybersquatting Concerns”, Geneva, March 27, 2008, PR/2008/544.
2 The same WIPO news release mentioned that “collectively the number of disputed ccTLD domain names has been increasing over the years, having moved from less than 1% in the year 2000 to over 7% in 2007”.
3 It is always advisable to take into account any administrative tools available to fight against cybersquatting. For instance, it is possible to request NIC-Argentina the provisional cancellation of a DN if certain information submitted to the WHOis database is false.
4 It should be taken into account that mechanisms like the UDRP do not preclude the possibility of resorting to the judicial competent authority even after a panel decision has been issued, although this has happened in very few cases due to the high level of deference given to panelist’s decisions.