Domain Name Disputes in Ukraine: is There any Alternative?

Domain disputes in Ukraine have always been notable for a variety of approaches and opinions. For a long time, lawyers could not reach (to be honest, never reached) common ground, and courts, common practice, on such issues:

— the status of a domain name registrar — should the registrar be a defendant in such a dispute or a third party?

— the future of a disputed domain name — should the delegation of the dispu­ted domain name be cancelled or should the disputed domain name be re-delegated to a claimant?

— the “inviolability” of contractual relations between a registrant and a domain name registrar — does a court intervene with its decision in economic relations between the defendant (registrant) and the domain name registrar?

Needless to say, the mere process of­ obtaining the data of a registrant — an indi­vidual, is a quest. It still presents a number of challenges as far the domain name registrars have the position of im­permissibility of disclosure of personal da­ta of registrants who are individuals. In the opinion of registrars, the personal data of such registrants is protected by Personal Data Protection Law and may not be disclosed in response to an attorney’s request.

Only one thing was common — such a dispute should be resolved in a court without any alternative. Taking into account the real time for consideration of a case, the cost of court proceedings, the duration of delivery of a final decision, not to mention actual execution of the decision, not every right holder was ready to choose a judicial remedy to defend its rights.

Therefore, the conclusion of an agreement between the World Intellectual Pro­perty Organization (WIPO) and the Administrator of the .UA top-level domain, Hostmaster Ltd., was a long-awaited and promising event. In accordance with the mentioned agreement, the WIPO Arbitration and Mediation Center is the exclusive authority competent to consider any disputes regarding private second-level domain names in the .UA domain based on UA-DRP policy.

It is worth recalling that a second-level domain name is part of the domain name separated by a dot from the top-level domain immediately following it. For example, it is a designation “hostmaster” in the domain name hostmaster.ua.

The .UA Domain Name Dispute Resolution Policy adopted in accordance with this agreement is a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP), which is applied to all the generic Top-Level Domains (gTLD) with some peculiarities of functioning of the country code top-level domain (ccTLD) .UА.

One of these peculiarities is a requirement to delegate the private second-level domain name in the .UA domain only in the event, when it or its component (before the symbol “.”, but not including it) coincides in spelling with a trademark, the rights to use of which within the territory of Ukraine are owned by the appropriate registrant.

Of course, it’s a good peculiarity. However, as is usual with lawyers, there is a wrinkle here. In our opinion, it is this peculiarity of functioning of ccTLD.UA that raises questions of the implementation and successful functioning of UA-DRP policy.

As is known, the main purpose of the UDRP is a struggle against the unfair use of someone else’s trademarks in domain names.

When submitting a complaint, the Complainant should describe, in accordance with .UA Policy, the grounds on which the complaint is made including, in particular,

(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and

(3) why the domain name(s) should be considered as having been registered or being used in bad faith.

At the same time, in cases with second-level domains in the .UA domain, the violator will always have the right or legitimate interest in respect of the domain name(s) that is/are the subject of the complaint.

As mentioned above, the registration of a second-level domain in the .UA domain is possible only provided that the registrant owns a certificate of Ukraine for the corresponding trademark.

Thus, when it comes to disputes regarding the second-level domains in the .UA domain, it should be remembered that, as a matter of fact, this is always a dispute between the trademark of the Complainant (right holder) and the trademark of the Respondent (domain-name holder).

According to Article 495 of the Civil Code of Ukraine, proprietary intellectual property rights in a trademark shall, in particular, be the right to use a trademark.

Within the meaning of Articles 16 and 20 of the Law of Ukraine On Protection of Rights in Trademarks and Service Marks, the use of a mark shall include, among other things, the use of the mark in the Internet and in domain names.

As a result, the registration by an actual right holder (the future Respondent (domain-name holder) of a domain name on the basis of a trademark owned by it and its subsequent use, is an inalienable right of the trademark owner. In this case, the Respondent (domain-name holder) will, in our opinion, be able almost always to prove that it has a legitimate right or interest in the disputed domain name.

This is also stated in clause 2.7. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:

Panels have tended to recognize that a respondent’s registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate inte­rests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.

WIPO provides the following cases as examples:

— Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, <madonna.com>, Transfer;

— Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379, <cavinton.com> inter alia, Transfer, Cancellation in Part;

— British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817, <skytravel.com>, Denial.

Returning again to Ukrainian law enforcement practice, we believe that cancellation or re-delegation (by the way, it’s high time to decide which of these remedies is optimal in terms of defense of an infringed right) of the domain name from the right holder of one trademark to the right holder of another trademark carried out within the framework of a “non-judicial” procedure, will most likely be annulled judicially.

In similar disputes, which have so far been considered exclusively in courts, the courts always point out the valid intellectual property rights in a defendant’s trademark and the impossibility to restrict the right holder in its disposal of the intellectual property rights owned by it.

In this connection, in a situation, when each of the parties to a conflict has a title of protection for its trademark (yes, such things do happen), and the second level domain in the .UA domain is only one and it is already occupied by a potential defendant, the claimant intending to defend its rights and “recapture” the domain should, first of all, be ready to contest the opponent’s trademark registration (invalidation of certificate), which, again, is possible only judicially.

For illustration purposes, we would like to focus on one practical case. PPG Industries Ohio, Inc., a Delaware corporation, is a right holder of several trademarks with the word element “PPG” in Ukraine. The goods, such as paints, varnishes, lacquers, bearing this trademark are sold on the Ukrainian market and are known to consumers.

Not long ago, some native person registered a trademark “PPG” for services of Class 36 of the ICGS and the domain name ppg.ua.

The situation was ambiguous because the web site hosted on the mentioned domain name, among other things, offered for sale the claimant’s products marked by the claimant’s trademark (after filing of the claim the offer for sale disappeared).

Despite the duration of the proceedings, the case ended with a successful result for the real right holder. The disputable trademark was found invalid and the domain was re-delegated in favor of the claimant.

And we are well aware that without choosing the option of “invalidation of the certificate” the company would have hardly obtained the desired domain.

Based on this, as we can see, the application of the UA-DRP policy procedure will most likely not achieve the desired goal. That is, the cheap and quick consideration of disputes regarding the illegal use of a trademark in a second-level domain name in the .UA domain, since each of such domains is based on a valid trademark, the cancellation of which is possible only in courts.

At the same time, it would be logical to extend this procedure to third-level domains (com.ua, kiev.ua, net.ua, etc.), since the registration of these domains does not require the obligatory ownership of a trademark. It is these domains that are usually registered for unfair purposes, and the rights of the trademark owners are infringed mainly on the web sites assigned to them.

As soon as UA-DRP policy is extended to third-level domains in the .UA domain, we will be able to say that there is a real alternative to domain name disputes in Ukraine.