If your . ee domain has been reregistered, then 6 April holds no special meaning for your domain. But if your domain is still unregistered, then 6 April does hold significance because your domain will be deleted. All interested persons can register in their name domains that have become available and the first come, first served rule applies. Since the new domain procedure does not limit the number of domains owned by one person and since natural persons may also register domains, some have already contemplated registration of non-reregistered .ee domains which are identical or similar to well-known trademarks. This could be for the purpose of selling a trademark to its real owner at a large profit or simply to take advantage of the reputation of a well-known identifying mark in order to attract internet users to their website. In practice, this activity is known as cybersquatting. Is cybersquatting actually as simple as may seem at first glance?
What rights does a domain grant its owner?
First of all, we examine what rights a registered domain actually grants its owner. To put it simply, a domain is a combination of letters and numbers that corresponds to a specific IP address, i.e. the address of a computer on the Internet. Thus, a domain is a sign that can be made visible on the Internet through registration and that grants the registrant specific rights. While a trademark grants its owner the exclusive right to use the trademark in its business activities – with the right to prohibit others from using identical and similar signs – registration of a domain only allows its owner to use the domain. Thus, unlike in the case of a business name or trademark, the domain owner is not granted the exclusive right to the words and symbols used in the domain. If, for example, someone registers the domain name of another person as a trademark, the domain owner lacks the possibility to require transfer of that trademark to itself. If the opposite occurs, this is possible under certain circumstances.
Rumour continues to resound that a number of domains will become available after 6 April and that anyone interested may register those domains in their name. However, a domain registrant is not completely free in its choices. Notably, restrictions apply both to domains that will become available after 6 April and also to all other persons who intend to register a new domain before and after that date. For example, a registered trademark or business name may represent an obstacle to the ownership of an identical as well as a similar domain. True, due to the formalities of the domain registration process (i.e. on registration of a domain, neither the registrar nor the register verifies the existence of similar trademarks or business names ), one may manage to register a trademark belonging to another person as a domain name. However, that “luck” might not last for long in reality.
If a trademark registered in the name of another person has been selected as a domain, it probably represents a violation of the rights of the trademark owner and that trademark owner may soon start claiming transfer of the domain to itself. That position is also supported by the Supreme Court finding in its judgement No 3-2-1-4-06 of 30 March 2006 that registration and use of a domain name identical or misleadingly similar to a trademark without the consent of the trademark owner is considered a violation of the exclusive rights of the trademark owner according to international practice.
What to do if a domain is cybersquatted?
If you suddenly discover that your business name or trademark has been registered as a domain by another person, you have two possibilities to protect your rights – to turn either to the Domain Disputes Committee or to the court. The circumstances surrounding each dispute also play an important role in making that choice. Bear in mind that a decision in favour of the Domain Disputes Committee does not automatically mean waiver of the right to claim recourse in a court in the same matter at a later date. The Committee is not an arbitration court under the Code of Civil Procedure, whose decision cannot be appealed and is final. If you disagree with a decision of the Committee, it is always possible to appeal to a court as well.
Thus, the question may arise – why seek recourse at all with the Domain Disputes Committee? This option is certainly worth considering in cases of obvious cybersquatting, as proceedings in the Committee are significantly faster and probably also less expensive than in a court. Fast proceedings in the Committee are of avail also because in the case of cybersquatting the offenders usually do not bother to participate in the proceedings and are even less likely to appeal a decision to a court, so that the domain will be in the hands of its rightful owner quite quickly.
What should you know about contesting a domain in the Domain Disputes Committee?
The Domain Disputes Committee resolves disputes on the basis of its Rules as well as under the domain regulations and Estonian law. To resolve disputes, the domain registrant submits itself to the Committee when registering a domain, agreeing to comply with the domain regulations.
If you have decided to contest a domain registered by another person, you have to supply proof of the following circumstances under the Rules:
(a) a domain name is identical or misleadingly similar to an earlier right held by you; and
(b) a domain name was registered without the right or rightful interest of the registrant to the domain name; or
(c) a domain name was registered or is being used in bad faith.
Thus, in contesting a domain, you first have to supply proof that you hold an earlier right to which the domain name is identical or misleadingly similar. Under the Rules, those earlier rights include registered trademarks applicable in Estonia, names of natural persons, names of legal persons entered in registers in Estonia, names of state or local authorities and their institutions, names of international and intergovernmental organisations. Decision No. 11-1a-260 of the Domain Disputes Committee on 18 March 2011 shows that the existence of an earlier right is not always unambiguously clear. For example, the owner of an earlier right was not considered to include a person who was a cooperation partner of the owner of a trademark allegedly similar to the domain name since the contestant did not supply proof of its right to represent the owner of the registered trademark.
If the existence of an earlier right is established, this does not automatically mean that the domain name should be immediately delivered to you. In addition to the existence of an earlier right, it should be also proved that the registrant of a domain had no right to or any rightful interest in the domain or that the domain name was registered in bad faith. The Rules also include an illustrative list of what could be considered to be a rightful interest and an act in bad faith. It should be borne in mind that the list is not exhaustive.
Under the Rules, the right or rightful interest of the registrant may also be proved byshowing that before origination of the dispute the registrant actually used the domain name or a name that corresponded to the domain name in conjunction with selling goods or rendering services, or made provable preparations for such operations. Bad faith may also be demonstrated by showing that the domain name was registered or acquired directly with the purpose of selling the domain name, granting the right of use or otherwise delivering it to the holder of an earlier right or to a competitor of the contestant for a charge that substantially exceeds the direct expenses related to registration of the domain name.
A more complicated legal dispute or a claim for compensation of damage along with a claim for delivery of the domain would involve exercising the right of recourse to the courts.
Example from practice
Currently, three disputes have been resolved in the Domain Disputes Committee and several disputes are waiting to be heard. The first concerned an obvious cybersquatting event where a natural person registered the domain bang-olufsen.ee in its name. This was contested by Danish company BANG & OLUFSEN which owns the BANG & OLUFSEN trademark registered in Estonia as well as the BANG & OLUFSEN trademark of the European Community.
The decision went in favour of the Danish company. As the registrant did not reply to the contesting application and there was no proof which would have confirmed that the registrant had any right or rightful interest to register bang-olufsen.ee, the Committee decided to deliver the domain name bang-olufsen.ee to Bang & Olufsen A/S. Since absence of the right and rightful interest was proved, the issue of bad faith did not require analysis.
In this dispute, the decision was made one month after filing of the contesting application, which illustrates the expediency of the Committee in cybersquatting cases in terms of time. Thus, if you discover that your domain has been registered by another person after the deletion processes of 6 April, do not panic. The same also applies to a situation where you have not yet been able to register a domain identical or similar to your business name or trademark but you suddenly discover that someone has managed to do so before you. If the domain registrant obviously has no rightful interest to register the domain or tries to sell the domain to you at a high price, then stand up to protect your rights. As mentioned, the choice between the Domain Disputes Committee and the court depends on the circumstances of each dispute. The author recommends favouring the Domain Disputes Committee for obvious cybersquatting and seeking recourse in the courts for more complicated disputes.
Remedies available against cybersquatters
If your . ee domain has been reregistered, then 6 April holds no special meaning for your domain. But if your domain is still unregistered, then 6 April does hold significance because your domain will be deleted. All interested persons can register in their name domains that have become available and the first come, first served rule applies. Since the new domain procedure does not limit the number of domains owned by one person and since natural persons may also register domains, some have already contemplated registration of non-reregistered .ee domains which are identical or similar to well-known trademarks. This could be for the purpose of selling a trademark to its real owner at a large profit or simply to take advantage of the reputation of a well-known identifying mark in order to attract internet users to their website. In practice, this activity is known as cybersquatting. Is cybersquatting actually as simple as may seem at first glance?
What rights does a domain grant its owner?
First of all, we examine what rights a registered domain actually grants its owner. To put it simply, a domain is a combination of letters and numbers that corresponds to a specific IP address, i.e. the address of a computer on the Internet. Thus, a domain is a sign that can be made visible on the Internet through registration and that grants the registrant specific rights. While a trademark grants its owner the exclusive right to use the trademark in its business activities – with the right to prohibit others from using identical and similar signs – registration of a domain only allows its owner to use the domain. Thus, unlike in the case of a business name or trademark, the domain owner is not granted the exclusive right to the words and symbols used in the domain. If, for example, someone registers the domain name of another person as a trademark, the domain owner lacks the possibility to require transfer of that trademark to itself. If the opposite occurs, this is possible under certain circumstances.
Rumour continues to resound that a number of domains will become available after 6 April and that anyone interested may register those domains in their name. However, a domain registrant is not completely free in its choices. Notably, restrictions apply both to domains that will become available after 6 April and also to all other persons who intend to register a new domain before and after that date. For example, a registered trademark or business name may represent an obstacle to the ownership of an identical as well as a similar domain. True, due to the formalities of the domain registration process (i.e. on registration of a domain, neither the registrar nor the register verifies the existence of similar trademarks or business names ), one may manage to register a trademark belonging to another person as a domain name. However, that “luck” might not last for long in reality.
If a trademark registered in the name of another person has been selected as a domain, it probably represents a violation of the rights of the trademark owner and that trademark owner may soon start claiming transfer of the domain to itself. That position is also supported by the Supreme Court finding in its judgement No 3-2-1-4-06 of 30 March 2006 that registration and use of a domain name identical or misleadingly similar to a trademark without the consent of the trademark owner is considered a violation of the exclusive rights of the trademark owner according to international practice.
What to do if a domain is cybersquatted?
If you suddenly discover that your business name or trademark has been registered as a domain by another person, you have two possibilities to protect your rights – to turn either to the Domain Disputes Committee or to the court. The circumstances surrounding each dispute also play an important role in making that choice. Bear in mind that a decision in favour of the Domain Disputes Committee does not automatically mean waiver of the right to claim recourse in a court in the same matter at a later date. The Committee is not an arbitration court under the Code of Civil Procedure, whose decision cannot be appealed and is final. If you disagree with a decision of the Committee, it is always possible to appeal to a court as well.
Thus, the question may arise – why seek recourse at all with the Domain Disputes Committee? This option is certainly worth considering in cases of obvious cybersquatting, as proceedings in the Committee are significantly faster and probably also less expensive than in a court. Fast proceedings in the Committee are of avail also because in the case of cybersquatting the offenders usually do not bother to participate in the proceedings and are even less likely to appeal a decision to a court, so that the domain will be in the hands of its rightful owner quite quickly.
What should you know about contesting a domain in the Domain Disputes Committee?
The Domain Disputes Committee resolves disputes on the basis of its Rules as well as under the domain regulations and Estonian law. To resolve disputes, the domain registrant submits itself to the Committee when registering a domain, agreeing to comply with the domain regulations.
If you have decided to contest a domain registered by another person, you have to supply proof of the following circumstances under the Rules:
(a) a domain name is identical or misleadingly similar to an earlier right held by you; and
(b) a domain name was registered without the right or rightful interest of the registrant to the domain name; or
(c) a domain name was registered or is being used in bad faith.
Thus, in contesting a domain, you first have to supply proof that you hold an earlier right to which the domain name is identical or misleadingly similar. Under the Rules, those earlier rights include registered trademarks applicable in Estonia, names of natural persons, names of legal persons entered in registers in Estonia, names of state or local authorities and their institutions, names of international and intergovernmental organisations. Decision No. 11-1a-260 of the Domain Disputes Committee on 18 March 2011 shows that the existence of an earlier right is not always unambiguously clear. For example, the owner of an earlier right was not considered to include a person who was a cooperation partner of the owner of a trademark allegedly similar to the domain name since the contestant did not supply proof of its right to represent the owner of the registered trademark.
If the existence of an earlier right is established, this does not automatically mean that the domain name should be immediately delivered to you. In addition to the existence of an earlier right, it should be also proved that the registrant of a domain had no right to or any rightful interest in the domain or that the domain name was registered in bad faith. The Rules also include an illustrative list of what could be considered to be a rightful interest and an act in bad faith. It should be borne in mind that the list is not exhaustive.
Under the Rules, the right or rightful interest of the registrant may also be proved byshowing that before origination of the dispute the registrant actually used the domain name or a name that corresponded to the domain name in conjunction with selling goods or rendering services, or made provable preparations for such operations. Bad faith may also be demonstrated by showing that the domain name was registered or acquired directly with the purpose of selling the domain name, granting the right of use or otherwise delivering it to the holder of an earlier right or to a competitor of the contestant for a charge that substantially exceeds the direct expenses related to registration of the domain name.
A more complicated legal dispute or a claim for compensation of damage along with a claim for delivery of the domain would involve exercising the right of recourse to the courts.
Example from practice
Currently, three disputes have been resolved in the Domain Disputes Committee and several disputes are waiting to be heard. The first concerned an obvious cybersquatting event where a natural person registered the domain bang-olufsen.ee in its name. This was contested by Danish company BANG & OLUFSEN which owns the BANG & OLUFSEN trademark registered in Estonia as well as the BANG & OLUFSEN trademark of the European Community.
The decision went in favour of the Danish company. As the registrant did not reply to the contesting application and there was no proof which would have confirmed that the registrant had any right or rightful interest to register bang-olufsen.ee, the Committee decided to deliver the domain name bang-olufsen.ee to Bang & Olufsen A/S. Since absence of the right and rightful interest was proved, the issue of bad faith did not require analysis.
In this dispute, the decision was made one month after filing of the contesting application, which illustrates the expediency of the Committee in cybersquatting cases in terms of time. Thus, if you discover that your domain has been registered by another person after the deletion processes of 6 April, do not panic. The same also applies to a situation where you have not yet been able to register a domain identical or similar to your business name or trademark but you suddenly discover that someone has managed to do so before you. If the domain registrant obviously has no rightful interest to register the domain or tries to sell the domain to you at a high price, then stand up to protect your rights. As mentioned, the choice between the Domain Disputes Committee and the court depends on the circumstances of each dispute. The author recommends favouring the Domain Disputes Committee for obvious cybersquatting and seeking recourse in the courts for more complicated disputes.