For a number of years, Slovakian courts struggled with domain name disputes. Because there was neither statutory legislation concerning the rights to domain names nor consistent case-law allowing for the formulation of principles for resolving disputes that arose involving them, different courts took different approaches regarding how to decide domain name cases. This made legal certainty and predictability extremely difficult for stakeholders in the country.
This bleak situation was improved significantly last year, when an alternative dispute mechanism (ADR) for resolving domain names disputes was approved by the Committee for the Administration of National .sk Domain and SK-NIC, the Slovakian Registry for the .sk country code top-level domain. This has resulted in a win-win situation, where the ADR regime filters the majority of cases that would otherwise end up before different Slovakian district courts, and the right-holders can rely on a more consistent approach to the assessment of their rights to Slovakian domain names.
The arbitration center for alternative domain dispute resolution is part of the European Information Society Institute, which coordinates the experts tasked with deciding disputes in accordance with the ADR rules for the .sk domain.
The ADR is a non-governmental platform for resolving domain names disputes. A right-holder claiming that its trademark, business name, goodwill, copyright, or other intellectual property rights (IPRs) to a certain Slovakian domain name have been infringed by a defendant may opt for the ADR procedure. The most typical infringements committed with respect to domains are cybersquatting, typosquatting, and domain sniping.
Requirements for the Initiation of .sk Domain Name Dispute Resolution
Under the new ADR Rules, a domain name holder defendant may not avoid the ADR procedure if a right-holder decides to assert its alleged rights to the disputed domain in such a way. If the right-holder wins the ADR, the Slovakian Register (SK-NIC) will execute the decision (it may transfer the disputed domain to the right-holder or cancel the registration of the disputed domain).
In order to succeed with its ADR action, the applicant right-holder must prove that: (i) the characters forming the defendant’s domain name are identical or similar to the protected IPRs of the right-holder; (ii) a likelihood of confusion exists between the defendant’s domain and the protected IPRs (this is not necessary if the applicant can prove that its right has a good reputation in the relevant part of the public – typically, this will improve the position of the owners of well-known brands); and (iii) the disputed domain name: (a) has been registered or acquired without the defendant having the right to do it (e.g., the defendant does not own a trademark) or a legitimate interest (e.g., the defendant is able to prove that the domain name was used fairly in connection with selling goods or services in good faith before receiving any notice regarding a dispute) in the domain or the applicant’s IPR; and at the same time (c) has not been registered, acquired, and used in good faith.
Cases are decided by one or a panel of three ADR experts. If the applicant succeeds, the disputed domain may be transferred to the applicant (or a third person identified by the applicant) or cancelled.
The practical advantage of the ADR is the fact that the expert’s opinion is “self-enforceable” through SK-NIC as a top-level domain authority and no court enforcement is needed. In addition, the losing party has the right to bring the case before the national court. (However, in the majority of cases no further court actions will arise after the ADR).
The ADR proceeding is conducted entirely via electronic means and takes three to four months. For an additional charge, complainants may also opt for the fast-track 30-day proceeding. Each ADR decision is published online, so the public and stakeholders can follow the development of ADR case-law.
Arrived in Modern Digital Economy
The ADR procedure provides IP right holders with access to an extremely effective, practical, and time/cost saving mechanism for enforcement of their rights in Slovakia. In the context of a massively developing digital economy, having robust and effective ADR rules for resolving domain name disputes should be a must for every modern country.
By Jan Lazur, Partner, Zoltan Nagy, Associate, Taylor Wessing
This Article was originally published in Issue 5.5 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.