Domains & Domain Names

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in 16 jurisdictions worldwide

Contributing editor: Flip Petillion

2014

®

Published by

Getting the Deal Through

in association with:

Domains & Domain Names

Abe, Ikubo & Katayama Aird & Berlis LLP Bird & Bird LLP BPM legal Brigitte Joppich, Rechtsanwaltskanzlei Buchanan Abogados, SC Crowell & Moring LLP Hogan Lovells Hylands Law Firm Krishna & Saurastri Associates Marval O’Farrell & Mairal Mayer Brown JSM ME Haas Ron Klagsbald, Law Offices Sabev and Partners law firm Zacco Denmark A/S

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Domains & Domain Names 2014

Contributing editor:

Flip Petillion

Crowell & Moring

Getting the Deal Through is delighted to publish the first edition of Domains & Domain Names, a new volume in our series of annual reports, which provide international analysis in key areas of law and policy.

Following the format adopted throughout the series, the same key questions are answered by leading practitioners in each of the 16 jurisdictions featured.

Every effort has been made to ensure that matters of concern to readers are covered. However, specific legal advice should always be sought from experienced local advisers. Getting the Deal Through publications are updated annually in print. Please ensure you are always referring to the latest print edition or to the online version at www. GettingTheDealThrough.com.

Getting the Deal Through gratefully acknowledges the efforts of all the contributors to this volume, who were chosen for their recognised expertise. Getting the Deal Through would also like to extend special thanks to contributing editor Flip Petillion of Crowell & Moring for his assistance in devising and editing this volume.

Getting the Deal Through

London May 2014

Global Overview 3

Flip Petillion

Crowell & Moring LLP

Application of domain names in

existing or new gTLDs 4

John Murino and Emily Alban

Crowell & Moring LLP ICANN Dispute Resolution

Procedures 6

Jan Janssen and Diego Noesen

Argentina 9

Miguel B O’Farrell and Mariano Peruzzotti

Marval O’Farrell & Mairal

Belgium 12

Jan Janssen

Bulgaria 16

Assen Alexiev and Yoana Strateva

Sabev and Partners law firm

Canada 23

Peter Czegledy

Aird & Berlis LLP

China 29

Lian Yunze and Liu Yuping

Hylands Law Firm

Denmark 35

Lone Prehn

Zacco Denmark A/S

France 39

Marie-Emmanuelle Haas

ME Haas

Germany 45

Brigitte Joppich and Peter Müller

Brigitte Joppich, Rechtsanwaltskanzlei and BPM legal

Hong Kong 51

Gabriela Kennedy and Eugene Low

Mayer Brown JSM

India 57

Hemant Thadhani

Krishna & Saurastri Associates

Israel 62

Ron Klagsbald

Ron Klagsbald, Law Offices

Japan 66

Makoto Hattori and Nodoka Nakamura

Abe, Ikubo & Katayama

Mexico 72

Pedro W Buchanan

Buchanan Abogados, SC

Netherlands 77

Lars Huisman, Richella Soetens and Wieke During

Bird & Bird LLP

United Kingdom 82

David Taylor

Hogan Lovells

United States 89

Dickerson M Downing

Publisher Gideon Roberton [email protected] Subscriptions Rachel Nurse [email protected]

Business development managers

George Ingledew [email protected] Alan Lee [email protected] Dan White [email protected] Published by

Law Business Research Ltd

87 Lancaster Road London, W11 1QQ, UK Tel: +44 20 7908 1188 Fax: +44 20 7229 6910

No photocopying: copyright licences do not apply. First published 2014

ISSN 2055-6500

The information provided in this publication is general and may not apply in a specific situation. Legal advice should always be sought before taking any legal action based on the information provided. This information is not intended to create, nor does receipt of it constitute, a lawyer– client relationship. The publishers and authors accept no responsibility for any acts or omissions contained herein. Although the information provided is accurate as of May 2014, be advised that this is a developing area.

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Zacco Denmark A/S

DENMARK

www.gettingthedealthrough.com

35

Denmark

Lone Prehn

Zacco Denmark A/S

Registration of domain names at cctld registry

1 Registry

Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?

The administration of .dk domain names is handled by Dansk Internet Forum (DIFO). The DIFO’s subsidiary, DK Hostmaster A/S, administers the registration of .dk domain names, see www. dk-hostmaster.dk/english.

2 Registration procedure

How are domain names registered?

An application for a .dk domain name must be made through a registrar approved by DK Hostmaster.

The precise conditions for DK Hostmaster’s assignment, regis-tration and adminisregis-tration of .dk domain names are set out in the description of procedures on DK Hostmaster’s website.

3 Registration duration

For how long is registration effective?

The duration of the registration depends on the fee paid by the registrant. It is possible to pay for registration periods of between one and five years.

4 Registration costs

What is the cost of registration?

• 45 kroner, including VAT, for a one-year registration period; • 90 kroner, including VAT, for a two-year registration period; • 135 kroner, including VAT, for a three-year registration period;

and

• 180 kroner, including VAT, for a five-year registration period. 5 Transfer

Are registered domain names transferable? If so, how?

A domain name may be transferred from the current registrant to its assignee via the self-service system on DK Hostmaster’s web-site or via a transfer form, unless the domain name is disputed. When the transfer form is used, both the current registrant and the assignee (the new registrant) shall sign the form before it is submitted to DK Hostmaster. The transfer form can be found on DK Hostmaster’s website.

Through the transfer, the new registrant shall assume all the previous registrant’s rights and obligations under the agreement.

If it is registered in the basic information regarding the domain name that a dispute is pending, the domain name may only be transferred with the approval of the management of DK Hostmaster and the DIFO.

6 ccTLD/gTLD registration

What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?

There are no differences.

Opposing registration in the cctld

7 Notification of third parties

Are third parties notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?

There is no notification service and third parties are not notified of .dk domain name registrations unless they order a domain name watch through a provider of watch services such as Thomson CompuMark.

8 Opposition procedure

How may a third party oppose registration? What are the remedies if the opposition is not successful? What are the remedies to enforce a decision?

There is no opposition procedure but a complaint may be filed at any point, see question 11.

9 Costs of opposition

What are the costs related to a pre-litigation action?

See question 11.

10 Time frame for opposing registration

What is the timing related to a pre-litigation action?

There is no term for filing a complaint against a .dk domain name. Complaints may be filed at any point.

Transfer or cancellation

11 Dispute format

What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?

Court litigation

A lawsuit involving a claim for transfer or cancellation of a .dk domain name can be brought before a Danish district court. If the Trademark Act is of substantial importance to the matter, the lawsuit can further either be brought before or, upon the request of either party, can be transferred from the district court to the Maritime and Commercial Court in Copenhagen.

The latter will be the case for example if an additional claim to cease use of the domain name is made.

The Maritime and Commercial Court in Copenhagen is the Danish IP specialist court, which is also the Danish Community Trademark and Community Design Court. A case before the

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Maritime and Commercial Court will be heard before a bench of three judges of which the presiding judge is qualified as a lawyer and the two other judges are specialist judges with qualifications relevant to the matter in question. A case before the district court will generally be heard only by one judge qualified as a lawyer, but with the possibility of appointing two specialist judges.

Litigation both before the district court and before the Maritime and Commercial Court is instigated by filing a writ of summons. The defendant (registrant) is given the possibility to file a pleading in response before a preliminary hearing takes place, among other things, with the purpose of determining a time frame for the prepara-tion of the matter for trial, including the trial dates if possible.

All evidence in support of the claims made must be submitted by the parties. Evidence in the form of expert declarations and market surveys obtained or performed prior to instigation of the litigation may be submitted but carry little weight. Expert declarations and market surveys obtained or performed after instigation of the pro-ceedings may be submitted only if obtained or performed with the approval of and through the intermediary of the court.

Following the taking of evidence in the form of market surveys, if relevant, the parties are given the possibility to exchange further pleadings before the matter is ready for trial. At the trial it is possible to hear and cross-examine witnesses.

In its judgment the court will decide on the claims made, includ-ing claims for damages and compensation, and on costs. In principle, the loser pays the costs of the winner, however, in practice a cost award never covers the actual costs of the winning party.

ADR

Complaints are brought before the Danish Complaints Board, for example by completing the Complaints Board’s complaint form and sending it, together with relevant evidence, to the Complaints Board by e-mail or by ordinary mail in four copies. Any exhibits must be marked with numbers by the complainant and with letters by the defendant. In the interests of the course of proceedings, it is important that the matter and the facts are described as fully and accurately as possible. It is also important that, to the extent that it is possible, documentation is provided of all information through presentation of, for example, a copy of a trademark registration certificate, a company registration certificate or a name registration certificate. If the Complaints Board’s secretariat finds that the com-plaint is not adequate, it will be returned with a request for further details.

The Complaints Board can decide that the registration of a domain name must be deleted, suspended or transferred to a person other than the registrant. The claim should therefore only include a claim that a decision be made on deletion, suspension or transfer of the disputed domain name. The Complaints Board cannot decide on payment of compensation or damages, unless this is expressly provided by the Rules.

When the complaint form has been received and the complaint fee has been paid, the Complaints Board will forward the complaint together with exhibits to the defendant, who is asked to comment on the complaint. Any comments made by the defendant will be submitted to the complainant, who may then comment on them, after which the defendant is given the opportunity to make a rejoinder. After the exchange of pleadings between the parties, the case will be transferred to the Complaints Board for a decision.

The Complaints Board’s decision is communicated in writing to the parties and sent to DK Hostmaster for implementation. DK Hostmaster thus enforces decisions to delete, suspend or transfer the domain name.

Simultaneously with the submission of the complaint, a com-plaint fee of 500 kroner must be paid for each domain name that the complaint concerns. If, however, the complaint is submitted by a non-commercial third party or a registrant, the fee is 150 kroner.

The complaint fee must be paid into the Complaints Board’s account, reg. No. 2191 – account No. 3492605858, with an indi-cation of the disputed domain name. The complaint will not be dealt with until the complaint fee has been paid. The fee will be returned if the secretariat rejects the case because it is not within the Complaints Board’s area of authority, or if the complainant’s claim is successful, whether wholly or in part.

12 Strategy

What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?

The advantages of ADR in domain name disputes are the signifi-cantly lower costs and quicker procedure. Whereas the procedure before the Complaints Board usually takes three to six months to the final decision, the procedure before the ordinany courts usually takes 12–18 month to the final decision, which in both situations may be subject to appeal.

The disadvantages of ADR are that there are no trials or oral hearings, and that only claims for the transfer or cancellation of the domain name can be made. In particular, damages and costs cannot be awarded.

13 Appeal

What avenues of appeal are available?

A decision from a Danish district court may be appealed to the High Court. A decision from the High Court may in extraordinary cases be appealed to the Supreme Court. A decision from the Maritime and Commercial Court may be appealed to the Supreme Court, which, however, will refer the matter to the High Court unless it involves matters of principle or has general importance to the appli-cation or development of the law.

ADR

The Complaints Board’s decision is binding and cannot be brought before any administrative authority. However, each party has the opportunity, within eight weeks of the date of the decision, to bring the Complaints Board’s decision before the courts by instituting legal proceedings against the other party. If a decision is brought before the courts by the defendant prior to the date of enforcement stated in the decision, this will immediately act as a stay of execution at the defendant’s request. If the decision is brought before the courts after the time period stipulated but within eight weeks of the date of the decision, the defendant may apply to the Complaints Board for the grant of a stay of execution.

14 Defendants

Who may act as defendant in an action to cancel or transfer a gTLD in local courts?

In principle, the DIFO, registrar and registrant may all act as defendants, however, in practice it will be the registrant who acts as the defendant.

15 Remedies for infringement

What remedies are available to a successful party in an infringement action?

Remedies available are the assignment or deletion of the domain name, and an award of damages and costs.

ADR

Remedies available are assignment or deletion of the domain name or the refund of the complaint fee.

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Zacco Denmark A/S

DENMARK

www.gettingthedealthrough.com

37

16 Injunctive relief

Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?

Yes, a plaintiff may seek injunctive relief to block further use of a domain name. Preliminary injunctive relief must be followed up by a subsequent court action to establish whether the injunction was rightfully imposed. An injunctive relief can only be sought if a normal court action would not sufficiently safeguard the plaintiff’s interests. A security must be paid in by the plaintiff if the injunctive relief is granted unless the infringement is very evident. Injunctive relief is available permanently if the infringement is very evident. 17 Damages

How is monetary relief calculated?

The successful party is entitled to compensation and damages for any additional loss. The compensation is calculated as a fictive royalty as if the trademark owner had granted a licence to the infringer. Further, the successful party may be entitled to additional compensation for non-financial damages.

18 Criminal sanctions

What criminal remedies exist, if any?

Pursuant to the Danish Trademarks Act section 42, subsection 1, a trademark infringement may be criminally sanctioned with fines or imprisonment of up to one year.

19 Limitation periods

Is there a time frame within which an action must be initiated?

A plaintiff may lose his or her rights to take action due to passivity if he has acquiesced to the defendant’s use of the domain name for a longer period of time. There is no fixed time frame. Assessment is on a case-by-case basis.

20 Estoppel and prescription

Can a registrant’s rights in a domain name prescribe because of non-use? Can a registrant be estopped from bringing an infringement action? In what circumstances?

Non-use of a domain name will be an element that either a court of law or complaint board will attach importance to. The interests of the parties are weighed, and non-use illustrates a lesser interest in the domain name on the part of the registrant. The registration of a domain name does not grant the registrant a sole and exclu-sive right as such, and he or she cannot be estopped from bring-ing an infrbring-ingement action on this basis. Establishbring-ing a watch over domain names containing a trademark will assist in enabling the trademark owner to take quick action.

21 Disputes timescales

What is the typical time frame for an infringement action at first instance (at trial or in an ADR procedure) and on appeal?

Court action

It is approximately 12–18 months from the filing of suit until a judg-ment is rendered. Appeal to the High Court or Supreme Court takes approximately 18–24 months from the appeal being filed until the judgment is rendered.

ADR

It is approximately six to nine months from the filing of a com-plaint until a decision is rendered. Appeal to the High Court or Supreme Court takes approximately 18–24 months from the appeal being filed until the judgment is rendered.

22 Standing

Who is entitled to seek a remedy and under what conditions?

Anybody with a legal interest, including rights holder, licensee, etc. 23 Burden of proof

What is the burden of proof to establish infringement and obtain a remedy?

The burden of proof lies on the claimant (plaintiff, complainant). The Court or Complaint Board can freely assess the claims and evidence.

24 Case law and precedent

Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?

A case law overview is available both at the Domain Name Complaint Board’s homepage and at the High Court’s homepage. Case law has precendential value.

A new Domain Names Act has been adopted, which came into force on 1 March 2014. Section 2 of the new Act contains the provision that the Act shall also apply to new GtlDs related to Denmark such as .copenhagen.

Another trend is to explore through ADR complaint proceedings the balancing of interests in a domain name between a registrant and a complainant; pursuant to the Danish Domain Names Act section 25, subsection 1, a registrant may not register and use a domain name contrary to good domain name practices. It is considered contrary to good domain name practices to maintain registration of a domain name if the domain name has more commercial value to another party with a legal interest in the domain name.

Update and trends

Lone Prehn

[email protected]

Hans Bekkevolds Allé 7

Tel: +45 3948 8000

2900 Hellerup

Fax: +45 3948 8080

Denmark www.zacco.com

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25 Appointment of panellists

Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?

The parties cannot choose a panellist in an ADR procedure, but they can oppose the participation of a panellist due to incapactiy. 26 Costs

What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal?

Pre-litigation procedures

The cost depends entirely on how much time is spent on these procedures.

Trial

Approximately 50,000–100,000 kroner including court fees. Appeal

Approximately 50,000–100,000 kroner including court fees. ADR

Approximately 10,000 kroner, including the official fee of 500 kroner.

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