The Registry .si (in continuation: Registry or administrator) facilitates an alternative dispute resolution procedure for .si domain name disputes. The Registry provides the necessary infrastructure, and ensures that the procedure is carried out in accordance with the Rules on the Alternative Domain-name Dispute Resolution Procedure for .si top-level domains (hereinafter ADR Rules of Procedure) . The Registry thus acts as the administrator of the ADR procedure, whereas the disputes are decided upon by five professionally qualified and independent external arbiters. The ADR procedure is a fast and efficient way to resolve domain-name disputes. It is conducted entirely in digital form and the deadlines for the actions of the parties and the tribunal are short, ensuring that disputes are resolved without undue delay. It usually takes about 2 to 3 months from the time the appeal is filed to the implementation of the tribunal’s decision.
These Guidelines are aimed at informing the public and the parties to the ADR proceedings about the course of the ADR procedure, especially in cases where the parties are attending without a professional representative (mandatory legal representation is not required in the ADR procedure). These Guidelines do not in any way replace the ADR Rules of Procedure and are in no way binding on the tribunal, the arbiters or the parties. The parties cannot directly refer to the Guidelines in ADR proceedings.
All previous ADR case law, referred to in these Guidelines, is non-binding and serves merely as an optional reference the arbiters in the resolution of the dispute. The Registry and tribunals strive to create a harmonized case law in ADR cases, while considering that decisions are adapted to specific situations, as a result of which the case law is continuously revised, updated and upgraded. Examples of domains that are listed in these Guidelines are illustrative, and are not always actually registered domains or actual ADR cases.
THE COURSE OF THE ADR PROCEDURE
The ADR process is entirely electronic, which means that all applications are submitted in digital form. Only the notice of complaint shall also be served by ordinary post. More on the submission of applications see Article 7 ADR Rules of Procedure.
The administrator shall conduct the proceedings and all communication between the parties and the parties and the arbiter. The administrator shall ensure that the parties are informed about the progress of the proceedings and that they can effectively exercise their rights in the proceedings. The parties cannot communicate directly with the arbiters.
Slovenian language is used in the ADR procedure, so all applications are submitted in this language. The parties may also submit certain evidence in a foreign language. If the tribunal or the arbiter does not understand the submitted evidence, he may request the party to provide a certified translation of the evidence. When the parties submit evidence in English, a translation will not usually be required.
The deadlines in the proceedings are binding on the parties, but the tribunal may, in its discretion, also allow untimely acts of the parties. A party may also apply to the tribunal for an extension of a deadline. The deadlines relating to the actions of the tribunal and the arbiters shall be non-binding.
Filing an appeal
The ADR proceedings begin with a complaint filed to the Registry. The complaint must be submitted on the prescribed form and sent by e-mail to ARDS@register.si. Complaints filed by regular mail will not be considered, but the administrator will invite the applicant to file the complaint by e-mail. The date on which the complaint was received by e-mail is considered to be the date of filing.
The complaint must comply with all the components set out in point 10.2 of the ADR Rules of Procedure:
- the name and surname or company name, postal address, e-mail address and telephone number of the complainant;
- the tax ID number of the complainant or person paying fee;
- indication whether the complainant or person paying fee is VAT registered;
- the name and surname of the complainant’s legal representative, if applicable;
- the name, surname and e-mail address of the contact person to which all communications under the ARDS Rules of Procedure are to be sent;
- the name and surname or company name, postal address, e-mail address and telephone number of the person authorised to represent the complainant in the procedure, along with the authorisation given to the authorised representative if the complainant has engaged one;
- a reference to the disputed domain name or names;
- details of the domain-name holder, in particular their name and surname, company name or other name, the contact person, their postal and e-mail addresses and telephone number, including such information as can be derived from the WHOIS database, as well as any other details the complainant may have at their disposal;
- a request that the case in question be ruled on in accordance with the ARDS Rules of Procedure;
- a statement to the effect that the complainant meets the following conditions for initiating a procedure under the ARDS Principles:
- that the Domain name of the Holder is identical to or interchangeable with their trade mark valid on the territory of the Republic of Slovenia, or company name, as taken from the court register in the Republic of Slovenia, or that it violates their copyright under the law of the Republic of Slovenia, or a registered geographic designation to which they are entitled under the law of the Republic of Slovenia, or encroaches on their rights to their personal name under the law of the Republic of ADRS Rules of Procedure 6 Slovenia, or encroaches upon other rights recognised in the legal system of the Republic of Slovenia;
- that the Domain name holder has no legally recognised interest with regard to the registered Domain name; and
- that the Domain name was registered or is used in bad faith.;
- an indication of whether the complainant is requesting the deletion or transfer of the disputed domain name or names;
- if the complainant is requesting that the dispute be ruled upon by a panel of three arbiters, a statement to that effect;
- an indication of whether any judicial, arbitration or other procedures are under way in relation to the disputed domain name or names, and proof that these procedures are under way;
- proof of payment of the fee;
- a print-out from the relevant companies register, if the complainant is a legal entity;
- any evidence on which the complaint rests;
- a declaration of the veracity of the statements, consent to the application of the ARDS Rules of Procedure and the General Terms and Conditions, and a declaration of responsibility, good faith and entitlement to take part in this procedure under the law of the Republic of Slovenia, as stated substantively on the form.
If the complaint does not contain the listed requirements, the administrator invites the complainant to correct or supplement the complaint accordingly within 5 days. If the complainant fails to do so, the administrator dismisses the complaint.
The administrator does not invite the complainant to supplement his application when the formal deficiencies of the complaint are such, that they cannot be remedied (e.g. because the holder as a legal entity has ceased to exist and has no legal successors). In these cases, the administrator dismisses the complaint and refunds the fee paid by the complainant in full.
A complaint may relate to several different domain-names only if the holder of all the disputed domains is the same person.
More about the complaint and applications in the process, see Articles 7 and 10 of the ADR Rules of Procedure.
Payment of the fee
The complainant must pay the fee together with the filing of the complaint and submit a confirmation of payment together with the complaint documentation. The amount of fee payable depends on the number of domain-names that are the subject of the complaint as well as on the party’s decision to have a panel of three arbiters decide the dispute, for which the proposing party pays an additional fee (supplement fee for panel decision).
Information for payment of the fee:
ARNES TEHNOLOŠKI PARK 18 1000 LJUBLJANA Tax number: SI65799739 Bank account: SI56 0110 0603 0345 406
After receiving the payment of the fee, the administrator issues an advance invoice to the payer, followed by an invoice upon completion of the procedure. For the issuance of the advance invoice and invoice, it is necessary for the complainant to state his tax number or information and tax number of the payer, when the payer is not the complainant himself (often the fee is paid by the complainant’s representative, e.g. a lawyer). When the complainant or the payer of the fee is a company established abroad, it is also necessary to provide the administrator with the payer’s tax number. Payers based abroad pay the amount of the fee excluding VAT due to the statutory provisions on reverse charge.
In certain cases, the fee shall be reimbursed:
- if the complainant succeeds with the complaint, 50% of the fee paid shall be reimbursed;
- if the parties have reached a settlement and the arbiter or the panel has not yet been appointed, 75% of the fee paid by either party shall be refunded to each party;
- if the complainant has withdrawn the complaint and the arbiter or the panel has not yet been appointed, 75% of the fee paid by the complainant shall be reimbursed to the appellant, in which case the holder shall be reimbursed any fees paid for panel decision (unless the panel has already been appointed);
- if the administrator dismisses the complaint, the complainant will be reimbursed the entire amount of fee paid.
For more details on fees, see Article 9 of the ADR Rules of Procedure.
Blocking the disputed domain
When the administrator determines that the complaint is complete, he immediately (i.e. on the same day) blocks the disputed domain or domains. Domain blocking means that the domain cannot be deleted or transferred to a third party for the duration of the blockade. The domain is blocked until the ADR process is finished. Blocking a domain does not mean that the content on the web page under the domain is no longer accessible. The page under the domain remains accessible with all its functionalities even during the domain block. The administrator shall inform the complainant and the domain-name holder, as well as the registrar, about the blocking of the disputed domain or domains. Sometimes registrars (especially foreign ones) block access to the content of the website under the disputed domain after receiving the notification of the block, on which Registry .si has no influence.
Response to the complaint
General Terms and Conditions for the registration of domain names under the .si top level domain (hereinafter: General Terms and Conditions) stipulate that by registering a .si top-level domain the domain-name holder consents to the alternative domain-name dispute resolution and the applicability of the ADR Rules of Procedure. The administrator must ensure that the holder has the opportunity to participate in the ADR procedure and exercise his rights regarding the domain. However, the holder is not obliged to actively engage in the ADR procedure. If he remains passive, the tribunal shall decide on the basis of the complaint.
The administrator informs the domain-name holder about the filed complaint by e-mail and also by regular mail. The e-mail is sent by the administrator to the contact address of the holder and the contact addresses of the administrative and technical contact person. By sending a notification to all known contacts of the holder, the administrator aims to ensure that the holder is informed about the complaint and has the opportunity to participate in the ADR procedure. The holder has the right to respond to the complaint within 21 days from the sending of the notice of complaint.
The response to the complaint is submitted electronically on a pre-prepared form and must contain:
- the name and surname or company name, postal address, e-mail address and telephone number of the holder;
- the tax ID number of the holder or person paying additional fee, in case of supplemental fees for panel decision;
- indication whether the holder or person paying fee is VAT registered, in case of supplemental fees for panel decision;
- the name and surname of the holder’s legal representative, if applicable;
- the name, surname and e-mail address of the contact person to which all communications under the ARDS Rules of Procedure are to be sent;
- the name and surname or company name, postal address, e-mail address and telephone number of the person authorised to represent the holder in the procedure, along with the authorisation given to the authorised representative if the holder has engaged one;
- the substantiated explanation of the holder’s position on the complainant’s statements and proposals to delete or transfer the disputed domain name or names;
- if the domain-name holder is requesting that the decision in the procedure be made by three arbiters, a statement to that effect;
- an indication of whether any judicial, arbitration or other procedures are under way in relation to the disputed domain name or names, and proof that these procedures are under way;
- if the domain-name holder is requesting that a decision in the procedure be made by three arbiters and the complainant has not requested the same, proof of payment of the fee shall be enclosed with the complaint;
- any evidence on which the response to the complaint rests.
If the response to the complaint does not contains the listed requirements, the administrator invites the holder to correct or supplement the response accordingly within 5 days. If the holder fails to do so, the administrator considers that no response to the complaint has been filed.
If the domain-name holder does not file a response to the complaint or fails to file one in due time, the arbiter or the panel shall decide on the basis of the complaint.
For details on response to the complaint, see Article 12 of the ADR Rules of Procedure.
Use of proxy services
In cases of proxy services, the proxy service provider (usually the registrar himself) registers as the domain-name holder, while the domain is actually used by a third party (user). In this case, WHOIS displays the data of the formal holder – the proxy service provider.
In the ADR procedure, the domain-name holder as entered in the database of registered .si domains is considered the holder of all rights and obligations arising from domain ownership. Therefore, only the formal domain-name holder may file claims and act as a party to the ADR procedure. Any applications submitted by the actual domain user without the participation of the formal holder will not be considered valid by the administrator, as the ADR Rules of Procedure do not provide for the participation of third parties in the procedure. The administrator communicates exclusively with the formal holder and not with the actual domain user. However, this does not preclude the possibility for the actual domain user to make statements regarding the use of the domain. The formal holder may submit statements and documents provided by the actual user as evidence in support of his response to the complaint. He may also submit the actual user’s statements regarding the use of the disputed domain directly as part of his own allegations in response to the complaint. This approach therefore requires cooperation between the formal holder and the domain user.
The parties may settle at any time during the proceedings, until the decision is issued. The parties must notify the administrator to that effect, who then stops the proceedings. If the parties wish to negotiate before the appointment of an arbiter or panel, the complainant may request that the administrator suspend the ADR proceedings for a specified period of time during which the parties have time to reach a settlement. If no settlement is reached, either party may request that the proceedings be resumed.
If the parties settle before the appointment of an arbiter or panel, 75% of the fees paid shall be refunded to the parties.
For details on settlement, see Article 13 of the ADR Rules of Procedure.
Appointment of the arbiter
The arbiter shall be appointed by the administrator on a rotation basis, unless one of the parties requests that the matter be decided by a panel of three arbiters. In this case, each party selects one arbiter from the list of permanent arbiters, and a third is appointed by the administrator. The panel adopts the decision by a majority vote of all members. A party who wishes the case to be decided by a panel must pay a supplemental fee for panel decision.
Arbiters must be independent and impartial in their work. If a conflict of interest arises, the arbiters must inform the administrator, who then selects another arbiter according to the circumstances of the case. The parties cannot communicate directly with the arbiters, all communication takes place through the administrator.
For more details on the appointment and work of arbiters, see Articles 14 and 15 of the ADR Rules of Procedure.
Decision and enforcement of the decision
The arbiter or the panel shall make its decision on the basis of the statements of the parties in their applications and the evidence submitted by the parties. In their deliberation, the arbiters shall not be bound by any rules regarding the evidence, they may consider any circumstances which they deem essential for the clarification of the dispute. They may also consider facts that the parties did not claim, but the arbiters have become aware of during the decision-making process (e.g. from access to the website under the disputed domain).
The arbiter or the panel must submit the decision within 14 days of appointment. In exceptional circumstances this period may be extended, of which the administrator shall inform the parties.
The arbiter or panel may dismiss the complaint in its entirety as unfounded or uphold the complaint in part or in full. If the complaint is upheld in part or in full, the decision shall order, in accordance with the content of the complaint, that a particular domain be deleted or transferred to the complainant. If the complainant requested a transfer of the domain, and the arbiter or the panel finds this request to be unfounded, but there are grounds for deleting the domain, the decision shall order that the domain be deleted.
If the decision orders that the domain be deleted or transferred, the administrator shall enforce the decision following 21 days from the date the decision was issued. In case of domain transfer, the complainant must choose a new registrar from the list of .si domain registrars, and inform the administrator of his choice. After 21 days from the date of the decision, the administrator enables the new registrar to transfer the domain to the complainant.
There is no appeal against the decision in the ADR procedure, but any of the parties may initiate court or arbitration proceedings in relation to the disputed domain, despite the ADR procedure already conducted and completed. Enforcement of a court or arbitration decision enforceable in the Republic of Slovenia has priority over the enforcement of the decision issued in the ADR procedure. Notwithstanding the ADR Rules of Procedure, the tribunal and the administrator shall comply with a binding court or arbitration decision.
For more details on the decision and enforcement of the decision, see Articles 17 and 18 of the ADR Rules of Procedure.
RECOMMENDATIONS FOR COMPLAINANTS – FILING A SUCESSFUL COMPLAINT IN THE ARD PROCEDURE
The complainant may initiate a domain dispute if he considers that a certain domain violates his rights, whereas the current holder is not entitled to the domain.
In order to succeed with the complaint, the complainant must substantiate and prove three circumstances:
- that the Domain name of the Holder is identical or confusingly similar to their trade mark valid on the territory of the Republic of Slovenia, or company name, as taken from the court register in the Republic of Slovenia, or that it violates their copyright under the law of the Republic of Slovenia, or a registered geographic designation to which they are entitled under the law of the Republic of Slovenia, or encroaches on their rights to their personal name under the law of the Republic of Slovenia, or encroaches upon other rights recognised in the legal system of the Republic of Slovenia;
- that the Domain name holder has no legitimate interest with regard to the registered Domain name; and
- that the Domain name was registered or is being used in bad faith.
Important: All three conditions must be met simultaneously, and the complainant must substantiate all three as well as provide suitable evidence. Merely stating that the complainant has a stronger right (one of those listed under point a) will not suffice. The complainant must also submit arguments and evidence as to why he considers that the holder has no legitimate interest in the domain and that the disputed domain was registered or is being used in bad faith (points b and c). If the complainant does not substantiate these two conditions, he cannot be successful with his complaint.
Point a: Demonstrating a stronger right – trademarks, company names and other rights
The complainant has a priority right to a certain domain when he has a right recognized in the law of the Republic of Slovenia, which is substantively related to the domain.
These rights are:
Complainants most often base their complaints on their registered trademarks valid in the Republic of Slovenia.
The complainant must prove the following two conditions:
- that he is the proprietor of an earlier trademark (e.g. by submitting an extract from the relevant register), and
- that the disputed domain is identical or confusingly similar to his trademark.
In principle, a trade mark must be validly registered previous to the domain dispute (see case ARDS2018/81), however, depending on the circumstances, the tribunal could exceptionally consider a trademark application, filed before the dispute was initiated. In any event, it would be difficult for the complainant to succeed with a complaint based on a trademark applied for only after the initiation of the ADR proceedings. For finding of the existence of a prior right it is not relevant whether the domain was registered before the acquisition of the trademark. However, it will be difficult for the complainant to prove bad faith of the holder if he acquired the trademark after the disputed domain was already registered. Therefore, in principle, a trademark must be registered before the date of registration of the domain.
The domain-name shall be found identical to the trademark when there are no differences in their spelling, and no characters or words are added. An example of identity between the trademark and the domain is “Nescafe” and “nescafe.si”. The .si domain suffix alone does not add distinction between the trademark and a domain (see case ARDS2016/82).
Confusing similarity between a trademark and a domain shall be found when the similarity is such, that there is a possibility of creating confusion for the average consumer. In assessing confusing similarity, only the word part of the trademark and the domain are compared. Examples where similarity is usually found:
- replacement of individual letters or typo (e.g. prosche.si, merkator.si)
- addition of numbers or symbols (e.g. lego360.si, zobna-vila.si, etc.)
- addition of geographical names (e.g. adidasslovenija.si)
- addition of generic or descriptive words (e.g. hoferpekarna.si)
In determining confusing similarity possible similarity between goods and services that are offered on the webpage under the disputed domain is irrelevant. However, such a similarity may indicate the existence of bad faith (see below).
A trademark licensee may also initiate an ADR dispute for the use of a particular trademark. His chances of success are better if he proves that he is exclusively entitled to use the trademark in the territory of the Republic of Slovenia (e.g. by submitting a license agreement). In this case, it is recommended that he also obtain written authorization from the trademark owner to initiate the ADR procedure and request the transfer of the disputed domain to himself.
The holder of a company name, which is registered in the court register of the Republic of Slovenia, may claim a recognized right in the ADR procedure. The same rules that apply to trademarks also apply to the assessment of the company name with regard to the comparison with the disputed domain – it must be determined whether a company name is identical or confusingly similar to the domain. In principle, the company name must be registered before the initiation of the ADR procedure, but not necessarily before the registration of the disputed domain itself (see case ARDS2020/106). However, the registration of a company after the registration of a domain can make it difficult for the complainant to prove bad faith.
Although copyright can be the basis for a complaint in the ADR procedure, these complaints are rarely successful. Domain names are short, and individual words or short phrases do not easily fulfil the conditions for copyright protection (see case ARDS2018/97). Exceptionally, a complaint based on copyright can be successful, if the phrase met all the conditions for copyright protection, in particular the conditions of individuality. This could apply for example to verses of recognizable songs.
Registered geographical indication
A geographical indication is an indication that the goods originate from a particular geographical area and the quality, reputation or any other characteristic of the goods depends significantly on their geographical origin. Geographical indications are usually awarded for foodstuffs (e.g. Karst prosciutto). The rights conferred by a geographical indication are similar to the rights conferred by a trademark. In essence, therefore, the same comparison parameters would apply to the assessment of identity or confusing similarity.
The complainant could only exercise his right to a domain on the basis of his personal name if he proved that the domain-name holder was commercially exploiting the complainant’s personal name. In this case, the personal name would take on a trademark-like feature.
Other rights that might provide a basis for the complaint are most prominently designations or official titles of public authorities, cities and municipalities (see ARDS2010/43). Contrary to trademark law, it is possible to validly register domain names that contain generic terms, therefore basing the complaint solely on the claim that the holder’s domain name is generic, is insufficient and does not establish the complainant’s stronger right to the domain (see case ADR2005/5 regarding the domain name joga.si, which is the Slovene term for yoga).
Point b: The holder has no legitimate interest in the disputed domain
The complainant must substantiate and prove that the domain-name holder has no legitimate interest in the domain. This is a considerable burden of proof for the complainant, as he has to prove a negative fact – that is, that the interest of the holder does not exist. The complainant’s burden is alleviated by the requirement that he must provide only reasonably substantiated statements as to why he considers that the holder has no legitimate interest. In doing so, the complainant may refer to all relevant circumstances (see examples below). The burden of proof then shifts to the holder, who must prove that he has a legitimate interest in the domain (for more details, see the section Recommendations to holders – how to defend your domain in the ADR procedure below).
Important: If the holder does not respond to the complaint, this does not superimpose that he has no legitimate interest in the domain and the complainant’s claim in this part is automatically substantiated. If the complainant does not provide sufficiently reasonably substantiated arguments regarding the absence of a legitimate interest of the holder, the complainant cannot in principle succeed.
Examples of arguments which the complainant may provide in the complaint:
- on his website the holder commercially exploits a trademark, company names or other recognized rights of the complainant, without holding any appropriate license or legitimate right;
- the holder is not commonly known under the domain name;
- the holder does not use the domain for legitimate non-commercial purposes;
- the holder does not actually use the domain for a longer period of time after registration (the website under the domain has no content or its content is minimal, e.g. “page is under construction”, etc.);
- the holder does not have any trademark, company name or other recognized right that would justify his ownership of the domain;
- the holder offers goods or services on the website under the domain that are in competition with the complainant’s business activities.
Point c: The disputed domain was registered or is being used in bad faith
Proving bad faith of the holder is the most important requirement for success in the dispute, as the ADR procedure is intended in particular to prevent intentional abuses in the registration of domain names. The complainant can substantiate bad faith on any circumstances that indicate abuse of the domain by the holder, but in practice bad faith is usually found in the following circumstances (listed only by way of example):
- the holder registered the domain mainly for the purpose of selling it to the complainant or his market competitors, for a price significantly exceeding the cost of registration and maintenance of the domain;
- the holder registered the domain to prevent the complainant from owning it, provided the holder has engaged in a pattern of such bad faith registrations;
- the holder has registered the domain with the intention of disrupting the business of a competitor;
- the holder has registered the domain in order to attract users to his website or the websites of third parties, creating the likelihood of confusion among consumers by using the complainant’s trademarks or other rights, or aiming to unjustifiably demonstrate an affiliation with the complainant.
The complainant must prove that the holder has registered the domain in bad faith or that he is using it in bad faith (even if bad faith was not given at the time of registration). The use of a domain can mean both commercial and non-commercial exploitation, but in principle a merely passive holding of a domain (without an active website with content under the domain) is not considered use. Exceptionally, a passive holder may exhibit bad faith, provided the applicant’s trademark is highly reputable, the holder conceals his identity or provides false information thereof and the holder has not demonstrated any legitimate or good faith purposes in relation to the domain without infringing the complainant’s trademarks (see WIPO Decision No D2000-0003 – telstra.org).
Practical examples of circumstances that may indicate the existence of bad faith of the holder:
- the holder offers the complainant the purchase or lease of the disputed domain at a price that significantly exceeds the costs of registration and maintenance of the domain;
- the holder has previously registered domains that are identical or confusingly similar to known trademarks;
- several complaints have already been filed against the same holder in ADR proceedings;
- the holder is a market competitor of the complainant and intentionally disrupts his business by owning the disputed domain;
- the holder profits by misleading consumers through the unjustified use of the complainant’s trademark and by attracting them to his website or to the websites of third parties;
- counterfeit goods are offered on the website under the disputed domain.
Submission of evidence
It is not sufficient for the complainant merely to state the circumstances on the basis of which he requests the deletion of the domain or the transfer of the domain to himself. These circumstances must be based on the evidence attached. The submission of material evidence substantiating the complainant’s claims is not a formal requirement – meaning if the complainant does not provide them, the administrator shall not call on him to do so, but will continue with the proceedings. Consequently however, due to the lack of evidence, the complaint may be rejected.
The arbiters are under no obligation to gather evidence on their own initiative, although the ADR Rules of Procedure allow them to conduct their own investigation into the facts and circumstances at their own initiative (e.g. by inspecting the website under the domain). The administrator or arbiters are also not obliged to examine whether the evidence is credible (e.g. examine whether the submitted register records are authentic). However, if there are doubts as to the credibility of the evidence, the administrator may call upon the complainant to provide proof of the authenticity of the evidence (e.g. an authenticated copy of the documents, duly certified extract from the records, etc.)
In particular, the complainant should submit the following evidence (listed only by way of example):
- proof of ownership of a stronger right (extract from the relevant register of intellectual property rights, license agreement, proof of copyright, etc.);
- evidence of the holder’s bad faith and the absence of a legitimate interest in the domain:
- screenshots of the website under the disputed domain;
- screenshots of third-party websites linked on the website under the disputed domain;
- correspondence between the parties prior to the commencement of the ADR procedure, in particular any offers of the holder for the purchase of the domain;
- evidence pertaining to the business activity of the holder;
- evidence of any other ADR proceedings brought against the holder;
- evidence of intentional exploitation of the complainant’s trademarks or other rights.
Important: The complainant should make screenshots of the holder’s or third-party websites before filing the complaint. Some registrars, when notified that a domain dispute has been initiated, disable access to the content of the website under the domain. The arbiters also can no longer access the website and the complainant’s allegations that the domain name is used in bad faith may remain without necessary evidence.
RECOMMENDATIONS TO HOLDERS – HOW TO DEFEND YOUR DOMAIN IN THE ADR PROCEDURE
In his response to the complaint, the holder may state and prove any facts and circumstances which he considers relevant for his claim, that the complaint is unfounded. His arguments should refer in particular to the three conditions of the ADR procedure:
- The complainant has no stronger right
- The holder has a legitimate interest in the disputed domain
- The holder has registered the disputed domain or uses it in good faith
If the holder proves at least one of the listed conditions, the complaint shall be rejected and he will be allowed to keep the disputed domain.
Point a: The complainant has no stronger right
In response to the complaint, the proprietor may claim and prove that the appellant is not the proprietor of a stronger right (e.g. that his trademark is not yet registered, that he filed the trademark application only after the initiation of the ADR procedure, that the complainant does not hold an exclusive license to use the trademark, that the trademark and the domain are not identical or confusingly similar, that the complainant is not the holder of the copyright or other right to which he refers, etc.)
Point b: The holder has a legitimate interest in the disputed domain
The complainant needs only to explain certain reasonable circumstances which indicate that the holder of the disputed domain has no legitimate interest in the domain. The burden of proof is then shifted to the holder. He must prove that he indeed has legitimate interest.
In ADR practice, the holder usually proves this by claiming the following circumstances (listed only by way of example):
- the holder is himself the owner of a trademark, company name or other right, which is substantively related to the domain-name and legitimizes his ownership of the domain;
- the complainant’s trademark is generic or descriptive and the holder uses the domain in a way that exploits merely the descriptive features of the mark (e. g. the complainant has a registered trademark Green food, whereas the holder offers tips for a healthy diet on his website under the disputed domain). It is important to note, that the holder must not have intentionally exploited the complainant’s trademark, but registered the domain precisely because of its descriptive meaning;
- the holder uses the domain in bona fide supply of goods or services, i.e. the holder does not unjustifiably exploit the complainant’s trademark, company name or other right (this will be fulfilled especially when the holder offers goods/services different from those under the complainant’s trademark; where the holder’s business activity is not in competition with the complainant’s; where the holder has express permission to use the trademark or other right, etc.);
- the holder is commonly known under the domain name (e.g. as a well-known media personality or blogger);
- the holder uses the domain-name for legitimate non-commercial purposes (the holder must prove that his activities are non-profit and the he has no intention to mislead consumers or unjustifiably exploit the complainant’s trademark or other right). Examples of legitimate non-commercial activities: review or criticism of the complainant or his trademarks, fan websites, parodies, presentations of specific products or processes, educational websites, websites with scientific content, etc.
Point c: The holder has not registered the domain or is not using it in bad faith
Contrary to the demonstration of legitimate interest (where the burden of proof is on the holder), the evidence of bad faith is primarily on the complainant. The latter must substantiate and prove that the domain-name holder has registered the domain or uses it with the intention of enriching himself or damaging the complainant. The holder may defend against bad faith accusations with all relevant facts and circumstances.