Variation of the UDRP to be adopted

Following the lead of the Netherlands, which made the same change in February 2008, NIC.PE, the registry responsible for the organization of the Peruvian country-code top-level domain (ccTLD), '.pe', has changed its domain name dispute resolution procedure from arbitration to a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP). The new procedure shall be administered by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre.

To obtain the transfer of a domain name under the UDRP, a complainant must prove all three of the circumstances under Paragraph 4(a) of the UDRP, namely that:

• the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainant had rights;
  
  
• the respondent had no rights or legitimate interests in the domain name; and
  
  
• the domain name was registered and used in bad faith.

With regard to the first element, the trademark must generally be registered, although some jurisdictions also accept unregistered trademarks under certain circumstances. Under the new '.pe' policy, a complainant must provide evidence that it has rights in a trademark or service mark previously registered or filed in Peru.

As to the third element, a complainant under the UDRP must prove that the domain name was registered and has been used in bad faith. Under the '.pe' policy, the complainant must prove that either the registration or the use of the domain name occurred in bad faith. This makes it easier for a complainant to succeed under the '.pe' policy than under the UDRP.

The language of a UDRP procedure is usually the language of the registration agreement, unless both parties decide to proceed in another language.

In exceptional cases, WIPO may, upon receipt of an adequately justified request, accept complaints submitted in a language other than the registration agreement where no mutual consent of the parties exists. The final decision concerning the language of the proceedings will be at the discretion of the panel to be appointed. The language of the new '.pe' procedure is Spanish unless both parties agree to proceed in another language. To date, eight '.pe' panellists have been listed on the website of WIPO, three of which speak both Spanish and English.

Under the Peruvian Law of Conciliation 1997 (DL 26872), which came into effect on January 1 2000, parties in most civil and commercial matters are required to consider conciliation as a means of alternative dispute resolution before proceeding to any other means of dispute resolution.

Therefore, Clause 21 of the '.pe' policy refers to conciliation and states that WIPO shall inform parties of the possibility of conciliation before a dispute is referred to a panel. WIPO will not organize a potential conciliation concerning a '.pe' domain name, but will refer parties to a Centro de Conciliación (Spanish for 'centre of conciliation') and leave it to the parties to decide whether to attempt such conciliation. This differs from the conciliation phase under the Swiss '.ch' domain name procedure, which is also administered by WIPO. Under the Swiss procedure, WIPO organizes a telephonic conciliation conference between a conciliator and both parties if the parties wish to attempt to settle a dispute amicably.

The UDRP schedule of fees is also applicable to cases brought under the new '.pe' policy. The administrative fees for cases concerning up to five domain names and a single panellist amount to $1,500.

There appears to be a trend of ccTLDs adopting the UDRP or a variation thereof. To date, 47 ccTLDs have adopted (a variation of) the UDRP and have formalized its implementation with WIPO. Several other countries - including Aruba ('.aw'), the Federated States of Micronesia ('.fm'), the Northern Marian Islands ('.mp'), Palestine ('.ps') and Slovakia ('.sk') - have not yet finalized such implementation, but appear intent on adopting (a variation of) the UDRP. This underlines the success of the UDRP as a tool for providing the resolution of domain name disputes.

David Taylor and Brechtje Lindeboom, Lovells LLP, Paris