WIPO issues first decision under '.nl' arbitration rules

Netherlands

In Consitex SA v Gerolanda, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has issued its first decision under the Regulations for Arbitration on '.nl' Domain Names, ordering the transfer of the domain name 'ermenegildozegna.nl' to the complainant.

Instead of a variation of ICANN's Uniform Domain Name Dispute Resolution Policy, SIDN (Stichting Internet Domeinregistratie Nederland) - the registry for the '.nl' country-code top-level domain - opted for an arbitration system administered by WIPO. Under the '.nl' arbitration rules, claims can be brought on account of infringement of Benelux (or Community) trademark rights and/or trade name rights. The arbitration procedure applies automatically to domain name holders who have applied for, transferred or taken over a domain name after January 29 2003. Other domain name holders may voluntarily submit domain name disputes for arbitration under the rules.

Consitex, a holding company, and two other companies belonging to the Ermenegildo Zegna fashion group, were the first to file a complaint under the rules, more than six months after they had been introduced, against Mattia Gerolanda - an Italian national who registered the domain name 'ermenegildozegna.nl'. While the case was straightforward, it did throw up some interesting points of procedure.

First, Gerolanda did not respond to the complaint. In such circumstances, a Dutch court would usually only need to establish whether the claims are not clearly wrongful or unfounded. If they are not, the court may grant claims without further consideration. However, the arbitration panellist, Hub J Harmeling, decided not to make use of this shortcut, apparently wanting to set a standard for subsequent cases.

Second, although Harmeling had no difficulty in finding for Consitex, he declined to make the award immediately enforceable, taking into account the default nature of the case and the fact that the complaint did not address this point specifically. This means that Zegna has to wait for the expiry of the appeal term, which gives Gerolanda an opportunity to further delay the execution of the award. The lesson to be learned here is to give the issue of enforceability separate attention in a complaint.

Lastly, Harmeling implicitly took the side of the supporters of the arbitration rules against those who have claimed that they are illegal because Article 14(d) of the Uniform Benelux Law on Trademarks and Article 92 of the Community Trademark Regulation provide that trademark disputes should be exclusively dealt with by the common courts of law (or a Community trademark court in the case of a Community trademark). Supporters of the arbitration rules have argued that the Benelux statutory provision only applies to proceedings concerning validity or the lapse of trademark rights. They suggest that Article 92 of the Community Trademark Regulation helps to limit Community trademark conflicts to a certain number of courts, but does not preclude recourse to arbitration.

By simply stating that he was competent to hear the dispute, Harmeling seems to be implying that he disagrees with the argument that domain name disputes should be exclusively decided by the courts of law.

It is unlikely, however, that this decision will put an end to the debate.

Tjeerd Overdijk, Steinhauser Hoogenraad Advocaten, Amsterdam

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