Safenames Ltd - Domain name policing and enforcement
Enforcing trademark rights against infringing domain names can be particularly challenging where a ccTLD is involved. However, it is important not to mistake the UDRP as an all-encompassing policy.
Some countries have adopted rules closely resembling the UDRP, and have chosen WIPO, the most widely used venue for domain name disputes, as service provider.
Recently, the domain registry for Saudi Arabia introduced a new dispute policy for its country code, ‘.sa’. From April 2021, WIPO will provide its services for disputes pursuant to the ‘.sa’ policy.
Upon identifying an infringing ‘.sa’ domain name, a trademark owner can submit a complaint via email. There is no requirement for hard copies to be sent. A model complaint – which is largely similar to the model complaint for the UDRP – can be found on WIPO’s website.
The language of the dispute will be Arabic, unless otherwise agreed between the parties or unless the complainant submits evidence as to why English should also be permitted. Further, the mutual jurisdiction will be the courts of Saudi Arabia.
A respondent has 20 days to reply to a complaint. The proceedings will continue even where the respondent defaults. When the panel has made its decision, WIPO will inform the registry, which will then announce the decision to the parties (and publicly on its website).
The biggest difference between the ‘.sa’ policy and the UDRP is the availability of mediation. Section 6 of the dispute rules state that “a Complainant may submit a complaint directly to SaudiNIC… prior to resorting to an Administrative Proceeding for dispute resolution”. Although mediation is not obligatory, it may be useful for complainants where resolving the dispute at an initial stage is possible.
A complainant should notify WIPO as to whether the complaint was previously submitted to the registry for possible mediation. However, before submitting any complaint, the complainant must ensure that it meets the criteria for success.
The ‘.sa’ policy follows a three-part test similar to the UDRP. The first element requires the complainant to prove that the domain name is at least confusingly similar to its own IP rights (eg, a trademark, trade name or service mark owned by the complainant). From the wording of the policy, it does not appear that the right must be present within Saudi Arabia.
The second element requires the complainant to put forward an initial case that the respondent has no rights or legitimate interests in the domain name. Examples of rights or legitimate interests are provided in Section 7/3 of the dispute rules.
The third element requires the complainant to prove the respondent’s bad faith. Unlike the UDRP, this element is non-conjunctive. Bad-faith use or registration must be proven. Examples of ‘bad faith’ are outlined in Section 7/2 of the dispute rules. These examples are slightly more expansive then their UDRP equivalents. For example, rather than the UDRP’s “disrupting the business of a competitor”, complainants in ‘.sa’ cases can simply show that the respondent disrupted the business “of another party”.
Successful complainants can seek the transfer or cancellation of the disputed domain name. When requesting that the domain name be transferred, the complainant should also familiarise itself with ‘.sa’ registration restrictions.
Under Section 2/5 of the Saudi Domain Name Registration Regulation, a ‘.sa’ domain holder must be:
- an entity physically located in Saudi Arabia;
- a natural person of Saudi nationality or premium residency;
- an entity with a registration or licence issued by a pertinent authority in Saudi Arabia; or
- the owner of a trademark or trade name that is registered in Saudi Arabia.
Further, the registration and use of the domain name must not contravene the laws of Saudi Arabia (Section 4/4).
Therefore, there must be some link between the ‘.sa’ domain holder and the jurisdiction of Saudi Arabia. This helps to limit companies that are solely interested in using ‘.sa’ as a ‘domain hack’ for the popular corporate acronym ‘SA’.
Brand owners can now combat cybersquatting within the ‘.sa’ namespace through WIPO’s dispute resolution service.
The policy differs slightly to the UDRP in both procedural and substantive matters. Moreover, ccTLDs will face their own registration restrictions, which domain holders must pay attention to.
It will not be long until the first ‘.sa’ cases are filed. The decisions from these cases will form a precedent and therefore provide more guidance for brand owners in the future.