13/12/2013 11:58

Domain name disputes in Belgium: how to claim back a “.be” domain name?

In this article, I summarize the different ways to recover a Belgian “.be” internet domain name.

 

In Belgium, there are two ways to recover a domain name that is registered by someone else. The first way is the “alternative dispute resolution” (“ADR”) service provided by Cepani[1] (for .be domain names) or ICANN (for .com, .net and .org domain names).[2] The second way is through the Belgian Courts (for .be domain names and for other domain names if registered by persons with a residence or an establishment in Belgium). 

 

For the purpose of this article, only action through Cepani’s dispute resolution service and the Belgian Courts is reviewed (I will treat the ICANN procedure in a different article).

 

Cepani Alternative Dispute Resolution or ADR to recover a “.be” domain name

 

Cepani has developed a detailed set of rules governing the filing of a complaint and the procedure leading up to a decision (see http://www.cepani.be/en).

 

Cepani ADR procedure to delete or transfer a ".be" domain name

 

Any party showing a legitimate interest in a “.be” domain name can lodge an application with Cepani to start a domain name dispute. The dispute will be decided by an independent “Third-Party Decider”, appointed by Cepani, who is a legal expert in the field of domain name disputes.

 

The Third-Party Decider can decide either to delete the registration of the domain name or to transfer the domain name to the complainant (the complainant should specify what he or she wants in the official complaint). The Third-Party Decider may not award damages, costs or lawyers’ fees.

 

To obtain the deletion or transfer of the domain name, the complainant must prove that all three of the following conditions are fulfilled:

 

1.     The domain name is identical or confusingly similar to a trademark, a trade name, a company name, a geographical indication, a designation of origin, a personal name or a name of a geographical entity in which the complainant has rights;

 

2.     The current domain name holder has no rights or legitimate interests in the domain name; and

 

3.     The domain name has been registered or is being used in bad faith.

 

First condition: the “.be” domain name is identical or confusingly similar to a trademark, trade name or other distinctive sign

 

In practice, the vast majority of complaints regarding “.be” domain names are based on a trademark. However, other distinctive signs (more in particular: trade names, company names, geographical indications, designations of origin, personal names, or names of geographical entities) may also serve as a basis of a complaint.

 

It is up to the complainant to show evidence that he or she is the owner of the trademark or other distinctive sign that serves as a basis to the complaint. For trademarks, the complainant can easily prove this by producing the trademark registration confirmation, showing that the trademark is a valid Benelux trademark6, Community trademark or international trademark. The complainant also has the option to show proof that he or she has rights on such a trademark through a license. In at least one case, it was decided that a trademark registered after the registration of the disputed domain name might still be a valid basis for a complaint. 

 

For trade names, the complainant can for instance produce an extract from the Crossroads Bank for Enterprises. The complainant should prove an effective, continuous public use of the trade name. This can be done through, for instance, invoices, letterheads, websites, advertising material, etc.

 

For company names, the complainant can produce evidence that the name was published in the Belgian Official Gazette (“Staatsblad” or “Moniteur belge”) and appears in the articles of association of the company.

 

Under the first condition, the domain name should be identical to the trademark (or other distinctive sign) or confusingly similar to it. If the domain name and the trademark (or other distinctive sign) are identical, the complainant does not have to show a risk of confusion. When the domain name and the trademark (or other distinctive sign) are similar but not identical, the Third-Party Decider will verify whether the domain name matches the trademark or distinctive sign in such a way that confusion is possible.[3]

 

Second condition: the holder of the “.be” domain name has no rights or legitimate interests in the domain name

 

Under the second prong of the ADR “.be” test, the complainant must make it plausible that the current domain name holder has no rights or legitimate interests in the domain name. In practice, this does not amount to an impossible “negative” test. It is often sufficient to show that the domain name holder has no relationship with the owner of the trademark (or other distinctive sign), that he or she has no license to use the trademark, that he or she is not known by the relevant public under the disputed domain name, or that the domain name is linked to an inactive page.

 

If the complainant makes it plausible that the domain name holder has no rights or legitimate interests in the domain name, the burden of proof will shift to the domain name holder.

 

The domain name holder can then provide evidence that he or she actually does have rights or legitimate interests in the “.be” domain name. The following circumstances are an indication that the domain name holder has rights or legitimate interests in the domain name:[4]

 

·       Prior to the dispute, the domain name holder used the domain name in good faith for offering goods or services, or he/she made demonstrable preparations for such good faith use; or

·       The domain name holder has been commonly known by the domain name (even if he/she has no corresponding trade mark); or

·       The domain name holder makes a legitimate and non-commercial or fair use of the domain name, without intent to misleadingly divert consumers for commercial gain or to tarnish the trademark, trade name, company name, personal name, etc.

 

Third condition: the “.be” domain name is registered or used in bad faith

 

Finally, the complainant has to show evidence that the domain name was registered or has been used in bad faith. Bad faith in the registration or use of a “.be” domain name can be demonstrated by the following circumstances:[5]

 

·       The domain name was registered or acquired for the purpose of selling it to the complainant (who is the owner of the trademark, trade name, company name, personal name, etc.) or to a competitor, for a price exceeding the costs directly related to the acquisition of the domain name;[6] or

·       The domain name was registered for the purpose of preventing the owner of a trademark, a trade name, a company name, a personal name, etc. to use the domain name (if the domain name holder has engaged in a pattern of such conduct); or

·       The domain name was registered primarily for disrupting the business of a competitor; or

·       The domain name was intentionally used to attract, for commercial gain, internet users to the web site of the domain name holder, by creating confusion with the complainant's trademark, trade name, company name, personal name, etc.; or

·       The domain name holder has registered one or more personal names without a demonstrable link between him or her and the domain names.

 

The Third-Party Decider is bound by these strict rules. In particular, it is worth taking into account that all three conditions must be fulfilled simultaneously. For example, even if it is clear that the current domain name holder registered or used the “.be” domain name in bad faith, but he or she has some legitimate interest in the domain name, the complaint will not be successful.

 

After the Cepani Third-Party Decider has reached a decision, both parties have the right to lodge an appeal with Cepani.  At all times, the parties have the option to submit the dispute to an ordinary court.

 

Benefits and drawbacks of the Cepani ADR domain name procedure

 

The most obvious benefits of a Cepani ADR procedure are that the procedure is carried out entirely in writing (parties and lawyers do not have to appear in person), and that it runs relatively quickly (the procedure takes 55 days on average).

 

Another much voiced benefit of the Cepani ADR procedure is that it involves relatively low costs (although that depends on one’s financial situation). The fee charged for the procedure is EUR 1,750 (+ VAT), to be paid by the complainant at the beginning of the procedure. This includes the administrative costs of Cepina and the fees of the Third-Party Decider. This does not include lawyer’s fees. If the Third-Party Decider finds the complaint justified, DNS.be (the Belgian domain name registry) will refund the costs to the complainant (the administrative costs of EUR 1,750, not the lawyer’s fees). DNS.be will then turn to the initial registrant to claim this amount back. The costs to lodge an appeal with Cepani are EUR 4,050 (+VAT), lawyer’s fees not included).

 

The negative aspects of the Cepani ADR procedure are that this procedure will not result in the award of damages or lawyers’ fees, and that the procedure may not be successful if the other party also has some rights or legitimate interests in the domain name or if bad faith can not be demonstrated.

 

Court procedures to dispute a “.be” domain name

 

Court procedure based on the Belgian Act of 26 June 2003 (cyber squatting)

 

Until 2003, almost all cases were brought before the commercial courts, mostly on the basis of trademark infringement or unfair commercial practices. The Belgian Act of 26 June 2003 on the abusive registration of domain names (the “2003 Act”) introduced an alternative.[7] This Act was meant to fight cyber squatting.

 

Under the 2003 Act, a complainant can initiate a summary procedure or urgency procedure (“zoals in kort geding”; “comme en référé”) before the President of the Commercial Court[8] or before the President of the Court of First Instance.[9] This means that the procedural rules of a summary procedure (“kort geding”; “en référé”) will apply, but the President of the Court will nevertheless decide on the merits of the case.

 

Who can introduce a complaint under the Belgian Act of 2003 on cyber squatting?

 

A complaint under the 2003 Act can be lodged by everyone who can demonstrate a legitimate interest in the domain name and who has a right to a distinctive sign (such as a trademark, a trade name, a geographical indication, a designation of origin, an original work, a company name, a personal name or a name of a geographical entity) to which the domain name is identical or confusingly similar.

 

The three conditions of the Act of 2003 on cyber squatting

 

Under the 2003 Act, a complainant has to prove that all of the following three conditions are cumulatively fulfilled:

 

1.     The domain name is identical or confusingly similar to a trademark, trade name, company name, personal name, etc.;

 

2.     The domain name holder has no rights or legitimate interests in the domain name; and

 

3.     The domain name was registered with the intention to cause harm to a third party or to obtain an unjustified benefit from the registration.[10]

 

If all three of these conditions are met, the President of the Court may order the deletion or the transfer of the domain name. Under the 2003 Act, the President of the Court may not award damages, costs or lawyers’ fees.

 

Whereas the first and second conditions are more or less the same as in the ADR procedure, the third condition clearly differs ('registration with the intention to cause harm or to obtain an unjustified benefit' vs. 'registration or use in bad faith'). If no intention to prejudice a third party or to obtain an unjustified benefit was present at the time of registration, but the domain name was nevertheless used in bad faith afterwards, the complainant will do well to start an ADR procedure with Cepani rather than a court procedure on the basis of the Act of 2003.

 

Court procedure against a domain name holder who has rights or a legitimate interest in the “.be” domain name

 

Both the Cepani ADR procedure and the court procedure based on the Act of 2003 apply to situations where the domain name holder has no rights or legitimate interests in the domain name (in other words, the domain name holder was a cyber squatter). Put otherwise, these procedures are not very useful in situations where both parties have some rights or legitimate interests in the domain name. For conflicts between competing right holders (for instance, a trademark owner against the holder of a domain name who uses the domain name as a trade name), a “classic” court procedure based on trademark infringement may be more appropriate.

 

In case the trademark was registered before the domain name was started being used as a trade name, the trademark owner will likely be successful in his or her trademark infringement action against the domain name holder.[11]

 

However, if the domain name was already used as a trade name before the trademark was registered, the holder of the domain name / trade name can oppose the registration of the trademark.[12] In reality, the owner of trademark registered after the domain name was already being used as a trade name, can do little to prevent a further commercial use of this trade name. The latter is only true if the domain name / trade name was genuinely and effectively used in the course of business, on a continuous basis. In other words, if there is any doubt on whether the domain name has sufficiently been used as a trade name, the trademark owner can dispute the validity of the domain name as a trade name.

 

Benefits and drawbacks associated with a court procedure to recover a “.be” domain name

 

Apart from the lawyer's fees, a procedure before the Belgian Courts is essentially free of charge. A summary procedure based on the 2003 Act is relatively quick, but other court procedures may take a lot of time (months or even years).

 

As mentioned before, a procedure on the basis of the Act of 2003 will likely not be successful if the other party (the domain name holder) also has rights or legitimate interests in the domain name (this is the situation where both parties have competing rights or legitimate interests in the domain name). This is also true if there is no proof that the domain name holder intended to cause harm or to obtain an unjustified benefit at the time of registration of the domain name.

 

A summary procedure on the basis of the Act of 2003 may be efficient to have a domain name registration cancelled or to have the domain name transferred. However, if you want to obtain damages, a procedure on the basis of the 2003 Act may not be sufficient (the same is true for the Cepani ADR procedure). Damages can only be granted in a separate court procedure on the merits, which may take 6 months up to 2 years. The costs of such procedures tend to vary largely, depending on the complexity of the case.

 

Conclusion

 

I often advise clients to opt for the Cepani ADR procedure as a relatively quick and cheap procedure to recover a “.be” domain name. I have the impression that most other lawyers share my view on this (the figures show that many more cases are decided through ADR than through the courts).

 

However, the Cepani ADR procedure has also some disadvantages. For instance, the Cepani procedure is fine if you want to obtain the transfer or cancellation of a domain name, but not if you want to obtain damages (this is also true for the court procedure of the 2003 Act; if fact, many clients are mainly interested in the transfer of the domain name).   Further, in a Cepani ADR procedure, a cyber squatter will not be enjoined from registering other - similar - domain names in the future (again, this is also true for the procedure under the 2003 Act).   Finally, under the Cepani procedure, you need to win on all three conditions. In practice, it is not always easy to prove that the current domain name holder has no rights or legitimate interests in the domain name or acted in bad faith (again, this is also true for the court procedure of the 2003 Act).

 

As a final conclusion, it is often worthwhile to seek legal advice before initiating an ADR or court procedure (or negotiations) on a domain name. If you need any advice with regard to domain name disputes in Belgium, do not hesitate to contact me

 

Author: Bart Van Besien

 

Finnian & Columba

Belgium

bart@finnian.be

Attorney - Lawyer - Belgium - European Union (E.U.)

Specialized in intellectual property law (copyright, trademarks, patents, domain names, etc.) and media law.

 



[1] Cepani (in Dutch sometimes referred to as 'Cepina') is the Belgian Centre for Arbitration and Mediation.

[2] Also for .aero, .asia, .biz, .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel and .travel domain names.

[3] For instance, the case law of the Cepani Third-Party Deciders shows that omitting or adding a hyphen, a dot, a final “s” (for plural forms) or a definite article (for instance: “the”, “de”, “het”, “le”, “la”, “les”, etc.) in a domain name generally does not have the effect of removing a risk of confusing similarity. The same is often true for the addition of descriptive terms such as “rental” or “verhuur”.

[4] This is not an exhaustive list. The domain name holder can bring up other factors to prove that he or she has a right or legitimate interest in the domain name.

[5] This list is not exhaustive. The complainant is free to demonstrate the existence of bad faith by other means. For instance, the fact that the domain name is identical to or corresponds with a well-known trademark or domain name, may, depending on the specific circumstances of the case, prove that the domain name was registered or used in bad faith. The lack of response by the domain name holder can, again depending on the specific circumstances of the case, also be interpreted as an indication of bad faith.

[6] For instance, when the domain name is linked to a “parking page”, where the domain name is offered for sale at a price exceeding the costs related to acquiring the domain name.

[7] The 2003 Act applies mainly to .be domain names. Domain names from generic domains (for instance, .com, .org, .net, .info, .biz) and from domains with other country codes (such as .nl, .fr, .de) also come under the scope of the 2003 Act, if the domain name holder has his or her place of residence or company premise in Belgium.

[8] In case the complainant bases his or her complaint on the existence of a trademark, a geographical indication, a designation of origin, a tradename, or a company name (see article 10 of the Act of 2003).

[9] In all other cases (see article 9 of the Act of 2003).

[10] This condition does not request the existence of actual damage. The fact that a domain name is offered for sale at a price that is disproportionate to the actual costs of registration and/or maintenance may be an indication that it was registered in bad faith (depending on the specific circumstances of the case).

[11] More in particular, if the domain name holder uses the domain name or trade name “without due cause” and “takes unfair advantage of or is detrimental to the distinctive character or the reputation of the trademark” (on the basis of article 2.20(1)(d) Benelux Convention on Intellectual Property).

[12] On the basis of article 2.4(b) and article 2.4(f) of the Benelux Convention on Intellectual Property, or on the basis of article 9.3 of the Belgian Act on Fair Trade Practices.

 

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Bart Van Besien

Finnian & Columba
K. De Deckerstraat 20A
2800 Mechelen, Belgium



+32 486 626 355
+32 15 29 42 57