Miran Legal

Attorney

20.12.2022

WIPO Arbitration İn Domain Disputes

A domain name is a name that is needed in order to exist on the Internet. In other words, a domain name is the internet address of a person. A domain name technically refers to an internet address given to a number system consisting of ten digits and specified as an IP address. The concept of a domain name is also known as DNS (domain name system). In order to prevent the difficulty and confusion that these numbers may cause, the domain name is converted into an address consisting of words and letters.

 

The part that is important for companies in a domain name is the “second-level domain” part. For example, in www.google.com.tr, the second-level domain part is "google”. This second-level domain name must carry an element of distinctiveness in a way that will not cause confusion with other companies or brands. The “.com” located in the domain name refers to the generic first-level domain name while the “.tr” refers to the country code domain name.

 

Article 35 of the Electronic Communication Law No. 5809 in Turkey contains regulations for internet domain names. According to the Article, all procedures and principles regarding the determination of the institution and organization that will allocate Internet domain names and domain name management have been given to the Ministry of Transport and Infrastructure. On the other hand, the task of allocating domain names by the Ministry was first assigned to the Telecommunications Communication Presidency. However, after that, with the Law No. 617 issued in 2016, the TCP was closed and its duties were transferred to the Information Technologies and Communications Authority (ITCA).

 

In Turkey, the procedures and principles regarding the management of Internet domain names with the “.tr” extension are regulated in accordance with the Internet Domain Names Regulation. Although it was foreseen that the ".tr" domain names management, which has been carried out by METU since 1991, will be transferred to TRABIS, the transition to the TRABIS system has still not been realized. However, in response, the Information Technologies Authority announced that TRABIS will take over the domain name management on September 29, 2022.

Until today, in the procedural process for domain names carried out by METU, various Policies, Rules and Procedures have been determined for domain names including “.tr”. Accordingly, domain names were divided into documented and undocumented. Some examples to undocumented domain names are; .tv.tr ; .info.tr ; .web.tr. And some domain names that require various documents at the application stage are; .com.tr ; .av.tr ; .gov.tr ; .kep.tr. In certified domain names, documents that vary according to the relevant domain extension are requested and allocated on the condition that the relevant documents are submitted. (For example; commercial registration certificate, trademark registration certificate, the first three pages and the last page of the association's charter, etc.). In documented domain name applications, the documents submitted by the DNS Working Group within METU are examined and evaluated. Undocumented domain names are directly assigned following the application.

 

A number of regulations for domain names have entered into force in Turkey. It is possible to list these regulations as Law No. 5809, Internet Domain Names Regulation, Internet Domain Names Communiqué and Internet Domain Names Dispute Resolution Mechanism Communiqué. However, there are no special regulations for the protection of domain names other than these regulations. Therefore, the domain name is considered to have a distinctive quality in the context of the Industrial Property Law and is indirectly protected.

 

1.Resolving Domain Name Disputes

            In domain names, first come first served principle is applied. Therefore, it is possible to register a title, a trademark or distinctive marks belonging to someone else as a domain name by third parties. Today, while the size of the products and services offered by brands over the Internet is widely spreading every day, the registration of an internet domain name by other people leads to legal disputes on a global scale. Today, it is observed that disputes related to domain names with .tr extensions are resolved through the METU DNS Working Group or the courts. With the acquisition of domain names management of TRABIS from METU on September 29, 2022, it is expected that the authority of METU in this regard will face disempowerment.

 

            There are two options in terms of resolving disputes related to domain names that do not have the .tr extension. The first one is Turkish courts; and the second is international arbitration. The decisions of Turkish courts are valid only within the borders of Turkey, so they are not always useful. For this reason, considering the international domain name disputes; they are mostly resolved through international arbitration.

 

ICANN (Internet Corporation for Assigned Names and Numbers), which undertakes the management management role of the management of the international internet, is a special establishment that is responsible for the technical management of the Domain Name System. InterNIC and IANA are also two organizations that are also managed by ICANN. InterNIC provides information about domain name registration services, while IANA is responsible for DNS, assigning IP addresses and other Internet protocol resources.

 

In general, in the resolution of domain name disputes, these following organizations accredited by ICANN are preferred; 

-        ADNDRC (Asian Domain Name Dispute Resolution Centre), 
-        NAF (National Arbitration Forum), 
-        ACDR (Arab Center for Domain Name Dispute Resolution), 
-        CIIDRC (Canadian International Internet Dispute Resolution Centre), 
-        The Czech Arbitration Court Arbitration Center for Internet Disputes and 
-        WIPO (World Intellectual Property Organization)

This type of arbitration may only be used in disputes related to the domain name and in cases of a dispute between the registrant of the domain name and the person claiming to have rights to the domain name. However, ICANN arbitration cannot be pursued in disputes between the registrar who registered the domain name and the registry agency that registered it.

 

2.WIPO Arbitration

In terms of domain name disputes, the most preferred arbitration method among organizations accredited by ICANN is WIPO Arbitration. As a rule, it is aimed to resolve the dispute within sixty days. Many domain name disputes from Turkey have also been resolved through WIPO. Domain name disputes such as Cmylmz.com, koc.com , sabanci.com have all been resolved through WIPO.

 

WIPO Arbitration consists of a process parallel to the basic arbitration rules. First of all, the complaint in question is submitted to WIPO electronically. In order to proceed quickly, a period of twenty days has been set for the submission of the other party's response to the complaint. The parties can play a role in the selection of an arbitrator personally, as well as leave the selection to WIPO. Although a single-arbitrator arbitration process is essential, that the arbitration process can be conducted by three arbitrators if the parties request it. Just as the dispute may be based on a single domain name, the arbitration process may also be conducted for more than one domain name, provided that it is specified in the complaint and the parties are the same.

 

In domain name disputes, WIPO Arbitration may be preferred only in disputes about registering the domain name in order to misuse it. In the evaluation process, the following criteria are considered by WIPO:

-        That the domain name registered by the registrar is a trademark, a distinctive sign to which the complainant owns the rights, or similar to a degree that causes confusion,
-        That the registrant has no legitimate interest in the domain name in question,
-        That the domain name has been registered and is being used maliciously.

 

On the other hand, the person who registered the domain name can prove that they are right in various ways. The proofs accepted by WIPO are as follows:

-        Using or preparing to use the domain name in connection with providing goods or services in good faith,
-        The person who registered the domain name being known and recognized by the relevant domain name,
-        The domain name being used in a fair and legitimate way, without misleading the public and without commercial purposes.

 

As a matter of fact, in WIPO's decision on the domain name 'cemyilmaz.com' dated February 8, 2001; It has been determined that the complainant registered the domain name without any right and legitimate interest, offered the domain name for sale to the complainant in April 1999 for 10,000 USD, and that the registration was carried out in bad faith for the purpose of commercial sale by the complainant. In the decision, it was ruled that the domain name be taken from the complainant and transferred to the complainant. It is also seen in the relevant decision of WIPO that an assessment is made based on the criteria and proof documents in question at the arbitration stage. As a result of the arbitration, the transfer of the disputed domain name may be decided, as well as the cancellation or rejection of the request. The Arbitration Board will not be able to rule on any criminal sanction or compensation, as well as on any trial expenses, including proxy fees. The decision is sent to the registration organization, and is executed by the registration organization authorized by ICANN without being the subject of any recognition/enforcement case.

 

A lawsuit can be filed against WIPO decisions within ten days. The lawsuit is referred directly to the opposite side. In the case, the competent court is the court of the place specified in the contract, or the place of the organization registering the domain name.

 

Finally, the URS (Uniform Rapid Suspension System), which has just emerged in practice by ICANN to protect the rights of the rightholder in domain name disputes, has begun to become widespread. With this system, the relevant domain name is reserved directly after the complaint and the process is aimed to be faster and at less cost. Currently, the URS system is only used by the ADNDRC (Asian Domain Name Dispute Resolution Centre), NAF (National Arbitration Forum) and MFSD Srl.

 

CONCLUSION

International internet domain name disputes are currently resolved through arbitration. It is aimed to resolve the dispute quickly, cost-effectively and fairly for the parties before the WIPO arbitration authority accredited by ICANN, which conducts domain names on the Internet. Thus, the legitimate rights and interests of the Internet domain name are transferred to the owner. This article has briefly explained this process.