DOMAIN NAME REGISTRATION PROCEDURES AND PRACTICES AND DOMAIN NAME DISPUTE RESOLUTION Madeleine de Cock Buning* III B 2 Introduction This report gives first of all an overview of Dutch registration procedures and practises with regard to domain names (A.). It lists the key players in the Dutch domain name registration procedure and gives a description of the domain name registration procedure. Than a short remark on the qualification of the “right“ in a registered domain name is given and the term and termination of the registration agreement and the licensing and transfer of domain names are described. The second part of this report deals with Dutch domain name dispute resolution (B.). It gives the legal framework for domain name cases and deals with Dutch court proceedings in the field of domain names. 1 Domain Name Registration Procedures and Practices 1.1 Key Players in the Domain Name Registration Procedure 1.1.1 Registration Authority The Dutch Registration Authority named Stichting Internet Domeinregistratie (SIDN), registers second level domain names in the .nl ccTLD and issues rules regarding domain name registrations. It also sees as its task quality control and the stimulation of standardisation (inter)nationally. SIDN is a private organisation. From its outset, SIDN has the intention to be a non-for-profit organisation. It has chosen as its legal entity foundation (Stichting) which by law is prohibited from distributing its profits amongst directors or members. The Board of Registration Authority SIDN consists of representatives of Internet Service Providers (ISP’s) and external experts. All ISP’s and members of the public that register a domain name can apply to be a member of the Participant’s Council. The Council advises the Board. The organisation of Registration Authority SIDN consists of different parties. The Board is responsible for the policy. It consists of seven (7) persons. The Participant’s Council has introduced four (4) members of the Board. The Board directly appoints three (3) experts. The Bureau is responsible for the preparation and execution of the policy. The actual registration of the domain names is done by the organisation called KEMA which is responsible for all operational activities. The Participant’s Council advises the Board with regard to its members, the regulations and the tariffs. For important decisions, the Board is obliged to ask the advice of the Participant’s Council. Its advises are not binding. However, until now all advises of the Participant’s Council have been adopted. 1.1.2 Agent In the Netherlands only through an Internet Service Provider that is an Agent, a second level domain name can be registered under in the .nl ccTLD. Such an ISP should be a member of the Registration Authority SIDN. An ISP member must be established in a member state of the European Union. An ISP member should abide to the Rules and regulations for members, pay contribution and warrant the Registration Authority SIDN for damages. An Agent can register a second level domain name under ccTLD .nl. It is this Agent that has the full responsibility to maintain and check the records of Applicants. On occasion the documents kept by the Agents are controlled by SIDN. 1.1.3 Domain Name Applicant Courts or governmental authorities impose no restrictions, conditions and requirements as to the registration of the domain name. In order to be qualified for the registration of a domain name in the .nl ccTLD, the Applicant does not have to present a trademark or trade name. Any legal entity, an institute, a company, a self-employed individual or a professional, or a partnership, with a registered office or actual establishment in the Netherlands can hold a business domain name. For this registration the following documents are required: a recent extract from the trade Register, the Register of Foundations, the Register of Associations or any other Register that is formally recognised by SIDN, as proof of Applicants identity and its registered office or actual establishment in the Netherlands. The Applicant must sign an indemnification statement as part of the domain name registration agreement. In this document, the applicant states that the chosen domain name does not infringe on any rights of third parties and that it will indemnify Registration Authority SIDN against all claims that might result from the registration and the use of the domain name. All damages and costs for Registration Authority SIDN made in this connection are for the Applicant. The Applicant must also designate a technical contact. The domain name has to be registered via an Agent. It is the Agent submitting the application that has to pay a registration fee and a quarterly fee for the continuation of the registration to Registration Authority SIDN. Private persons are authorised to register a domain name in the .nl ccTLD. A natural person not practising a profession or operating a business who is a resident of the Netherlands can hold a personal domain name. A natural person can hold only one (1) domain name. Required documents: a copy of a valid passport, ID card, drivers licence or a recent extract from the population register, serving as proof of the Applicants identity and his residence in the Netherlands. The other requirements for registration are the same as for business domain names. 1.2 Domain name registration procedure 1.2.1 Registration The Registration Authority SIDN registers domain names solely on a first-come, first-served basis. The Netherlands has not yet established a legal framework regarding the registration of domain names in the .nl ccTLD. However, the registration in the .nl ccTLD is restricted to residents of the Netherlands (private domain name) and legal entities, institutes, companies, self-employed individuals or professionals, or partnerships, with a registered office or actual establishment in the Netherlands (business domain name). Registration can be done online partially, some written (paper) documents are required though. The registration process itself is automated. Once the Applicant has provided the required documentation (indemnity statement, extract from the Trade Register or Population Register) to the Agent, the Agent sends an electronic application form to Registration Authority SIDN. The receipt of this email is automatically confirmed by e-mail by SIDN. In that e-mail the registration is confirmed. The Agent checks the documents. The paper documents that are kept by the Agent are signed in the traditional way. The signed paper documents remain with the Agent at all times, until requested by Registration Authority SIDN. The information that has to be provided by the Applicant for registration is his name, postal address, e-mail address, telephone number, facsimile address, telephone number, and the names of the authorised contact person and the technical contact. Agents require Applicant to keep the information provided in the registration process up-to-date information, since they can be required by Registration Authority SIDN to provide up-to-date on Applicant. 1.2.2 Fees The initial registration fee for personal and business domain names is 5 Euro. After registration a quarterly fee of 1,75 Euro for business domain names and 1,25 for personal domain names is required. It is the Agent that has to fulfil the payment obligations to Registration Authority SIDN, not the Applicant. If the Agent is in default in respect of payment of this fee, Registration Authority SIDN will inform the Agent and the Applicant that the Applicant will be denied the use of the domain name and that the registration will be deleted within 30 days, unless the said Agent or a different Agent to whom the application or the domain name is transferred pays the fee before the end of this period. Registration Authority SIDN reserves the right, prior to denial of use and deletion of registration, during this 30-day period to block the domain name in such a way that its status cannot be modified until payment has been made. If payment is not made in due time, the use of the domain name in question is denied and its registration deleted. 1.2.3 Cancellation The domain name application will be cancelled, if registration was accomplished by means of fraud or deception in the application, if any part of the data stated in the application form drafted by virtue of the Regulations of Registration Authority SIDN turns out to be false or incomplete or the electronic application form has been filled out incorrectly or incompletely. The Applicant must pass on through his Agent to Registration Authority SIDN any change in the registered data for the domain name in question as soon as possible. 1.2.4 Jurisdiction and applicable law In the Rules of Registration Authority SIDN there is no requirement for Applicants in the registration process to submit to the jurisdiction of any particular court of law, in the event of a dispute arising between the holder of a domain name and a third party. The applicable law in the event of any dispute arising between the Applicant and a third party pertaining to the registered domain name is not indicated in any form that has to be submitted during the registration. This will of course depend on the nature of the conflict and the location of the third party. 1.2.5 Privacy The Registration Authority does maintain the confidentiality of information provided by the Applicant for domain name registration as much as possible. However, through the whois register (a public database) certain personal data can be found. Registration Authority SIDN is obliged to maintain such a whois register on the basis of international document RFC1591. Presently the whois register contains name, address, residence of the Applicant, name, telephone number, email address of the technical and authorised contact person. The whois register is searchable only on domain name, not on Applicant. The Applicant of a personal domain name can request Registration Authority Registration Authority SIDN to hide the data on his name, address and place of residence. In that case the data of the Agent is used in the whois. The personal data is then only available for SIDN. 1.3 Sub-domains Apart from the specific registration procedure for personal sublevel domain names, there is no specific registration procedure for sub-domains in the Netherlands. A ccTLD practice of differentiation into sub-domains can be a useful tool in avoiding intellectual property disputes (particularly in terms of permitting identical names to co-exist). 1.4 Representations and warranties A Dutch Applicant has to declare in the indemnification statement that is required before registration that the details provided for the registration of the domain name are correct and complete and that (s)he has duly read, understood and accepted the provisions contained in the current Regulations on Internet Domain Name Registration (NL). The registration Authority SIDN sends an automatic confirmation of the registration by e-mail. By this it is automatically verified that (at least) the email address provided by the Applicant is correct. Occasionally the Registration authority SIDN checks the documents and forms that are held by the Agent with regard to a specific registration. The Applicant also has to guarantee that (s)he possesses the required authorisation to use the domain name for which an application is filed and that neither the domain name nor its use violates the rights of any third party. No additional steps are taken by Registration Authority SIDN to prevent “cybersquatting” or “warehousing” of domain names in the .nl ccTLD. 1.5 Qualification of the “right” in the registered domain name By registering the Applicant acquires the sole right to use the domain name. This right however is not an absolute right in the sense that the Applicant can act against other use of that name by third parties, unless he has registered his domain name as a trademark. This obtained right to use the domain name is however conditional. The Registration Authority SIDN remains in the position to withdraw (cancel) the domain: (e.g. if the Applicant does not comply with the Regulations of SIDN, the registration was accomplished by means of fraud or deception in the application, the Registration Authority SIDN has received an authentic copy of a judgement declared provisionally enforceable or a non-appeal able final judgement to this effect etc.) 1.6 Term and termination of the registration agreement The domain name registration is of indefinite duration upon quarterly payment. The Applicant can terminate the registration agreement if he requests for the cancellation of the registration. The Agent can terminate his registration agreement with the Applicant on his own conditions (e.g. default of payment). The Registration Authority SIDN can terminate the registration agreement under the following conditions: a. Applicant does not comply with the Regulations of SIDN; b. registration was accomplished by means of fraud or deception in the application; c. the relative Personal domain name turns out to be the Applicant’s second or subsequent Personal domain name (he is allowed only to register one personal domain name); d. the Registration Authority SIDN has received an authentic copy of a judgement declared provisionally enforceable or a non-appeal able final judgement to this effect e. the Agent involved is no longer a Participant in the Registration Authority SIDN; f. the Applicant no longer has an Agent; g. the Applicant of a Personal domain name has deceased; h. the Applicant of a Corporate domain name is no longer included in a Register as referred to in the Regulations (e.g. trade register); i. the data included in the Register are no longer correct and the Agent in question, after have been notified thereof, fails to correct these data within five working days; j. the Agent does not possess one or several of the documents required by the Foundation (indemnification statement and prove of registration in a Register as referred to in the Regulations). 1.7 Licensing and transfer of domain names It is authorised to transfer a domain name to a third party, both under the laws of the Netherlands and under the domain name registration agreement. There is some discussion in the Netherlands as to the legal basis of such a transfer since the status of (the right to) a domain name is still not totally clear under Dutch law. In any case, every day practice shows that the complex of rights and obligations that is connected with the registration of a domain name is transferable. If an Applicant wishes to transfer a domain name to a third party, he must submit to the relevant Agent a transfer form, duly signed by both parties, and an indemnification statement signed by the new Applicant, in accordance with the models drafted by the Registration Authority SIDN, where after the Agent in question will apply to the Registration Authority SIDN for entry of the domain name transfer in the Register. An application will not be considered and/or regarded as cancelled if it fails to meet the specified technical requirements. The new Applicant has to declare in the indemnification statement that is required before registration that the details provided for the registration are correct and complete and that (s)he has duly read, understood and accepted the provisions contained in the current Regulations on Internet Domain Name Registration (NL). The new Applicant also has to guarantee that (s)he possesses the required authorisation to use the domain name for which an application is filed and that neither the domain name nor its use violates the rights of any third party. License There are no formal requirements for representations and warranties as to the assignee posed by the Registration Authority SIDN. Since the Applicant has warranted and indemnified the Registration Authority SIDN, the Applicant acts wisely to – on its turn - require indemnification and warranty by the assignee as to its use of the domain name. 2 Domain Name Dispute Resolution 2.1 Legal framework The Dutch legal framework does not provide in a definition of “cybersquatting”, “domain name warehousing” or any other, related term. Nor is there specific legislation in the Netherlands regarding the registration and/or use of domain names. Against the registration of a domain name one can however act on the basis of trademark law, trade name law and tort. 2.1.1 Trademark A trademark owner can act against a cyber squatter on the basis of the Benelux Trademark Act (“BTA”), art. 13, section 1, subsection d BTA. If the Applicant/domain name grabber has registered a domain name that contains a Benelux trademark (a trade mark that is registered in the Benelux trademark register) or a similar sign, the trade mark owner can act against the registration if: (i) the Applicant has no valid reason to use the domain name. A valid reason is not assumed lightly. Only if the Applicant has such a need to use that specific name that it can reasonably not be expected of him to use an other name, a valid reason is assumed (e.g. the use of a trade name by the Applicant before the date of the trade mark registration) (ii) the Applicant uses the domain name commercially (e.g. offers it for sale or offers goods or services on or through it ). One should note that the mere registration of a domain name by an Applicant is considered to be (threatening) commercial use in Dutch case law. (iii) the use of the domain name can cause the Applicant unjust advantage or can delude on the distinguishing power of the trade mark. Because of the important function of a domain name as an advertisement property, the Amsterdam Court of Appeals ruled that the mere blocking of the possibility to register its trade mark as a domain name deludes the distinguishing power of the trade mark. Typo-squatting is considered to be trademark infringement. In the Name Space case many trademarks with minor misspellings were registered by defendant, who was ordered to transfer these to the trademark owners. Also in the Kijk en vergelijk case with regard to the domain names wwwnrc.nl and wwwad.nl that were considered to be confusingly similar to the trademarks (and domain names) of two Dutch national newspapers; transfer was ordered. Also if the Applicant/domain name grabber has registered a General Top Level Domain (gTLD) such as .com, .net and .org that contains a Benelux trademark or a similar sign and the Applicant is located or incorporated in the Netherlands and the domain name (and the site connected thereto) is directed towards the Netherlands, action can be taken by the trademark owner on the basis of the BTA before a Dutch Court. The same is true for the registration of a foreign ccTLD domain name (e.g. .be or .de) that contains a Benelux trademark or a similar sign. 2.1.2 Trade name law Although according to art. 5 of the Dutch Trade name Act (Handelsnaamwet: “Hnw”), the use of a certain name as a trade name is required for infringement under the Dutch act, courts have decided in several cases on domain name grabbing that the mere registration of a confusingly similar domain name can be considered trade name infringement. If the Applicant/ domain name grabber has registered a gTLD domain name that can cause confusion as to the trade name of plaintiff and the domain name (and the site connected thereto) is directed to the Netherlands, action can be taken by the trade name owner against the domain name grabber on the basis of his right to his trade name. The same is true for the registration of a foreign ccTLD domain name (e.g. .be or .de) that can cause confusion as to the trade name of plaintiff. 2.1.3 Personal names Natural persons that cannot rely on the protection of the Benelux Trademark Act or the Dutch Trade name Act, can act on the basis of tort law (Dutch Civil Code art. 6: 162) if their name is used in such a way that the public is confused. On the basis of tort law Courts have ordered the transfer of domain names to well-known Dutch persons whose names were registered by domain name grabbers. In these decisions it is inter alia stated that the registration of the domain names constitutes in a tortuous act since the famous persons whose names are registered are blocked to register and exploit these domain names themselves and this causes them substantial damage. One should note that if the site is not registered by a domain name grabber but by a fan(club), the court will balance the interest of the fan(club) and that of the famous person. Another ground to act against the registration of a personal name by a domain name grabber is article 1:8 of the Dutch civil code which states that it is an tortuous act to use a persons name without his consent if by doing so you give the impression to be that other person or to belong to his family. Plaintiffs can also act against the registration of personal domain names that are registered in the gTLD domain (e.g. .com or .org) that are identical or confusingly similar to the name of the Plaintiff when the domain name (and the site connected thereto) is directed to the Netherlands. The same is true for registration of personal names as domain names in foreign ccTLD’s. 2.1.4 Torts (onrechtmatige daad) Legal entities that cannot rely on the protection of the Benelux Trademark Act or the Dutch Trade name Act can act on the basis of tort law (Dutch Civil Code art. 6: 162) if their name is used in such a way that the public is confused or mislead. In the case with regard to the domain names Tweedekamer.com and 2ekamer.com (both are names for the Dutch Parliament), the Court of Appeals of Amsterdam reversed the general burden of prove and ruled that it was up to the Applicant to prove that it was likely that its registration of these two names - that are of considerable public interest - will not lead to confusion or are misleading to the public. The Court of Appeals further stated in its decision that the Applicant did abuse his authority (art. 3: 13 Dutch Civil Code) by registering these domain names, inter alia because of the imbalance between the interest of the State and that of the Applicant with the registration of these domain names. From this case law it appears that if the Applicant/domain name grabber has registered a gTLD domain name that is identical or confusingly similar to the name on which the plaintiff has a claim and the domain name (and the site connected thereto) is directed to the Netherlands, action can be taken on the basis of tort. The same is true for the registration of a domain name in a foreign ccTLD that is identical or confusingly similar to the name on which the Plaintiff has a claim. In tort cases the interest of plaintiff and defendant by the registration of the domain name are often compared and balanced (e.g. public interest on the one hand and the private interest on the other). With regard to the registration of the domain name ministers.nl the Court ruled even that the Applicant has to prove that he has a justification to register this domain name that can confuse the public that it (and the connected web site) belongs to the government. This decision has been criticised in legal doctrine. Another ground to act against the registration of a domain name is article 6: 194 of the Dutch Civil Code (misleading advertisement). Whether this will be successful will depend largely on the content of the web site. In a case about a web site that contains information protesting against a government project (betuwe-lijn.nl) the court ruled that the information of the site was of an ideological nature and therefore did not amount to unfair advertisement. 2.2 Court proceedings All Dutch District Courts (Rechtbanken) with competence over private law matters are competent to receive domain name disputes. Domain name disputes can be dealt with through summary proceedings. In fact, most domain name disputes are dealt with through summary proceedings. Even the transfer of a domain name can be summonsed in summary proceedings The Dutch (Vice-)Presidents of all district courts can deal with summary proceedings in domain name cases. All 19 Dutch District Courts competent in private law matters are competent to deal with full-scale proceedings in domain name cases. The (average) duration of summary proceedings is two weeks to four month. The (average) duration of full-scale proceedings in one instance is about 14 weeks. The court can order the transfer of the domain name, the cancellation of the domain name registration, damages and the redirection of Defendants web site to that of the Plaintiff. One should note that damages cannot be ordered in summary proceedings. In order to make sure the court order is enforced a forfeiture sum (penalty sum) can be granted to the Plaintiff, that he can execute if the Defendant does not corporate. The Court can also order that the court order replaces the transfer agreement that is required for the transfer of an .nl domain name. One can appeal from decisions from District courts at the Courts of Appeal and (finally) at the Supreme Court of the Netherlands. Foreign complainants can bring a domain name case before our competent courts if they find a Dutch attorney and choose residence (domicile) at his offices. 2.3 Proceedings before a third party dispute resolution service provider In the Netherlands neither the Registration Authority nor the Agents have an established policy for the resolution of disputes that can arise between the holder of a domain name and a third party. Neither the Registration Authority nor the Agents become involved in any way in the resolution of the dispute. The National project team Domain name debate that conducted a research as to the need for such a dispute resolution procedure (similar to the WIPO Domain Name Process) has recently proposed the installation of a ADR for the .nl ccTLD. Such a procedure would partly be based partly on the ICANN UDRP. 2.4 Statistics The following numbers of disputes relating to domain names are known to have occurred in the .nl ccTLD. In the year 1997: 3 published cases In the year 1989: 2 published cases In the year 1999: 11 published cases In the year 2000: 60 published cases In the year 2001: 50 published cases Summary and conclusions This report gave an overview of Dutch registration procedures and practises with regard to domain names. It listed the key players in the domain name registration procedure (Registration Authority, Agents and Domain Name Applicants) and gave a description of the domain name registration procedure. Some attention was given on the qualification of the “right“ in a registered domain name and the term and termination of the registration agreement and the licensing and transfer of domain names. The second part of the report dealt with domain name dispute resolution. The legal basis for court decisions in Dutch domain name proceedings turned out to be either infringement of intellectual property rights (trademark or trade name), tort or contract. The conditions put forward by the Dutch courts are not the same criteria as proposed by WIPO. The registration and use of a domain name in bad faith is not considered directly by Dutch Courts. However in domain name cases dealt with on the basis of tort, the Court makes a balance of interests involved. In this weighting of interests a role may play if the holder of the domain name has a legitimate interests in respect of the domain name and if the domain name has been registered and is used in bad faith.