How do .com proceedings, if the dispute parties are from different countries?

Started by zoesmith01, Aug 21, 2022, 04:00 AM

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zoesmith01Topic starter

How do .com domain proceedings take place if the dispute  parties are from different countries?


Help me to understand the following question.

Have a domain
%word1%%word2%%word3%.com
all words are common English
it is 3 years old and all this time there is a project on which all these 3 years have been working and promoting
the domain name belongs to an individual, physical. person from France

We received a letter from an American law firm saying that their client has a trademark
%word1%%word2%
and we violate their rights.
the company there is far from world famous, something small in general.
When registering our domain name, we naturally did not know about such a company.

Both projects can be attributed to the advertising sphere, but ours is aimed at working with webmasters / freelancers, theirs is something larger, well, maybe connected with TV there and so on. generally, the clientele does not intersect 100%, that is, we could not beat off a single client from them, since we would have nothing to offer them.

It is worth noting that there is a trademark %word1% and a trademark %word2%. Logically, one of them could also make claims against the company %word1%%word2%.


At the moment they are just asking for our address, we haven't replied to them yet. If the letter is ignored, they threaten to go to court.


I really want to understand two questions:
1. How likely is it that the domain name will be taken away from us?
2. How can that trial take place at all? that is, they cannot appoint a court, knowing that the owner will not appear at it due to the fact that he lives overseas? I read about the UDRP - it seems clear with this, but they wrote about the court there. is it possible? and generally, in addition to these two options (UDRP and court), there are no more options for taking away a domain? I would just like to understand all possible ways of developing that situation.
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sanjana

As far as I understood from communication with the American lawyers, if the defendant or his representative does not appear in court, then the defendant will eventually be awarded a technical defeat, with all the consequences .. they eat it. enjoy

Solution - if the project is expensive, then you need to hire a lawyer at the venue of the court. That can be done via the Internet, never setting foot on American soil.

It is my understanding that prior to the start of the trial they will be required to take steps to notify the other party of the time and place of the hearing.
Then butting until you get bored (until the money runs out) .
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WAO

The court does not care at all about decision of the UDRP. The UDRP is a dispute resolution procedure created by ICANN. It has nothing to do with the laws of any country. When registering domain on the registrar's website, you agree that disputes over domains occur in accordance with the UDRP (does not apply to all domain zones, UDRP does not apply to .fr).
The court will simply oblige the registrar to transfer the domain name to the plaintiff if he wins the court.
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alvinwright

Currently, the proceedings under the UDRP are carried out by four organizations, one of which is located in Europe (the WIPO Center, Geneva), two in the USA and one in the Asian region (the Asian Center has branches in Hong Kong and China).
The right to choose one of these organizations belongs entirely to the applicant. According to statistics, the vast majority of applications (over 91%) were sent by applicants to the WIPO Center and the National Forum. In addition to the Policy and Rules, each arbitration center is guided by its own Additional Procedural Rules, which establish separate procedural features of the consideration of domain disputes by the tribunals. Over the years of its existence, arbitration centers have justified their purpose by considering more than 10,000 cases. This procedure turned out to be very loyal and beneficial to trademark owners. As statistics show, about 81% of applications for the transfer of domains are satisfied, although this may also have its kinks.

BRIEF DESCRIPTION OF THE UDRP PROCEDURE

1. Impartiality and independence of arbitrators.

Paragraph 7 of the Rules establishes requirements for arbitrators, which are embodied in two concepts: impartiality and independence. There is a recusal, which is possible at any stage of the proceedings until the decision is made, but the Rules do not give the parties the right to independently challenge the arbitrator.

2. Trial in absentia.

The proceedings in the Arbitration Centers are conducted in absentia and do not involve the presence of the parties. Paragraph 15 of the Rules states that the tribunal considers the case only on the basis of explanations and documents submitted by the parties.
Paragraph 13 of the Rules provides that the personal presence of the parties is not provided for, although the tribunal has the right to determine at its discretion that such is necessary for making a decision (the authors are not aware of any cases of arbitrators making such determinations).

3. All materials on the case are provided by the parties once.

The procedure in question
consideration of domain name disputes assumes that all the circumstances essential to the case will be disclosed by the applicant and the defendant when submitting an application for the transfer of the domain and the response to it.

In this regard, neither the Policy nor the Rules contain any provisions on the right of the parties to make any additional statements or provide additional evidence. Only paragraph 12 of the Rules indicates that the tribunal may, at its discretion, request additional materials from the parties or ask them to provide additional explanations.

The National Forum managed to avoid such problems. Here, the Additional Rules stipulate that any party has the right to submit additional applications and documents with a copy sent to the other party within 5 calendar days from the date of receipt of the response to the application or the expiration of the deadline for its receipt.

4. Features of the presentation and evaluation of evidence.

In the subp. "b" of paragraph 14 of the Rules contains a rather strict provision according to which the tribunal has the right to draw any conclusions that it deems correct in the event that one of the parties, in the absence of exceptional circumstances, does not comply with the requirements of the Rules or the tribunal. Quite often, this provision is used by arbitrators to substantiate the conclusion that there are no possible objections from the defendant who has not submitted a review to the tribunal. Some arbitrators (especially the National Forum) consider the absence of objections almost as a recognition by the defendant of the claims made against him.

The evaluation of evidence also has its own specifics. In order to satisfy the application, it is not required that the plaintiff clearly prove all the circumstances to which he refers. In this regard, there is an unspoken rule by which doubts are interpreted in favor of the side whose position looks more convincing.

5. Ways to protect the right.

A unique feature of the procedure under consideration is the provision that, depending on the plaintiff's claims, as a result of the consideration of the case, the domain may not only be transferred (or not transferred) to the applicant, but its registration may also be canceled. The choice of the method of protection of the right is determined by the applicant in the case. And if the applicant has no interest in further use of the disputed domain, he has the right to raise the issue of cancellation of its registration.

6. The possibility of transfer to a traditional court.

If the tribunal decides to cancel or transfer the domain to the applicant, the registrar of the domain name is obliged to give the respondent time to transfer the dispute to the national court of the country having the necessary jurisdiction. And if within ten days the defendant submits a copy of the statement of claim with a note from the office of the competent court, the execution of the tribunal's decision will be suspended. To resume the execution procedure, the domain registrar must be provided with sufficient evidence of the termination of the dispute between the parties or the court's decision to dismiss the claim.

7. Grounds for transferring the domain name  to the applicant.

In order to satisfy the requirement to transfer or cancel the domain registration, the applicant in each case must prove the existence of three circumstances at the same time (subp. "a" clause 4 of the Policy):

(1) the respondent's domain is identical or confusingly similar to the applicant's trademark;

(2) the respondent has no rights or legitimate interests in relation to the disputed domain name;

(3) the respondent's domain is registered and used in bad faith.

These facts exhaust the subject of proof in absolutely any case considered within the framework of the Policy. Moreover, the tribunals always examine them sequentially (in the order prescribed by the Policy), proceeding to the consideration of the next one, as a rule, only if the previous one is proven.

Formally, the provisions of the Policy are formulated in such a way that all the facts included in the subject of proof must be proved by the applicant. However, in practice, with respect to the second element of the subject of proof, it is usually enough for him to put forward simple statements about the defendant's lack of rights and legitimate interests in the domain , after which the burden of proving the existence of such passes to the defendant.

The stated framework regulation leaves the arbitrators a very wide field of interpretation of the stated provisions. In addition, subparagraph "a" of paragraph 15 of the Rules states: "the Tribunal resolves the complaint on the basis of explanations and documents filed in accordance with the Policy, these Rules and any rules and principles of law that the Tribunal deems applicable."
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