Jurisdiction - Hong Kong
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Asia Pacific – The Rapidly Transforming World Of The Domain Name.

16 January, 2013

 

Cyberspace is a constantly evolving entity and managing domain name disputes incredibly challenging. Experts demystify dispute resolution in this area of the law

 

Managing domain name disputes in a transforming cyberspace is complex and challenging, not least because of the speed at which change is happening.

 

At the recent Asian Domain Name Dispute Resolution Centre (ADNDRC) conference held in conjunction with the Hong Kong International Arbitration Centre (HKIAC) at the Renaissance Harbour View Hotel in Hong Kong, panellists talked about the recent developments in domain name systems, how to manage challenges facing litigants and strategies that may be adopted.

 

“It used to be very easy to ID the registrant. Now registrant particulars cannot be verified – they may use fake IDs for example. Registrants may also conceal particulars,” explained one panellist.

 

Further challenges facing parties in domain name disputes include difficulties in proving “registration and use in bad faith”, domain name complaints being rejected if incorrect parties are named and the fact that only one “cybersquatter”, that is someone who registers, traffics or uses a domain name with bad faith and intent on profiting from the good will of a trademark belonging to someone else, may be challenged at any one time. 

 

Another difficulty identified later on in the day by the honourable Neil Brown QC, was that of language.

 

“It should be understood,” Brown said, “that the proceedings are generally conducted in the language of the registration agreement – the agreement between the person who registered the domain name and the registrar through whom the registrant ‘bought’ the domain name.”

 

Brown explained that this should be recognised before arbitrators are appointed and before the complaint is filed. 

 

“One of the things that irritates a panel [of arbitrators] is where it is quite clear that the proceedings are to be conducted, say , in English but then the documents are presented in their original form, say, in Spanish or French! And no translation or explanation as to why this is done. If it becomes a pivotal issue, we can issue a procedural order requiring [evidence] to be translated into the language of the registration agreement,” Brown continued. 

 

Brown, an arbitrator of domain dispute resolution who sits on most international panels, urged parties not to “use evidence which is unpersuasive”. He cited an example where the German Post Office brought a case under the Uniform Domain Name Dispute Resolution Policy (UNDRP) rules. In the course of proceedings it offered evidence in the form of a public opinion survey. It was said that are high percentage of respondents answered that they associated the word “post” with the “German Post Office”. But on closer examination it became apparent that the survey had been conducted in Germany, so the result was hardly surprising. 

 

One further piece of advice from Brown for parties preparing for the arbitration of domain name disputes was that he has noticed a significant rise in the number of parties citing previous UDRP decisions and the number of decisions they cited. Brown stated that although these decisions were a useful guide, it should be remembered that they are not binding precedents nor a substitute for evidence. 

 

“I’m not saying we do not refer to decisions, as we do, or that parties should not cite them, but I’m saying the trend is perhaps to overegging the pudding by citing too many previous decisions which are, after, only decisions on the actual facts of a given case which may be very different from the case under consideration. A much better submission to put before the panel is to make the point of the submission in as simple language as possible, set out the evidence in support of it and rely on perhaps three decisions at the most.” 

 

The usual mechanisms for resolving any legal dispute are available, that is settlement, cease and desist letters, mediation and so on, as explained by Eugene Low, Mayer Brown JSM Senior Associate. 

 

“Whatever the strategy one might adopt, it is important to decide on the game plan at the outset,” he said. 

 

Parties should check whether any domain name registration agreement provides for arbitration and should bear in mind that usually parties cannot apply to the court for relief as well as issue arbitration proceedings with a provider. It is also important to consider the strength of the case, publicity, time and cost when considering whether to go for litigation or arbitration. 

 

Sebastian Hughes of Counsel also spoke about the benefits of arbitration in domain disputes: “As we discussed earlier this morning the UDRP has evolved. It is possible to file proceedings in a language different to the language of the registration agreement, and you can sometimes get a decision in two languages. One of the great things about the ADNDRC is that its panellists come from both common law and civil law backgrounds, and many have practised in both types of jurisdiction, so they are able to take into account the relevant laws and procedures in different jurisdictions when rendering decisions. In so far as you’re acting for parties, think about appointing panellists based upon their background.” 

 

Although cyberspace is rapidly evolving, there are experts on hand to guide laymen through. The fact that HKIAC has the expertise to be able to deal with these types of dispute is also reassuring, given Hong Kong’s increasing use of e-commerce.

 

 

Conventus Law

 

 

 

 

For further information, please contact:

 

Scherzade Westwood, Conventus Law

[email protected]

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