Nowadays, in the times in which the Internet plays a great role in running a business both as a source of information about the enterprise and offered goods and services as well as a tool serving advertisement and marketing aimed at reaching wide range of recipients, online violations and infringements "enjoy" great popularity and often are treated as a lucrative source of income. As an example can be indicated here cybersquatting and typosquatting, i.e. registration of domain names incorporating a third party's trademark or other distinctive designation or mark which is highly similar to them, differing only in one/two letters being intentional misspelling of the registrant.
Of course, a right holder may oppose the subject activity. However the choice of relevant and effective path is often dependent on the level of the registrant's creativeness.
The subject article focuses on <.pl> domain names registered in favor of entities/persons having their registered office or domicile in Poland, presenting possible paths of fighting back unlawful domain name registrations as well as drawing attention to potential way out of the arbitration proceedings which shall be kept in mind and considered while taking steps against the registrants.
At the beginning, it shall be noted that there are two possible ways in which a right holder may seek its claims related to domain name registration: proceedings before the common court or proceedings before the arbitration courts within the framework of alternative dispute resolution. Regarding the second type of proceedings, the major role in relation to <.pl> domain names plays the Court of Arbitration for the Internet Domain Names at the Polish Chamber of Information Technology and Telecommunication (hereinafter: "Arbitration Court") who recognizes substantial part of domain names disputes.
The choice between the path before the common court and the path before the Arbitration Court depends on the scope of infringement and goals of a right holder. In this context it shall be pointed out that as long as the proceedings before the Arbitration Court are quicker and less costly, the issued judgement is narrower comparing to the judgement issued by the common court as it relates solely to the use of a given mark in domain name. Therefore, if a right holder struggles with the infringement not only in a form of domain name but also in other forms, e.g. social media, advertising materials, packaging, the choice of the proceedings before the common court will be more appropriate as it enables elimination of the infringement in its entirety.
However, if the infringement comes down to domain name registration, the choice of the Arbitration Court is highly recommendable as it is time and cost effective way comparing to traditional proceedings. Moreover, in some cases it is possible to recover the domain name even without necessity of conducting the proper arbitration proceedings. Such situation takes place when the domain name was registered in favor of the entrepreneur who failed to sign the arbitration clause within the prescribed time. In this place, it shall be noted that the arbitration procedure is obligatory for the entrepreneurs. Consequently, if the registrant being an entrepreneur does not sign the arbitration clause and thus refuse to involve in the proceedings, the domain name agreement is terminated by the Registry based on the terms and conditions regulating <.pl> domain name registrations. In such case a right holder may obtain given domain name with the use of catch back services of trusted providers. The above situation usually takes place when registrants possess hundreds or even thousands of domain names, counting to obtain purchase requests at least in relation to some of them, not being necessarily interested in defending them in the proceedings.
The registrants are however more and more creative in their actions. One of the manifestations of such creativity is registration of the domain names in favor of a consumer, e.g. family member. Contrary to the status of entrepreneur, the status of a consumer provides an easy way out of the arbitration proceedings as participation of a consumer in the subject proceedings is facultative. In the consequence, the registrant having a status of a consumer may refuse signing the arbitration clause without any negative consequences, in particular regarding termination of the domain name registration agreement. Intentionality of such activity is particularly visible when the domain name is transferred to a consumer right after receiving warning letter from a right holder.
In such case the only way to win the domain name back is initiation of the proceedings before the common court which requires reconsideration and recalculation of the case what are the registrants fully aware of. Sadly, in such circumstances, the pure calculation sometimes makes the right holders ready to pay the registrant for the disputed domain name instead of initiating the proceedings before the common court.
It has to however be underlined that the above mentioned transfer can be prevented if the steps against the registrant are properly planned, in particular when potential contact with the registrant is proceeded with the pre-trial motion which effects in blocking domain name transfer. Sometimes relatively small steps undertaken at the beginning allows running the case further in an undisturbed manner.
Taking the above into account, it is very important to keep a sense of timing in each step against the registrant as well as to know both the rules governing procedure before the Arbitration Court and the rules regulating <.pl> domain name registrations. Proper timing and planning of the relevant steps, enable elimination of unwanted circumstances which may have irreversible effects to the position of a right holder.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
