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                       ALTERNATIVE DISPUTE RESOLUTION
          ITS APPLICATION TO PROTECT INTELLECTUAL PROPERTY RIGHTS
              UNDER .EU: THE FIRST PAN-REGIONAL TOP LEVEL DOMAIN


                                                         David TAYLOR *




A new Alternative Dispute Resolution procedure                           during these first hours, followed by applicants
has been created specifically for the new .EU Top                        from Germany and the Netherlands. During the
Level Domain (TLD). Based upon the UDRP (the                             first hour of this Land Rush Period, .EU domain
Uniform Domain Name Dispute Resolution Policy)                           names were being registered at an average
adopted by ICANN (the body responsible for the                           speed of 76 per second. Within just one week,
global coordination of the Internet's system of                          some 1.5 million domain names had been regis-
unique identifiers) in 1999, and though similar at                       tered. At 7 February 2007 there were 2.5 million
first site, it is deceptively different. This article                    domain names registered under .EU making it
looks at this new ADR process, but in order to                           already more popular than all but two of the exis-
understand its workings and remit, an understan-                         ting European ccTLDs (country code Top Level
ding of .EU itself is necessary.                                         Domains) namely that of Germany (.de) and the
                                                                         United Kingdom (.co.uk).
On 7 April 2006, the .EU Top Level Domain
(TLD) opened for general registration in a so-cal-                       However, registration had been possible prior to
led "Land Rush Period". This is the most heavily                         7 April, during a 4 month “ Sunrise Period ” which
regulated domain name ever, governed by EC                               commenced on 7 December 2005. This phased
Regulations, Rules and Policies; the protection of                       launch system was the first of two mechanisms
intellectual property rights being an integral                           designed to protect intellectual property rights. Its
element. Though some difficulties have been                              objective was to provide those entities owning
encountered, overall, the launch, has, in the opi-                       existing and eligible prior rights with an opportu-
nion of the author, been a resounding success.                           nity to register such names before the general
Only open to entities and individuals based within                       opening. The second mechanism is the specifi-
the European Community, there were over                                  cally drafted .EU Alternative Dispute Resolution
700,000 registrations in the first four hours after                      Policy discussed in this article. The combination
the opening of Land Rush. The British were the                           of these seeks to minimise potential abuse of the
most active registrants of .EU domain names                              .EU domain name by unscrupulous parties.


* Partner in the international law firm of Lovells working in the Intellectual
  Property, Technology and Media practice of the Paris office. With a PhD in
  Physics, he is a practising lawyer at both the English and Paris Bars. He
  advises on many aspects of intellectual property and technology law, particu-
  larly involving issues relating to the Internet. Mr. Taylor also heads up the
  Lovells Domain Name Law Practice that offers a complete service of online
  brand protection including the registration, management, recovery and pro-
  tection of domain names across some 160 jurisdictions worldwide.
  Member of the WIPO Arbitration and Mediation Centre’s Domain Name
  Administrative Panel, is a Domain Name Panelist for .FR with CMAP (Centre
  de Médiation et d’Arbitrage de Paris) and is also an arbitrator and member of
  the Advisory Board for the .EU Alternative Dispute Resolution with the Czech
  Arbitration Court. Mr. Taylor is contactable at david.taylor@lovells.com                     RDAI / IBLJ, N° 2, 2007



                                                                                                                          231
       ALTERNATIVE DISPUTE RESOLUTION. ITS APPLICATION TO PROTECT INTELLECTUAL PROPERTY RIGHTS


Before moving on to the .EU Alternative Dispute           Czech Arbitration Court was appointed as the
Resolution (ADR) process, it is worth considering         ADR provider for all disputes concerning .EU.
the essential background to the creation of .EU,          2005 also saw the addition of .EU to the Internet
namely the various EC Regulations and the actors          root.
involved in this theatre of virtual alternative dispute
                                                          Eligible applicants are defined by Article 4(2)(b)
resolution.
                                                          of Regulation (EC) No 733/2002 as follows:
The roots of .EU go back to as early as 1998. In          • any undertaking having its registered office,
2000, the European Commission published                     central administration or principal place of
Working Paper COM(2000) 153 on the creation                 business within the European Community;
of a new .EU Internet top-level domain setting out
                                                          • any organisation established within the Euro-
the case for its creation. This formed part of the
                                                            pean Community without prejudice to the
European Commission’s eEurope initiative where
                                                            application of national law; and
an indicator of European identity for suppliers of
                                                          • any natural person resident within the Com-
services and information on the Internet was
                                                            munity.
perceived as a valuable stimulus to electronic
commerce and to the European transition to the            These requirements are clearly in line with the
information society.                                      desire for the registrant to have an EU identity.
                                                          The lure of .EU to both businesses and cybers-
Two EC Regulations govern .EU, Regulation
                                                          quatters based outside the European Union has
733/2002 1 sets out the conditions for implemen-
                                                          seen a plethora of applications seeking to meet
tation, whilst Regulation 874/2004 2 lays down
                                                          the eligibility requirements by various means.
the public policy rules concerning this implemen-
                                                          Any applicant must declare at the time of applica-
tation and the function of .EU, together with the
                                                          tion that:
principles governing registration. It is the lack of
understanding of these Regulations by applicants          • it conforms to the rules;
and registrars alike that have lead to many of the        • the application is made in good faith;
issues that have arisen during the last 14 months         • the application does not infringe third party
and which are now becoming the subject of                   rights; and
disputes amongst parties, such disputes being
                                                          • it will abide by the Alternative Dispute Reso-
governed by the .EU Alternative Dispute Reso-
                                                            lution rules.
lution (ADR) process.
                                                          Any material inaccuracy will constitute grounds
The European Commission appointed EURid                   for a potential breach of the terms of registration.
(The European Registry for Internet Domains) as
the registry. EURid is a not-for-profit organisation
formed by the Belgian, Italian and Swedish                A SUNRISE PERIOD FOR THE PROTECTION
domain name registries with two associate                 OF IP RIGHTS
members from the recently acceded countries of
Slovenia and the Czech Republic. As such,                 As is now fairly standard with launches of new
EURid is the authority for the quality of data held       top level domains (eg .BIZ, .INFO, .HK) a Sunrise
on .EU registrants. Registrations are not possible        Period was put into place for .EU in order to give
through EURid itself and have to be submitted             rights owners the opportunity to register their
via one of the many accredited registrars.                names before unscrupulous parties.
During 2005 PriceWaterhouseCoopers was                    The Sunrise Period opened on 7 December 2005
appointed as the Validation Agent, their job being        and was divided into two phases, each lasting for
to manually check the prior rights claimed by             two months. During phase one (from 7 December
sunrise applicants on behalf of EURid. The                2005 to 6 February 2006) only domain names



232
   UNDER .EU: THE FIRST PAN-REGIONAL TOP LEVEL DOMAIN


corresponding to (i) registered European Union          rejected. In order to qualify for acceptance, the
national trade marks, community trade marks or          relevant documentary evidence proving the exis-
International trade marks covering one of the           tence of the prior right must have been submitted
European Union Member States or (ii) geographi-         to the validation agents, PricewaterhouseCoopers,
cal indications or designations of origin, could be     within 40 calendar days of receipt of the original
applied for (leaving aside certain rules applying       application.
to public bodies). Phase one itself was a clear
success, over 100,000 applications were filed on        The documentary evidence required for each
the first day alone.                                    application depended upon (a) the prior right
                                                        concerned and (b) the country where such prior
Phase two of the Sunrise Period began on 7              right is held. Annex 1 3 of the Sunrise Rules 4 sets
February 2006 and continued until midnight on           out what documentary evidence needed to be
6 April 2006 before giving way to the opening of        provided for each right in each country. If the
the Land Rush Period at 11am CET on 7 April             required evidence was not received by the dead-
2006. In addition to the phase one rights referred      line, the application expired and the next applica-
to above, domain names corresponding to other           tion in the queue was considered.
rights protected under the national law of the
Member State could also be registered, for              The fact that .EU domain names applied for
example; company names, business identifiers,           during the Sunrise Period were allocated on a
distinctive titles of protected literary and artistic   first come, first served basis means that a num-
works, unregistered trade marks and trade names.        ber of well-known companies failed to obtain their
                                                        preferred domain names. For instance, the car
During the Sunrise Period a total of 346,218            manufacturer Volkswagen applied for the domain
applications were filed for 245,908 different           name <polo.eu>, however, the fashion house
domain names. The extra number of applications          Ralph Lauren and the confectionary manufactu-
is an indication of the potential for domain name       rer, Nestlé also applied. Volkswagen succeeded
disputes, as it means that in numerous instances        in obtaining the domain name as their application
two or more parties claimed a prior right in rela-      beat the two others by a mere three minutes and
tion to the same domain name.                           24 seconds. This underlines the importance of
One critical element of applications made during        having carefully selecting the registrar and ensu-
the Sunrise Period was the validation of prior          ring a high queue placing with the registrar, to be
rights. The European Commission is to be com-           the first served.
mended for creating the obligation for all sunrise
                                                        However, it was not just a case of first come first
applications to be physically verified. Indeed, in
                                                        served. Although this was clearly important during
previous sunrise periods the process was auto-
                                                        the Sunrise Period, the required documentary
mated with the result that entities with no relevant
                                                        evidence was also critical. If the documentary
rights sought and sometimes succeeded in
                                                        evidence submitted by the registrar was incor-
benefiting from the sunrise period in question.
                                                        rect, then even if the application was in first posi-
Accordingly, suppor ting documentation was
                                                        tion in the EURid queue, without appropriate and
required for all applications during the .EU sunrise
                                                        correct documentary evidence the application
period.
                                                        was liable to be rejected. EURid has now reviewed
The application process itself was unique. EURid        all of the 346,218 sunrise applications. Some
proceeded to register the first application in the      35 % of the applications were rejected, largely as
queue for a particular domain name received,            a result of incorrect documentation being sup-
subject to validation of the prior right claimed.       plied. This highlights the importance of having
Once an application had been approved, all              obtained correct legal advice at the time of making
remaining applications were automatically               the Sunrise Period applications.



                                                                                                         233
       ALTERNATIVE DISPUTE RESOLUTION. ITS APPLICATION TO PROTECT INTELLECTUAL PROPERTY RIGHTS


THE ALTERNATIVE DISPUTE RESOLUTION                      sion to register a domain name does not comply
PROCESS                                                 with the two European Union Regulations dealing
                                                        with the implementation of .EU (Regulations (EC)
The second means of protection for intellectual         No 733/2002 and No 874/2004).
property rights owners, built into the launch of        In the event that a panelist concluded that EURid’s
.EU is the Alternative Dispute Resolution (ADR)         decision to register a domain name was contrary
process which takes into account the international      to the Regulations, then EURid would decide
best practices in this area, and in particular the      whether or not to register the domain name in the
recommendations of the World Intellectual Pro-          name of the next applicant in the queue, in accor-
perty Organization. Regulation (EC) No. 874/            dance with the Sunrise Rules. As the phased
2004 sets out the public policy rules concerning        registration period is now over, the Czech Arbi-
the implementation and functions of the .EU top-        tration Court is only considering ADR II cases,
level domain, including the revocation and settle-      that is, cases brought against the registrants of
ment of conflicts. The relevant Articles are 21 to      domain names rather than against the Registry.
23, which deal with speculative and abusive
registrations, ADR procedures and the selection
of providers and panellists for ADR. The .EU ADR        How the .EU ADR Rules and Supplemental
Rules clearly reflect this Regulation, the provisions   Rules differ from the Classical UDRP.
of which were modelled on the Uniform Domain
                                                        The UDRP is designed to serve as a simple and
Name Dispute Resolution Policy (UDRP) and
                                                        cost effective remedy for obvious cases of cybers-
Rules, introduced by ICANN in 1999, however,
                                                        quatting. It applies to certain generic top-level
despite being modelled on the UDRP the .EU ADR
                                                        domains (gTLDs) such as .COM and .NET, and
process has subtle yet significant differences.
                                                        has also been adopted by various countries to
There are in fact two possible ADR routes, one          apply to their country code top-level domains
during the Sunrise Appeal Period against a deci-        (ccTLDs). The UDRP has proved popular with
sion of the registry, EURid, named ADR I here,          some 28 countries adopting it in its classical
with a second route available after the end of the      form, whilst another 20 have adopted a variation
Sunrise Appeal Period, this time against the            of the UDRP.
registrant, named ADR II here. At the present           In the classical UDRP, Complainants have to
time all cases being filed are now ADR II cases,        prove three elements, namely that:
however as the bulk of cases to date (65 %) have
                                                        – the disputed domain name is identical or confu-
been ADR I cases it is worth considering the
                                                          singly similar to their trade or service mark;
nature of these cases. The Czech Arbitration
Court 5 is the ADR provider for .EU related dispu-      – the Respondent does not have a right or legiti-
tes both during the Sunrise Appeal Period against         mate interest in the domain name; and
the Registry, EURid, but also, and importantly, for     – the Respondent has registered and used the
cases brought against the registrant after domain         domain name in bad faith.
names have been activated.
                                                        Paragraph B11(d) of the .EU ADR Rules provides
Once a decision to register a domain name had           as follows: “ The Panel shall issue a decision
been taken, it would only be activated after a          granting the remedies requested under the Proce-
period of 45 calendar days, i.e. five days after the    dural Rules in the event that the Complainant
expiry of the 40-day long 'Sunrise Appeal Period'.      proves in ADR Proceedings where the Respon-
During this period any interested party was entit-      dent is the holder of a .EU domain name regis-
led to initiate an ADR procedure (ADR I) against        tration in respect of which the Complaint was
the Registry, EURid, on the grounds that its deci-      initiated that:



234
   UNDER .EU: THE FIRST PAN-REGIONAL TOP LEVEL DOMAIN


(i) The domain name is identical or confusingly        with national approaches differing significantly.
    similar to a name in respect of which a right is   However the .EU ADR Rules cover, not only trade
    recognized or established by the national law      or service marks, but names in respect of which
    of a Member State and/or Community law             a right is recognised or established by the natio-
    and; either                                        nal law of a Member State and/or Community
                                                       law. The breadth of recognised rights across
(ii) The Respondent has no rights or legitimate
                                                       25 Member States will give rise to considerable
     interests in respect of the domain name; or
                                                       scope for Complainants, but also for Respondents.
(iii) The domain name has been registered or is
                                                       For guidance as to what amounts to a legitimate
      being used in bad faith”.
                                                       interest, the .EU ADR Rules sets out three cir-
At first sight, these three conditions appear to be    cumstances, without limitation, which if proved,
identical to those of the classical UDRP. However,     would demonstrate that the holder of a domain
the .EU ADR Rules are deceptively similar and in       name has such an interest:
fact considerably wider than the UDRP.                 – that prior to any notice of the dispute, it has
Firstly, the UDRP provides that a Complainant            used the domain name or a name correspon-
has to prove all three elements referred to above,       ding to the domain name in connection with the
whereas the .EU ADR Rules only require a                 offering of goods or services or has made
Complainant to prove the first element and then          demonstrable preparation to do so;
either of the second two. This could thus have         – it has been commonly known by the domain
significant ramifications as a .EU domain name           name, even in the absence of a right recognised
registrant could have his registration revoked           or established by national and/or Community
even in the absence of any kind of bad faith if he       law;
has no demonstrable rights or legitimate interests
in the name. Thus, the element which is arguably       – it is making a legitimate and non-commercial or
the critical element in the UDRP, is actually optio-     fair use of the domain name, without intent to
nal in the .EU ADR Rules. This is potentially            mislead consumers or harm the reputation of a
good news for Complainants and brand owners              name in which a right is recognised or establis-
as it may ease the need to prove bad faith. It           hed by national law and/or Community law.
seems that the .EU ADR Rules are designed not          It is likely that .EU panellists will be faced with
just to deal with abusive registrations but also       Complainants and Respondents who have com-
speculative registrations. In practice however,        peting rights that are equally valid, for example
this may not be of such great significance as lack     an unregistered or common law trademark in
of rights/legitimate interests and bad faith are two   England versus a registered trademar k in
concepts that are often closely linked, and so it      Germany. In such a situation it seems that the
will be interesting to see how panellists decide       only way for a Complainant to obtain the transfer
cases in the future.                                   of a disputed .EU domain name would be to
                                                       prove bad faith, regardless of the nature of its
Secondly, the elements themselves are more
                                                       recognised right, even if the registrant has an
widely drafted: The UDRP requires a Complai-
                                                       unregistered right and the Complainant a registe-
nant to prove that a disputed domain name is
                                                       red one.
identical or confusingly similar to its trademark or
service mark. The scope was deliberately restric-      In addition, the UDRP provides that the Complai-
ted to trademarks or service marks on the basis        nant must prove both registration AND bad faith,
that the international framework for certain other     whereas the .EU ADR Rules provide for registra-
rights such as trade names, personal names and         tion or use in bad faith. This will place less of a
geographical indications is not as well developed      burden on Complainants and should avoid them



                                                                                                      235
       ALTERNATIVE DISPUTE RESOLUTION. ITS APPLICATION TO PROTECT INTELLECTUAL PROPERTY RIGHTS


having to prove passive bad faith in the event that        of confusion with a name on which a right is
the domain name was registered in bad faith but            recognised or established by national and/or
is not being used.                                         Community law or a name of a public body,
                                                           such likelihood arising as to the source,
The UDRP lists four circumstances which, in par-
                                                           sponsorship, affiliation or endorsement of the
ticular but without limitation, may be evidence of
                                                           website or location or of a product or service
the registration and use of a domain name in bad
                                                           on the website or location of the holder of a
faith. The .EU ADR Rules are broadly similar, lis-
                                                           domain name; or
ting five circumstances that may be evidence of
registration or use of a domain name in bad faith:     (5) the domain name registered is a personal
(1) circumstances indicate that the domain name            name for which no demonstrable link exists
    was registered or acquired primarily for the           between the domain name holder and the
    purpose of selling, renting, or otherwise trans-       domain name registered.
    ferring the domain name to the holder of a         It is this fifth circumstance that is additional.
    name in respect of which a right is recognised
    or established by national and/or Community        Of these five listed circumstances, the second
    law or to a public body; or                        example indicating bad faith is worth considering
                                                       in more detail, as it seeks to cover the situation
(2) the domain name has been registered in
                                                       where a domain name is registered but is not
    order to prevent the holder of such a name in
                                                       actually being used. As set out, it is significantly
    respect of which a right is recognised or
                                                       wider in the .EU ADR Rules than in the UDRP.
    established by national and/or Community
                                                       The UDRP provides that evidence of bad faith
    law, or a public body, from reflecting this name
                                                       may be shown by the Respondent’s registration
    in a corresponding domain name, provided
                                                       of the domain name in order to prevent the owner
    that:
                                                       of the trademark or service mark from reflecting
– a pattern of such conduct by the registrant can      the mark in a corresponding domain name, provi-
  be demonstrated; or                                  ded that the Respondent has engaged in a
– the domain name has not been used in a rele-         pattern of such conduct. The .EU ADR Rules
  vant way for at least two years from the date of     provide that bad faith may be indicated not only
  registration; or                                     by such a pattern of conduct by the Respondent,
                                                       but also:
– in circumstances where, at the time the ADR
  procedure was initiated, the holder of a domain      – if the domain name has not been used in a
  name in respect of which a right is recognised         relevant way for at least two years from the
  or established by national and/or Community            date of registration; or
  law or the holder of a domain name of a public       – if there are circumstances where, at the time
  body has declared his/its intention to use the         the ADR proceeding was initiated, the Respon-
  domain name in a relevant way but fails to do          dent has declared its intention to use the
  so within six months of the day on which the           domain name in a relevant way but failed to do
  ADR procedure was initiated;                           so within six months of the day on which the
(3) the domain name was registered primarily for         ADR proceeding was initiated.
    the purpose of disrupting the professional
                                                       In this second case, if the Complainant has failed
    activities of a competitor; or
                                                       to prove either the Respondent’s lack of rights or
(4) the domain name was intentionally used to          legitimate interests or bad faith on any other
    attract Internet users, for commercial gain, to    grounds, the panel shall suspend proceedings for
    the holder of a domain name website or             six months to allow the Respondent to submit
    other online location, by creating a likelihood    evidence of relevant use. This would appear to



236
   UNDER .EU: THE FIRST PAN-REGIONAL TOP LEVEL DOMAIN


be an attempt to resolve the passive bad faith         nants and Respondents alike. One has to wonder
issues that frequently arise under the UDRP in         why such changes from the classical and well-
the event of non-use, and would, effectively, force    tested UDRP have been made.
the use of the domain name. However, under the
.EU ADR Rules, bad faith registration alone would
                                                       The Remedies Available under the .EU ADR
be sufficient, regardless of non-use, or indeed
                                                       Rules
the Respondent’s lack of rights or legitimate
interests in respect of the domain name.               The remedies available for a successful Complai-
It has to be said that these subtle changes do not     nant under the .EU ADR rules are either cancel-
make things particularly clear. What is actually       lation or transfer of the disputed domain name,
being envisaged as a declaration of intent to use      as provided for in the UDRP. However, in the case
the domain name in a relevant way at the time the      of the .EU ADR Rules, transfer will only be
ADR proceeding is initiated? Does there need to        ordered if the Complainant satisfies the general
be an existing holding page at the domain name         eligibility criteria for registration, as set down in
stating that a site is under construction at the       Regulation (EC) No 733/2002. This means that a
time the ADR proceeding is filed? Is it sufficient     transfer may only take place if the Complainant
for there to be a mere registration when the ADR       falls into one of the three categories referred to
proceeding is filed and for the Respondent to          earlier.
state in his case that he/she intends to use the
domain name in a relevant way? If the latter is        Panelists, Appointment and Decisions
the case, then this is perhaps a potentially useful
“get out of jail” card for any Respondent who has      Both the UDRP and the .EU ADR Rules provide
not yet used the domain name and where bad             either for single member or three member panels,
faith on other grounds is not evident. He/she then     depending on the wishes of the parties. Inte-
has six months to use the domain name in a             restingly, the .EU ADR Rules allow a party to
“ relevant way ”. Is this what the drafters had in     challenge the appointment of a panelist, whereas
mind? The result may mean that clever and uns-         the UDRP does not. However, this is unlikely to
crupulous domain name registrants may happily          make much difference in practice, as the dispute
find themselves with a further six months use of       resolution provider decides on any challenge,
the domain name, plenty of time in which to            and its decision is final and not subject to appeal.
make money from traffic to the domain name.            Similarly, the .EU ADR Supplemental Rules pro-
The concept of “ use in a relevant way ” is interes-   vide that, within seven days of receipt of the deci-
ting; panellists will have to exercise the utmost      sion, a party may request the panel to provide
caution when considering what use of the domain        correction of any clerical errors or to provide, in
name will be in a “ relevant way ”. What will be the   the panel’s sole discretion, explanation and/or
threshold to determine this? Will financial invest-    interpretation of parts of the decision.
ments be taken into account? When the site only
consists of one or two pages, will this be use in a    Language Requirements
relevant way? Relevant use certainly implies a
connection between the Respondent’s activities         The language of the .EU ADR proceedings must
and its actual use of the domain name, but to          be one of the official languages of the European
what extent? Perhaps those making speculative          Union. Unless otherwise stated in the Registration
registrations may not fall foul of the ADR rules       Agreement for the domain name in question or
after all. The result of these subtle changes to       agreed by the parties, the language of the ADR
the UDRP is not particularly clear and they could      proceeding will be the language of the Regis-
have considerable consequences for Complai-            tration Agreement. In addition, upon written



                                                                                                        237
       ALTERNATIVE DISPUTE RESOLUTION. ITS APPLICATION TO PROTECT INTELLECTUAL PROPERTY RIGHTS


request of a party, a panel may decide in its sole      nation of having received poor advice plus either
discretion that the language of the ADR procee-         the rights owners or their registrar making errors
ding will be different to that of the Registration      in the .EU applications. In addition, any system is
Agreement. Decisions are published both in the          open to abuse, and the .EU Sunrise Period is no
original language and in an unofficial English          exception with some entities filing hundreds of
translation provided by the provider.                   Benelux trade marks in order to be able to parti-
                                                        cipate in the Sunrise Period. Some of the resulting
                                                        domain name applications have run, and conti-
CONCLUSION                                              nue to run into potential conflict with existing
                                                        rights owners and the ADR for .EU is proving to
The fact that the four-month Sunrise Period cove-       be a very popular process.
red not just easily verifiable registered trade-
                                                        Despite these problems, this first layer of protec-
marks but also a variety of unregistered rights,
                                                        tion for intellectual property rights owners appears
such rights being treated differently by different
                                                        to have worked well. Where rights owners have
Member States, made the necessary documen-
                                                        not been able to make successful use of this first
tary evidence critical and the verification and vali-
                                                        layer of protection, they are now turning to the
dation of these rights a complicated process.
                                                        ADR process and this is leading to a large num-
This led to a large number of ADR complaints
                                                        ber of complaints many of which are likely to be
against EURid, the Registry, 497 in total. Like the
                                                        more complex than those we have seen under
open registration period that followed, the sunrise
                                                        the classical UDRP. This is due in part to the
period had a first come, first served, principle.
                                                        nature of the eligible rights. The ADR process
Competing rights across all 25 Member States
                                                        itself, though clearly based upon the UDRP is in
abound, and where this is the case much came
                                                        fact a deceptively disguised variant of the UDRP
down to the successful registrant;
                                                        with some very significant differences, which
(a) having carefully chosen a registrar plus ensu-      brand owners need to be aware of.
    ring a high position in the queue length in
    order to make a successful application and          Since the launch of .EU the majority of the dispu-
    get served first, and                               tes (65 %) have been against decisions taken by
                                                        the Registry, EURid (ADR I cases, 497 decisions
(b) having taken great care with the documen-           in total). The remaining 35 % of cases (ADR II
    tary evidence of its intellectual property rights   case s, some 260 decisions to date) have been
    provided.                                           initiated against the registrants of .EU domain
Intellectual property rights owners across the          names. New complaints are being filed at the
European Union who were advised of and aware            rate of approximately one per day. As new com-
of the upcoming launch and eligibility require-         plaints are only now against the registrant the
ments of .EU were able to make timely and com-          split 65 % /35 % will gradually invert.
prehensive applications during the Sunrise Period
                                                        Statistics show that EURid's decisions have been
based upon their intellectual property rights. The
                                                        confirmed in a little over 75 % of the cases filed,
result is that many secured their domain names
                                                        whilst in cases against the registrants themselves
of choice. Entities outside the European Union
                                                        the success rate for Complainants is a little over
were able to meet the registration conditions pur-
                                                        50 %. This is a considerably lower success rate
suant to Regulation (EC) No 874/2004 provided
                                                        than with the classical UDRP where the success
they had a licensee of their relevant trademark
                                                        rate for Complainants is in the realm of 80 %. It is
rights based in the European Union.
                                                        perhaps an indication of the difficulties being
However a large number of rights owners ran into        encountered by Complainants due to the com-
trouble during the Sunrise Period due to a combi-       plex nature of the eligible rights under the .EU



238
    UNDER .EU: THE FIRST PAN-REGIONAL TOP LEVEL DOMAIN


ADR Rules, but also the fact that Respondents                            The launch of .EU has certainly proved a chal-
seem to be fighting back in more cases than they                         lenge for intellectual property rights owners and
do under the classical UDRP.                                             in all likelihood, despite attempts to prevent this,
                                                                         it will prove to be yet another opportunity for
.EU has long been awaited, but with one in 14
                                                                         cybersquatters.
people in the world living in the European Union,
a population equivalent to the combined popula-
tions of the USA and Japan, potential applicants
eligible for .EU are numerous and the future for
.EU appears a bright one.




    Endnotes

   1. Regulation (EC) n° 733/2002 of the European Parliament and of the council of 22 April 2002 on the implementation of the .eu Top Level
Domain.

     2. Commission Regulation (EC) n° 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions
of the .eu Top Level Domain and the principles governing registration.

    3. http://www.eurid.eu/en/shared/documents/annex-1/annex_1_v1_0.xls
    4. http://www.eurid.eu/en/shared/documents/sunrise_rules_v1_0.pdf
    5. http://www.adreu.eurid.eu




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