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March 01, 2007
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Daniele Velloso
The expansion of the Web has opened a new market for registration of marks, company names, and famous persons. Domain names have become valuable assets and, as such, are subject to extensive dispute.
In an effort to curtail disputes between domain and trademark, the entity responsible for registering domains in Brazil, Registro.br/Nic.br, has created what is known as the domain release process. One of the many rules established by the entity concerns domains in default, with fees due, and those which cancellation was requested. In both cases, ownership is lost or relinquished by one particular person or company and then begins the release process.
The domain release process is exclusive to Brazil and unique in the world. In the case of global domains (gTLD), such as the eminent .COM., if annual fees are not paid in full, the domain automatically enters the process for becoming available, at which time any person may request it be registered again.
The Brazilian release process involves the gathering into lots of numerous domains that have become available, whether by default or explicit request. Information regarding the opening of the fifteen-day process is found on the Registro.br/Nic.br website, normally 3 days before it commences. All candidates for the registration of released domain names must file for registration during this period.
Until 2004, when two or more interested parties requested a domain in a release process, none of them was granted the name. No administrative solution was in place for verifying the legitimacy of interest in a domain name and its consequent authorization, which rendered many domains unavailable for indeterminate periods, especially those based on marks that were widely recognized or registered by others who failed to maintain payments.
In order to remedy the problem of unavailable domains, Registro.br instituted one of the most important changes in the rule: the introduction of the “distinction” option, which in the words of the entity means, "At the time request is submitted for a domain name, the petitioner may argue that it holds a distinction relevant to its request for registration a domain in the release process."
To benefit from this distinction option, the petitioner must satisfy any of the following conditions:
a) the entity applying in the release process must hold the registration certificate for a trademark identical to the domain name requested;
b) the domain name requested must be identical to the company name, in use for at least twelve months;
c) the domain name must be representative of the entity’s name and contained in its company name.
With the conditions met, the petitioner is qualified to select the distinction flag on the domain name application form. This option indicates that the candidate holds the registration of a mark or company name that corresponds to the domain name in question.
Prior to inclusion of the distinction option, Registro.br dealt with one of three possible scenarios:
a) no one requested the registration – the domain was released to anyone who registered it;
b) only one company requested the registration – this company received the right to use the domain;
c) two or more companies requested the registration – the domain underwent a new release process established by Registro.br/Nic.br.
With the inclusion of the distinction option, when two or more candidates select the same domain name, the one indicating a distinction may obtain the right providing it presents evidence of the mark and commercial name. Historically, Registro.br has promoted thorough analysis of documentation. Important factors have been the appropriateness of the domain name for the petitioner’s activity as well as its credibility.
Inclusion of the distinction option was one the most significant changes in the long history of the release process for domain names in Brazil: the petitioner confers upon himself the right to use the domain, preventing the undue use of names. As such, the domain release process in Brazil circumvents processes that may take advantage of “opportunity,” thereby enhancing name protection and avoiding inappropriate releasing of names.
The experience of the release process is an extremely important advantage over the competition. The most important factor in avoiding loss of a domain name is competent management of the name portfolio, with payments and renewals kept up to date, this applying to domains registered either in Brazil or overseas.