The Brazilian Internet Management Committee (CGI.BR) has announced the creation of an administrative dispute resolution proceeding for ".br" domain names. This measure is important because it provides trademark owners with an additional tool to fight cybersquatters in Brazil and avoid the misappropriation of their marks in the Internet.
The rules which regulate the resolution proceeding are already in force and have some similarities in relation to the ICANN’s UDRP proceeding for generic top-level domain names. For a Complainant to prevail in a dispute involving a ".br" domain name, it has to prove that the domain name has been registered or is being used in bad faith, as well as to meet one of the following requirements:
a) the domain name is identical or confusingly similar to a mark in which the Complainant has rights, which is the object of a granted registration or a prior pending application filed at the Brazilian Patent and Trademark Office (BPTO);
b) the domain name is identical or confusingly similar to a mark of the Complainant which, despite not being the object of a granted registration or a pending application in Brazil, is a well-known mark under the terms of article 6 bis of the Paris Convention and article 126 of the Brazilian Industrial Property Act (Law No 9.279/96);
c) the domain name is identical or confusingly similar to a trade name, corporate name, civil name, family or patronymic, well-known pseudonym or nickname, single or collective artistic name, in which the Complainant has rights or even to another domain name registered by the Complainant.
As can be seen, the Complainant will be able to rely not only on a registered mark granted by the BPTO but also on well-known marks not yet registered in Brazil, corporate names, civil names, artistic names, among other distinctive signs.
The Complainant can rely even on a prior domain name which is confusingly similar to the challenged domain name. This cause of action can be used against typosquatters and indicates the CGI.BR’s intention to incorporate general principles of unfair competition and unjust enrichment to the regulations.
The rules also provide a non-exhaustive list of circumstances which shall be evidence of bad faith. The list includes situations where the domain name owner has acquired the domain for: selling the domain name registration to the complainant; preventing the owner of the mark from reflecting the mark in a corresponding domain name; disrupting the business of the complainant; or attempting to attract, for commercial gain, Internet users to its website or other on-line location.
The available remedies are limited to the maintenance, transfer or cancellation of the domain name. No damages can be requested. Further, the decision will not be implemented if one of the parties brings a lawsuit or an arbitration proceeding against the other party within 15 days counted from the publication of the decision.
The disputes will take place in one of the Dispute Resolution Service Providers authorized by the Registrar. For the moment, the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) and the Brazil-Canada Chamber of Commerce – CCBB, in São Paulo, are the authorized Providers. According to the rules, the Provider shall render a decision in 90 days counted from the filing of the complaint. The deadline might be extended upon the Provider’s request but the whole proceeding cannot surpass 12 months.
Initially, the proceeding will comprise just domain names registered as from October 1, 2010, because the dispute resolution clause has to be included in the contracts entered into with the Registrar. Although this restriction imposes a limit in the scope of the proceeding at this initial phase, the dispute resolution clause might be extended to all domain names when the registrations are renewed, but it still depends on further deliberation from the Registrar.
In spite of this, trademark owners now have a cheaper and less time-consuming proceeding to fight illegal domain name registrations in Brazil, which, by itself, indicates the authorities’ praiseworthy concern in curbing cybersquatting and other domain-related fraudulent practices.