Editor’s note:

Flip Petillion co-chairs, with Lorne Byatt of Morton Fraser (Edinburgh) the Interlaw European IP/IT Special Business Team and edits the EU IP/IT Newsletter, scheduled to launch this year. This is one article that will appear in the inaugural issue. Says Flip, “It is now several years ago that I advised on one of the first gTLD recovery cases. At that time - it was mid-nineties of the previous century - the future of domain name recovery procedures was quite unpredictable. ADR was not in place yet. But it was fun to be on a green playing field. I had the privilege of rendering the first ADR decision in Belgium.

Now, many years later, it is safe to say that domain names have acquired a full-fledged status within intellectual property rights, next to trademarks, copyrights, patents, etc. In the early days, some smart guys thought they could hijack domain names and squat the corporations one would normally have expected to register those domain names. Now, cyber squatting has become less 'popular' and in some cases, domain names are the focus of real battles between multinationals with conflicting geographical interests.” The newsletter will draw from the expertise of IP/IT Interlawyers throughout Europe/Middle East/Africa region. You may subscribe to the Interlaw EU IP/IT newsletter by contacting Mr. Petillion directly, fp@janson.be.

In Belgium, a domain name can be recovered by either lodging a procedure before the competent Courts (for .be domain names and for other domain names registered by persons with a residence or an establishment in Belgium) or by starting an alternative dispute resolution ('ADR') procedure (for .be domain names). The latter is done through Cepina, the Belgian Centre for Arbitration and Mediation.

Starting an ADR procedure does not prevent either the Licensee or the Complainant from submitting the dispute to a Court.

ADR procedure

By registering a domain name with DNS BE (Belgian domain name registration organisation), the Licensee accepts to submit possible future disputes before one of the accredited dispute resolution entities (at present, only Cepina is accredited). The language of this written procedure is the one chosen by the Licensee at the time of the domain name registration.

Through a procedure before Cepina, the Complainant can either obtain the cancellation of the domain name registration or the transfer of the domain name. To that purpose, the Complainant has to prove that the following cumulative conditions are fulfilled:

(i) The domain name is identical or confusingly similar to a distinctive sign of the Complainant;
(ii) The Licensee has no rights or legitimate interests in the domain name;
(iii) The domain name has been registered or is being used in bad faith.

The following circumstances are an indication that the Licensee has rights or legitimate interests in the domain name:

- Prior to the dispute, the Licensee used the domain name for a bona fide offering of goods or services, or he made demonstrable preparations for such use; or

- The Licensee has been commonly known under the domain name even if he had acquired no trade mark; or

- The Licensee is making a legitimate and non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark, trade name, social name or corporation name, geographical designation, name of origin, designation of source, personal name or name of the geographical entity at issue.

The evidence of bad faith can inter alia be demonstrated by the following circumstances:

- The domain name was registered or acquired primarily for transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the costs directly related to the domain name; or

- The domain name was registered in order to prevent the Complainant from reflecting its distinctive sign in a corresponding domain name; or

- The domain name was registered primarily for disrupting the business of a competitor; or

- The domain name was intentionally used to attract, for commercial gain, Internet users to the Licensee's web site or other on-line location, by creating a likelihood of confusion with the Complainant's distinctive sign; or

- The Licensee registers one or more personal names without a demonstrable link between him and the domain names.

This procedure is quite fast: within 21 calendar days of the start of the procedure, the Licensee must submit a response to the complaint with Cepina. Within 7 calendar days following receipt of this response, Cepina appoints an independent Third-Party Decider. 7 calendar days following this date, the debates are deemed to be closed. Within these 7 days, the Complainant can request permission to formulate a reply. Within 14 calendar days following the closing of the debates, the Third-Party Decider will send his decision to Cepina which, in turn, will forward it to the parties within 7 calendar days.

The administrative cost of a Cepina domain name procedure is 1.620,- EUR, lawyer's fees not included. The Third-Party Decider is bound by strict rules. For example, even if the Licensee is clearly in bad faith, but he has some legitimate interest in the domain name (e.g., he has a distinctive sign which is similar to the domain name), the complaint will not be successful. In such a case, the second condition is not fulfilled and the Third-Party Decider will not examine the issue of bad faith.

Court procedure

A Complainant can also initiate a summary procedure before the President of the Commercial Court (if the Licensee is a merchant) or before the President of the Court of First Instance (if the Licensee is not a merchant). The language of this procedure will be either Dutch or French.

Until 2003, almost all cases were brought before the commercial courts, mostly on the basis of trade marks infringement and unfair commercial practices. The Law of 26 June 2003 on the abusive registration of domain names ('the Law') introduced an alternative. By virtue of the Law, a domain name is abusively registered if the following cumulative conditions are fulfilled:

(i) the domain name is identical or confusingly similar to a distinctive sign of the Complainant;
(ii) the Licensee has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered with the aim to cause damages to the Complainant or to obtain an unjustified advantage.

Whereas the first and second condition are more or less the same as in the ADR procedure, the third condition clearly differs ('registration with the aim to cause damages or to obtain an unjustified advantage' vs. 'registration or use in bad faith'). If no intention to prejudice a third party or to obtain an unjustified advantage was present at the time of registration, but the domain name is used in bad faith afterwards, the Complainant will preferably initiated an ADR procedure.

As in the ADR procedure, the Complainant in the summary procedure can request the cancellation of the domain name registration or its transfer. Damages can only be granted in a judgement on the merits, which requires a separate procedure before the normal Courts.

Apart from the lawyer's fees, a procedure before the Courts is free of charge. A summary procedure based on the Law is relatively quick (if the Licensee has been summoned in Belgium, he must appear before the President of the Court within 8 days following the serving of the writ; a judgement is rendered within a month after the hearings). Contrary to the (private) ADR procedure, a judgement by the President of the Court is directly enforceable.

In practice, and due to the conciseness of the Law which lacks the examples set out in the DNS and Cepina rules, the judgements of the Presidents of the Courts based on the Law seem to be quite unpredictable. Also, the Presidents of the Courts tend not to follow the same principles set out in the Cepina case law