Are the Decisions of the International Bodies in Alternative Dispute Resolution (ADR) Based on the Uniform Dispute Resolution Policy (UDRP) for Domain Names Subject of the Court Application Provided by article 364 Romanian Civil Procedure Code?

AuthorBeatrice Onica Jarka
Pages110-118

Beatrice Onica Jarka. Lecturer, Ph.D., Law Faculty, “Nicolae Titulescu” University, Bucharest (e-mail: beatrice.onicajarka@cunescu.ro).

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Introduction

This study is intended to cover briefly the proceedings available under Romanian law by which an Administrative Panel decision awarded in an alternative dispute resolution for domain names based on UDRP may be challenged in a Romanian court and if a review of such decision is provided by the Romanian law under article 364 from the Romanian Civil Procedure Code.

The study addresses the dispute resolution mechanism under ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) and clarifies the procedural opportunities a party in the UDRP based alternative dispute resolution has to challenge an Administrative Panel decision in case it is not satisfied with such decision. The importance of the study matter resides in providing guidelines in a legislative and doctrinal vacuum as it is the enforcement of the domain names rights under the Romanian jurisdiction. For this purpose the provisions of the UDRP shall be examined together with the principles of New York Convention of 1958 on the Recognition and Enforcement of Foreign Arbitral Awards and the provisions of article 364 from the Romanian Civil Procedure Code. The study intends to conclude on the possibility to challenge an Administrative Panel Decision UDRP based on the action for cancellation provided by the saidPage 111 article, and implicitly on the jurisdiction of the Romanian courts to review an UDRP based. Administrative Panel Decision

Literature Review

Konstantinos Komaitis, PhD Student, University of Strathclyde, Glasgow, UK, Pandora’s Box is Finally Opened: The Uniform Domain Name Dispute Resolution Process and Arbitration, A. Michael Froomkin, Comments on ICANN Uniform Dispute Policy, Gary Soo B.Sc, Domain Names for the Asian Markets), Colm Brannigan, The UDRP: How Do You Spell Success?

UDRP procedure presentation

UDRP had been adopted by ICANN (International Corporation for Assigned Names and Numbers) in 1999, in order to serve as an accessible mechanism for the resolution of certain types of disputes between registrants and third parties over the registration and use of domain names.

UDRP1 is a body of material and procedural rule incorporated by reference in the Registration Agreement between the Registrar and the Registrant of the domain name.

The UDRP2 provides for mandatory administrative proceedings terms and conditions in a connection to that type of dispute when a third party asserts to an UDRP provider that:(i) a certain registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and(ii)the registrant of the said domain name have no rights or legitimate interests in respect of the domain name; and (iii) the said domain name has been registered and is being used in bad faith. Therefore, the UDRP is limited to those cases of ‘cyber squatting’ or those of ‘cyber piracy’.3

The UDRP procedures are to be conducted before one of the administrative-dispute-resolution service providers listed on ICANN website. In 2008, the providers listed on the ICANN website4 are Asian Domain Name Dispute Resolution Centre (ADNDRC) (approved effective 28 February 2002). The National Arbitration Forum (NAF) (approved effective 23 December 1999), World Intellectual Property Organization (WIPO) (approved effective 1 December 1999) and The Czech Arbitration Court (CAC) has been approved in January 2008 as a UDRP provider and plans to start accepting Complaints before the end of 2008.

The complainant may opt between a one-member and a three-member panel.5 Each panel decides definitively the case. If the complainant chooses a one-member panel, the domain name holder (the respondent) has the choice of disregarding his decision and opting, instead, to have the dispute heard by a three-member panel.6

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The respondent has a twenty-day deadline to respond to the complaint as raised by the trademark owner and submit a written response to the Provider.7 In case the respondent fails to submit a timely response, the panel will almost certainly decide the action based solely on the complainant’s arguments.8

The only remedies available under the UDRP are cancellation of the infringing domain name or transfer of its registration to the trademark holder9. There is no possibility for damage recovery under the UDRP. This means that in case the Administrative Panel rejects the complaint the situation of the disputed domain name registration remains unchanged.

Court proceedings

Pursuing a claim under the UDRP does not prevent either party from pursuing traditional means of litigation or arbitration10.

The mandatory administrative proceeding shall not prevent the respondent or the complainant from submitting the dispute to a Court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded11.

Both UDRP and the Rules for UDRP12 provide also for the case in which a party initiates any legal proceedings during a pending administrative proceeding in respect of a domain-name13.

The Court proceedings may be initiated in a competent Court or in a Court of mutual jurisdiction as provided by both UDRP and the Rules for UDRP. While the competent Court is not defined expressly in either UDRP or Rules for UDRP, mutual jurisdiction is considered, according to Rules for UDRP14, a Court jurisdiction at the location of either the principal office of the Registrar provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for Court adjudication of disputes concerning or arising from the use of the domain name or the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.

Therefore, the UDRP is not exclusive, and the dispute can be submitted to a Court prior to a UDRP decision, during an UDRP procedure or after a proceeding has been concluded.

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UDRP based decision challenge in the courts

Fur the purpose of this study; we further note that the case of filling Court proceedings in a competent mutual jurisdiction is expressly provided in both UDRP and Rules for UDRP.

Nevertheless, one may question the nature of the Court proceedings in a competent mutual jurisdiction under UDRP after the UDRP decision had been awarded.

There are two possible characterizations of these proceedings depending on the object of these proceedings.

First refers to a separate Court proceeding depending on procedural means available under the local law in which the parties try to establish and enforce their domain name or trademark rights in connection with a disputed domain name. In this case the Court proceedings shall not refer to the UDRP procedure or decision, being limited to the enforcement of local law rights in connection to the disputed domain name. Such proceedings shall not subject the UDRP proceedings and decision to a direct review by the local court. The outcome of such proceedings shall nevertheless block the enforcement of an UDRP decision of transfer or cancellation of a domain name by the Registrar, if the local mutual jurisdiction Court findings are different from those of the UDRP Administrative Panel. In the same time, an UDRP decision which finds the complaint unfounded by be contradicted by a Court decision which considers that the disputed domain name should be transferred or cancelled. The explanation for a different finding by the Court in comparison with the Administrative Panel is that the Court is under no obligation to apply the material provisions provided by UDRP and there is no...

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