04 December 2019
On 19 December 2019, the amendments of the .UA Domain Name Dispute Resolution Policy will come into force, according to which it will be possible to consider domain disputes on third-level domains (.COM.UA). Previously (since 19 March 2019) it was possible to use the alternative procedure only for second-level domains (.UA).
Taking into account that there are many current litigation matters in Ukraine with respect to the illegal use of trademarks and company names with domain names .COM.UA, this change is very important for Ukraine as:
- it will allow right holders to protect more effectively their intellectual property rights in domain names with gTLDs .COM.UA, within a shorter time-frame and at less cost;
- it will allow right holders to avoid long (sometimes 1-2 years) and expensive litigation;
- it will reduce the pressure of too many cases for the courts.
Second-level domains (.UA) have always had better protection from cybersquatting and other violations, since such domains could be registered only if the company has a registered trademark. As for third-level domains .COM.UA, they could be purchased without the right for the trademark via a simpler registration procedure. This is why right holders have often encountered violations of intellectual property rights on websites with these domains.
Therefore, the possibility of resolving disputes over .COM.UA domain names in out-of-court dispute resolution procedures under the .UA Domain Name Dispute Resolution Policy will substantially simplify the issue of rights protection.
To recall, the .UA Domain Name Dispute Resolution Policy is an alternative way of resolving disputes compared with litigation, and has the following advantages:
- Speed – from the moment of the Complaint’s filing with the WIPO Centre to obtaining a decision and transfer of domain name to the legal owner will run no more than 60 days;
- Convenience – parties’ personal presence (including teleconference, videoconference, etc.) is not required;
- Correspondence – in electronic format;
- Decision enforcement (execution) – at the beginning of the proceeding the disputed domain name is blocked (as an enforcement measure); decision on domain name transfer is enforced directly by the Registrar; and
- Less costly procedure – resolution of a case in respect of 1-5 domain names by a single Panellist costs US$1,500, resolution by three Panellists costs US$4,000.
The complaint is submitted by approved sample. The proceedings are conducted in English or Ukrainian.
The complainant must prove each of these three elements of infringement:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- The Respondent has no rights or legitimate interest in relation to the domain name; and
- The Domain name is registered or is being used in bad faith.
As a result of the dispute resolution, a decision can be made to cancel – or transfer – the domain name in favour of the complainant.
The full text of the amended .UA Domain Name Dispute Resolution Policy and Rules for .UA Domain Name Dispute Resolution Policy may be found on the WIPO website via this link: https://www.wipo.int/amc/en/domains/cctld/ua/index.html.
Overall, implementation of the alternative procedure described above for resolving domain name disputes on .COM.UA will give to right holders an effective additional remedy to protect their violated rights on the Internet, and will allow a reduction in workload for the Ukrainian courts.
If you would like to know more about the subject covered in this publication, or our services, please contact Maria Koval.