Tobias Cohen Jehoram
De Brauw Blackstone Westbroek

Tobias Cohen Jehoram of De Brauw Blackstone Westbroek explains why arbitration has proven to be an effective means of recovering domains in Europe

How central are domain names to building a successful brand?

They are becoming less and less central. Domains are associated with a successful brand, but few people search for brands by inputting a specific domain name into a search engine. Instead, they will type a brand’s name and a search engine will simply display the domain associated with the statement in its search results.

Domain names are generally far less relevant than they used to be. But trademark owners want to have an established domain for their brands because it is a reflection of their identities. Domains are therefore important, but not as essential as they used to be.

What’s your position on the advent of new gTLDs?

There has not been the avalanche of interest in new gTLDs that was expected in the beginning. I was slightly disappointed in the number of gTLDs that were registered, although perhaps it is on the rise. There was no real rush to register a brand under the new gTLD programme because most brands already have domain names that the public is familiar with. The new gTLDs are just a costly extra.

How successful have arbitration proceedings proven?

When it comes to enforcement, there are many different arbitration proceedings, including national and international levels. From a lawyer’s perspective, these systems are extremely effective.

Arbitration has allowed for the easy transfer of a domain name. It’s quick and relatively cheap. I’d say that it’s a success story.

How are domain disputes typically handled in the EU?

There are special domain name institutes. An independent body, the Czech Arbitration Court in Prague, deals with all .eu domain disputes and there is a set of rules, which, although applied universally, differ slightly. All second-level domains in TLDs such as .com, .biz, .info, .net and .org are dealt with by the World Intellectual Property Organization system, the Uniform Domain Name Dispute Resolution Policy (UDRP). Then there are different proceedings per country for country code TLDs such as .co.uk. But the standards applied, although not exactly identical, are very similar, which means we have international standards when it comes to fighting domain names and cybersquatting.

Have any domain disputes reached the courts in the EU? Is there much point?

Some have. The number has decreased significantly from around 10 to 15 years ago. We still had a few cases, but that was before the arbitrations became effective.

In the past, cybersquatters would register thousands of different trademarks as domain names. Brands would join forces to take these individuals to court, where they could seek transferal and injunctions against future abuse. That’s an important point—arbitration doesn’t provide injunctive relief.

But the business model of cybersquatting has virtually disappeared here because of the case law and the effectiveness of arbitration. Cybersquatting is far less common in Europe, whereas it is more popular in China.

The cases that now go to court are typically less clear-cut. They feature scenarios where parties have some sort of business relationship with each other, not necessarily a domain name that is registered in bad faith. These business relationships can be difficult to explain in arbitrations proceedings, so for subtle disputes, brands still have to go to court. An example of this sort of dispute is when a former employee registers a domain name relating to the brand, or when an online business has grown significantly and become well known under an initially generic name.

How are generic terms faring in trademark law at the moment?

In principle, a generic name or phrase would not be eligible for trademark protection, unless it has acquired distinctiveness. This is an issue that still needs to be addressed because of the differences in case law across European jurisdictions.

We see some differences because rights such as freedom of speech come into play. If an individual opposes fracking, for example, and registers a domain such as essosucks.com, it’s unclear in Europe whether that is trademark infringement.

Of course, this depends on whom you ask. Individuals can oppose fracking, but they do not need to be offensive or use a brand’s trademark. Those aren’t necessary to express your opinion. Personally, I would see that example as trademark infringement, but there are plenty of courts that would hold that the person who registered that particular domain was expressing their right to freedom of speech.

In the US, for example, courts might consider essosucks.com to be protected under freedom of speech, but in Europe, we tend to feel differently about it.

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