Bird & Bird’s IT & E-commerce Law Bulletin continues to report on developments at the Swedish ccTLD (see previous articles Swedish ccTLD opens up and Name napping – now also in Sweden).
NIC-SE Network Information Centre Sweden AB (“NIC-SE”) is the registry and co-ordinator for the Swedish top level domain ("TLD") ".se". NIC-SE was formed by the IIS foundation (Internet Infrastructure in Sweden), an organisation also responsible for setting the regulations for registration under the ".se" domain.
Following a series of reforms beginning in April 2003, the number of domain names registered under ".se" has more than doubled to circa 235,000 in March 2004. The first reform was liberalising a restrictive set of registration requirements for “.se” in April 2003. This was followed by the introduction of Internationalised Domain Names (IDN) in October 2003, and the lowering of the annual subscription charge by 35 percent to circa 17 Euros (excl VAT) from January 2004.
Under the present regulations all applications for registration that meet with the technical requirements will be registered by NIC-SE on a “first-come first-served” basis.
The liberalised regulations for registration included an alternative dispute resolution procedure (“ADR”) in order to deal with apparent abuse. Examples include where someone has registered some other party’s registered trade mark, company or surname without a legitimate interest in the name and where a domain name has been registered with a view to selling or transferring it, preventing a third party from using its distinctive mark as a domain name or disrupting the business operations of a competitor.
The ADR is intended to be used in cases where it is clear that (i) the domain name is identical or confusingly similar to the Applicant’s trade mark (registered or not), company name or surname, (ii) the domain name holder has no right or legitimate interest in the designation that constitutes the domain name and (iii) the domain name has been registered and used in bad faith.
Since the first ADR decision was published in July 2003, a total of 43 cases have been decided as of end of March 2004 (4 cases are pending). According to the IIS foundation, this caseload is in line with expectations. 31 of the 43 decided disputes ended with the contested domain name being transferred to the complainant.
In accordance with Section 22 of the ADR procedural rules, an application for ADR may be filed in the same language as the original domain name application. Where the domain name application was filed in English, the language of the dispute resolution procedure shall also be English. To date, 4 procedures have been conducted in English.
Unsuccessful challenge from sunrise lottery loser
Of all the ADR cases, 9 domain names have involved the media industry (TV, radio, newspapers). Nearly all of these can be characterised as typical of the kind of cases which the ADR is designed to handle: traditional domain name speculation, misspellings of popular sites and possible use of a domain name to create bad will against another company or person. All but 1 of the ADR applications for domain name transfer have been successful.
The exception concerned the domain name “p3.se”. P3 is most likely associated by residents of Sweden with Channel 3 of the Swedish Public Radio. This Channel has the greatest number of radio listeners on a national basis and has been broadcasting under this name since 1962.
The holder of the “p3.se” domain name was a software programmer, Peter T. He gained the domain name under the lottery-like sunrise proceedings at the time of the April 2003 liberalisation. Over 5,100 domain names had more than one application pending in these proceedings.
When the Swedish Public Radio failed to gain the domain name “p3.se”, they instigated ADR proceedings and demanded the domain name be transferred.
The Adjudicator found that, while the registered mark “P3 SVERIGES RADIO” was too different from the domain name P3 to be mistaken for it, the complainant had gained rights to the mark P3 through usage.
However, the domain name holder was found to have registered the domain in good faith. Peter T had demonstrated through affidavits that he had been known for a long time under the nickname “P3” in a wide circle of friends, acquaintances and professional contacts. The origin of the nickname was that Peter T had been the “third Peter” in his circle of childhood friends, and the use of the nickname had persisted. While Peter T had been aware of the P3 mark for the radio programme, the Adjudicator pointed out that there are several other registered marks identical to P3. Peter T was deemed to have acquired a right to the mark P3 through usage that was sufficient to give him a valid interest in the domain name. There was no indication that Peter T had intended to sell the domain name for gain.
The decision gives an indication of how the ADR procedure might weigh conflicting claims to a mark that has been registered. The threshold to demonstrate a valid interest in a domain name seems to have been set at a fairly low level.
Important - The information in this article is provided subject to the disclaimer. The law may have changed since first publication and the reader is cautioned accordingly.