WIPO, the leading provider of domain name disputes under the UDRP, has been appointed as a service provider for .eu disputes, as of June 1, 2017.
Previously, the only provider of dispute services for the .eu top-level domain was the Czech Arbitration Court (CAC) -- also a UDRP provider -- which has handled about 1,200 .eu disputes since 2006. Now, trademark owners will be able to choose between both WIPO (the World Intellectual Property Organization) and CAC when filing a complaint under the .eu Alternative Dispute Resolution Rules (ADR).
Differences between .eu ADR and UDRP
The .eu ADR is very similar, but not identical, to the UDRP (the Uniform Domain Name Dispute Resolution Policy). Three key differences between the policies:
- The .eu ADR is limited to disputes involving "the name or names in respect of which a right or rights are recognized or established by national and/or Community law." However, the UDRP applies broadly to any "trademark or service mark in which the complainant has rights" -- without reference to any jurisdiction's law.
- The .eu ADR only requires a complainant to establish either that a domain name registrant lacks legitimate interests or that it has acted in bad faith. However, the UDRP requires versions of both of these elements.
- The .eu ADR requires that a complainant prove a disputed domain name "should be considered as having been registered or being used in bad faith" (emphasis added). However, the UDRP requires that a complainant prove a disputed domain name "has been registered and is being used in bad faith" (emphasis added). This is a key difference that many country-code top-level domains (ccTLDs) have adopted.
As these differences show, the .eu ADR is in some ways both broader and narrower than the UDRP. Therefore, trademark owners should carefully review the .eu policy before deciding whether filing a complaint is appropriate.
Similarities Between WIPO and CAC
As with the UDRP, WIPO and CAC have each adopted their own supplemental rules for the .eu ADR.
CAC has for some time offered a discount on .eu complaints, reducing the starting filing fee from 1,300 euros to only 300 euros. WIPO has announced that EURid, the registry manager for the .eu ccTLD, has made a similar arrangement, temporarily subsidizing 1,000 euros toward the standard filing fee -- making the fees identical at WIPO and CAC.
However, while both CAC and WIPO accept the payment of filing fees via bank transfer, WIPO also accepts payment online via credit card and also via a WIPO account.
CAC requires that all documents be filed online, while WIPO accepts filings via email.
Both WIPO's and CAC's supplemental rules limit .eu complaints and responses to 5,000 words each.
Finally, while it is unclear how WIPO intends to assign .eu proceedings to panelists, WIPO has a roster of about 463 panelists, while CAC has about 112 panelists.
(Disclosure: I am a panelist with both WIPO and CAC.)