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Registration and use of domains at ccTLD registry

Registry

Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?

The Japan Registry Service KK (JPRS) is responsible for registration of .jp, the ccTLD in Japan. The JPRS assumed registration services for .jp from the Japan Network Information Centre (JPNIC) in 2002. The JPNIC now primarily handles the administration of internet resources including IP addresses, the study of international practices and policies for internet-related matters, and researching technologies related to internet infrastructure.

Method

How are domain names registered?

Applicants must apply for a registration to certain qualified registrars. The registrars deliver the application to the JPRS for review. Applicants can obtain a registration once the JPRS approves the application.

Duration

For how long is registration effective?

Registration is effective for one year. Usually registrars require registrants to complete a renewal procedure before the effective term expires. The effective period is extended for one year if the renewal procedure has been completed.

Cost

What is the cost of registration?

The cost of the registration fee varies from registrar to registrar.

Transfer

Are registered domain names transferable? If so, how? Can the use of a domain name be licensed?

Registered domain names are transferable. A registrant can transfer a .jp domain name at its discretion by filing a transfer request to the JPRS through qualified registrars. Theoretically speaking, it is possible for a registrant to allow a third party to use a registered domain name. However, this is different from a licence for intellectual property rights and there is no registration of such licence for a domain name. In that sense, the possible licence for a domain name mentioned here essentially equates to the rental of a domain name.

ccTLD versus gTLD registration

What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?

Registration of a .jp domain name is administered by the JPRS and certain qualified registrars, whereas registration of a gTLD is administered by ICANN and registrars appointed by ICANN. A notable difference in registration requirements is the locality requirement. In the case of organisational type domain names, such as co.jp and ne.jp, the registrant must have a local entity that has a domestic address registered and verified in Japan (for example, company registration is required to apply for co.jp). Even if an applicant tries to register a general-use .jp domain name like .jp, an applicant needs to register at least a local contact address and person in Japan who is not necessarily registered or certified but can be reached by the JPRS.

Registrants’ privacy

Can the registrant use a privacy service to hide its contact information?

With regard to .jp domain names, the registrant name and contact information of the person in charge are disclosed on the JPRS WHOIS website in principle. However, registrants of the general-use .jp domain name and prefecture .jp domain name can file an application to the JPRS to hide the registrant’s name on WHOIS.

On the other hand, some registrars provide a privacy service, at their discretion, for their registrants.

Pre-litigation actions

Disclosure of registrants’ private details

Under what circumstances will a registrant’s privacy-protected contact information be disclosed? What processes are available to lift a registrant’s privacy shield?

A third party may request disclosure of the hidden information described in question 7 against the JPRS by indicating the reason for the request; for example, to solve a problem regarding network operation or the registration of a .jp domain name. The outcome of such a request may be that the registrant’s other information, including their address and representative’s name, may also be disclosed to the requester.

On the other hand, the requirements for requesting the disclosure of information under a registrar’s privacy service are subject to each registrant’s terms and conditions.

Third-party notification

Are third parties (such as trademark holders) notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?

No. There is no general opposition procedure for third parties before registration. Third parties can find information at the JPRS WHOIS website, which is publicly accessible, concerning what domain names are already registered and by whom.

Notice to the registrant

Is there a need to notify the domain name registrant before launching a complaint or initiating court proceedings?

No.

Transfer or cancellation

Procedure

What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?

Court proceedings are available for the granting of injunctions (ie, cancellation of domain name registration) and damage claims, but not to grant the transfer of domain name registrations. ADR is available for the cancellation and transfer of .jp domain name registrations but not for damage claims.

Court litigation

For .jp domain names as well as gTLDs, the courts can have jurisdiction according to the jurisdictional provision of the Civil Procedure Code and can handle cases related to domain names by applying the provisions of applicable domestic laws. In practice, such applicable laws can be found mainly under the Unfair Competition Prevention Act.

Court proceedings are commenced once a complaint (usually with documentary evidence) is filed. The parties submit briefs and evidence. Oral court hearings are held. Discovery is not available. Court litigation may conclude with a settlement and not a court decision. A court decision is usually made public on the court’s website and the first instance typically takes about a year or more.

In addition to the court litigation, a preliminary injunction is also available under the Unfair Competition Prevention Act. It takes less time than ordinary court litigation to enjoin the use of unlawful domain name use and holding.

ADR

Appointed by the JPNIC, the Japan Intellectual Property Arbitration Centre (JIPAC) is the only organisation that handles dispute resolution proceedings regarding organisational type domain names and general-use .jp domain names. The proceeding is conducted by the JIPAC in accordance with the JP Domain Name Dispute Resolution Policy (DRP) and the Procedural Rules for the JP Domain Name Dispute Resolution Policy, both promulgated by the JPNIC.

The proceedings are commenced once a complaint (usually with documentary evidence) is filed. The respondent (the .jp domain name holder) can submit an answer, although in practice few respondents do so. Oral hearings are not held and the parties are not required to physically attend the proceedings. Discovery is not available. The panel, which is appointed from a list of registered panellists, renders the decision. In principle, the decision must be rendered within 55 business days from the filing of the complaint.

Choosing a forum

What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?

The advantages of ADR are that transfer of domain name registration may be allowed and the relatively short time frame and low costs involved.

The disadvantage of the ADR process is that it is only available if the following requirements are met (article 4(a) of the DRP):

i the domain name of the registrant is identical or confusingly similar to any mark such as a trademark or service mark in which the complainant has rights or legitimate interests;

ii the registrant has no relevant rights or legitimate interests in respect of the domain name; and

iii the domain name of the registrant has been registered or is being used in bad faith (unfair purpose).

On the other hand, court litigation may handle a relatively complicated or wide range of cases and order compensation for damages. However, a court cannot order the transfer of domain name registrations and proceedings take longer and involve higher costs than ADR.

Similarly, the advantages of the ICANN ADR format in litigating a gTLD dispute over litigating in a local forum are that transfer of domain name registration may be allowed and the relatively short time frame and low costs involved.

The local forum, namely court litigation, may order compensation of damages, but it cannot order the transfer of domain names.

Appeal

What avenues of appeal are available?

Court litigation

A losing party can file an appeal to the High Courts in accordance with the Japanese general judicial system. After the proceeding at the High Court, appeal to the Supreme Court is allowed if certain requirements are met.

ADR

A losing party can file a lawsuit with the district courts. If the registrant files the lawsuit within 10 business days from the JIPAC panel decision ordering the cancellation or transfer of a .jp domain name, the implementation of the JIPAC panel decision is suspended in accordance with the DRP. If the complainant wins the lawsuit after a JIPAC panel decision declining the complainant’s claim, the complainant is required to again file the ADR with JIPAC to obtain a transfer of both organisational type and general-use domain names.

Who may claim

Who is entitled to seek a remedy and under what conditions?

In an ADR proceeding at the JIPAC, only a person who has rights or legitimate interests in a mark can be a complainant.

In a court litigation based on unfair competition, only a person whose business interests have been infringed or are likely to be infringed due to unfair competition can be a plaintiff (eg, a person who owns the specific indication of goods or services used in the domain name).

Who acts as defendant

Who may act as defendant in an action to cancel or transfer a gTLD in local courts?

The registrant of the domain name will be the defendant in such an action. The registry or registrar should not be the defendant.

Burden of proof

What is the burden of proof to establish infringement and obtain a remedy?

The complainant in an ADR at the JIPAC and the plaintiff in a court litigation carry the burden of proof to establish infringement. The burden of proof in this context means the preponderance of evidence.

Remedies

What remedies are available to a successful party in an infringement action?

Transfer or cancellation of organisational type domain names and general-use .jp domain name registration is available for a successful complainant in an ADR proceeding at the JIPAC.

On the other hand, in court litigation, the transfer of a .jp domain name registration is not available, but cancellation of the registration of organisational type domain names and general-use .jp domain names, compensation for damages and an additional remedy of measures to restore the victim’s business reputation are available if a plaintiff wins against a registrant.

Injunctive relief

Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?

Injunctive relief is available. The transfer or cancellation of a .jp domain name registration is available through ADR at the JIPAC and the cancellation of the registration of organisational type domain names and general-use .jp domain names is available in court litigation.

Generally speaking, preliminary injunctions are available in court proceedings. However, it may be practically difficult to obtain preliminary injunctive relief in a domain name dispute. This is because, under Japanese law, such preliminary proceeding requires the likelihood that it will become impossible or extremely difficult for the rights holder to exercise its rights in the event of any changes to the existing situation. Since the registration of an organisational type domain name and general-use .jp domain name is managed by the JPRS, such likelihood may be difficult to prove.

ADR at the JIPAC does not have any preliminary proceedings.

ADR

The conditions of a transfer or cancellation of the registration of organisational type domain names and general-use domain names are the same as those set out in question 12 regarding the availability of the ADR process: similarity of the domain name and a mark, absence of a legitimate interest in the domain name and bad faith.

The bad faith requirement is satisfied in the circumstances including those set out in article 4(b) of the DRP:

  • circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant or to a competitor of that complainant, for valuable consideration in excess of the out-of-pocket costs (amount to be confirmed by documentation) directly related to the domain name; or
  • the registrant has registered the domain name in order to prevent the complainant from reflecting any trademarks or other indication in a corresponding domain name, provided that the registrant has engaged in a plural numbers of such interference; or
  • the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  • by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the website or other online location of the registrant, by intending to make a confusion as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service thereon.

The registrant may be found to have a right or legitimate interest in the domain name in circumstances including those set out in article 4(c) of the DRP:

  • before the registrant receives any notice of the dispute related to the subject domain name by any third party or the dispute-resolution service provider, the registrant uses of, or apparently demonstrate preparations to use of, the domain name or a name corresponding thereto, in order to offer of goods or services for a valid purpose;
  • the registrant has been commonly known by any name under the domain name, regardless of registration or others by the registrant of any trademark and other indications; or
  • the registrant is using the domain name for a non-commercial purpose or is making fair use of the domain name, without intent for commercial gain to misleadingly divert consumers by utilising the trademark and other indications of the complainant or to tarnish any trademark and other indications of the complainant.

Litigation - Unfair Competition Prevention Act

Under the Unfair Competition Prevention Act, cybersquatting for the purpose of acquiring a wrongful gain or causing injury to another person is deemed unfair competition and prohibited, as is the use of an identical or similar indication (eg, a trademark, mark or trade name) to a famous indication. Use of a well-known indication that causes confusion between goods or businesses is also deemed unfair competition and is prohibited.

Calculating damages

How is monetary relief calculated?

The Unfair Competition Prevention Act contains provisions on the calculation of damages. Under the act, the amount of damages for cybersquatting is calculated in the same way as the royalty amount. With regard to well-known or famous identifications under the Unfair Competition Act, the amount of damages is calculated in one of the following ways:

  • the amount of profit per unit of goods that would have been sold by the victim if there had been no such act of unfair competition, multiplied by the quantity of goods sold by the infringer (the maximum sum shall be the amount attainable by the victim in light of his or her capability. If there is any reason that the victim would have been unable to sell such number of goods as sold by the infringer the amount of damages will be limited accordingly);
  • the amount of profit earned by the infringer; or
  • royalties.

Criminal remedies

What criminal remedies exist, if any?

Under the Unfair Competition Prevention Act, use of another person’s well-known or famous mark is punishable by imprisonment with hard labour for up to five years, a fine not exceeding ¥5 million or a combination thereof. However, the Unfair Competition Prevention Act does not subject cybersquatting to criminal penalties.

Limitation period

Is there a time frame within which an action must be initiated?

There is no particular time frame to initiate an ADR at the JIPAC to transfer or cancel a domain name registration as long as the subject domain name is registered and currently active. As to a damages claim in court, in principle it is necessary to make a claim within three years from the time the victim comes to know of the damages and the infringer or within 20 years from the time of an infringement, whichever is earlier.

Expiry of rights and estoppel

Can a registrant’s rights in a domain name expire because of non-use. Can a registrant be estopped from bringing an infringement action? In what circumstances?

Organisational type and general-use domain name registrations do not expire because of non-use. There is currently no discussion of the latter question in Japan.

Time frame for actions

What is the typical time frame for an infringement action at first instance and on appeal?

A proceeding in a first-instance court typically takes about a year or more.

An ADR decision must be rendered within 55 business days in principle from the filing of the complaint.

Case law

Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?

Court litigation

Generally, most court judgments are made public on the court’s website. However, there are not many court precedents regarding domain name disputes. Court precedents have no binding legal effect on the following judgments, but higher-level court decisions tend to be considered and respected as examples of legal interpretation for future disputes.

ADR

All decisions rendered by the panel of the JIPAC are made public on the JIPAC website. Although panellists of the ADR would study these past decisions, a panel’s decisions do not have binding legal effect on later panellists’ decisions. However, they can be considered as examples of legal interpretation for future disputes.

Appointment of panellists

Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?

The parties can choose between a one and three-member panel. If either party chooses a three-member panel, both parties make a candidate list of panellists and the JIPAC chooses one panellist from each candidate list submitted by each party and one last panellist from the JIPAC’s own candidate list. If both parties choose a panel consisting of just one panellist, the JIPAC chooses the panellist from its own candidate list. The parties cannot oppose the appointment.

Costs

What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal? Can these costs be recovered?

Court litigation

In addition to costs paid to the court, attorneys’ fees are required if an attorney is hired.

The costs paid to the court depend on the amount of financial profit related to the specific case, which is calculated by a method determined by the court. These costs paid to the court can be recovered from a losing party.

Attorneys’ fees may vary from attorney to attorney. Typically, fees are calculated based on the economic profit or amount of time the attorney spends on handling the case. Attorneys’ fees can be partially recovered from a losing party if a damage claim is granted in court.

ADR

In addition to costs paid to the JIPAC, attorneys’ fees are required if an attorney is hired.

The amount paid to the JIPAC is ¥180,000 (plus tax) for a one-panellist proceeding (if there are four or more subject domain names in the same written application, ¥10,000 (plus tax) is payable for each additional domain beyond the fourth) and ¥360,000 for a three-panellist proceeding (if there are four or more subject domain names in the same written application, ¥20,000 (plus tax) is payable for each additional domain beyond the fourth). These costs paid to the JIPAC cannot be recovered from a losing party.

Attorneys’ fees may vary from attorney to attorney. Typically, fees are calculated based on the economic profit or amount of time the attorney spends on handling the case. Attorneys’ fees may be lower than the attorneys’ fees in court litigation. Attorneys’ fees cannot be recovered.

Update and trends

Update and trends

Are there any emerging trends or hot topics regarding domains and domain names in your jurisdiction?

According to the JPRS, the number of general-use .jp domain name (e.g. xxx.jp) registrations reached 1,000,000 as of September 2017. Use of the general-use .jp domain name, whose registration commenced in 2001, has been increasing. The second most common domain name type is an organisational type .jp domain name, co.jp, which can be used by companies registered in Japan. The number of co.jp domain name registrations is about 400,000. For reference, the total number of .jp domain name registrations was 1,491,009 as of 1 December 2017.