The importance of domain name protection is becoming increasingly evident to market players in Romania, in light of the rapid evolution of the importance of the Internet in marketing, brand awareness and e-commerce.
Following initial mandatory mediation proceedings before Romania Top-Level Domain (ROTLD – the authorised national registrar of '.ro' domain names), parties may opt to pursue further disputes before the World Intellectual Property Organisation (WIPO) or the Romanian courts.
ROTLD applies the Internet Corporation for Assigned Names and Numbers Uniform Domain Name Dispute Resolution Policy in case of disputes such as abusive registration or the bad-faith or illegal use of a domain name. Complaints must fulfil three cumulative criteria:
- The domain name is identical or confusingly similar to a trademark or service mark in which the claimant has rights.
- The registrant of the domain name has no rights or legitimate interests in respect of the domain name.
- The domain name is registered and being used in bad faith.
If the ROTLD mediation proves unsuccessful, parties may file a complaint before WIPO and use the relevant alternative dispute resolution procedure, which is a single-level body whose decision is final, enforceable and binding on the parties. If no legal action with the same scope is filed by the losing party with the Romanian courts within 10 days, the necessary steps to enforce the decision are taken by the accredited domain name registrar, which will also transfer automatically the disputed domain name to its rightful owner if necessary.
The alternative to filing a complaint with WIPO is to litigate the dispute before the Romanian courts. Romanian domain name disputes benefit from being tried by specialist IP tribunals. Furthermore, the decisions are subject to appeal before becoming res judicata. Romanian courts generally apply the same principles as WIPO with respect to domain name disputes – namely, they examine whether the disputed domain name is identical or confusingly similar to the relevant trademark or commercial name. However, WIPO's cumulative criteria (set out above) need not be fulfilled.
While WIPO proceedings are fast, confidential, impartial and cost-effective, the relevant decisions do not become automatically res judicata and there is no option to claim monetary damages. On the other hand, the Romanian courts offer dual-level proceedings, together with the possibility of claiming damages. However, the fact that the Romanian procedure is considerably longer seems to be the deciding factor in the majority of disputes, which are generally referred to WIPO for resolution.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.