Questions regarding the up-to-dateness of the OKI Data test and third-party arguments for registering domain names by rights holders were highlighted in the webinar “Disputes over Domain Names registered by Resellers, Distributors, and Agents” organized by the Domain Name Dispute Resolution Chamber (CASD-ND) of ABPI’s Dispute Resolution Center (CSD-ABPI). The event, held on May 31st, brought together experts Gustavo Moser and Marianna Furtado de Mendonça from CASD-ND, moderated by the CSD-ABPI directors Wilson Jabur and Fernanda Varella Beser.
In his presentation, Moser emphasized the lag of the OKI Data test – jurisprudential construction, raised to the status of soft law, incorporated into the panorama of precedents and guidelines of the WIPO (World Intellectual Property Organization) for name disputes under the UDRP (Uniform Domain-Name Dispute Resolution Policy). For him, the test, created in 2001 in a virtual environment still under construction, needs to be reviewed due to the widespread use today, of the internet and the sophistication of its users, in an environment marked by “volatility and elasticity” in the market for products and services. “Should the test be rethought, then, to accommodate the atypicality of scenarios, especially with the advent of new technologies?”, he questioned.
In her presentation on domain names registered by resellers, distributors, and agents, Marianna contested some of the most common arguments used in the defenses of SACI-Adm Complaints, such as the weakening of the first-to-file rule, since the actors of the webinar theme would already have prior knowledge that the trademark belongs to a third party, and the inapplicability, by analogy, of the articles 132 of Law No. 9,279/96 in these cases.
The expert also drew attention to the practice of some of these actors using domain name registration as leverage when the contractual relationship ends. According to her, discussions regarding contract breaches or lack of investment support should be taken to a different context and not debated within the scope of SACI-Adm. That is because, in this procedure, when the partnership ends, the reason for the former partner’s legitimacy to maintain the registration of that specific domain would also cease.
Lastly, Marianna also discussed agencies that manage extensive domain name portfolios and the documents they should present in the event of a dispute to defend their ownership of the registered domains.
Members who missed the live event can watch the recorded video on the ABPI website’s events page in the exclusive access area.
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