Newsletter Edition 38 - July 2022


Best Practices in Domain Names

Ton July 20th, the debate on the procedures, requirements, and documentation needed in disputes involving domain names brought together lawyers Vinícius Pavan and Luisa Ferreira Gonzales Penna, in the webinar “Domain Name Disputes: current affairs and best practices” organized by the Center of Dispute Resolution, Mediation, and Arbitration in Intellectual Property of the Brazilian Intellectual Property Association (CSD-ABPI). The meeting was opened by the president of the CSD-ABPI, Manoel J. Pereira dos Santos, and mediated by the directors of the Domain Names Chamber (CASD-ND), Wilson Jabur and Fernanda Beser.

Pavan, executive secretary of the CSD-ABPI, addressed the most common procedures adopted within the scope of the SACI-Adm (Administrative System of Internet Conflicts related to Domain Names under the “.br”), registered after October 2010, such as cases of cybersquatting, the accumulation of more than one domain name, the applicability of the domain dispute system to the .br standard and the limits of the decision, among others. Pavan recalled that the SACI procedures do not constitute arbitration since they have an administrative nature.

In her explanation, Luisa, a lawyer specializing in unfair competition and domain names, discussed the requirements and documentation necessary for a procedure involving domain names. She explained that to claim these rights, the claimant must demonstrate that the name in question is similar to the one he registered on a date before the dispute. To point out bad faith in a domain use, the claimant must prove that the name registered by a third party was intended for profit, confused the consumer’s understanding, or harmed the activity of the trademark holder.