Domain name disputes registered by merchants, distributors and agents
Questions about the topicality of the OKI Data test and third-party arguments for registering domain names from holders marked the webinar “Domain Name Disputes Registered by Resellers, Distributors and Agents” promoted by the Chamber for the Resolution of Disputes Relating to Domain Names ( CASD-ND), from the ABPI Dispute Resolution Center (CSD-ABPI). The event, held on May 31, brought together specialists Gustavo Moser and Marianna Furtado de Mendonça, from CASD-ND, in debate, moderated by directors Wilson Jabur and Fernanda Varella Beser, from CSD-ABPI.
Moser emphasized, in his presentation, 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, in the translation into Portuguese) 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 defenses of SACI-Adm Complaints, such as: the weakening of the first to file principle, since the actors in the issue the webinar would already have prior knowledge that the brand belongs to a third party; and the non-applicability, by analogy, of the items of article 132 of Law no. 9,279/96 in these cases.
The specialist also paid attention to the practice of some of these actors to use the domain name registration as a bargaining chip when the contractual relationship ends. According to her, the discussion of breach of contract or lack of investment support should be taken to another sphere and not discussed within the scope of SACI-Adm, since, in this procedure, from the moment the partnership ceases, it would also cease the reason why the former partner would have legitimacy to maintain the registration of that particular domain.
Finally, Marianna also spoke about the agencies that manage large portfolios of domain names and what documents they must present in an eventual dispute to defend the maintenance of the registry under their ownership.