Domain Name Dispute Resolution Workshop DNS ENTREPRENERSHIP CENTER By: Mrs. Mona Adel TAGLegal Egypt Talal Abu-Ghazaleh Organization

UDRP or Lawsuit • The possible actions might be taken when someone uses a confusingly similar domain name to benefit from your brand, take advantage of your customers or abuse your business are as follows: • 1) Filing UDRP Complaint before the WIPO (World Intellectual Property Organization). • 2) Filing a lawsuit before the competent Court.

Conditions to file UDRP Complaint • According to Paragraph 4(a) of the UDRP Policy, the UDRP Administrative Procedure is only available for disputes concerning an alleged abusive registration of a domain name; that is, which meet the following criteria: • (i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and • (ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and • (iii) the domain name has been registered and is being used in bad faith

What are the various stages in the UDRP Administrative Procedure? • (1) The filing of a Complaint with an ICANN-accredited dispute resolution service provider chosen by the Complainant, such as the WIPO Center; • (2) The filing of a Response by the person or entity against whom the Complaint was made; • (3) The appointment by the chosen dispute resolution service provider of an Administrative Panel of one or three persons who will decide the dispute; • (4) The issuance of the Administrative Panel's decision and the notification of all relevant parties; and • (5) The implementation of the Administrative Panel's decision by the registrar(s) concerned should there be a decision that the domain name(s) in question be cancelled or transferred.

Can I use the UDRP Administrative Procedure for a dispute involving a domain name registered in a country code top level domain?

• Yes, provided that the domain name Registration Agreement covering the domain name in issue specifically incorporates the UDRP Policy. This is the case for certain ccTLDs that have adopted the UDRP Policy on a voluntary basis. • Does Egypt adopt the UDRP Policy? Egypt does not adopt the UDRP Policy in ccTLDs. Hence, in case an infringement occurs to a country code domain name; a lawsuit shall be filed before the Court.

The competent Court in Egypt • In case a domain name infringement occurs in ccTLDs (.eg), an unfair competition Lawsuit shall be filed before the Egyptian Economic Court. • A cease and Desist letter shall be served firstly to the infringer (i.e. registrant of the domain name) before filing the lawsuit. • If the registrant information is concealed, the Cease and Desist letter will be served against the competent authority (i.e. Registrar) whom will be responsible to submit the registrant information before the Court. • The court might transfer the lawsuit to an expert in order to prepare an advisory report to the Court. • The time frame of the lawsuit ranges approximately from 12 to 18 months. • Judgment might be appealed before the Cassation Court.

Documents that shall be submitted either in the UDRP Complaint or the Lawsuit • Trademark registration certificates. • Documents prove the fame of the subject matter trademark such as advertisements, media recognition, invoices, bill of lading…etc. • Documents prove bad faith such as an employment agreement, distribution agreement, any previous commercial relationship..etc.

Advantages and Disadvantages of UDRP and Lawsuit UDRP

- Advantages: • Faster and cheaper way to resolve the dispute. • Procedures are more informal than litigation. • Decision-makers are experts in this field. • Provides single mechanism. • Decision can be implemented easily. -Disadvantages: • No money judgments. • No appeal except before the competent court.

Lawsuit - Advantages:

• Claim compensation. • Judgment can be appealed. -Disadvantages: • Take long intervals of time. • Many Formal procedures that shall be followed. • Lack of experience in this field. • Judgments are not easily enforced in Egypt.

Case Study 1 Factual Background: • The complainant is Majid Al Futtaim whom owns the domain name registrations (majidalfuttaim.com) and (malloftheemirates) finds the domain name (mallofegypt.com) registered by third party. • Majid Al Futtaim has registered trademarks for (mallofegypt). • What is the suitable legal action that shall be taken in this infringement?

The suitable action that shall be taken is filling an UDRP Complaint before the WIPO based on the following: • Majid Al Futtaim has registered trademarks (mallofegypt) and registered domain names. • Majid Al Futtaim’s project “mall of egypt” is one of the most recent mega projects in Egypt. • The respondent is not authorized to use the complainant’s trademark and has no rights or legitimate interests in the disputed domain name. • The respondent tries to obtain some unfair advantage from registering the disputed domain name.

The Decision: • The Panel finds that the Complainant has established that the disputed domain name is identical to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the policy. • The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, for the purpose of paragraph 4(a)(ii) of the policy. • The Panel finds that the disputed domain name has been registered and used in bad faith, for the purpose of paragraph 4(a)(iii) of the policy. • The Panel orders that the disputed domain name, , be transferred to the Complainant.