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Domain name disputes: mandatory transfer according to the three-step test?

Domain name disputes: mandatory transfer according to the three-step test?

Rights to domain names not provided for by law. In the event of disputes, it is the court that decides whether the registration or use of a certain domain name constitutes an infringement. Having said that, not only the court, but the person or body settling the disputes is also authorised to deliver an opinion about the mandatory transfer of a domain name by applying the so-called three-step test.

Three-step test

The following points of law and other questions have to be addressed when the three-step test is carried out:

  • is the domain name identical to or so similar as to be confused with: I. a brand or trade name that is protected under Dutch law of which the claimant is the rightful owner; or
  1. a personal name registered in a Dutch municipal personal records database, or a name of a Dutch legal entity governed by public law, or a name of an association or foundation based in the Netherlands under which the claimant participates permanently in social and economic life?; and
  • does the domain name holder not have the right to or legitimate interest in the domain name?; and
  • was the domain name registered in bad faith or is it being used in bad faith?

During the dispute resolution procedures, this will have to be considered on a case-by-case basis, for each domain name. If all the questions during the three-step test are answered in favour of the trademark or trade name holder, then the domain name holder will be changed so that the claimant becomes the domain name holder.

Domain name disputes

Indications that a trademark or trade name holder could successfully effect the transfer of the domain name under the three-step test would include, for instance, that

  1. the domain name was mainly registered or acquired to be able to sell, rent out or transfer it in some other way to the claimant or one of its competitors for a price that is higher than the registration fees;
  2. the domain name was registered to stop the claimant from using it;
  3. the domain name was mainly registered to disrupt the claimant’s operations;
  4. the domain name is or was used for commercial gain.

The holder of the domain name may try to argue that it is offering products or services in good faith, or that it is using the domain name for legitimate, non-commercial purposes.

Legal proceedings

The claimant will have to pursue formal legal proceedings to effect the transfer of the domain name. For this it will have to follow procedural rules by formulating a claim and by submitting supporting documentation to substantiate the claim. The domain name holder may oppose the claim.

The terms that apply to this are quite short, meaning that the proceedings may soon be successful. In principle, the person or body settling the dispute will make a decision about the ‘change’ of domain name holder within two weeks.

If the domain name holder does not agree with the decision, then only one remedy remains. He or she will then only be able to stop the change if he or she institutes legal proceedings before the Dutch court within 10 working days of the decision and submits evidence of this (such as a copy of a summons served) to the person or body settling the dispute.

Joost Becker, lawyer specialising in internet law.

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