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Authors: Oleksandr Mamunya, partner; Ganna Prokhorova, senior associate

 

For a number of years, Ukrainian courts struggled with domain name disputes. Uncertainty in establishing a domain registrant, time- and cost-consuming procedure of consideration of domain disputes in courts, difficulties at the stage of execution of a courts’ decisions made legal certainty and predictability extremely difficult for stakeholders in the country.

However, finally, this bleak situation will be soon improved, since as of March 19, 2019 Dispute Resolution Procedure to resolve domain disputes shall become applicable in Ukraine (UA-DRP). This includes paperless filings and consideration of cases without the presence of the parties.

BACKGROUND

The .UA domain is managed by Hostmaster Ltd. There are no territorial restrictions for .UA domain names. However, the registration of a domain name in the ccTLD .UA is permitted only to owner or a licensee of a trademark registered and protected in Ukraine under national procedure or through the Madrid System

KEY FACTS

Governing Rules: UA-DRP Policy and UA-DRP Rules that shall be included in all .UA registration agreement; Supplemental UA-DRP Rules

Applicability: as of March 19, 2019 only to .ua domains (second-level domain name registrations in the .UA public domain). Implementation for the second level domain names with the subsequent extension to the third level domains is expected in September 2019 

Provider: WIPO Arbitration and Mediation Center as a sole provider

Administrative Panel: A panel is appointed by the Provider to rule on a domain name dispute. Panelists are sourced from the provider’s publicly available list of panelists and are experienced practitioners in the areas of intellectual property law, electronic commerce and the internet. Each provider publishes a list of panelists and their qualifications.

Complaint Filing Requirements: A person or entity may initiate an administrative proceeding by submitting a complaint to WIPO Arbitration and Mediation Center

Timeframe: a domain name dispute filed through the UA-DRP shall take around 60 days

Possibilities to Appeal: Decisions of panelists are final and not subject to appeal. However, should a complainant or registrant initiate court proceedings within 10 days being communicated, then the registry will not implement the panel’s decision until the matter has been satisfactorily resolved

DISPUTE PROCEDURE

The procedure for reassigning or cancellation an .UA domain name is based on the Uniform Dispute Resolution Policy (UDRP) and requires the same three cumulative tests:

  • the domain name in dispute is identical to or such as to cause confusion with a trademark for which the complainant claims rights; and that
  • the respondent has no right to the domain name or legitimate interest and, finally, that
  • the domain name has been registered and/or is used in bad faith (‘mala fide’).

Remedies: Transfer or cancellation

Language: Proceedings in English, Russian and Ukrainian

Official fees: 1,500 USD

It is now well understood that, the UA-DRP procedure will provide IP right holders with access to an extremely effective, practical, and time/cost saving mechanism for enforcement of their rights in Ukraine. In the context of a massively developing digital economy, having robust and effective DRP rules for resolving domain name disputes should be a must for every modern country.