Despite not being regulated as a separate intellectual property right, domain names are intangible assets which are crucial for building digital presence. This is especially true for all online businesses or when someone plans to kick-off his business in Poland. Domain names serve as business identifiers, which can contain information about companies, as well as the products and services offered by them. Moreover, a well-chosen domain name can be an essential element of the company’s marketing strategy.
Due to the undoubted market value of the domain names, the disputes over them are quite common. It can be concluded that this area has been underregulated, as only some ADR rules have been adopted so far. Taking into account the fact that the aforesaid rules vary depending on the extension of the domain name (e.g. “.com”, “.eu”) and the need to resort to other legal frameworks (such as e.g. trade mark law), in case of domain disputes it is of utmost importance to firstly identify the existing possibilities as regards the available claims and – first of all – the court that should examine the case.
This article aims at providing a brief overview of how to pursue claims relating to infringing domain name registrations as regards domains with .pl extension.
The .PL domains are administered by NASK (Naukowa i Akademicka Sieć Komputerowa, in English: Research and Academic Computer Network), which is a Polish research institute supervised by the Ministry of Digital Affairs. Apart from maintaining the .PL domain registry, NASK carries out numerous research, development and educational activities in the area of digitization, cybersecurity and AI. In order to register a .PL domain name, it is necessary to enter into a contract with one of the NASK’s authorized partners who act as registrars. The process of registration is conducted in accordance with the rules outlined in .PL Domain Name Regulations1 . It is crucial to note that the conclusion of such an agreement does not transfer the ownership of the domain name nor any other exclusive right on the subscriber. Having said that, the subscriber is in principle entitled to use the domain name for a unlimited period of time as long as he incurs the renewal fees.
As mentioned above, in case of a domain dispute it is necessary to firstly determine the court that should examine the case. For .PL domains there are two possible paths –courts of arbitration and ordinary courts based in Poland. It should be noted, however, that in case neither of the disputing parties is registered or resident in Poland, the case should be examined by the WIPO Arbitration and Mediation Center2 .
The court that is most frequently chosen by the disputing parties in domain cases is the Court of Arbitration for the Internet Domain Names at the Polish Chamber of Information Technology and Telecommunications (“PCIIT Arbitration Court”). The arbitrators examining the cases at the PCIIT Arbitration Court include well-known academics and practising lawyers, who are recognised as experts in the area of intellectual property law and new technologies. Moreover, the rules of proceedings before the PCIIT Arbitration Court are less formal and rigid compared to proceedings conducted before the ordinary courts.
According to the Rules of the Court of Arbitration in matters concerning Internet domain names at the Polish Chamber of Information Technology and Telecommunications3 (“the Rules”), the documents in the proceedings before the PCIIT Arbitration Courtshall be sent electronically orfaxed, unless the Rules require a written form (this is the case for, among others, the suit and the response to the suit). Although the evidence may include hearing of parties or witnesses (alongside documentary evidence and opinions of experts), hearings are ordered during the arbitratration proceedings only when the arbitrator finds it “necessary for the comprehensive explication of the circumstances of the case”.
The arbitrator is obliged by the Rules to counteract prolongation of the arbitration proceedings by a party and the time limits set in the Rules may be extended by the arbitrator only in exceptional cases. Moreover, the arbitrator should make all efforts to close the proceedings within 30 days from his/her acceptance of the appointment as arbitrator in the given case. The parties are also given the possibility to settle at any time during the arbitration proceedings, as well as to try to reach an agreement during mediation before the arbitration proceedings commence. As a result of the aforesaid provisions, the duration of the proceedings is considerably shorter compared to proceedings before the ordinary courts (up to a few months in the majority of the cases examined before the PCIIT Arbitration Court, whereas it is not unusal for the award to be issued within 2-3 months).
In case the seat of one of the parties is located outside the territory of Poland, this party shall appoint an attorney ad litem or a person authorised to receive judicial writs based in Poland. The language of the proceedings shall be Polish and all documents prepared in languages other than Polish shall be accompanied by translations into the Polish language, however the arbitrator may decide otherwise upon the join request of the parties. In any case, the award or other decision shall be issued in Polish, as the dispute resolution is subject to the Polish law (alongside with the Rules).
As regards other practicalities, the Rules provide for a detailed procedure regarding the appointment of the arbitrator (in principle, only one arbitrator examines the case, however the parties can jointly request that the proceedings are conducted by an arbitration court composed of three arbitrators). The cost of initiating the proceedings amounts to 492 PLN (around 100€) of the administration fee for the pre-trial motion plus 3690 PLN (around 770€) of the court fee. In case the parties request the case to be examined by three arbitrators, the court fee equals to 7380 PLN (around 1535€) 4 .
The second arbitration court which examines .pl domain disputes is the Court of Arbitration at the Polish Chamber of Commerce (“Court of Arbitration”). The proceedings before the aforesaid court are conducted in accordance with the Rules for Resolution of .PL Domain Name Disputes of the Court of Arbitration at the Polish Chamber of Commerce5 and Polish law. The rules governing the proceedings before the PCIIT Arbitration Court and the Court of Arbitration are similar to a large extent (including the amount of the payable fees). Despite the fact that the Court of Arbitration deals with a broad variety of cases, it maintains a separate list of arbitrators recommended for domain disputes.
As regards arbitration courts, it should be mentioned that choosing this path is favourable for the claimant as pursuant to the abovementioned NASK’s .PL Domain Name Regulations, as soon as the NASK is notified about a dispute, the subscriber is no longer allowed to transfer the rights from the subscription agreement on another person. Moreover, the non-signing of the arbitration clause by the defendantresultsin the termination of the subscription agreementthree months after the time stated to sign this arbitration clause. As a result, the defendant is compelled to participate in the arbitration proceedings in case he wishes to maintain control over the domain name. However, the aforesaid rule does not apply to consumers – in case a consumer does not sign the arbitration clause, the dispute shall be resolved before an ordinary court.
The arbitration awards or settlements agreed before an arbitration court have the same legal effect as a judgment of a court or a settlement agreed before a court, after their recognition or enforcement by the court. The recognition or enforcement, which is subject to a fee in the amount of 300 PLN (around 62€), is not granted by the court only in exceptional, clearly defined circumstances (e.g. in case the arbitration award contravenes the fundamental principles of the legal order of the Republic of Poland). Once the arbitration award or settlement is officially recognized or the enforcement issue is ordered, it is a basis for the termination of the agreement by NASK with the subscriber without further notice.
The domain disputes can be also examined by ordinary courts. It shall be noted that this path had been considered less certain, as the judges in ordinary (civil) courts need to deal with a broad spectrum of cases. However, this has changed since 2020, when specialized intellectual property courts were introduced in Poland. The aforesaid courts, which are competent for examining civil cases related to, among others, intellectual and industrial property rights, unfair competition, as well as personal rights insofar commercial activities are concerned, would also be competent to examine domain disputes.
As previously mentioned, the duration of the proceedings before the ordinary courts is usually considerably longer compared with the arbitration courts. Moreover, in case of a favourable judgment, the opposing party can always lodge an appeal, whereas in case of arbitration the possibilities of contesting the award are limited to strictly defined circumstances. At the same time, the advantage of taking the case to an ordinary court is the possibility of claiming damages, as well as other remedies offered by the civil law (which nevertheless can be done after the case is resolved before an arbitration court).
Finally, it is important to mention that the claims in domain disputes are usually based on allegations that the domain name in question infringes the rights to the trade mark of the claimant (which can be a Polish or an EU trademark) or the provisions of the Polish Act on Combating Unfair Competition. In this regard, it is worth noting that typosquatting has been explicitly recognized as an act of unfair competition by the Polish courts6 . Other possible legal grounds for claims in domain disputes include the infringement of the trade name and personal rights of the claimant (e.g. in case the domain name includes the name of a natural person).
The claimants in disputes regarding the domain names with .pl suffix can choose between arbitration courts, including the highly specialized PCIIT Arbitration Court, and ordinary courts. The advantages of taking the case to an arbitration court include the relatively short duration and digitization of the proceedings. The typical grounds for claims in domain disputes include infringement of a trade mark, regulations on unfair competition, as well as infringement of the trade name or personal rights of the claimant. In practice, it is sometimes difficult to negotiate with the current domain name holder the terms of purchase of the domain. More and more fully “professional” sellers are hiding their name / address etc. Therefore, the litigation seems to be the only option.