Publication

First-step analysis: domains and domain names in Ukraine

18/05/2020

Daria Romashchenko

Associate, Attorney-at-Law

Data Protection and Privacy,
Intellectual Property

Ilarion Tomarov

Counsel, Attorney-at-Law

Data Protection and Privacy,
Intellectual Property,
IT

Published: Getting the Deal Through, 26 March 2020

Registration and use of domains at ccTLD registry

Registry

Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?

The Ukrainian entity Hostmaster Ltd is the administrator of the .ua public domain in Ukraine. Hostmaster does not provide services for domain name registration but authorises registrars to register domain names. Registrars must meet certain technical requirements published on Hostmaster’s website to be authorised as registrars. The list of authorised registrars can be found on Hostmaster’s website.

Method
How are domain names registered?

The procedure of domain name registration requires a registrant to submit an application to the registrar and to process a payment for domain name registration. Applications can be filed through an online form on the registrar's website.

The minimum information required from a registrant is their full name, email, address and phone number. In addition to the registrant’s information (in the registrant field on the WHOIS website), the registrant can provide contact information for the purpose of the administrative management of a domain name (in the administrative contact field on WHOIS) and separately for the technical purposes (in the technical contact field on WHOIS).

Registrants can provide the same or different contact details for all three sections. For example, if a legal entity is the registrant of a domain name, the contact details of the company’s IT manager can be provided as the technical contact.

Duration
For how long is registration effective?

A domain name cannot be purchased forever. The minimum time period for which a domain name can be reserved by a registrant is one year. A domain name can be renewed annually by submitting a payment. Usually, registrars offer a discounted price if a registrant chooses to reserve a domain name for more than one year. However, according to existing business practice, the maximum time period that a domain name can be registered for is 10 years.

Cost
What is the cost of registration?

Registrars independently set their pricing policies for domain name registration. The price is highly dependent on the extension of a domain name (.ua, .com, .biz, net.ua, etc) and the services offered by registrars may vary significantly. Domain registration may or may not include support of a website (hosting), a mailbox and additional services. The price of domain registration for one year is approximately €58–€65 per year for second-level private domain names in the .ua domain and €10–€12 per year for third-level private domain names in the com.ua, net.ua, kiev.ua domains.

Transfer
Are registered domain names transferable? If so, how? Can the use of a domain name be licensed?

Registered domain names can be transferred from one registrant to another through an application from the primary registrant submitted to the registrar either in electronic or in physical form depending on the terms of the registration agreement.

Additionally, a domain name can be transferred to another registrar without a change of registrant, which similarly requires an application from a registrant.

A court decision ordering the transfer of a domain name is also considered as a basis for a change of registrant.

Domain names are not protected by an intellectual property right, and the owner does not hold the right to license a domain name.

The rights held by a registrant with respect to a domain name are contractual. According to the registration agreement with a registrar, the registrant receives an exclusive right to use a domain name at its discretion. The European Court of Human Rights in Paeffgen Gmbh v Germany (No. 25379/04, No. 21688/05, No. 21722/05 and No. 21770/05) considered that this right has economic value and that therefore a domain name constitutes property under article 1 of Protocol No. 1 to the European Convention of Human Rights.

Therefore, a domain name can be leased by a registrant to another person rather than licensed. Generally, it is not required by registration agreement to notify a registrar of the granting of the right to use a domain name without its transfer.

ccTLD versus gTLD registration
What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?

There is one sufficient difference between ccTLD .ua registration and gTLD registration. According to the policy on particulars of registration of second-level private domain names in the .ua domain developed jointly with Hostmaster by public domain administrators and registrars on 1 April 2014, a second-level private domain name in the .ua domain can be registered only if a registrant is able to confirm that the domain name’s second-level component (before the .ua extension) is an exact representation of each word element of a trademark protected in Ukraine, in which the registrant has a title. A registrant can be either the holder or the licensee of a trademark if the respective right to register a domain is granted under a licence.

Registrants’ privacy
Is the registrant’s contact information freely available? Can the registrant use a privacy service to hide its contact information?

Typically, the registrant’s contact information is not available for domains registered through Ukrainian registrars, including all ccTLDs. Contact information is usually hidden behind the proxy services because of privacy protection reasons.

Pre-litigation actions

Disclosure of registrants’ private details

If a registrant’s contact information is hidden, under what circumstances will it be disclosed? What processes are available to lift a registrant’s privacy shield?

Generally, registrars refuse any requests for a registrant's contact information. When refusing to provide registrants’ information, registrars usually refer to the confidential nature of the registrant’s contact information.

Occasionally, the registrant’s contact information may be disclosed at the request of a certified attorney, but only if the registrant is a legal entity. A registrar never shares an individual’s contact details related to a domain name at anyone’s request (except by court order).

The most effective way to obtain a registrant’s contact details is through the court before submitting a lawsuit. In such a case, the court would oblige a registrar to disclose data if it finds grounds sufficient for this disclosure.

Otherwise, the contact details of the registrant can be received during a court proceeding at the motivated request of a plaintiff.

Third-party notification

Are third parties (such as trademark holders) notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?

No third party (eg, a rights holder or similar) receives any notification of an attempt or successful registration of a domain name potentially infringing a title.

Most of the infringing domain names are discovered by rights holders afterwards while monitoring or browsing online.

Notice to the registrant
Is there a need to notify the domain name registrant before launching a complaint or initiating court proceedings?
 

Out-of-court measures including notices or cease-and-desist letters are not obligatory in Ukraine, neither on the basis of effective regulation nor pursuant to domain registration agreements offered by different registrars or the .ua Domain Name Dispute Resolution Policy effective in Ukraine.
 

Provisional measures
What provisional measures are available to prevent a domain name being transferred or cancelled during proceedings?
 


The most effective way to freeze a domain name in its current status (meaning its current registrant, his or her contact details and the current registrar) is to obtain injunctive relief during or before the court proceedings in which the registrar would be prohibited from altering any information about the registrant, changing any status in the registry related to the domain name in question and transferring the domain name to other registrars. Through the same injunctive relief, the registrant would be prohibited from making any corrections to the domain name record in the registry.

Can domain names be seized? If so, under what conditions?
 


Following the approach applied by the European Court of Human Rights in Paeffgen Gmbh v Germany (No. 25379/04, No. 21688/05, No. 21722/05 and No. 21770/05), the rights to a domain name can be limited or controlled by the respective authority. The Court even set examples of confiscation, forfeiture and destruction of property. Hence, we believe that domain names can be seized if their use is related to unlawful activities.

However, we have no knowledge of a domain name being seized in a court proceeding in Ukraine.
 

Transfer or cancellation

Procedure

What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?
 

Civil or commercial proceedings dealing with the cancellation or transfer of domain names (ccTLD or gTLD) have no specific regulations except general procedural rules.

Considering the nature of the dispute and the legal statuses of the parties (an individual or a legal entity), the plaintiff must choose a civil or commercial court.

The case must be considered within 90 days, but the term can be extended to 120 days in cases of certain procedural grounding for the extension (eg, a new respondent, by request of the party). The entire proceeding is split into two stages: preparatory proceedings and consideration of the merits. During preparatory proceedings the plaintiff can request the contact details of the registrant from the registrar (which is usually a respondent in cases related to the transfer or cancellation of domain names) and apply for injunctive relief, etc. However, the plaintiff must submit all the evidence he or she managed to obtain with the lawsuit, and the respondent must submit a statement of defence. Unless there are no sufficient reasons to explain further delays in the submission of evidence to the court, parties must not file evidence after filing the lawsuit and the statement of defence. Additionally, the parties are allowed to submit the evidence only before the end of the preliminary proceedings.

Typically, it takes one to four court hearings for the court to carry out preparatory proceedings.

The consideration of the merits begins with the discovery of evidence, which must be carefully examined by the parties and by the court. This step is followed by the oral pleadings of the parties before the court and the issuance of a decision. Usually, the parties and court need one to three hearings to cover all procedural steps of this stage.

As domain names are related to trademarks in the majority of cases in Ukraine, the court proceeding is often complicated by an examination that is usually assigned to establish similarity between a domain name and a registered trademark or between a website and a registered trademark, etc. It is a tendency of Ukrainian litigation to rely on the examination report (delivered by a certified IP expert) to establish the likelihood of confusion between a registered trademark (even word-signs) and a word or phrase used in a domain name or on a website. The examination stage can delay the entire proceedings for a few months.

In addition, almost all cases involving domains registered in bad faith are dealing with a transfer and not with cancellation. The ease of domain registration is responsible for this: in the case of cancellation, the domain will become free for registration and can be re-registered by the same infringer again a few hours after cancellation. To avoid additional expenditures, the rights holder prefers to have the infringing domain name assigned to avoid any repeated infringement.

The ADR for ccTLD .ua is a localised Uniform Domain Name Resolution Policy (UDRP) procedure. The .ua Domain Name Dispute Resolution Policy (the .ua Policy) was introduced by Hostmaster Ltd on 19 March 2019. The .ua Policy became effective on 19 March 2019, and it applied to .ua second-level domain name registrations. As of 19 December 2019, the application of the .ua Policy was extended to com.ua third-level domain name registrations.

The cases involving ccTLD .ua are to be considered by WIPO Arbitration and Mediation Center’s panellists. In terms of differences between the classic UDRP and the .ua Policy, the following aspects must be noted:

  • the bad faith component requires the complainant to substantiate that either the registration or the use of the domain name is in bad faith, whereas UDRP requires a demonstration of bad faith with regards to both the registration and the use of domain names;
  • mutual jurisdiction is defined in the .ua Policy as the courts of Ukraine;
  • the language of the proceedings must be defined by the language of the registration agreement (the .ua Policy specifies it further by mentioning English, Russian and Ukrainian).

 
The consideration of a case according to the .ua Policy should last for around two months, which is the same as the UDRP procedure. It can be considered by a single-member or a three-member panel depending on preferences demonstrated by the complainant and the respondent (the number of panellists affects the amount of official fee for the .ua ccTLD ADR: US$1,500 for consideration by a sole panellist as opposed to US$2,000 for a three-member panel). There are no hearings requiring the parties to appear in person.

For .ua second-level domain name registrations there is a requirement stating that the claimant may request the transfer of a disputed .ua domain name only on the condition that on the date of filing a complaint and during the pendency he or she holds the right in a trademark identical to a second-level component (before the .ua extension) of a disputed domain name (ie, a claimant must comply with requirements for second-level domain name registration in the .ua domain).
 

Choosing a forum
What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?

The main advantages of choosing ADR for a gTLD dispute over litigation is the timing of the case consideration. Although the WIPO Arbitration and Mediation Center ensures that a final decision is delivered to a claimant within roughly two months after the submission of a complaint, the local court proceeding can be far slower: it takes six to nine months in practice to reach a decision from the court of the first instance. This decision can be challenged in the courts of appeal and cassation, which takes several months. Moreover, the process of executing a decision takes additional time.

Litigation can be chosen over ADR if a plaintiff intends to recover damages from an infringer, which cannot be done in ADR, and transfer and damages recovery requests can be brought in a single proceeding to the court.

Appeal
What avenues of appeal are available?
 

The decision of the administrative panel delivered pursuant to the .ua Policy can be challenged in the courts. Considering that the .ua Policy was introduced recently we have no knowledge of cases that challenge its decisions in courts.

Similarly, the decisions delivered on the basis of the UDRP, where mutual jurisdiction is defined as the Ukrainian courts pursuant paragraph 3(b)(xiii) of the Rules of the UDRP, can be challenged in the courts. We also have no knowledge of cases appealing these decisions in Ukraine.

The decisions of the courts of Ukraine can be appealed to courts of appeals and further challenged in the cassation instance (which is the Supreme Court of Ukraine). The decision of the Supreme Court is final.

However, in minor cases there is no option of challenging in a court of cassation. The case is considered minor if monetary claims do not exceed approximately €7,730 or if declared so by the court for other reasons.

Who may claim

Who is entitled to seek a remedy and under what conditions?

The vast majority of domain name cases in Ukraine relate to cybersquatting, where the holder of earlier trademark rights requests the transfer of an infringing domain name that was registered and used in bad faith without authorisation from the rights holder.

Other intellectual property titles (trade name or copyright) can be also a legal basis for a claim if infringed by the domain name registrant.

The holder of related intellectual property rights is entitled to seek the transfer of the infringing domain name. The licensee can be entitled to this transfer only if authorisation (to protect the rights in court or otherwise) is granted according to the licence.

Who acts as defendant
Who may act as defendant in an action to cancel or transfer a gTLD in local courts?
 

Typically, the registrant of a domain name is a respondent in cases about the transfer of domain names. Additionally, the registrar is usually a co-respondent, as the request to transfer the domain name according to existing Ukrainian case law should be addressed to the registrar.

However, most court proceedings are related not only to domain names but to their websites as well. According to the Law on copyright and related rights, the registrant of the domain name must be considered as the website owner unless it is proven otherwise. If the registrant presents evidence confirming that the website and the domain name was used by another person on the basis of an agreement, this other person can be the respondent (or co-respondent) in the case.

Burden of proof

What is the burden of proof to establish infringement and obtain a remedy?

The plaintiff must prove his or her legitimate interest (usually it is the intellectual property rights to a trademark or a trade name), that the infringement occurred (the unlawful use of a trademark), that confusion between a domain name or a website and a registered trademark is likely, that the person conducting activities was not authorised by the rights holder, and the amount of damage suffered (if required).

The plaintiff must also prove that his or her rights have been infringed in Ukraine so that the claim is admissible in a Ukrainian court. This can be done in several ways: by seeing if a domain name contains .ua, if the content of a website is available in Ukrainian, if Ukrainian currency is used on the website, if the contact details of the seller or owner of a website indicates the Ukrainian nationality of the domain name registrant and any other information proving that the infringer does business in Ukraine and targets Ukrainian consumers.

The respondent’s procedural right is to challenge all statements and conclusions raised by the plaintiff and to provide counterarguments.

Remedies

What remedies are available to a successful party in an infringement action?

The rights holder can request the court to order the registrant to discontinue illegal use of the protected intellectual property rights in the domain name, on the website and possibly on goods, etc.

The request addressed to the registrar is to transfer the domain name to the rights holder.

Additionally, the rights holder may request damages from the registrant (if evidence of lost profit or monetary harm caused to the reputation of the rights holder by the infringing activities of the registrant of the domain name can be demonstrated).

Injunctive relief
Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?

Injunctive relief is widely used in cases where domain names are at issue. It is a common measure used for preventing the respondent (that allegedly registers and uses a domain name in bad faith) from continuing their unfair behaviour. In most cases, the plaintiff applies for injunctive relief ordering the registrant not to alter any information regarding the registrant, not to change any status related to the domain name in the registry and not to transfer a domain name to other registrars. In the same application, a registrar is asked not to make any corrections to the domain name record in the registry.

These measures limit the disposal of the domain name by the registrant but do not affect the ability to use the domain name or the website at it.

The plaintiff must prove that there is a risk of transfer of the domain name that would complicate the consideration of the case and make it impossible to execute a decision against the respondents (the registrant and registrar).

Additionally, if the registrant uses the website at the domain name for unlawful activities (eg, for the sale of counterfeit goods) the plaintiff may request the court to order the registrar to set ‘clientHold’ status on the domain in the registry, which results in the deactivation of the domain name in the domain name system, and, as a consequence, it will not resolve and website will not be accessible.

For this measure to be enforced by the court the plaintiff must prove that damage he or she continues to suffer during court proceedings is caused by the respondent’s activities selling alleged counterfeit goods.

There are a couple of cases where this measure has been approved by the court.
The injunctive relief cannot be permanent (at least there is no evidence that permanent injunctive relief has been requested or granted). It is effective for the entire duration of the case consideration by the court.

Calculating damages
How is monetary relief calculated?

For cases where infringers sell counterfeit goods on a website at an infringing domain name or offer similar or identical services to those protected by the registered trademark, the plaintiff may request damages. The amount of damages in the case of counterfeit goods is typically calculated by the ‘one counterfeit good replaces one original good’ model, so the rights holder’s lost profit is equal to the quantity of counterfeit goods multiplied by the official price of the original equivalent.

In the case of the infringement of a trademark protected for services, another method of calculation would be applied to require the infringer to pay an amount equivalent to the cost of obtaining a licence from the trademark owner (hypothetical royalty).

Criminal remedies
What criminal remedies exist, if any?

If there is a website at the infringing domain name where counterfeit goods or infringing services are circulated, the rights holder may initiate a criminal investigation if the total amount of damage suffered equates to not less than approximately €790.

Limitation period
Is there a time frame within which an action must be initiated?

The plaintiff must submit a claim to the court within three years of the date when it became aware or could have become aware of an infringement of its rights or of a person infringing them (which is the general limitation period).

The date of registration of a domain name cannot be the date from which the limitation periods starts. As a domain name registration is not publicly announced or notified to rights holders, the most usual way to discover infringing domains is monitoring online websites by keywords.

Expiry of rights and estoppel
Can a registrant’s rights in a domain name expire because of non-use? Can a registrant be estopped from bringing an infringement action? In what circumstances?

The rights to a domain name are not intellectual property rights by nature, so a different approach applies. There is no expiration of rights because of non-use or similar.

A registrant cannot be estopped from bringing an infringement action because of non-use of a domain name. As a domain name is not an intellectual property object, a registrant wishing to enforce his or her rights usually refers to classic intellectual property rights (eg, trademarks, trade names and copyright), and a domain name can be a secondary basis for claims.

Time frame for actions
What is the typical time frame for an infringement action at first instance and on appeal?

The consideration of a regular case in a court of first instance takes on average around six to nine months (whereas procedural codes prescribe four months at most with all extensions applied). The appeal timing must not exceed two months. The same time frame is applied to cassation instances.

According to the .ua Policy, consideration of the complaint by the panel lasts for roughly two months. After having the decision published, the WIPO Arbitration and Mediation Center must wait 10 business days before communicating the decision to the concerned registrar for execution. During this term, the concerned party may initiate court proceedings challenging the administrative panel decision and may submit documents to the WIPO Arbitration and Mediation Center court confirming the commencement of the proceeding. In such a case the decision will not be executed until the end of the court proceeding.

Case law
Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?

There is no overview of the case law of Ukrainian courts dedicated specifically to domain disputes. Domain names are mentioned briefly in the Resolution of the Plenum of the High Commercial Court of Ukraine No. 12 of 17 October 2012 on certain aspects of consideration of disputes related to intellectual property rights protection.

Ukraine has a typical continental law system, where case law does not have precedential value. However, according to current regulation, the positions of the Supreme Court must be taken into account by lower courts.

The recent introduction of ADR for .ua ccTLD explains the absence of any consistent developments of case law sufficient for specific case law overviews.
However, in the only decision delivered in accordance with the .ua Policy, the panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which means that it can be applied to a reasonable extent.

Appointment of panellists
Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?

According to section 6 of the currently effective rules for the .ua Policy, the parties (complainant and respondent) can propose candidates for only a three-member panel if it is chosen by them. The sole panellist is to be appointed by the WIPO Arbitration and Mediation Center at its discretion.

However, if the panellist has doubts as to their impartiality or independence, that panellist must promptly disclose these circumstances to the WIPO Center, which considers this matter at its own discretion.

Costs
What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal? Can these costs be recovered?
 

The costs for advising in cases related to domain names vary on the market. Even the average figures on the market cannot be calculated because of the sensitivity of the matter.

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