4.6.1. Domain name registration procedure
The registration system for domain names in Brazil was created in the nineties, and FAPESP (Research Support Foundation of the State of São Paulo) was initially responsible for the registration services of “.br.”.
On October 21st, 2005 the Brazilian Internet Management Committee designated to Núcleo de Informação e Coordenação do Ponto Br (NIC.br) the administrative functions related to the domain “.br” such as the execution of the registration of domain names and the allocation of IP addresses.
The registration of a domain name with the extension “.br” is made through electronic fulfilling of a form found on the Registro.Br’s website (www.registro.br). The application for registration of a domain name can be made by any entity legally established in Brazil as a legal entity or individual that has a contact in the Brazilian territory.
Currently, the registration system allows for the registration of domain names in the following categories: gTLD, gTLD for legal entities, gTLD for professional persons, and gTLD for individuals. The complete list of gTLDs categories available for registration can be found at http://registro.br/dominio/dpn.html.
It is worth mentioning that a foreign company that intends to register a domain name before Registro.Br must have a proxy legally established in the Brazil and be registered before the registry’s system. Only upon this registration the company will receive an identification number (that will be informed in the registration form) in substitution to the CNPJ [local corporate taxpayer registration number], which is required for legal entities established in Brazil.
Besides the registration mentioned above, foreign companies wishing to register a domain name in Brazil must submit the following documents:
(i) power of attorney notarized from the company’s country of origin, granting power to the proxy to register the domain;
(ii) declaration of the company’s commercial activity, notarized from the country of origin, in which it must be present the: company name, complete address, telephone, corporate purpose, activities developed, name and title of the legal representative and;
(iii) declaration of corporate commitment, notarized in the company’s home country, through which the company pledges to establish its activities definitively in Brazil, in one year time, starting from the receipt of this document at the registry agency.
It is important to draw attention to the need of legalization, before the Brazilian Consulate in the country of origin, of the power of attorney, declaration of commercial activity and declaration of commitment; as well as the sworn translation of the power of attorney and of the declaration of commitment; in addition to copy of the proxy’s CNPJ or CPF (local taxpayer registration number) and a statement by the attorney-in-fact informing the ID of the foreign compnay’s contact.
If the authorized proxy does not have an entity registered at Registro.Br system, then such registration must be arrenged by sending his/her complete data: CPF/CNPJ, corporate name, name, complete address, telephone and ID of the entity’s contact.
After the sending by email of the registration form and the necessary documents, Registro.Br will conduct an identification search in order to verify if there is any domain name identical to the one that the company intends to register, or if this domain name is identical to a well-known or high reputed trademark, according to a list maintained and given by INPI (Brazilian Patent and Trademark Office). Should the domain name be identical to a preexisting one or a trademark considered well-known or of high repute (and that is included in the aforesaid list), Registro.Br will reject the application for registration, and no administrative appeal may be filed against such rejection decision.
Registro.Br exempts itself from any liability in regard to violation of third party’s property rights, once it does not act in partnership with INPI in order to verify if the domain name proposed has already been registered as trademark by another holder. The only search this agency carries out is mentioned above.
If, on the other hand, the registry accepts the request of registration for the domain name proposed, which issues in a few seconds, the applicant must pay the fees for its registration and for its ongoing maintenance.
It is important to mention that the registration of a domain name implies in agreement with the clauses of the adhesion contract imposed by Registro.Br, which establishes the parties’ obligations. Therefore, we emphasize the 3rd clause in which the obligations of the domain name ower are establishes1, and the penalty for lack of compliance with such rules is the cancellation of the domain.
Also, we highlight the provisions of Resolution n° 002/2005, of the Brazilian Internet Management Committee, which establishes in its Article 9, the extinction for the right of use of a domain name registered on the internet under the domain “.br”, thus providing effect to its cancellation2.
4.6.2. The release process
When a domain name is found to be in release process it is likely that this is due to the lack of payment by the owner of the fees required for the registration or due to the non-use of the domai name in the period established by Registro.Br.
Therefore, during this release period the parties that are interested in having the domain name registered can, in the period determined by Registro.Br, submit their candidature for its registration.
After the end of the candidature period, the domain names that have not been claimed will be automatically made available for registration to the first interested party, and the names that have only one candidate will be assigned to the candidate.
If several claims for registration were submitted in the course of the release process, then a new release process will be opened until a claim is submitted for the domain name, until there is only one claim made for that specific domain name.
4.6.3. The administrative dispute resolution proceeding for “.br” domain names (SACI-Adm)
The internet has become, undeniably, one of the most effective channels in the communication between companies and their customers, allowing them, most of the time, to purchase products or hire services without leaving their homes. Consequently, several companies have invested considerable amounts of money to reflect, in the virtual world, all the prestige they benefit from on the traditional channels of commerce.
For that, one of the first measures to be taken by those companies is to register a domain before Registro.Br. Through such electronic address the consumer will be able to access the company’s website and purchase the products or hire the services desired.
Not rarely companies seeking a virtual address decide to register their most familiar trademarks as such before their consumers. How surprised are they to find out that their trademarks have already been improperly registered in the name of third parties?
In fact, Brazil followed the system that was adopted by the U.S. registration authorities, which is based on the principle of “first-come, first-serviced”3. Accordingly, the owner of the domain name will be the party that first comes to register the domain before such authority, even if such domain name reproduces third parties’ legally registered trademark.
The procedure described above ended up in a vast number of domain name registrations illegaly obtained in violation of other rights, particularly of the trademark owners. And, in the absensce of an alternative solution for this kind of dispute, many trademark owners were obliged to address their complailnts to the Judiciary Power.
Internationally, the resolution of gTLDs domain name disputes “.com”, “.net”, “.info”, “.org”, among others, were already subject to an administrative resolution procedure implemented in 1999 by ICANN – Internet Corporation for Assigned Names and Numbers, which accredited many arbitration centers, such as WIPO.
In order to print speed in solving this kind of conflict, on May 7, 2010 the Management Committee of the Internet in Brazil (CGI.br) adopted Resolution CGI.br/RES/2010/003/P, instituting the Administrative System Conflict Resolution relating to Internet domain names under. “br”, also called SACI-Adm.
This news was greatly anticipated by trademark owners in Brazil, which, until now, had only the judicial system to resolve disputes with third parties that unlawfully registered their trademarks as domains names “.br”.
Thus, following the example of the proceedings widely applied by WIPO, the trademark owners in Brazil will be able, for now on, to use this alternative dispute resolution system, obviously faster and cheaper than using the judicial system.
Article 1 of the SACI-Adm Policy establishes as its goal the resolution of disputes between the “.br” domain name owner (“Owner”) and any third party (“Complainant”) that challenges the legitimacy of the domain name registration.
When agreeing with the contract to register a “.br” domain name the Owner will automatically submit himself to the SACI-Adm. The Complainant, on the other hand, shall present, along with his Complaint, a declaration in which he expressly chooses to submit any arising conflict to the SACI-Adm.
According to Article 3 of the SACI-Adm Policy, when presenting his Complaint the Complainant shall describe the reasons why he believes the domain name is being used or was registered in bad faith, causing him damages. The proof of these assertions shall be made by the Complainant through at least one of the following requirements:
“a) the domain name is identical or confusingly similar to a mark which is the object of a granted registration or a prior pending application filed before the Brazilian Patent and Trademark Office (BPTO) in the name of the Complainant; or
b) the domain name is identical or confusingly similar to a mark owned by the Complainant, which is not yet filed or registered in Brazil, but is considered a well-known mark in its field of activity as foreseen on Article 126 of Law No. 9.279/96 (Brazilian Industrial Property Act); or
c) the domain name is identical or confusingly similar to a trade name, corporate name, civil name, family name or patronymic, well-known pseudonym or nickname, single or collective artistic name, or even to another domain name previously registered by the Complainant.”
Besides the above requirements, according to the SACI-Adm Policy, also constitutes bad faith in the use of a domain name (but not limited to):
“a) have the Owner registered the domain name with the purpose of selling, renting or transferring it to the Complainant or to third parties; or
b) have the Owner registered the domain name to restrain the Complainant from using it as a corresponding domain name; or
c) have the Owner registered the domain name with the purpose of harming the commercial activity of the Complainant; or
d) by using the domain name, the Owner deliberately tries to attract, with the intention of profiting, Internet users to his website or to any other electronic address, creating the risk of confusion with the Complainant’s trademark.”
The disputes submitted to the SACI-Adm will be decided by a panel (formed by one
or three panelists) chosen exclusively among the professionals part of the Board of Specialists of the institutions responsible for the dispute resolutions previously approved and accredited by the NIC.br. Until now, the only accredited institution is
the Brazil-Canada Chamber of Commerce (CCBC) and WIPO. Soon others will be accredited, such as the Brazilian Association of Intellectual Property (ABPI).
As a solution to the dispute, the panel may determine the maintenance, the transfer or the cancellation of the domain name. The panel will conduct the proceeding according to the SACI-Adm Policy and the Rules of the institution accredited by the NIC.br, basing its decision on the Brazilian rules applicable to the case, the declarations, the documents and other evidence presented by the parties. In case the Owner of the domain name does not present its response to the Complaint, the panel’s decision cannot be based only on the party’s default.
It is accepted that the parties try to reach an amicable solution during the SACI-Adm proceedings. In case this occurs, the panel can include this fact in its decision and shall inform the NIC.br of this outcome. Before implementing the cancelling or transferring decision rendered in a SACIAdm Proceeding, the NIC.br shall wait 15 working-days, counted as from the day in which the accredited institution informed the panel’s decision. In case one of the parties prove that it has commenced a lawsuit or an arbitration during this 15 day-term, the NIC.br will not enforce the decision and will wait for the judicial or arbitral decision.
The SACI-Adm Proceeding is not confidential and all decisions rendered may be published. It is not clear on the Policy in which database the decisions may be published but, in principle, it should be on the accredited institution’s database. If there is more than one dispute involving the same parties and, if there is no decision rendered on them, it is possible to any of the parties to request the unification of the proceedings.
The decision regarding the unification request will be left to the panel, which shall take into consideration in its analysis the necessity of such act.
The Complainant shall bear all the expenses of the SACI-Adm proceeding, including the panel fees. In case the Complainant opt to submit the dispute to one panelist panel and the Owner decide on a three panelists panel, the Complainant, in this particular case, shall only be responsible for the payment of the fees of the first panelist, and the Owner shall bear the fees of the other two.
The novelty of an administrative alternative resolution proceeding for “.br” domain names comes in a good time, bringing legal certainty, celerity and low costs to the trademark owners which, until now, could only watch their rights being usurped in Brazil and being unable to solve their disputes without appealing to an overpriced and slow judicial system. We shall wait and watch the development of this new SACIAdm system and the creation of its own administrative jurisprudence, which shall change the way Internet works in Brazil.
Finally, since the enactment of the SACI-Adm system, 6 (six) arbitration decisions were already rendered by WIPO, all of them determining the assignment of the domain names subject of the disputes to the trademark owner (<ptrobras.com.br>, <petrobrasnacopa.com.br>, <wdmegastore.com.br>, <wdstore.com.br>, <solazyme.com.br>, <gmcsuplementos.com.br>, <gmcvitaminas.com.br>, <gncvitaminas.com.br>, e <proban.net.br>).
(1) III. The APPLICANT should inform and register:
a) the responsible person for the maintenance and actualization of the entity’s data, for the registration of new domains and alteration of the other contracts, called entity’s contact;
b) the responsible person for altering and maintaining the DNS [Domain Name System] servers, called technical contact.
c) The responsible person for supplying and up-dating the electronic address for mailing of bills for payment of maintenance, called billing contact.
d) The responsible for the administration of the domain, alteration of the DNS server information and modification of the technical and billing contact, called administrative contact.
Author: Rafael Lacaz Amaral
Kasznar Leonardos Advogados
Rua Teófilo Otoni, 63- 5º andar – Centro
20090-080 Rio de Janeiro- RJ
Phone: +55 (21) 2113 1919
Fax: +55 (21) 2113 1920
E-mail: [email protected]
Av. 9 de Julho, 3.147 – 7º e 11º andar
01407-000 São Paulo – SP
Phone: +55 (11) 2122 6600
Fax: +55 (11) 2122 6633
E-mail: [email protected]