The legal actions that can be instituted in respect of cancellation or transfer of a domain name are court proceedings (preliminary injunction (PI) proceedings or proceedings on the merits); and the UDRP-based dispute resolution system for .nl domain names (.nl ADR). ADR is generally preferred over regular court proceedings as it is considered a quick, efficient and cost-effective way to resolve domain name disputes (see also question 12).
All Dutch district courts may have jurisdiction in respect of domain name disputes concerning a ccTLD or gTLD (to the extent that the website linked to the domain name is directed at the Dutch public). However, if the proceedings are based on an EU trademark, the District Court of The Hague has exclusive jurisdiction.
Most domain name disputes that are brought before a court are dealt with through PI proceedings in order to obtain a quick injunction or transfer of the domain name. In PI proceedings only preliminary measures can be imposed. Therefore, in principle no damages (and often also no ancillary claims) can be claimed. Furthermore, no counterclaim for nullification of invoked trademarks can be filed in PI proceedings. Nevertheless, usually the PI judges will also consider the (in)validity of the trademark when assessing the claimed injunction.
In order to institute PI proceedings, urgent interest is required. It generally takes about four to 12 weeks from the service of the writ of summons until a judgment is rendered. The proceedings commence by service of the writ upon the registrant. After the writ of summons has been served, generally only an oral hearing will take place even though the defendant in principle has the right to file a written statement of defence. Both parties will, however, usually submit evidence to the court in the form of exhibits. This can be done until shortly before the hearing.
Unlike PI proceedings, proceedings on the merits result in a final decision. This means that damages and other ancillary claims can in principle also be claimed. Furthermore, in proceedings on the merits a counterclaim to nullify the invoked trademark rights could be filed. Urgent interest is not required in these proceedings.
The average duration of proceedings on the merits is about one to one-and-a-half years. Proceedings on the merits also commence by service of the writ. After the writ has been served, the defendant will have the opportunity to submit a written brief. In exceptional cases additional written briefs will be exchanged. Finally an oral hearing will take place.
In Dutch court proceedings there is no possibility to obtain evidence similar to the discovery and disclosure proceedings as in the United States and the United Kingdom. However, it is possible to obtain evidence prior to, or during, the court proceedings inter alia by means of a request for the inspection of specific documents. However, in practice these proceedings are not used in mere domain name cases, if only because evidence of registration and use is by nature available on the internet.
Usually in court proceedings an injunction will be claimed against the use of the domain name or similar names. In most cases, such a claim will be supplemented with a claim for cancellation or transfer of the domain name in dispute. However, the court has discretion over whether to grant such a supplemental claim even if the injunction is awarded, especially in PI proceedings. The Dutch Supreme Court recently considered that the starting point is that a registrant can only be ordered to transfer a domain name to another party when he or she is obligated to do so by an agreement or when the registration or use of the domain name can be considered unlawful in relation to this other party. Recent case law shows that lower courts are willing to order the transfer of the domain name in the case of infringement of trade name or trademark rights unless the plaintiff no longer has an interest in the transfer or the defendant is no longer the registrant.
In .nl ADR proceedings only a change of registrant of the disputed domain name can be requested, whereby the complainant becomes the registrant. Consequently, in these proceedings the domain name cannot be cancelled, nor can other claims be granted.
The .nl ADR proceedings commence by submitting a complaint (complaint form) including attachments electronically to the World Intellectual Property Organization (WIPO). The SIDN has accredited the WIPO as the centre for .nl ADR (Centre).
Within three days of receiving the complaint, the Centre shall determine whether the complaint meets the requirements. If this is the case, the complaint will be forwarded to the SIDN. As soon as the SIDN receives this notice, the domain name in dispute will be locked. The effect of this is that the domain name cannot be cancelled or transferred by the registrant for as long as the proceedings are pending.
Once the WIPO has received the registrant’s response (no later than 20 days after commencement of the proceedings), a free-of-charge mediation process commences. The mediation process involves a trained mediator (from the SIDN) contacting both parties in order to facilitate an amicable settlement of the dispute.
If the dispute is resolved during the mediation, the WIPO will terminate the proceedings. If the mediation is unsuccessful, the SIDN will inform the Centre, the complainant and the respondent. The complainant then needs to pay an administration charge and panellist fee within 10 days. Within five days of receipt of the payment, the WIPO will appoint a panellist. The panellist will assess the documents submitted by the parties and will reach a decision on the basis of the criteria set out in the Dispute Resolution Regulation for .nl Domain Names. In principle, there will be no in-person hearing. However, the panellist may invite parties to submit further statements and further submissions or order a hearing if the panellist considers it necessary for deciding the dispute.
The .nl ADR proceedings are in principle handled fully electronically. As regards the language of the proceedings, the Dispute Resolution Regulation for .nl Domain Names provides that the language of the proceedings is in principle Dutch if both parties reside or are registered in the Netherlands. In the event that one of the parties is established abroad, the language of the proceedings will be English. The panellist may, however, in exceptional circumstances, decide that the language of the proceedings will not be conducted in Dutch, but in English, or vice versa. The duration of .nl ADR proceedings is approximately three to four months from filing the complaint until the decision is rendered. Participation in the ADR proceedings does not prevent parties from submitting the dispute to a competent court.
Back to top