Trademark-Related Domain Name Dispute Resolution in Indonesia

In the previous article, we talked about the overview and the importance of trademark-based domain name registration in Indonesia and how we can protect it against cybersquatters. If you have not read it, you can click here

Now, we are going to briefly learn more about how the Indonesian Domain Name Dispute Resolution Policy (PPND) through PANDI actually works through study cases provided by PANDI (Indonesian Domain Name Registry)

We hope you find the information useful and that it will allow you to consider further steps in securing the use of your Indonesian trademark registration on the internet.

Options for Domain Name Dispute Resolution

Domain name dispute resolution is mostly done through non-litigation channels although it is also possible to resolve the issue through litigation proceedings in courts if parties cannot agree between themselves about the fair and proper outcome of a dispute.

There are several ways to resolve a domain name dispute, including:

1. Negotiation: Attempt to reach an agreement with the other party through direct communication.
2. Mediation: Use a neutral third party to help facilitate communication and reach a resolution.
3. Arbitration: Submit the dispute to a neutral third party for a binding decision.
4. At the international level, UDRP (Uniform Domain-Name Dispute-Resolution Policy): UDRP is a policy established by the Internet Corporation for Assigned Names and Numbers (ICANN) for resolving disputes over the registration of domain names.
   At the national level here in Indonesia for dot ID ccTLDs, the Domain Name Dispute Resolution Policy or Kebijakan Penyelesaian Perselisihan Nama Domain (PPND) is a policy established by PANDI (Indonesian Domain Name Registry) for resolving disputes over the registration of domain names in Indonesia. PPND by PANDI still refers to UDRP for most of its policy.
   Filing a complaint to a dispute resolution provider provides a relatively quick and inexpensive way to resolve disputes over the registration of domain names.
5. Legal action: File a lawsuit in court against the person or entity that you believe has infringed on your rights in relation to the domain name.

In any case, it is always recommended to consult with a legal professional before taking any action.

Under the ICANN’s UDRP, a Complainant of a domain name dispute must be able to demonstrate the existence of three elements of infringement and bad faith in the domain name registration, namely:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. the domain name holder (registrant) has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith

Similarly under PANDI’s PPND policy, one can also find three elements of domain name disputes which are essentially the same as the three elements in the UDRP.

Unless the Complainant is able to prove or provide evidence of all of the above three elements, the complaint shall be rejected.

For the purpose of our discussion in this article, we are focusing only on the Indonesian dot ID (.id) domain name dispute resolution under the PPND policy of PANDI, especially for trademark-related and name-related domain name disputes.

Domain Name Dispute Resolution Under PPND PANDI

The principle of Internet Domain Name disputes Resolution under PPND-PANDI is to prioritise peaceful dispute resolution based on the agreement of the disputing Parties through mediation. If the parties remain in their respective opinions, then the examination of material disputes is fully the authority of the PPND-PANDI Panel established under this PPND Policy. 

Pursuant to Article 6 of PPND Policy, there are three types of domain name dispute resolution complaints that can be processed by PPND-PANDI:

1. Trademark-related domain name dispute;
2. Name-related domain name dispute;
3. Domain Name Management-related dispute

Trademark-related domain name dispute

To file a trademark-related domain name complaint at PPND-PANDI, the Complainant must be able to provide the grounds for the complaint as follows:

1. The Registrant’s Domain Name(s) is/are having similarities with the Indonesian trademark registration owned by the Complainant; and
2. The Registrant has no legal rights and/or interests in such Domain Name; and
3. The Domain Name(s) has/have been registered or used by the Registrant in bad faith which can be shown by the following conditions, especially including but not limited to:

To win a successful trademark-related domain name dispute resolution, the Complainant must prove that all three elements are fulfilled. 

Name-related Domain Name Dispute

To file a name-related domain name complaint at PPND-PANDI, the Complainant must be able to provide the grounds for the complaint as follows:

1. The Registrant’s Domain Name(s) is/are having similarities with registered names (including names of people, legal entities, business entities, organizations and entities, registered in the government agencies and/or official institutions) owned by The Complainant; and
2. The Registrant does not have legal rights or ownership of the Domain Name; and
3. The Domain Name(s) has/have been registered or used by the Registrant in bad faith.

The Complainant must prove that all of the three elements are fulfilled. 

To win a successful name-related domain name dispute resolution, the Complainant must prove that all three elements are fulfilled. 

Domain Name Management-related dispute

This kind of domain name dispute involves issues between users of domain names (the Registrants) and the providers of domain name registration services (the Registrars) with regard to the registration, renewal, transfer, use and/or management of domain names, or non-compliance with the provisions of domain names and laws and regulations, contract of the management of domain names, etc.

The Statistics of Domain Name Dispute Resolution Cases Resolved Through PPND-PANDI

PANDI’s statistics regarding the domain name dispute resolution cases using PPND indicates that from 2015 until the end of 2022 PANDI has made decisions for a total of 38 dispute cases of which there were 4 name-related cases, 34 trademark-related cases, and none for the domain name management-related cases. Complainants are mostly from overseas (24) and the rest are locals (14).  

Study Cases for Trademark-related and Name-related Domain Name Disputes Resolution 

The following are two study cases of domain name dispute resolutions provided by PANDI involving a trademark-related dispute and a name-related dispute:

Case-1 (Trademark-Related Domain Name Dispute Resolution)
Aktiebolaget Electrolux (Complainant) v. Eko Apriyanto (Registrant) Concerning Indonesian Domain Name electrolux.id, PPND Decision No. 006-0317

The Complainant, Aktiebolaget Electrolux is a Swedish multinational home appliance manufacturer, headquartered in Stockholm. It is consistently ranked the world’s second-largest appliance maker by units sold. Electrolux products sell under a variety of brand names (including its own) and are primarily major appliances and vacuum cleaners intended for home consumer use.

The Complainant has a number of trademark registrations for their Electrolux brand in Indonesia and has also registered electrolux.co.id domain name for their Indonesian website.

It came to their attention that an Indonesian national named Eko Apriyanto had registered electrolux.iddomain name although such domain name had never been used for any website since the day of registration.

The Complainant wanted to reclaim their rights to use the domain name and filed a Complaint to PANDI requesting the cancellation of the electrolux.id domain name registration in the name of Eko Apriyanto, and the transfer of such domain name to Aktiebolaget Electrolux as the owner of the registered trademark Electrolux in Indonesia and other countries in the world.

Complainant’s claims:

1. Complainant is the owner of trademark Electrolux registrations in Indonesia and other countries in the world.
2. Registrant is neither affiliated nor associated in any way with the Complainant
3. Complainant has never licensed or authorised Registrant to use or file their trademark-related domain name registration in Indonesia
4. The Object of Dispute, electrolux.id domain name has not been used for any website since the day of registration by the Registrant
5. In accordance with WIPO Decisions No. WIPO-D2000-0003 and No. D2000-0400, the use of a well-known trademark as a domain name for an inactive website constitutes evidence of bad faith on the part of the Registrant

Registrant’s Respond:
The Registrant had neither submitted any response nor evidence in his defence within the prescribed time limit. 

Panellists’ Considerations:

1. Panelist views that Registrant’s electrolux.id domain name is identical to the use of Complainant’s Indonesian trademark registration ELECTROLUX with the addition of suffix <.id>
2. Complainant has sufficient evidence to claim their trademark ELECTROLUX as a well-known trademark in the world
3. Registrant has not submitted any evidence to show his rights and legitimate interest to register and own electrolux.id domain name
4. Registrant has been proven to have registered and used electrolux.id domain name in bad faith for the only purpose of re-selling it to another party and not for purpose of managing the domain name in the proper manner

Panellists’ Decision:
The Panellists decided that electrolux.id domain name shall be transferred to the Complainant with immediate effect.

From Case-1 above, we learn that Complainant has successfully won the PPND decision because they can prove that they are the owner of an Indonesian trademark as well as a well-known trademark ELECTROLUX who has the rights and legitimate interest to use their trademark as a domain name in Indonesia and that they can prove that registration electrolux.id domain name by the Registrant was based on bad faith.

Case-2 (Name-Related Domain Name Dispute Resolution)
PT Indolab Diagnostik Utama (Complainant) v. Frans Nawawi (Registrant) Concerning Name INDOLAB, PPND Decision No. 027-1021

The Complainant, PT Indolab Diagnostik Utama, is an Indonesian health solution provider company with a network of clinical laboratories that provides homecare services 24/7. It has recently registered the trademark “INDOLAB” in 2021 and owns indolab.com domain name registration for its website.

It came to Complainant’s attention that there was already an indolab.id domain name registration in the name of Frans Nawawi, an Indonesian national, for his website which is so far only displaying a “Coming Soon” message.

The Complainant wanted to cancel or reclaim the indolab.id on the ground that the word INDOLAB constitutes a part of the Complainant’s company name.

Complainant’s Claims:

1. “INDOLAB” constitutes a dominant part of the Complainant’s registered company
2. The word “INDOLAB” does not constitute a part of the Registrant’s name
3. indolab.id website does not have any content other than only displaying a “Coming Soon” message, so it can be assumed that the Registrant has the intention of gaining financial profits by re-selling or leasing such domain name, etc.

Registrant’s Response:

1. The name “Indolab” is used by many companies in Indonesia
2. Indolab is a generic name and cannot be considered an intellectual property
3. Indolab.id domain has been registered since 2016 and no objection has been filed against it

Panellists’ Considerations:

1. Panellist views that “indolab” is a generic name without any particular meaning, so it can be used by anyone
2. Registrant is the one who registered the domain name based on the First-Come-First-Served Principle and he has fulfilled all formal requirements and therefore has the rights to use the indolab.id domain name
3. The assumption on the Registrant’s intention cannot be considered an act of violation
4. The act on the part of the Registrant of registering indolab.id domain name and not using it yet has not sufficiently proved that the Registrant has prevented other people to use the domain name.

Panellists’ Decision:

The Panellists decided to reject or deny all Complainant’s claims and the Registrant shall retain his domain name registration.

From Case-2 above, we learn that the Registrant has successfully won the PPND Decision on basis of the First-Come-First-Served Principle and that the Complainant’s company name is a generic name and has been used by many other companies in Indonesia.

The Pre-Objection Requirement, the Process, and the Official Fee

It is compulsory for the Complainant to send a Pre-Objection letter to PPND-PANDI before proceeding with the domain name dispute resolution matter.

In receipt of the pre-objection letter, the PPND Secretariat has the right to receive and examine files to assess whether the Pre-Objection files are in accordance with the conditions stipulated in this Policy.  PPND Secretariat will later send the Pre-objection Form and Tutorial to Use email encryption to The Complainant. 

The Complainant is obliged to return the Pre-Objection Form that has been completed through an encrypted electronic system (encrypted) to the PPND Secretariat. 

If the Pre-Objection Form is considered complete, the PPND Secretariat is obliged to send the Whois Data requested by The Complainant through an encrypted electronic system to ensure the protection of the Registrant’s personal data. 

If the Pre-Objection application does not meet administrative requirements, The Complainant must re-submit the application that has been corrected no later than 3 (three) days. Failure to fulfil the provisions of this point, The Complainant is deemed to have withdrawn the Pre-Objection application, and therefore the Pre-Objection application is deemed non-existent. 

After the Pre-Objection Form is received completely by the PPND Secretariat, then within no later than 3 (three) days, the PPND Secretariat will send Whois Data to The Complainant through an encrypted electronic system. 

If the domain name dispute relates to a trademark, the Complainant is obliged to provide evidence of trademark registration ownership. 

If the domain name dispute relates to a name, the Complainant is obliged to provide their identity data or legal documents. 

If the domain name dispute relates to the management of the domain name, the Complainant is obliged to provide the identity of The Complainant, Domain Name Management Agreement (if there is an agreement between Registrants and Contacts Admin), Legalised Company Deed (if The Complainant is a legal entity), power of attorney (if authorised). 

The Process of Domain Name Dispute Resolution Through PPND-PANDI can be summarised as follows:

(1) Pre-Objection -> (2) Mediation -> (3) Objection & Response -> (4) Examination & Decision by The Panellists -> (5) Implementation of the Panellists’ Decision.

The official fee for commencing Domain Name Dispute Resolution Through PPND-PANDI starts from IDR 11,000,000.- to IDR 24,000,000.- for 1 to 2 domain names depending on how many Panellists that are required to examine and decide on the case.

Takeaways

Domain Name becomes important especially when it correlates with the use of a registered trademark in the cyberspace or internet. Just like a trademark, the domain name has “distinguishing power” to lead internet users to the correct address of its true and legitimate owner instead of to the wrong one. A lot of domain names reflect or represent the registered trademark or brand because such “name” can easily be remembered in the mind of the customers.

Domain name dispute resolution is mostly done through non-litigation channels although it is also possible to resolve the issue through litigation proceedings in courts if parties cannot agree between themselves about the fair and proper outcome of a dispute.

Trademark-based domain-name disputes of Indonesian Domain Names are resolved through the mediation or arbitration of PANDI as the Registry of Domain Names in Indonesia in accordance with the WIPO Uniform Dispute Resolution Policy adopted by ICANN (The Policy 1999 and The Rule 2009) and PANDI’s Domain Name Dispute Resolution Policy or KPPND (Kebijakan Penyelesaian Perselisihan Nama Domain PANDI).

The principle of Internet Domain Name disputes Resolution under PPND-PANDI is to prioritise peaceful dispute resolution based on the agreement of the disputing Parties through mediation. If the parties remain in their respective opinions, then the examination of material disputes is fully the authority of the PPND-PANDI Panel established under this PPND Policy. 

There are three types of domain name dispute resolution complaints that can be processed by PPND-PANDI:

1. Trademark-related domain name dispute;
2. Name-related domain name dispute;
3. Domain Name Management-related dispute

If you need assistance in registering .ID domain names for your trademark registration or in resolving domain name disputes in Indonesia, please do not hesitate to contact us.

Featured Image By GR Stocks on Unsplash

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