How to recover the right to an internet domain name in Poland?
Although not regulated as a separate intellectual property right, domain names are essential intangible assets for building a digital presence. This is especially true for any online business or when someone is planning to start their business in Poland. Domain names serve as commercial identifiers, which may contain information about companies and the products and services they offer. Additionally, a well-chosen domain name can be an essential part of a company’s marketing strategy.
Due to the indisputable market value of domain names, disputes over them are quite common. It can be concluded that this area has been under-regulated, as only a few ADR rules have been adopted so far. Taking into account the fact that the aforementioned rules vary according to the extension of the domain name (for example “.com”, “.eu”) and the need to resort to other legal frameworks (such as for example the trademark law), in the event of domain disputes, it is of the utmost importance to first identify the existing possibilities with regard to the available claims and – first of all – the court which should examine the affair.
This article aims to provide a brief overview of how to pursue claims relating to infringing domain name registrations with respect to domains with the .pl extension.
.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. In addition to maintaining the .PL domain registry, NASK conducts extensive research, development, and educational activities in the area of digitalization, cybersecurity, and AI. In order to register a .PL domain name, it is necessary to enter into a contract with one of NASK’s approved partners who act as registrars. The registration process is conducted in accordance with the rules set out in the .PL Domain Name Regulations1 . It is crucial to note that entering into such an agreement does not transfer ownership of the domain name or any other exclusive rights to the subscriber. That said, the subscriber has in principle the right to use the domain name for an unlimited period as long as he bears the renewal costs.
As mentioned above, in the event of a domain dispute, it is necessary to first determine which court should hear the case. For .PL domains, there are two possible routes: arbitration courts and ordinary courts based in Poland. It should be noted, however, that if none of the disputing parties is registered or resides in Poland, the case must be considered by the WIPO Arbitration and Mediation Center.2 .
The court that is most often chosen by disputing parties in domain cases is the Court of Arbitration for Internet Domain Names of the Polish Chamber of Information Technology and Telecommunications (“PCIIT Arbitration Court”). Arbitrators hearing cases before the PCIIT Court of Arbitration include renowned academics and practicing attorneys who are recognized as experts in the field of intellectual property law and new technologies. In addition, procedural rules before the PCIIT Court of Arbitration are less formal and rigid compared to procedures conducted in ordinary courts.
In accordance with the Rules of the Arbitral Tribunal in matters of Internet domain names at the Polish Chamber of Information Technology and Telecommunications3 (“the Rules”), the documents of the proceeding before the PCIIT Court of Arbitration shall be sent electronically or by facsimile transmission, unless the Rules require a written form (this is the case, inter alia, of action and response to action). Although evidence may include the hearing of parties or witnesses (as well as documentary evidence and expert opinions), hearings are only ordered during arbitration proceedings when the arbitrator deems it “necessary full explanation of the circumstances of the case”.
The arbitrator is required by the Rules to object to the extension of the arbitration proceedings by a party and the time limits set out in the Rules may only be extended by the arbitrator in exceptional cases. In addition, the arbitrator must endeavor to terminate the proceedings within 30 days of accepting the appointment as arbitrator in the matter in question. The parties also have the option of settling at any time during the arbitration process, as well as trying to reach an agreement in mediation before the arbitration process begins. As a result of the aforementioned provisions, the duration of the procedure is considerably shorter compared to a procedure before the ordinary courts (up to a few months in the majority of the cases examined before the PCIIT Court of Arbitration, whereas it is not It is not uncommon for the award to be published within 2-3 months).
In the event that the seat of one of the parties is located outside the territory of Poland, this party will appoint a lawyer ad litem or a person authorized to receive judicial documents based in Poland. The language of the proceedings is Polish and all documents prepared in languages other than Polish must be accompanied by translations into Polish, but the arbitrator may decide otherwise at the joint request of the parties. In any case, the award or any other decision will be rendered in Polish, as the resolution of disputes is subject to Polish law (as well as the Rules).
As regards other practical arrangements, the Rules provide for a detailed procedure concerning the appointment of the arbitrator (in principle, a single arbitrator examines the case, but the parties may jointly request that the procedure be conducted by an arbitral tribunal composed of three arbitrators). The cost of initiating proceedings amounts to PLN 492 (approx. €100) administration fee for the pre-trial motion plus PLN 3690 (approx. €770) court costs. In the event that the parties request that the case be considered by three arbitrators, the court costs amount to 7380 PLN (approximately €1535) 4 .
The second arbitral tribunal that examines disputes relating to the .pl domain is the Arbitral Tribunal of the Polish Chamber of Commerce (“Court of Arbitration”). Proceedings before the aforementioned court are conducted in accordance with the Rules for Dispute Resolution of .PL Domain Names of the Arbitration Court of the Polish Chamber of Commerce.5 and Polish law. The rules governing the procedure before the PCIIT Court of Arbitration and the Court of Arbitration are largely similar (including the amount of fees payable). Despite the fact that the Court of Arbitration handles a wide variety of cases, it maintains a separate list of recommended arbitrators for domain disputes.
With regard to the arbitration courts, it should be mentioned that the choice of this route is favorable to the claimant because, in accordance with the regulations on .PL domain names of the aforementioned NASK, as soon as NASK is informed of a dispute , the subscriber is no longer authorized to transfer the rights of the subscription contract to another person. Furthermore, the non-signature of the arbitration clause by the defendant leads to the termination of the subscription contract three months after the deadline indicated for signing this arbitration clause. Accordingly, the respondent is obligated to participate in the arbitration proceedings if it wishes to retain control of the domain name. However, the aforementioned rule does not apply to consumers – in the event that a consumer does not sign the arbitration clause, the dispute will be resolved in ordinary court.
Arbitral awards or settlements agreed before an arbitral tribunal have the same legal effect as a judgment of a court or a settlement concluded before a court, after their recognition or execution by the court. Recognition or enforcement, which is subject to a fee in the amount of PLN 300 (approximately €62), is granted by the court only in exceptional and clearly defined circumstances (for example, if the arbitral award contravenes to the fundamental principles of law and order of the Republic of Poland). Once the arbitration award or settlement is formally acknowledged or the issue of enforcement is ordered, it shall form the basis for termination of the Agreement by NASK with Subscriber without further notice.
Domain disputes may also be heard by ordinary courts. It should be noted that this route had been considered less safe, as judges in ordinary (civil) courts have to deal with a wide range of cases. However, this has changed since 2020, when specialized intellectual property courts were introduced in Poland. The aforementioned courts, which have jurisdiction to hear civil cases relating, among other things, to intellectual and industrial property rights, unfair competition, as well as human rights in the context of commercial activities, would also have jurisdiction to deal with domain disputes.
As mentioned earlier, the duration of proceedings in ordinary courts is generally considerably longer than in arbitral tribunals. In addition, in the event of a favorable judgment, the opposing party can always appeal, whereas in the event 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 civil law (which can nevertheless be done after the case was resolved before an arbitral tribunal).
Finally, it is important to mention that claims in domain disputes are usually based on allegations that the domain name in question infringes the trademark rights of the plaintiff (which may be a Polish or EU trademark ) or the provisions of the Polish Act on Combating Unfair Competition. In this regard, it should be noted that typosquatting has been explicitly recognized as an act of unfair competition by Polish courts.6 . Other possible legal grounds for claims in domain disputes include infringement of the plaintiff’s business name and personal rights (for example, if the domain name includes the name of a natural person).
Plaintiffs in disputes over domain names with the .pl suffix can choose between arbitration tribunals, including the highly specialized PCIIT Arbitration Tribunal, and ordinary courts. The advantages of taking the case to an arbitral tribunal include the relatively short duration and digitization of the procedure. Typical grounds for claim in domain disputes include trademark infringement, unfair competition regulations, and infringement of the plaintiff’s trade name or personal rights. In practice, it is sometimes difficult to negotiate with the current holder of the domain name the conditions of purchase of the domain. More and more totally “professional” sellers hide their name/address etc. Therefore, litigation seems to be the only option.