Informal Guide to the ADR proceeding

This Guide addresses the most frequently asked questions about domain name dispute resolution for .SE

Why should I opt for the Alternative Dispute Resolution (ADR) proceeding?

ADR is a relatively simple and fast process intended for all of those who believe that their distinctive signs (e.g. a trademark or company name) have wrongly been registered by somebody else as a domain name. It is always difficult to know what lies behind the registration of a domain name and it is not certain that the registrant of your distinctive sign as a domain name knew of you or your business. Several trademarks can have the same wording, but cover different goods and have different holders. However, only one person can register the domain name! It is therefore advisable to find out as many background facts as possible before opting for ADR.

Who can submit a Petition?

Anyone can initiate an ADR. You should keep in mind that there are special conditions that must be met for you to be successful in your Petition and have the domain name transferred to you or deregistered. It is therefore recommended that you carefully study the .SE Policy and Rules of procedure, particularly with regard to Paragraph 7 of the Registration Conditions with respect to the criteria: rights covered which are legally recognized in Sweden, bad faith and right or justified interest. All of these criteria must be fulfilled for you to succeed. The same applies for accelerated proceedings.

Which domain holders can be subject to a ADR proceeding?

Before someone registers a domain name, the Registration Conditions should be reviewed and approved. Because the domain holder is bound by the terms, he/she has also accepted the ADR rules and that one can be a part of an ADR as a domain holder. A case will be decided regardless of whether the domain holder responds to the petition or not. Responding to a petition is always better than not, particularly if you believe that you have a right to your domain name. It is also advantageous to study the regulations on domain names before responding. Many knowledgeable people, lawyers and others, can help as counsel in return for payment in the event of uncertainty. The rule that the petition can be decided even in the absence of a response can be found in Section 13 of the .SE Rules of procedure.

How do I enter the domain holder’s contact information in the petition?

You will find the domain name holder’s contact information by searching the domain name in Internetstiftelsen’s Whois service at https://internetstiftelsen.se/en/ and click on the domain holder’s contact ID. For private persons, no data are shown, if the domain holder is a private person fill in the contact ID that is visible instead.

What is required to win the dispute and how likely is it?

It all depends on the conditions. It is important to keep in mind that there are special legal requirements that must be met for you to be successful in your petition and have the domain name transferred to you or deregistered. It is therefore recommended that you carefully study the regulations, particularly with regard to Paragraph 7 of Terms and Conditions of Registration pertaining to a right legally recognized in Sweden, bad faith and right or justified interest, all of which must be met to win an ADR case, before submitting a petition.

How much does it cost? How do I pay? Repayment?

The cost of an ADR proceeding depends on who files an ADR, the number of arbitrators engaged in the matter and how many domain names are disputed and if the petitioner in the petition requests that the case shall be handled as an accelerated proceeding if the domain holder does not respond to the petition. More information is provided here.

How long does it take for an ADR case to be resolved?

According to the .SE Rules of procedure, the domain holder has 30 days to respond to the petition. Depending on whether the matter is to be resolved by one or three arbitrators, it then takes another 20 or 45 days before the matter is resolved. If the petition requests that the case shall be handled as an accelerated proceeding and if the domain holder does not respond to the petition, the case is submitted to an arbitrator who shall decide upon the case within 10 days. An important principle is that both the petitioner and the domain holder include everything they want to present in the petition and response, respectively. The WIPO Center may not allow additional correspondence and it is not certain that the arbitrators will approve of more documents. More pleadings can also mean that it takes more time for the matter to be resolved. These rules can be found in Section 13 clause 1, Section 16 and Section 22 of the .SE Rules of procedure.

How should a petition be filed?

A petition must be completed. You can find additional information in the check list that describes what you should have in mind before submitting a petition for dispute resolution. The most important thing to keep in mind is that it is checked that all conditions with regards to a right legally recognized in Sweden, bad faith and right or justified interest are cited and that evidence that all of these conditions are met is included with the petition. It must also be clear what you are seeking with the petition: that the domain name be transferred to the petitioner or deregistered.

NOTE that deregistration means cancellation of the domain name. The domain name will not be blocked for future registration, it will be available for registration again after a period of approximately 60 days.

You will find a Model petition on WIPO’s website at: https://www.wipo.int/amc/en/domains/cctld/se/index.html

Is legal counsel/representation required?

Having counsel is not required. Counsel may be appointed if the petitioner so pleases. If you are uncertain, or want help in any way, it might be beneficial to contact a lawyer or another knowledgeable person. Compensation for representation/legal expenses is, however, not awarded (regardless of whether one wins or loses the case). These stipulations are stated in Sections 27 and 29 of the .SE Rules of procedure.

What email address should the petition and response be sent to?

The petition or response is to be sent by email to domain.disputes@wipo.int.

Several domain names are similar to the same protected right (e.g. brand or company name) – can a single petition be submitted?

Yes, this may be done on condition that the domain holders are the same person or company and that the petition is submitted with regard to all of the domain names at the same time. The petitioner must indicate that grounds exist for handling all domain names in the same proceedings. These provisions can be found in Section 7 of the .SE Rules of procedure.

The same person or company has domain names that are similar to several different protected rights (e.g. brands or company names) – can just a single petition be submitted?

Yes, this may be done if the same person or company (i.e. the petitioner) holds the rights to which the domain names are so similar as to be interchangeable and the petitions are made at the same time. The petitioner must indicate that there is reason to consolidate all the disputed domain names at the same time and explain why it would benefit the investigation (the arbitrator’s work) to handle everything in the same proceedings. It is then up to the arbitrator to decide if it is beneficial to the investigation. If the arbitrator deems this not to be the case, the matter is rejected and the petitioner may submit new petitions. An example of conditions for processing in one proceeding might be if a businessman has registered several of a competitor’s most important distinctive marks as domain names to disrupt the competitor’s business activities.

This provision can be found in Section 7a of the .SE Rules of procedure .

What rights can the application be based on?

Paragraph 7.2 of Terms and Conditions of Registration lists all of the names, designations and rights that can form the basis of a transfer or a deregistration of a domain name. Examples are trademarks, company names, family names and official designations. No right is worth more than any of the others listed in relation to the domain name. Consequently, it does not matter which of the listed rights are cited. The right cited shall be legally recognized in Sweden, e.g. a brand or company name shall be registered so as to be legally recognized in Sweden. The petitioner must show that he/she is entitled to the right cited, e.g. through the title to registration. It is also important that the domain name and the right be identical or easily interchangeable.

Can a non-profit organization submit an ADR petition?

Paragraph 7.2 of Terms and Conditions of Registration lists all of the names, designations and rights that can form the basis of a transfer or a deregistration of a domain name. Name of a non-profit organization is not a right that can be invoked, unless the association’s name also is a registered trade name or trademark (or if you have any of the other enumerated rights).

What is bad faith?

With respect to bad faith, it is sufficient for the petitioner to prove that either registration or use of the domain name is in bad faith.

A domain name may be considered to have been registered, or used, in bad faith particularly if it is shown that:

  • The domain name registration came about with the aim of selling the domain name to the petitioner (or to a competitor of the party requesting dispute resolution);
  • The domain name was registered to prevent the petitioner from being able to use its distinctive mark (e.g. trademark or company name) in a domain name;
  • The domain name is being used or planned to be used to disrupt the business activities of the petitioner;
  • The domain holder is utilizing or plans to utilize the good reputation, market position or characteristic feature of the petitioner to attract traffic to its own website or to increase the revenue in this manner

What is stated above are only examples.

There are instructions pertaining to how to interpret bad faith. See https://internetstiftelsen.se/app/uploads/2019/02/instructions-pertaining-to-adr-paragraph-7.pdf.

What is a right or justified interest?

With respect to a right or justified interest, a domain holder may be seen to have a right to or a justified interest in the domain name particularly if it is proven that:

  • The domain holder owns a registered trademark (or other right) that is identical or similar to the domain name;
  • The domain holder has prepared to use – or has already used – the domain name, e.g. with regard to sales of goods and services on a website that is linked with the name;
  • The domain name may have become generally known to the domain holder, although the domain holder has not acquired any sole right to the designation, e.g. as a marketed brand name;

The domain name may also not be used for a commercial purpose to mislead consumers or to damage a distinctive mark’s or right’s reputation.

What is stated above are only examples.

There are instructions pertaining to how to interpret justified interest. See https://internetstiftelsen.se/app/uploads/2019/02/instructions-pertaining-to-adr-paragraph-7.pdf.

Are there any exceptions to all three of the criteria being met for success in a case?

No, all conditions in Paragraph 7.2 of Terms and Conditions of Registration must be met.

How should the response be formulated?

A response form must be completed. The most important to think about when completing the response form is that all of the claims regarding “right legally recognized in Sweden, bad faith and right or justified interest” are addressed and that the position regarding the domain name being transferred to the petitioner or deregistered be stated. Why the domain holder should be entitled to the particular domain name, which may be similar to someone else’s distinct mark? It is important to note that the matter will be resolved regardless of whether or not the petition is responded to and if the petitioner has chosen an accelerated proceeding, and you do not respond to the petition, the case will be decided within 10 days as opposed to 20 days. 

The rule that the petition can be resolved even in the absence of a response can be found in Section 13 of the .SE Rules of procedure.

You will find a Model Response on WIPO’s website at: https://www.wipo.int/amc/en/domains/cctld/se/index.html

Can I as the domain holder, request the extension of the response due date?

There is nothing in the .SE Rules of procedure that allows the extension of the response deadline. After the response period of 30 days, the WIPO Center shall appoint an arbitrator, whether it has received a response from the domain holder or not. The domain holder has the opportunity to request an extension to the arbitrator, but it is not certain that it will be granted.

What language will the ADR be resolved in?

The petition must be made in Swedish or English. The decision is made in the language in which the petition was made. The domain holder is free to respond in either Swedish or English. The language provision can be found Section 26 of the .SE Rules of procedure.

Who is/are the arbitrator(s)? Can I choose the arbitrators myself?

ADR cases are normally resolved by one arbitrator.

You will find a list of the arbitrators on WIPO’s website at https://www.wipo.int/amc/en/domains/panel/panelists.jsp?code=seDRP  

You cannot personally choose the arbitrator. The arbitrator is appointed by the WIPO Center. A domain holder that has been subject to ADR proceedings can, under Section 15 of the .SE Rules of procedure, request that the matter be resolved by three arbitrators. In such a case, while the petitioner and the domain holder are given the opportunity to each appoint their arbitrator among those listed by the WIPO Center, the arbitrator who will be the chairman shall be appointed by the WIPO Center. If the petitioner request that the matter shall be resolved by three arbitrators and, in addition, has chosen accelerated proceeding and the domain holder fails to respond to the petition, the case shall be decided by the arbitrator appointed by the WIPO Center.

Can I contact the arbitrators and discuss ADR or my case?

The arbitrators are impartial and independent from the WIPO Center and from the Swedish Internet Foundation. The WIPO Center can be contacted for questions about the administration of the procedure, the parties shall not contact the arbitrators.

The WIPO Center requires all prospective arbitrators to complete and submit a Statement of Acceptance and Declaration of Impartiality and Independence.

What happens with the domain name during the time the dispute resolution is under way?

If an ADR proceeding has been initiated, the domain name may not be transferred to the petitioner or a third party while the dispute resolution proceedings are under way or before the decision following the proceeding can be enforced. This provision can be found in Paragraph 5.3.1 of Terms and Conditions of Registration.

What happens with the domain name and the ongoing dispute resolution if action has been taken in court at the same time as an ADR is under way?

The ADR proceeding shall continue if the parties do not agree that they should be interrupted. If action has been taken in court regarding greater rights to the domain name, the domain name may not be transferred to the petitioner or a third party during the time that the court proceeding is under way or before a judgment has gained legal force. This presupposes that the WIPO Center has been made aware through notification that such court proceeding exists. These provisions can be found in Section 28 of the .SE Rules of procedure and Paragraph 7.2 of Terms and Conditions of Registration.

What if the domain name holder consents to the transfer?

The petitioner may choose to withdraw the petition and either make the transfer in the usual way, or if the petitioner so desires IIS registry can do the transfer on the basis of the provided consent. The alternative is to await a decision, which the arbitrator takes on the basis of the petition received and consent. The arbitrator will decide on the transfer if there isn´t anything in the file against it.

Can you withdraw a petition for ADR?

It is possible to withdraw a petition for ADR. If this is done before the case was transmitted to the arbitrator, the full fee will be refunded (except of an administrative fee). If the withdrawal is made after the matter has been sent to the arbitrator, half of the application fee will be reimbursed.

Both parties must agree to be able to withdraw an application for ADR?

No, it is sufficient that the petitioner wishes to withdraw the case. One exception is if a party brought an action in court concerning the same disputed domain name, then the parties must agree that the procedure should be stopped, otherwise it continues (see Section  28 of the .SE Rules of procedure).

Is it possible to request suspension of the case t, if both parties want to come to an agreement?

Yes, if the parties jointly to reconcile, then the WIPO Center shall suspend the case. Please send the request to domain.disputes@wipo.int.

The decisions – are they public and where can I find them?

The decisions are public and can be found on the Swedish Internet Foundation’s website at Ongoing matters and ADR decisions and on WIPO Center website at https://www.wipo.int/amc/en/domains/cctld/se/index.html.

What happens after an ADR decision has been notified to the parties?

The registrants of domain names are bound by Terms and Conditions of Registration, because this is a pre-requisite for registration under the country code top-level domain .se. If the ADR decision means that the domain name is to be transferred to another party or deregistered, this will take place 14 days after the Swedish Internet Foundation has received the decision. This provision can be found in Paragraph 7.3.1 of Terms and Conditions of Registration.

The Arbitrator’s decision is implemented by the Swedish Internet Foundation.

Can an ADR decision be prevented from being enforced?

If the ADR decision means that the domain name is to be transferred to another party or deregistered, the domain holder, within 14 days of notice of the decision, can prevent enforcement by showing that he/she has taken action in court regarding greater right to the domain name. This provision can be found in Paragraph 7.3.1 of Terms and Conditions of Registration.

Can I appeal a decision? Can I request ADR again?

There is no possibility of appealing a decision after an ADR case within the scope of the Terms and Conditions of Registration. There is nothing preventing the dispute from being taken to a public court for a review under public civil law regulations.

Are there any alternatives to ADR – after all many cases are “obvious”?

No, there are no alternatives to the ADR proceeding. The Swedish Internet Foundation has assessed that an even faster and simpler proceeding would lead to difficult distinctions – which cases are obvious and which are not? – and thereby a risk that certain of the domain holders may be affected through no fault of their own. As a complement to standard ADR, accelerated proceeding is available. The decision shall be made within 10 days instead of 20, however the same careful considerations made in a standard ADR case shall be made. The difference is that the decision only includes a brief justification (See Section 9 of the .SE Rules of procedure). From Paragraph 6.4 of Terms and Conditions of Registration, it is clear that the Swedish Internet Foundation will immediately follow a judgment that has become legally binding or a legally effective decision in Sweden.

How can I find out more about ADR?

The best way to learn more is to read through “Frequently asked questions (FAQ)” and other tips on the website, e.g., how a petition or response shall be filed Decisions already made are available for reading. By reading this, you can see more closely how the arbitrators reason.

What is Accelerated proceeding?

Accelerated proceeding is a complement to standard ADR. It involves a possibility for the petitioner to have an accelerated process of a case provided that the domain holder does not respond to the petition. When a case is handled as accelerated proceeding, the case is always decided by one arbitrator. The arbitrator shall consider all conditions (“right legally recognized in Sweden, bad faith and right or justified interest”) applicable in a standard ADR case in order for the relevant domain name to be transferred to petitioner or deregistered. The difference is that the arbitrator shall decide on the case within 10 days as opposed to 20 days. The decision only includes a brief justification whereas in a standard ADR decision the reasons behind the ruling from which the arbitrator determines the dispute issue must be stated (See Section 21 of the .SE Rules of procedure).

Why does an accelerated proceeding decision only include a brief justification?

The arbitrator shall make the same careful considerations in an accelerated proceeding as in a standard ADR case but since the time limit for the arbitrator to make a decision is shorter, the arbitrator only has to include a brief justification. If the petitioner in would like a decision where the arbitrator states the reasons behind the ruling the petitioner should not choose an accelerated proceeding but standard ADR. In standard ADR the decision shall be justified and the reasons behind the ruling stated by the arbitrator even if the domain holder fails to respond to the petition. However, the decisions, except accelerated proceeding decisions, will be summarized in short by the arbitrator in order to clarify the matter in dispute and any relevant circumstances (See Section 23 of the .SE Rules of procedure).

Contacts for ADR

If you have further questions regarding ADR, please send an e-mail to arbiter.mail@wipo.int or call +41 22 338 8247.