Questions and answers about ADR

Why should I apply for dispute resolution (ADR)?

ADR is a relatively simple and fast process intended for all of those who believe that their distinctive marks (e.g. a brand or company name) have wrongly been registered by somebody else as a domain name. It is always difficult to know what lies behind a registration of domain names and it is not certain that the registrant of your distinctive mark as a domain name knew of you or your business. Several brands can have the same wording, but cover different goods and have different holders. However, only one person can receive the domain name! It is therefore advisable to find out as many background facts as possible before applying for ADR. If, after studying what is required to achieve success in an ADR matter, the party believes he/she has a good chance of winning, ADR is a good way of moving ahead.

Who can request dispute resolution proceedings?

Anyone can apply to initiate an ADR matter. You should keep in mind that there are special conditions that must be met for you to be successful in your application and have the domain name transferred to you or deregistered. It is therefore advantageous if you carefully study the rules, particularly with regard to Paragraph 7 of the Registration Conditions with respect to the criteria: right with a legal basis in Sweden, bad faith and justified interest. All of these criteria must be fulfilled for you to succeed. The same applies for accelerated proceeding.

What domain name registrants can be subject to a dispute resolution proceeding?

Before someone registers a domain name, the Registration Conditions should be reviewed and approved. Because the domain name registrant is bound by the terms, he/she has also accepted the rules of dispute resolution and that one can be a part of an ADR as a registrant. A case will be decided regardless of whether the registrant of the disputed domain name responds to the application or not. Responding to an application 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 application can be decided even in the absence of a response can be found in Section 13 Clause 2 of the rules of procedure for ADR.

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

You’ll find the domain name holder’s contact information by searching the domain name in IIS´s whois service at https://www.iis.se/english/domains/free/ and click on the holder’s contact ID. For private persons, there are no data, if the holder is a private person fill in the contact ID that is visible instead.

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

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

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

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

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

According to the rules of the proceedings for ADR, the registrant of the domain name to whom the application pertains has 30 days to respond to the application. 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 applicant requests that the case shall be handled as an accelerated proceeding if the counterparty does not respond to the application and if the counterparty fails to respond, the case is submitted to an arbitrator who shall decide upon the case within 10 days. An important principle is that both the applicant and the registrant include everything they want to present in the application and response, respectively. The WIPO Center may not allow additional correspondence and it is not certain that the arbitrators will approve of more pleas. More correspondence 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 rules of the proceedings for ADR.

How should an application (request) for ADR be formulated?

An application form must be completed. You can find additional information in the checklist that describes what you should have in mind before submitting an application for dispute resolution. The most important thing to keep in mind is that it is checked that all conditions with regards to a right with a legal basis in Sweden, bad faith and justified interest are cited and that evidence that all of these conditions are met is included with the application. It must also be clear what you are seeking with the application (petition): that the domain name be transferred to the applicant or deregistered. Please download some advice how to formulate your application here. NOTE that deregistration means cancellation of the domain name. The domain name will not be blocked for future registration, it will be avalilable for registration again after a period of approximately 60 days.

Is legal counsel/representation required?

Having counsel is not required. Counsel may be appointed if the applicant 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 rules of the proceedings.

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

The application 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 just one application be submitted?

Yes, this may be done on condition that the registrants of the domain names are the same person or company and that the application is submitted with regard to all of the domain names at the same time. The applicant must indicate that grounds exist for handling all domain names in the same proceedings. These provisions can be found in Sections 7 of the rules of the proceedings for ADR.

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

Yes, this may be done if the same person or company (i.e. the applicant) holds the rights to which the domain names are so similar as to be interchangeable and the applications are made at the same time. The applicant must indicate that there is reason to handle all domain name disputes 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 applicant may submit new applications. 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 rules of proceedings for ADR.

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. Three conditions are important to observe and check before an application is submitted. The right cited shall be valid in Sweden, e.g. a brand or company name shall be registered so as to be valid in Sweden. The applicant 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 request dispute resolution proceedings?

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. 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).

Three conditions are important to observe and check before an application is submitted. The right cited shall be valid in Sweden, e.g. a brand or company name shall be registered so as to be valid in Sweden. The applicant 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. The cost of application is dependent on who is the holder of the right invoked. See information about costs here.

What is bad faith?

There are three conditions (absolute requirements) that must be met for the disputed domain name to be transferred to the applicant or deregistered (“a right with a legal basis in Sweden, bad faith and justified interest”). The applicant must show that the conditions for approval of the application exist. A domain name may be considered to have been registered, or used, in bad faith particularly if it is shown that the registration came about with the aim of selling the domain name to the party requesting the dispute resolution (or to a competitor of the party requesting dispute resolution). Bad faith may also be present if the domain name was registered to prevent the party requesting dispute resolution from being able to use its distinctive mark (e.g. brand or company name) in a domain name or with the aim of disrupting the business activities of a competitor. What is stated above are only examples.

For a transfer to be made, the domain name must be interchangeable with a right with a legal basis in Sweden, e.g. a brand, that belongs to the applicant. For bad faith to exist, the applicant must in most cases be able to prove that the domain name registrant was aware of the brand name and that it was not just chance that the domain name and the brand name are similar. For example, it is not contrary to current regulations to sell a domain name to someone that has a similar brand name just because the designations are similar, or to use this domain name as a part of a collection of links. It is only if the registration or use of the domain name was done with knowledge of the applicant’s right (in this case a brand name) that there is typically bad faith on the part of the domain name registrant.

It is also important to note that bad faith need not exist at the time of registration. The registrant of the domain name may at a later date notice the applicant’s business and that the brand name used there is attractive and similar to the domain name. If the registrant then changes the use of the domain name so as to be close to the applicant’s business (under the brand name), this usage could be said to be in bad faith. As stated, it is the applicant that must show that bad faith exists.

At the end of the Terms and Conditions of Registration there are instructions pertaining to how to interpret bad faith.

What is a justified interest?

There are three conditions (absolute requirements) that must be met for the disputed domain name to be transferred to the applicant or deregistered (“a right with a legal basis in Sweden, bad faith and justified interest”). The applicant must show that the conditions for approval of the application exist. A registrant may be seen to have a right to or a justified interest in the domain name particularly if it is proven that he/she 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 registrant, although the registrant has not acquired any sole right to the designation, e.g. as a marketed brand name. The domain name may also not 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. They cannot be interpreted to the contrary; a party may, for example, have a justified interest in a domain name although he/she has not prepared use of it.

At the end of the Terms and Conditions of Registration there are instructions pertaining to how to interpret justified interest.

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

No, all conditions (“right with a legal basis in Sweden, bad faith and justified interest” 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 with a legal basis in Sweden, bad faith and justified interest” are addressed and that the position regarding the petitions of the domain being transferred to the applicant or deregistered be stated. Why is it right and fitting that I as the registrant 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 ADR application is responded to and if the applicant has chosen accelerated proceeding, and you do not respond to the application, the case will be decided within 10 days as opposed to 20 days. Please download some advice how to formulate your response here.

The rule that the application can be resolved even in the absence of a response can be found in Section 13 Clause 2 of the rules of procedure for ADR.

Can I as the domain owner, request deferment of my answer?

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

What language will the ADR be resolved in?

The application for an alternative dispute resolution proceeding must be made in Swedish or English. The decision is made in the language in which the application was made. The counterparty is free to respond in either Swedish or English. The language provision can be found in Section 26 of the rules of procedure for ADR.

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

ADR cases are normally resolved by one arbitrator. (Here you will find a list over arbitrators). You cannot personally choose this arbitrator; the arbitrator is appointed by the WIPO Center. A registrant of a domain name that has been subject to ADR proceedings can, under the rules of procedure (Section 15), request that the matter be resolved by three arbitrators. In such a case, while the applicant and the registrant 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 applicant request that the matter shall be resolved by three arbitrators and, in addition, has chosen accelerated proceeding and the counterparty fails to respond to the application, 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 independent and entirely separate from the WIPO Center. The WIPO Center can be contacted for questions about the administration of the procedure, tha parties shall not contact the arbitrators.

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

If an alternative dispute resolution proceeding has been initiated, the domain name may not be transferred to the applicant 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 dispute resolution proceedings 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 plaintiff 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 a proceeding exists. These provisions can be found in Section 28 of the rules of procedure for ADR and Paragraph 3.2 of Terms and Conditions of Registration.

What if the domain name holder allows the application for transfer?

The applicant may choose to withdraw the application and either make the transfer in the usual way, or if the applicant 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 application received and consent. The arbitrator will decide on the transfer if there isn´t anything in the file against it.

Can you withdraw an application for ADR?

It is possible to withdraw an application 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 applicant wishes to withdraw the case. One exception is if a party brought an action in court concerning thesame dispute resolution related, then the parties must agree that the procedure should be stopped, otherwise it continues (see paragraph § 28 rules of procedure).

Is it possible to request deferment, 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 IIS website and The WIPO Center website, ”Ongoing matters and ADR decisions”. The decisions contain everything of significance that has come to light in the case. This provision can be found in Section 25 of the rules of procedure for ADR.

What happens after an ADR decision has been conveyed?

The registrants of domain names are bound by General Terms and Conditions, because this is a pre-requisite for registration under the 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 IIS has received the decision. This provision can be found in Paragraph 7.3.1 of IIS’s Terms and Conditions of Registration.

Can an ADR decision be prevented from being enforced?

If the decision means that the domain name is to be transferred to another party or deregistered, the registrant, 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 dispute resolution within the scope of the Terms and Conditions. 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 alternative dispute resolution proceeding. IIS 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 name registrants 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 is not justified. The alternative available is a public court, but this is neither faster nor less expensive (quite the contrary). From Paragraph 6.4 of Terms and Conditions of registration, it is clear that IIS 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 an application shall be formulated. Decisions already made are available for reading. By reading this, you can see more closely how the arbitrators reason. In 2003, the current dispute resolution system was brought into use and the work of developing it is presented in Swedish in the Memorandum Regarding the ideas behind ADR – the rationale underlying the formulation of most of the rules can be read in here. An evaluation of ADR conducted by an external lawyer and a thesis from Malmö University are also available in Swedish. You can read more about accelerated proceeding here.

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 counterparty does not respond to the ADR application. When a case is handled as accelerated proceeding, the case is always tried by one arbitrator. The arbitrator shall consider all conditions (“right with a legal basis in Sweden, bad faith and 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 is not provided with any justification contrary to a standard ADR decision.

Why is an accelerated proceeding decision not justified?

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 short, the arbitrator does not have to justify the decision. If the applicant in any event would like a justified decision the applicant shall not chose accelerated proceeding but standard ADR. In standard ADR the decision shall be justified by the arbitrator even if the counterparty fails to respond to the application. However the decisions, including accelerated proceeding decisions, will be summarized in short by the adjudicator in order to clarify the matter in dispute and any relevant circumstances. These summaries can be found here.

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.