Are UAE Courts Prepared to Resolve Domain Name Disputes?

01 Dec 2002

The UAE Network Information Center (UAEnic) has announced that trademark owners who discover that their trademarks have been registered as “.ae” domain names, may now resolve their disputes by referring the matter either to arbitration with the World Intellectual Property Organization (WIPO) or local courts that shall resolve such disputes in accordance with laws and regulations applicable in the UAE. The following lines shed some light on the mechanism of resolving domain names disputes in the UAE.

Conditions of resolving domain names disputes before local courts

 According to provision (4 J) of the Domain Dispute Resolution Policy for the “.ae”, domain name disputes may be settled in local courts using normal legal methods. There are two prerequisites for filing a lawsuit against infringers of domain names:

A.Domain name must end with “.ae” and must be registered with UAEnic.

The disputed domain name must be a country code domain name ending in “.ae”.  If the domain name were a generic Top Level Domain Name (like “.com”, “.org”) that was not registered with UAEnic system, local courts shall reject the claim. The plaintiff will be asked to address his case to one of ICANN’s approved dispute resolution providers.

B.Parties must be residents of the UAE.

To file a lawsuit in local courts against a registrant of a domain name in bad faith, both parties (the registrant and the trademark owner) have to be residents of the UAE. That is, they should have either a legal presence or a business in the country; otherwise, the claim shall be rejected.

Why local courts are unprepared to resolve domain name disputes?

 Despite issuing the E-commerce Facilitation Law No.2 of 2002, the electronic signature in criminal procedures law and the Trademark Federal Law No.37 of 1992, the Dubai Government has failed to address the conflicts arising between the registration of trademarks and the registration of domain names. Thus, there is no legal basis on which the trademark holder can rely if he decides to file a lawsuit against a domain name registrant.  The only possible alternative for the plaintiff (trademark owner) is to refer to the provisions of the trademark law which are too general and inadequate to resolve domain name disputes. 

While understanding technology will always be an essential factor in issuing appropriate judgments concerning a domain name dispute, most judges in the Middle East are still unfamiliar with the basic technological concepts of the Internet.   

An example of this is a case filed before Dubai’s criminal courts by the Emirates Telecommunications Corporation (Etisalat) against Lee Ashurst, a British national who hacked into Etisalat’s Internet system.  Judges could not decide on the case before getting acquainted with very basic technological concepts of which they have had no previous knowledge. Moreover, the long time needed to resolve disputes and the absence of procedures that can expedite the process of litigation make the parties concerned reluctant to settle their disputes before local courts. 

What ought to be done?

 New provisions should be introduced to the UAE trademark law clearly stating that registering a domain name identical or confusingly similar to a registered trademark constitutes trademark infringement and unfair competition.  Moreover, provisions are needed to constitute compensatory fines for any damages resulting from registering the others’ trademark as a domain name.

 Judges must attend workshops and seminars to become familiar with the technological and legal issues associated with the Internet and e-commerce, especially those related to the complications arising from registering trademarks as domain names. 

 Lawyers also need to be trained on how to initiate or respond to domain name complaints and handle the administrative proceedings of the ICANN’s Uniform Dispute Resolution Policy.

 Law students should become more prepared, through special courses, to handle the ever-increasing issues of domain names.  Finally, a better attention ought to be given to spreading public awareness of domain names and dispute resolution through arbitration or local courts.

By Rami Olwan
E- Commerce Legal Consultant, AGIP

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