Structure of the JP-DRP

The decision-making criteria and dispute-resolution procedures of the JP Domain Name Dispute Resolution Policy (hereinafter “JP-DRP”) are based on Uniform Domain-Name Dispute-Resolution Policy (UDRP) of Internet Corporation for Assigned Names and Numbers (ICANN), in synchronization with international trends.

Rules concerning dispute resolution

The JP-DRP consists of two documents, which are positioned as follows:

(1) JP Domain Name Dispute Resolution Policy

The Resolution Policy is to be the integral part of registration rules, which the registrants who have registered their domain name with Japan Registry Services Co., Ltd. (hereinafter “JPRS”) shall follow, by being referred to therefrom, “Registration Rules for Organizational Type and Geographic Type JP Domain Names”, “Registration Rules for Prefecture Type JP Domain Names”, and “Registration Rules for General-use JP Domain Names” (hereinafter referred to collectively as the “Registration Rules”)
In other words, registrants who register their JP domain name with JPRS are required to submit to the dispute-resolution procedures conducted by the dispute-resolution service provider if a third party files a complaint, and to comply with the panel’s decision. The dispute resolution policy sets out the terms for the resolution of disputes concerning domain names between domain name registrants and third parties such as trademark holders.

(2) Rules for Procedure for JP Domain Name Dispute Resolution Policy

The Rules for JP Domain Name Dispute Resolution Policy (hereinafter “Rules for Procedure”) set out the rules to be followed when conducting the dispute resolution procedures. A dispute-resolution service provider (DRSP) approved by JPNIC resolves the dispute in accordance with these Rules for Procedure.

Applicable Disputes

(1) Features of the JP-DRP

Disputes concerning domain names and trademarks can be divided into to the following types:

(a) Bad faith registrant of domain names vs. trademark rights holder

These include cases where the registrant registers a domain name that is identical to a well-known trademark or company name and attempts to sell the domain name for a high price to the legitimate holder of the trademark, etc. Such behavior is known as cyber-squatting.

(b) Domain name registrant vs. bad faith trademark rights holder

In contrast to cyber-squatting, these are cases in which an attempt is made to misuse the JP-DRP, by using rights such as trademark rights as a means of taking a domain name from a domain name registrant with legitimate rights to that domain name. Such behavior is known as reverse domain-name hijacking.

(c) Trademark rights holder (or domain name registrant) vs. trademark rights holder

These are cases where neither the domain name registrant nor the trademark rights holder is acting in bad faith and both have a legitimate right to register the disputed domain name.

The most important feature of the JP-DRP, like that of the UDRP, is its minimalist approach. Of the three types of dispute listed above, the JP-DRP does not apply to disputes between holders of legitimate rights as in category (c) but only to the registration or use of a domain name for unfair purposes as in category (a). In cases where the filing of the complaint is deemed to constitute misuse of the JP-DRP, as in category (b), this will be indicated in the decision document.

(2) Conditions for filing a complaint under the JP-DRP

When filing a complaint under the JP-DRP, the complainant is required to assert all of the following three matters in the written complaint (JP Domain Name Dispute Resolution Policy, Article 4.a):

1. That the domain name that is the subject of the complaint is identical to or confusingly similar to a trademark, etc. held by the complainant
2. That the registrant has no right or legitimate reason to register the domain name
3. That the registrant has registered or is using the domain name for unfair purposes

Cases that correspond to “registration or use of a domain name for unfair purposes” as in category (c) above are set out as follows in Article 4.b of the JP Domain Name Dispute Resolution Policy. The examples given below should not be construed as excluding other cases.

1. Cases where the registrant has registered the domain name for the purpose of selling it on at a higher price than its actual cost
2. Cases where the registrant has registered the domain name in order to prevent the holder of trademark rights from using the domain name, and has engaged in such obstructive behavior on multiple occasions
3. Cases where the registrant has registered the domain name in order to disrupt the business of a competitor
4. Cases where the registrant has registered or is using the trademark of a third party as a domain name in order to confuse users

In response to such a complaint, if the registrant is able to demonstrate the points listed below, and if it is deemed that the registrant has rights to or a legitimate interest in the domain name, it will be possible to maintain the registration of the domain name. The examples given below should not be construed as excluding other cases.

1. That prior to receiving notification of the dispute the registrant had been using the domain name in question or a name corresponding thereto for a fair purpose
2. That the registrant is generally known by the domain name in question, whether the registrant has registered it as a trademark or not
3. That the registrant is not using the domain name for the purpose of deriving commercial gain from the resulting confusion among users or is using the complainant's trademark for a non-commercial or fair purpose that is not intended to tarnish the trademark

Approved dispute-resolution service provider

Dispute-resolution procedures under the JP-DRP are administered by a dispute-resolution service provider (DRSP) approved by JPNIC, in accordance with the Rules for Procedure. In August 2000, JPNIC signed an agreement with the Industrial Property Rights Arbitration Center (an organization operated jointly by the Japan Federation of Bar Associations and the Japan Patent Attorneys Association, which changed its name in April 2001 to Japan Intellectual Property Arbitration Center; JIPAC) relating to the resolution of disputes over JP domain names. In October of the same year, JIPAC began resolution work on disputes over JP domain names as JPNIC’s first approved DRSP. When performing dispute resolution procedures, the DRSP also follows Supplementary Procedural Rules for JP Domain Name Dispute Resolution Policy, which set out detailed rules for dispute resolution work, and JP Domain Name Dispute Resolution Policy Fee Rules, which set out provisions relating to fees.

Panel deliberations

Deliberations and decisions based on the JP-DRP are conducted and made by a panel formed of panelists appointed by the DRSP. The list of candidate panelists is posted on the DRSP's website. The panel may have one or three members, and the number of members is decided by the parties. Specifically, if both parties request a single-member panel, the panel will have one member, but if either party requests a three-member panel, the panel will have three members. In the case of a three-member panel, the decision is made by majority vote.

Remedies

Remedies under the JP-DRP are limited to the transfer or the cancellation of the domain name. Claims for damages are not accepted. This is because, if claims for damages were accepted, panel deliberations and decisions would require more time and labor, and this would be contrary to the JP-DRP's objectives of simplicity and speed. The decision to transfer or cancel the domain name issued by the approved DRSP is communicated to JPRS, and the decision is implemented.

Relationship with legal action

Before the commencement of procedures under the JP-DRP, either party may bring an action concerning the registration of the domain name in a court of law, either while the proceedings are pending, or after they are completed. If the action is brought before the commencement of the JP-DRP procedures, the party concerned is required to indicate this in the written complaint or response. If the action is brought while the JP-DRP proceedings are pending, the party concerned is required to notify the DRSP, etc. of the fact. In such cases, the panel has discretion to decide whether to continue, suspend or terminate proceedings.

After the completion of the JP-DRP procedures, if the respondent (registrant) is dissatisfied with the decision (a decision to cancel or transfer the domain name), and brings an action in a court of law within 10 days after the communication of the decision, and if, during this time, a certified copy of a document stating that the registrant has brought an action in a court of law is submitted, the implementation of the decision will be deferred. The “agreed jurisdiction” when an action is brought in a court of law after the panel's decision is the Tokyo District Court or the court in the jurisdiction of the registrant's registered address.

Dispute Resolution Procedures

The dispute resolution procedures under the JP-DRP are conducted by the DRSP. The overall flow of the dispute resolution process is shown in the Process Flowchart.

Characteristics of procedures

The procedures administered under the JP-DRP, which were formulated as a new method of dispute resolution, differing from judicial contests or arbitration, have the following characteristics:

(a) Simple

In principle, deliberations are conducted solely on the basis of documents submitted by the parties.

(b) Speedy

The panel issues its decision within a maximum of 55 days from the filing of the complaint (based on the working days of the DRSP).

(c) Low-cost

For example, where deliberations on a single complaint are conducted by a single-member panel, the fee charged by the Japan Intellectual Property Arbitration Center is 180,000 yen.

(d) Non-binding

Unlike an arbitration award, the parties are not bound by the panel's decision of the panel and may file a lawsuit in a court if they are dissatisfied with the decision.

Submission of written complaint

When filing a complaint, the complainant submits a written complaint and related documentation to the DRSP. The written complaint is required to state the grounds for the complaint, type of remedy sought, names of candidates for appointment as panelists, etc. Complaints may also be filed by complainants who do not have a local presence (an address in Japan). In such cases also, all procedures must, in principle, be carried out in Japanese.

Submission of written response

On receiving the written complaint from the DRSP, the registrant submits to the DRSP a written response stating that the domain name was not registered in bad faith, etc. All procedures relating to the submission of the written response must also, in principle, be carried out in Japanese.

Appointment of panelists

The number of panelists may be one or three, and is decided by the two parties. If there is to be a single panelist, the DRSP selects the panelist from a list of candidates maintained by the DRSP itself. If there are to be three panelists, the complainant and registrant each select three candidates from among whom one panelist will be appointed on behalf of each party, and the DRSP appoints one candidate from each of the lists of candidates selected by the parties. The remaining (third) panelist is appointed by the DRSP with reference to the preferences of the parties, from a list of five candidates supplied to the parties by the DRSP.

Panel decision

At the end of its deliberations, the panel issues a decision to transfer, cancel or maintain the domain name registration. This decision is communicated to JPRS, and JPRS implements the decision.

However, if the decision is to transfer or cancel the domain name registration, JPRS will defer implementation of the decision for a period of 10 days after the communication of the decision. If JPRS receives no communication to the effect that the registrant has filed a lawsuit in a court during this period, it will implement the decision. If JPRS receives such a communication, it will defer implementation of the decision. If a complainant who has received notice of a decision for transfer of the domain name is not qualified to register the domain name for any reason, such as having no local presence, the registration will be transferred but JPRS will not be able to specify the name server.