Cybersquatting à la polonaise – is it easy to challenge an arbitration ruling?
As we have written recently disputes concerning domain names can be pursued before common or arbitration courts. The competent court for .PL domains is the Arbitration Court for Domain names Disputes at the Polish Chamber of Information Technology and Telecommunications. Our experience shows that by using arbitration, it is possible to effectively and quickly reclaim a domain registered in violation of our rights.
Judgment of the Court of Appeal in Poznań of 24th May 2019 (Case no. I ACa 989/18).
In the case at hand, the dispute has arisen between a Polish entrepreneur running a herbal shop and the holder of the EU trademarks iHerb presented below:
In 2015 the defendant registered a domain name iherb.com.pl, which contained the claimant’s registered trademark. This domain redirected users to the website zielarnia24.com, where the defendant was selling their products. A lawsuit for a trademark infringement and acts of unfair competition was filed in the Arbitration Court for Domain names Disputes at the Polish Chamber of Information Technology and Telecommunications on 6th November 2017, and on 18th June 18 2018, the court ruled that the defendant infringed the plaintiff’s EU trademarks and committed an act of unfair competition in the form of cybersquatting. The court also awarded the plaintiff the amount of 10,656 PLN as the reimbursement of the costs of the proceedings.
The defendant did not agree with the above ruling and filed a complaint for its annulment in a civil court pursuant to Art. 1206 of the Code of Civil Procedure. One of the grounds for setting aside an arbitration ruling is the lack of an appropriate arbitration clause, which the defendant raised before the Court of Appeal. The defendant argued that they were forced to express their consent to the resolution of the dispute by the arbitration court because of the need to adhere to the terms and conditions set forth by the domain registrar in order to register a web domain. The Court of Appeal found that this cannot constitute grounds for declaring the arbitration clause invalid. None of the statutory circumstances necessary for the recognition of a legal action invalid has occurred in this case.
In their motion to set aside the ruling, the defendant also raised that the arbitration ruling failed to comply with the so-called public order of the Republic of Poland clause. This alleged failure was supposed to be caused by the refusal to admit certain evidence and witnesses’ testimony requested by the defendant, on the grounds that they were irrelevant to the case.
The defendant did not exactly specify which norm was violated by the arbitration court. Having taken into account all of the evidence provided by the defendant, the Court of Appeal figured that the alleged non-compliance was supposed to be a violation of the rights of defense. However, having analyzed the proceedings before the arbitration court, the Court of Appeal did not find any violation of this right nor of any other principal rules of the legal order.
The Court emphasized that the law regarding the possibility of setting aside an arbitration ruling was introduced in order to ensure the compliance with the fundamental principles of the Polish legal order by the arbitration courts, and that it did not constitute grounds for the substantial re-examination of a case previously resolved by such a court.
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