Articles and Information

Almost 15 years ago, the Brazilian Domain Name Authority, Registro.br, adopted a UDRP for domain names registered in Brazil after October 2010. The system is known by the Portuguese acronym SACI for the Administrative System for Internet Conflicts, and its goal is “to resolve disputes between the registrant of a domain name in ‘.br’ (referred to as [the] ‘Owner’) and any third parties (referred to as [the] ‘Complainant’) who challenges the legitimacy of the domain name registration made by the Owner”.

The first set of rules governing SACI, issued in 2010, was amended on 1 August 2022 and entered into effect on 1 October 2022.

Currently, three arbitral courts are authorised by Registro.br to prosecute and rule in domain name disputes under SACI rules:

• the Chamber of Commerce Brazil-Canada (CCBC);
• WIPO; and
• the Brazilian IP Association (ABPI).

The costs of each arbitral court may vary, but prosecution and timeframes are strictly governed by SACI rules, as well as the grounds for decisions.

SACI was well received by domain name owners and IP practitioners and effectively contributed to improve the reliability of domain name registrations in Brazil. There are no public statistics indicating how many domain name conflicts have been prosecuted and ruled on since the adoption of SACI, but 32 decisions appear to have been issued so far in the first two quarters of 2024, 31 by ABPI through its Chamber for the Resolution of Disputes Relating to Domain Names (CASD-ND).

Pursuing UDRP claims before SACI may be tempting for trademark owners, mainly because a SACI ruling might result in the cancellation or transfer of a domain name and the take down of a website. The system can also be used as a test, to prove how strong a trademark infringement case would be if it were brought before the courts.

SACI provides three possible outcomes in UDRP disputes: maintenance, cancellation or compulsory transfer (to the complainant) of the domain name registration.

Of the 31 decisions so far this year, the ABPI CASD-ND has rendered:

• 25 decisions compulsorily transferring the domain name registration to the complainant;
• two cancellation decisions; and
• only four decisions maintaining the domain name registration in the name of the owner.

This data suggests that settling disputes through SACI UDRP proceedings may prove to be a helpful and effective way of tackling trademark infringement.

However, in order to achieve cancellation or transfer of the domain name registration, besides evidencing that the complainant owns prior rights over the trademark (or other sign) in conflict with the domain name, it must be evidenced that the domain name has been registered by its owner in bad faith. According to SACI rules, bad faith can be evidenced if it is proved that the domain name has been registered:

• to be sold, rented or transferred to the complainant or third parties;
• to block the complainant from registering its own domain name;
• to jeopardise the complainant’s businesses; or
• to intentionally divert the complainant’s clientele to the owner’s or a third party’s benefit.

Evidencing bad faith can be difficult.

In proceedings filed under Docket ND202376, ruled on 25 March 2024, it was decided that the disputed domain name registration should be maintained in the name of the owner, because the complainant could not prove that the owner had registered or used the domain name in bad faith. Instead, it was evidenced that the owner of the domain name was an insurance broker, which had been publicly selling policies of the complainant for more than 10 years. The arbitrator held that the complainant’s prior knowledge of the owner’s registration and use of the domain name was, in fact, evidence of a lack of bad faith.

Therefore, trademark owners must have strong evidence to demonstrate bad faith in order to succeed under SACI. If they do, the benefits are clear.

Originally published on WTR Daily on July 10, 2024.

Ricardo Pinho
Guerra IP – Partner
Arbitrator at ABPI CASD-ND