April 2025

Monday, 28 Apr 2025

Solution of .id Domain Name Disputes related to Well-Known Mark

 

The internet began to enter and known by the Indonesian, especially academics and researchers around the 1980s, but it developed rapidly in the 1990s, especially in business circles when global trade and investment among countries became more open. With the development of the internet, more and more internet users need domain names or digital addresses that show the users’ online identities. Therefore, good management is needed so that the security and credibility of the user's domain name are secured.

To ensure security and regulate domain name management in Indonesia, the Indonesian Ministry of Communication and Information Technology officially gave the authority to manage the administration of the anything.id domain name to the Internet Domain Name Manager (PANDI) through the Delegation of Domain Administration Assignment Notes .id no. BA-343/DJAT/MKOMINFO/6/2007 on June 29, 2007. In 2014, PANDI's authority was expanded as a non-profit organization designated as the Indonesian Country Code Top-Level Domain Name Registry. In addition to administration, PANDI's responsibilities cover management, operation, and maintenance of the .id Domain Name Electronic System. PANDI's membership consists of the Indonesian government, academics and business people. To carry out their responsibilities, every four years, PANDI members elect the PANDI Board of Directors and Supervisory Board through a General Meeting of Members.

PANDI offers ownership of the .id domain to the public, not only to national, but also international businesses. Many business actors including international business actors that have branch offices or sell their products in Indonesia started using their trademarks as their .id domain name addresses. This is done not only to expand their market in Indonesia but also to prevent third parties who have bad intentions from using the internationally well-known marks for their businesses that are clearly unrelated to the business activities of the trademark owners. However, not all business actors use their trademarks as domain names in Indonesia. The problem that then arises is the existence of a dispute if there is a party who uses a domain name that resembles a well-known trademark owned by a third party, especially a foreign party.

In addition to the authority to manage the administration of domain .id, Law No. 19 of 2016 concerning Electronic Information and Transactions, also authorizes PANDI to resolve domain name disputes specifically for domains with the .id suffix through the Domain Name Dispute Resolution (PPND). Disputes that can be resolved by PANDI PPND generally cover:

1) The domain name is identical or similar to the registered trademark owned by the applicant.

2) The domain name is identical or similar to the registered name owned by the applicant, namely: the name of a person/legal entity/registered entity.

3) Domain name disputes concerning propriety in the community.

All parties who feel that the registration of a domain name has violated the rights of the registered trademark/name they own or the propriety that applies in the community or violates laws and regulations, can file a pre-objection to request the applicant's Whois or information regarding the owner of the requested domain name. After receiving it from the PPND secretariat, the applicant can file an objection through the PPND administrative process so that the PPND can start mediation. If mediation is not achieved, the applicant and the respondent must accept the decision of the PANDI PPND panelist. The latter will examine the case for 14 working days after it receives all the complete files of the applicant and respondent from the PPND Secretariat. This examination period can be extended to 5 working days and must be decided during this extension.

One of the earliest domain name cases related to well-known trademarks in Indonesia was the case of the Netflix.id domain name registered under the respondent Jasnita with PPND decision No. 001-0415 in 2015. The applicant, Netflix, Inc. demanded that the disputed domain name be transferred from the respondent to the applicant.  

The respondent argued that PANDI had conveyed the launching news of .id domain  to all .id domain owners and also published it to electronic media, internet, and provided the first opportunity to trademark owners, namely the Sunrise period (20 January - 17 April 2014), the Grandfather period for .id owners (21 April - 13 June 2014), the Landrush period for those willing to pay a premium (16 June - 15 August 2014) but the applicant ignored it and the respondent registered the domain name.

The respondent considered the applicant an arrogant party and negligent since it had no intention of registering its domain name in Indonesia even though it has business and Indonesian consumers are familiar of this business. If PANDI is consistent and stands by its existing policy, the respondent should be allowed to continue to own the domain name.

In its decision, the PANDI PPND panelist stated that the domain name dispute was in principle related to the trademark owned by the applicant and there were three elements that the applicant had to prove before the transfer of the domain name to the applicant could be approved:

1. The domain name is identical and/or similar to the trademark owned by the applicant

The Panelist found that the applicant had been able to prove that the applicant had the rights to the Netflix trademark, through the registration of trademarks and service marks at the Directorate General of Intellectual Property Rights, Indonesia. Further, the domain name only combines the trademarks and/or service marks owned by the applicant and the addition of the suffix <.id>. The addition of the country code "id" for this purpose is insufficient to distinguish the domain name from the trademark or service mark.

       2. The respondent does not have any legal rights or ownership over the domain name

The applicant has sufficiently proved that the NETFLIX trademark, both as a trademark and a service mark, has been registered with the Directorate General of Intellectual Property Rights, Indonesia, since November 2012 and in the United States since 2002. Likewise, the applicant has sufficiently proved that the NETFLIX trademark has been used by the applicant since 1997, and it has sufficiently proved that the applicant is well-known and has a good reputation in the field of on-demand service providers through internet for video streaming media, online DVD and Blu-ray disc rental.

Meanwhile, the respondent could not submit any evidence to show that he is generally known by the domain name of . Further, the respondent also did not submit any evidence that he has the registration of NETFLIX trademark/service mark, or at least there was no evidence submitted by the respondent showing that in registering the disputed domain name, the respondent was not inspired by the applicant's trademark and/or service mark.

The registration of the disputed domain name by the respondent was intended for a personal collection, on the assumption that the applicant had been given the widest possible opportunity by PANDI for two years, but the applicant ignored and did not care. This is insufficient to prove that the respondent has legitimate rights or interests in the disputed domain name.

      3. The domain name has been registered or used by the respondent in bad faith.

In this dispute, the respondent has offered the disputed domain name to the applicant for USD 4,900 as shown by the applicant, so that it is proven that the respondent had bad faith in registering the domain name .

From the above case, several important elements and evidence that can support the claim of this domain name case related to well-known trademark are:

• The trademark has been registered in Indonesia.
• The applicant can prove that the trademark it owns is a famous trademark in accordance with the provisions of Law No. 20 of 2016 concerning Trademarks.
• The domain name is identical and/or similar to the registered trademark or name owned by the applicant
• The respondent does not have any rights and/or legitimate interests in the domain name.
• The domain name has been registered or used by the respondent in bad faith (for example: the domain name is registered with the aim of preventing the registered owner from using the domain name in question/ registered with the aim of disrupting or damaging business activities, in this case attracting internet users to its site for illegitimate financial gain or the domain name registration is carried out with the intention to be sold, rented or transferred to the applicant as the owner of the registered brand or to the applicant's competitor for financial gain.

 

Disclaimer: This legal news serves as general guidance only and should not be treated as legal advice. If you wish to have further information on this topic, please contact  Diyah Ratnajati (dratnajati@rosetini.co.id), Andre Suprapto (asuprapto@rosetini.co.id) or Rosetini Ibrahim (ribrahim@rosetini.co.id).