You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

March 2, 2021

Resolving Domain Name Disputes in Indonesia

Subscribe to Updates
Informed Counsel

Since 2014, Indonesia’s domain name registry (PANDI) has overseen the registration of .id domain names, following the earlier country code top-level domains (ccTLDs), such as .co.id, .or.id, and .go.id. PANDI has recently reported on the growth of .id domain names in 2019, which saw an increase in registrations of about 45%, reaching a total of 135,000 registrants.

An Indonesian Internet Providers Association (APJII) nationwide survey found that the number of internet users in Indonesia increased by 14.6 percent to 196 million people in the period between 2019 and Q2 2020, up from 171 million in 2018. The survey also revealed that Indonesia’s internet penetration rate has gone up to 73.7 percent. This means that the country is catching up with neighboring Brunei, Singapore, and Thailand, whose internet penetration rates exceeded 70 percent last year. Part of this increase seems to be related to the limitation of in-person activity in the wake of the COVID-19 outbreak.

This internet usage growth has also meant a higher incidence of cybercrimes and online disputes, including over domain names. According to the domain name dispute statistics from WIPO, there have been 274 generic top-level domain name disputes involving Indonesian respondents to date. Meanwhile, 18 cases have so far been decided by PANDI’s Domain Name Dispute Resolution (PPND) in fights against Indonesian ccTLD cybersquatters, third parties who attempt to register domain names using the trademarks of others. PPND, a non-litigation dispute settlement body for disputes over Indonesian internet domain names, handles domain name disputes related to trademarks, registered names or regarding matters of decency. The examination of such disputes is conducted by PPND panel(s).

PANDI’s Domain Name General Policy version 6.0, dated February 25, 2019, explains the five categories of.id domain names: normative, trademark-related, product- or service-related, distributorship-related, or institutional.

Ministry of Communication Regulation No. 23 of 2013 regarding Domain Name Management stipulates that a registered trademark holder is entitled to register, use, and benefit from Indonesian ccTLDs. Based on PANDI’s naming guidelines, a trademark registration or application is required if the applicant claims that the domain name is related to their trademark. However, in practice, the registrar typically only requires a copy of the registrant’s ID card to proceed with the .id domain name registration, because the registrar may choose another naming criterion that does not require a trademark or other IP ownership. This may lead to the registration of .id domains by cybersquatters.

Procedures

PPND welcomes any trademark holder to file a complaint regarding domain names violating their registered trademark, before filing litigation with the court.

The current PPND policy (version 7.0) requires that every claimant file a pre-objection as the first step. The pre-objection phase includes a request for the whois data, which reveals the owner of a domain. Obtaining the results takes around three days after the pre-objection documents are completed and accepted by PPND. Upon receiving the pre-objection result, the next step is filing an objection laying out pertinent arguments. PPND may then proceed to mediation, followed by examination of the objection.

The simplified timeline below shows the key steps in the process.

Under normal circumstances, the whole process may take around 2–3 months to be decided. An unsatisfied party that disagrees with the PPND decision may file a lawsuit with the court.

Possible Arguments

A claimant requesting a domain name take-down or transfer in accordance with the PPND policy must prove all of the following conditions:

  • The domain name is identical or confusingly similar to a trademark;
  • The registrant has no rights or legitimate interests in the domain name; and
  • The domain name has been registered and is being used in bad faith.

Of these three concurrent claims, the most challenging one to prove is the bad-faith intent. Nonetheless, it is essential. Even if a claimant can show valid trademark ownership and prove that the domain name in question was filed by an unauthorized entity, the PPND panels will refuse the claim if evidence of bad faith is lacking.

The strongest evidence of bad faith is any request (e.g. text message, email, etc.) by the registrant for compensation for transferring the domain name. Such evidence is straightforward proof that the registrant intended to sell, lease, or transfer the domain name for his or her financial benefit. However, of the 18 cases decided by the PPND since its inception, only seven were able to prove the registrant’s intent to sell the domain name for financial benefit.

There are other types of actions that are considered bad faith as well. For example, bad faith can be proven by showing that the registrant intends to prevent the trademark owner to use the contested domain name (i.e., parked domain), or by showing that the registrant intended to damage the trademark owner’s business activities. In addition, a domain name registrant intending to attract the internet user to another online location for illegal financial benefit would be another clear indication of bad faith.

Case Study

When the well-known video streaming service Netflix found that neflix.id had been registered by an unauthorized Indonesian citizen using their well-known trademark, they brought the matter before the PPND.

As the company had already registered their trademark in Indonesia, Netflix was able to prove that netflix.id was filed by an unauthorized party. However, no proof of intent to sell was forthcoming, so Netflix made the accusation that netflix.id was a parked domain, with the registrant trying to prevent Netflix from registering and using the domain name in Indonesia.

In his reply, the registrant pointed out that Netflix had not secured netflix.id before, and argued that in light of the “first to file” domain name registration principle, Netflix should have registered the domain name as soon as they were eligible to do so. The PPND, however, disagreed, deciding that the claim had in fact proved the three necessary conditions simultaneously. Hence, netflix.id was transferred to Netflix’s ownership.

Conclusion

Just as well-known brands are targeted by intellectual property infringers, these brands can also be targeted by parties wishing to benefit from their reputation or name recognition through a domain name. The process of acting against this in Indonesia is not simply a matter of trademark enforcement, but is a separate process governed by a different set of laws and regulations. Brand owners should be aware that having a trademark portfolio and strategy is often not enough; rather, they need a comprehensive and strategic awareness of how to manage all of their current and potential assets, including virtual properties such as domain names.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

October 21, 2024
Thailand’s Central Intellectual Property and International Trade (IP&IT) Court has delivered a favorable ruling for Sumitomo Rubber Industries, Ltd., a major player in the tire manufacturing industry, regarding the registration of its motorcycle tire design patent. In this case, Tilleke & Gibbins represented Sumitomo in successfully advocating for recognition of the unique design elements in the company’s motorcycle tire products. Case Overview The case revolved around Sumitomo’s two design patent applications for motorcycle tire designs, which were initially rejected by the Department of Intellectual Property (DIP) on the grounds that they were similar to prior art. Based on an examination of the design elements, primarily focusing on the tire tread patterns, the DIP’s Patent Board had concluded that Sumitomo’s designs were not sufficiently unique to warrant patent protection, as the tread patterns of the new designs were deemed too similar to one found in prior art for tire products. In response, Tilleke & Gibbins filed a complaint with the IP&IT Court on behalf of Sumitomo, seeking a revocation of the Patent Board’s decision and requesting that the court compel the DIP, as the defendant, to proceed with the registration of Sumitomo’s design patents. The complaint emphasized that the designs were novel and distinct, warranting patent protection under Thai law. Legal Strategy The firm’s legal argument focused on the interpretation of Thai patent law, particularly regarding the protection of a product’s external appearance, and emphasized that the determination of a design’s novelty must consider the product’s overall appearance rather than isolating individual features. This approach is consistent with international guidelines on design patents, which require the evaluation of novelty and distinctiveness based on how an informed user would perceive the design as a whole. While Sumitomo’s tire tread patterns may share some superficial similarities to existing designs, the overall impression
Read More
October 20, 2024
The annual statistics issued by the Intellectual Property Office of Vietnam (“IP Office”) in recent years show an increase in the number of IP transactions and applications to establish IP rights, including requests for the recordal of assignment of IP rights. Nevertheless, the numbers of trademark assignment recordals approved by the IP Office has not followed this trend, falling from 1,281 requests approved in 2022 to 1,120 requests approved in 2023. This decrease may be due to the IP Office’s overly strict viewpoint in approving trademark assignments, including its rejection of assignment recordal on the ground of conflict with the assignor’s trade name. IP Office’s practice on assignment recordal Vietnam’s IP Law restricts the assignment of trademarks in several cases, as set out in Article 139.4 that “the assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.” Thus, when an assigned mark is identical to the dominant element of the assignor’s company name, the IP Office will view that the assignee’s use of the mark will result in confusion with the assignor’s trade name, and then instantly reject the assignment request. In this case, the IP Office will only accept the assignment if the IP holder can submit documents issued by relevant authorities proving at least one of the following conditions: The assignor has assigned all business premises and operations under its name to the assignee; The assignor has removed business lines relating to the goods/services bearing the trademarks and such removal is recorded in the Enterprise Registration Certificate; The assignor has been dissolved or does not exist after signing the agreement; The assignor has changed its name after signing the agreement so that it does not contain any element identical or similar to the assigned
Read More
October 7, 2024
Starting October 15, 2024, Cambodia will implement a new penalty for late patent annuity payments and restorations, according to an unofficial announcement from the country’s Department of Industrial Property under the Ministry of Industry, Science, Technology, and Innovation. This new penalty will apply to patents, utility model certificates, and plant variety protection registrations. To avoid additional charges and prevent the abandonment of any pending applications or the lapse of registrations, applicants and registration owners must pay each annuity within the six months before the annuity period starts, or by its due date. If the annuity is not paid by the due date, a grace period of six months is allowed for late payment, with a daily charge of KHR 500 (approximately USD 0.125) per day. If payment is not made within this grace period, the patent will be deemed withdrawn or will lapse. However, the Patent Office can initiate the restoration process within the last six months of the annuity period. This requires a USD 25 restoration fee plus an additional daily charge of USD 0.125 from the start of the grace period until payment is completed. To avoid additional charges and prevent the potential abandonment of applications or registrations, companies and their appointees need to keep track of all annuity due dates for patents, utility model certificates, and plant variety protection registrations and pay all annuities well in advance of the due date. For more details on this penalty, or on any aspect of intellectual property protection in Cambodia, please contact Tilleke & Gibbins at [email protected].
Read More
October 3, 2024
Lawyers from Tilleke & Gibbins’ intellectual property team, under the guidance of Darani Vachanavuttivong, managing partner and managing director of the firm’s intellectual property department, have contributed an update to Thomson Reuters Practical Law’s Intellectual Property Rights in Thailand: Overview guide for 2024. This guide provides a comprehensive overview of intellectual property (IP) laws in Thailand, covering key areas such as patents, trademarks, copyright, trade secrets, and registered designs. It also addresses the enforcement of these rights, as well as the procedures for registering patents, trademarks, and other IP protections. The Thailand chapter outlines important aspects of IP law, including: The conditions and procedures for obtaining patents and registered designs, including the different types of patent protection available. Legal requirements for registering trademarks, including what constitutes a distinctive and legally protectable mark. The scope of copyright protection and the rights granted to creators of original works, including economic and moral rights. Protection of trade secrets and confidential information under the Trade Secrets Act, which safeguards valuable business information. This guide is a valuable resource for legal practitioners and businesses seeking to understand the nuances of Thailand’s IP landscape. To explore the latest version of Intellectual Property Rights in Thailand: Overview, please visit the Practical Law website and enroll in the free Practical Law trial to gain full access.
Read More