Domain Name Registration in Peru

(Regulations in force until Dec 7, 2007)

 

Sections:

  1. Proceeding at the Domain Name Register (PE-NIC)
  2. The PE-NIC will revoke a domain name under the following circumstances
  3. ICANN and Uniform Domain Name Dispute Resolution Policy
  4. Proceeding at the Peruvian Patent and Trade Mark Office
  5. Nullity Action at the Peruvian Courts
  6. Basic Rights Action for defense of Constitutional Rights at the Constitutional Court

 

1. Proceeding at the Domain Name Register (PE-NIC) (Top of the page)

The Domain Name Register (PE-NIC) is the authority responsible for registering third level domain names under the .PE on the Internet.

From 1991 to July 2001 the Peruvian administrator of domain names was a private entity, namely Red Cientifica Peruana (Peruvian Scientific Network), in its domain names department PE-NIC; then, for a short period between July and December 2001, the administrator was a public entity, namely the Peruvian Patent and Trade Mark Office; and, as from December 2001 until now the administrator has been the same private entity that was in charge of administrating Peruvian domain names on 1991. Therefore, domain name conflicts could be ruled by private law or public law, but meanwhile, it seems that the Peruvian administrator is not regulated at all by any law, either private or common or public, Peruvian or foreign.

Any individual person or legal entity, either national or foreign, is able to register any domain(s) name(s).

The registration of domain names is divided into two stages, as follows:

a)

The first stage is the application for a domain name registration, which begins with the application form properly fillled out by the registrant.

If it is approved, it will be posted in the PE-NIC (Domain Name Register) website for oppositions, to allow third parties to file oppositions against such application if it is equal (identical/similar) to a trade mark, advertising slogan or other words and combinations of characters that belong to third parties. The term to file oppositions will be no longer than ten (10) calendar days.

The main issue in this kind of oppositions is the meaning of the Spanish word igual in the PE-NIC regulations when referring to domain names that can oppose: PE-NIC takes the word igual as “identical”, whereas the Dictionary of the Spanish Royal Academy takes it as “similar”.

Oppositions will be solved in first and single instance by the PE-NIC Comitee.

The party that files the opposition must attach the evidence to prove his/her previous right over his/her trade mark, slogans or other words and combinations that have been registered as domain names, namely: certificate of registration or the like.

The applicant for a domain name has five (5) calendar days to answer the opposition.
The PE-NIC has ten (10) calendar days to solve and then reject or admit the registration of the domain name.

The party that filed the opposition may file an application of registration of the domain name (object of the opposition) in the same opposition brief.

In case the applicant of the domain name answers the opposition, the PE-NIC will have a meeting with both parties  - that it is to say, the applicant of a domain name and the party that files the opposition - if the PE-NIC considers said parties to have the same rights over such domain name in order to solve the proceeding amicably. If the parties fail to solve the proceeding amicably, they are entitled to file a lawsuit at the Peruvian Court, and the proceeding of registration of the domain name will be suspended until the Peruvian judge issues a resolution.
b)

If no opposition is filed, the second stage will be the registration of the domain name in the name of the applicant.


The ownership, authority, and responsibility in a domain name registration, for any possible violation of intellectual or industrial property rights of third parties that may result from the registration of a domain name to be used on the Internet by any organization or person, will always be on the organization or person for whom such domain name has been registered.

2. The PE-NIC will revoke a domain name under the following circumstances: (Top of the page)


Once a .PE domain name has been revoked, it will be available for registration by other person or organization, following the established Peruvian proceeding.


3. ICANN and Uniform Domain Name Dispute Resolution Policy (Top of the page)

There is no arbitration proceeding available for domain names issued in Peru. As you know, arbitration is an alternative way to solve disputes, but it is private and independent, and an arbitral clause must be stipulated beforehand.

The WIPO Arbitration and Mediation Center is not a service provider for disputes in relation to “.PE” domain names. The UDRP-type arbitration must be incorporated into the registration agreement of the registrars accredited by the registry operator of a Top Level Domain (TLD), to be applicable to Country Code Top Level Domains (ccTLDs). It is not the case for “.PE” domain names.

We have found out that the WIPO Arbitration and Mediation Center is not a service provider for disputes in relation to domain names in many countries of South America, namely, Argentina, Uruguay, Chile and Paraguay.

May we mention that, since there is not arbitration proceeding available for domain names issued in Peru, the most common procedure is for the parties to negotiate and reach an economic agreement by which the owner of the domain name transfers such domain name in the name of the owner of a trade mark that is equal to the above mentioned domain name in exchange of money.

There seems to be international organizations that register domain names containing worldwide well-known trade marks in several countries in order to sell them later to the legitimate owner at a price that is lower than the costs of a judicial or arbitral process to recover ownership of the domain name by the legitimated owner.

South American colleagues have the same problem in their countries.

4. Proceeding at the Peruvian Patent and Trade Mark Office (Top of the page)

a)

Infringement action at the Office of Infringements:

Filing an infringement action at the Office of Infringements would be to obtain a resolution that orders the owner of a domain name .pe to stop using any term that is a registered trade mark in any form (including the above mentioned domain name).

The Office of Infringements would be in charge of the proceedings for infringement of industrial property rights that comprises domain names, when the party that files the action for infringement of industrial property rights has registered such domain name as a trade mark in class 38 of the international classification (Nice classification) to protect services related to telecommunications, before such domain name was registered.

Article 233º of Andean (Pact) Community Decision 486, which is the Industrial Property Law applicable individually in the four Andean (Pact) Community countries namely Bolivia, Colombia, Ecuador and Peru, states the following:

Article 233º: If a distinctive well-known sign is unlawfully registered in a member country of the Andean (Pact) Community as part of a domain name or electronic mail address, by an unauthorized third party, the competent national authority may, at the request of the titleholder to the mark, order the cancellation or modification of the registration of the domain name or electronic mail address. The national authority may only order the cancellation or modification of a domain name if the use of such domain name or electronic mail address causes confusion regarding identical or similar business, activities, products or services or, with regard to different business, activities, products or services, if such use may cause “passing off”, “blurring” or “tarnishing”.

If the requested domain name corresponds with a trade mark, slogan or corporate name, such registration can only be carried out by the holder of the precedent right on such combination of characters and said precedent right must be evidenced through the documents issued by the competent registration authority.

The accredited registrar PE-NIC establishes that, if the registered domain name corresponds with a trade mark, slogan or corporate name of a third party (in this case Google Inc.), the owner of such trade mark, slogan or corporate name can file a nullity action because such registration can only be carried out by the holder of the precedent right on such combination of characters and said precedent right must be evidenced through the documents issued by the competent registration authority.

But if the Peruvian registration for such trade mark was granted after the above mentioned domain name was registered in Peru, there are two options, as follows:

  • To file an action for unfair competition at the Commission of Unfair Competition of the Peruvian Patent and Trade Mark Office (which we explain lines below); or,
  • To establish that the trade mark was a worldwide well-known trade mark before the registration date of the above mentioned domain name, filing copies of domain name and trade marks applications/registrations in other countries to prove that you are currently applying/owning trade marks and domain name registrations abroad.
b)

Action for unfair competition at the Commission of Unfair Competition:

Filing an action for unfair competition at the Commission of Unfair Competition of the Peruvian Patent and Trade Mark Office, bearing in mind that, with the use of the domain name (that is equal to a trade mark), the applicant is taking unfair advantage on the reputation of such trade mark and its owner, and this could cause risk of confusion in the consumers.

Article Nº 14 of the Unique Ordered Text of decree law No. 26122, which is the Peruvian Unfair Competition Law, states the following:

Article 14.- Exploitation of another’s reputation.

“The illegal use, in one’s or another’s benefit, of the advantage of the Industrial, commercial or professional reputation that is acquired by another in the market, has been considered unloyal.

In particular, it is deemed unloyal the use or imitation of another’s distinctive signs, as well as the use of labels, packages, containers or other identification means that are associated in the market to a third party”

5. Nullity Action at the Peruvian Courts(Top of the page)

Filing a nullity action at the Peruvian Courts against the domain name registered in the PE-NIC, based on the fact that the registration of the domain name was not legally feasible at the time such domain name was granted, because the person who registered such domain name had no right to do so, because there was a trade mark registered at Peruvian Patent and Trade Mark Office or such trade mark was worldwide well-known when a person filed an application for domain name registration in Peru, which contains the registered/worldwide well-known trade mark.

Such nullity action against the domain name registered in Peru would be on the basis that the application for such domain name had an original error or defect at the time when the application was filed, because the application for the domain name was filed at the time when a trade mark already existed around the world.

The Peruvian Civil Code in its article 140, clause 2, establishes that a juridical act is a manifestation of will that creates, regulates, amends or extinguishes juridical relationships and for its validity is necessary that the object of such act be legally feasible.

Therefore, if the trade mark and the domain name are identical and the owner of such trade mark has a previous right over it, the nullity action could be supported by the above mentioned article.

The term to start a nullity action at the Peruvian Court is ten years counted as from the time when the action object of the nullity began, and such action could take some years.

6. Basic Rights Action for defense of Constitutional Rights at the Constitutional Court (Top of the page)

Article Nº 200, clause 2, of the Peruvian Constitution, establishes the Basic Rights Action for Defense of Constitutional Rights (Accion de Amparo) as one of the Peruvian Constitutional Guarantees, as follows:

Article No. 200: The Constitutional Guarantees are:

2. Basic Rights Action for Defense of Constitutional Rights, which takes effect in the fact of an act or omission of any authority, official, or person that violates or threatens other rights recognized by the Constitution (...).

Article No. 2, clause 8. of the Peruvian Constitution establishes the following:

Article No. 2: Every individual has the right:

8. To freedom of intellectual, artistic, technical, and scientific creation, as well as ownership of such creations and the profits derived therefrom. The government provides access to culture and promotes its development and dissemination.

Therefore, intellectual creation and its ownership are protected by the Basic Rights Action for Defense of Constitutional Rights, mentioned in article No. 200, clause 2, which is the case of domain names.

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