SACI-Adm, the Brazilian domain name dispute resolution system, celebrates 15 years
Created on September 30, 2010, pursuant to a decision endorsed by the Brazilian Internet Steering Committee (CGI.br), this system, which is strongly inspired by the model developed by the World Intellectual Property Organization, marked the beginning of a new phase in the protection of intellectual property rights in Brazil, particularly with regard to trademark rights.
Until its implementation, a trademark holder faced with the registration of a domain name identical to, or confusingly similar with, its mark had no alternative but to file a lawsuit requesting the cessation of such violation.
Thus, given the ease of registering any domain name, as well as the costs and delays often associated with judicial proceedings, the most efficient solution for the trademark holder was often to pay exorbitant amounts to acquire the domain name from the third party registrant. These third parties frequently acted in bad faith, registering as domain names distinctive elements of marks they knew belonged to others, with the sole aim of reselling them later to the legitimate holder (a practice known as “cybersquatting”).
The creation of SACI-Adm was therefore an important step in combating this type of unlawful conduct in Brazil.
According to the SACI-Adm Rules, in order to succeed in its claim, the complainant must prove one of the following circumstances:
- The domain name is identical or sufficiently similar to create confusion with a trademark owned by the complainant, which was filed with the Brazilian Patent and Trademark Office (INPI) prior to the registration of the domain name, or which is already registered with the INPI; or
- The domain name is identical or sufficiently similar to create confusion with a trademark owned by the complainant that has not yet been filed or registered in Brazil, but qualifies as a well-known mark in Brazil in its field of activity, within the meaning of Article 126 of Law No. 9,279/96; or
- The domain name is identical or sufficiently similar to create confusion with a trade name, corporate name, civil name, family name or patronymic, pseudonym or nickname commonly known, singular or collective artistic name, or even another domain name over which the complainant holds prior rights.
It follows, therefore, that the SACI-Adm Rules protect not only registered trademarks, but also well-known trademarks and business names. Moreover, unlike the UDRP (Uniform Domain Name Dispute Resolution Policy, for international domain name disputes), it is not necessary to prove the domain name holder’s bad faith. It is sufficient for the complainant to demonstrate a risk of confusion.
Although SACI-Adm is a sui generis dispute resolution system governed by a general regulation, proceedings are administered by mediation and arbitration institutions accredited with “registro.br,” the department responsible for administering “.br” domain name registrations. Currently, three institutions are authorized to administer domain name disputes in Brazil: the Brazilian Intellectual Property Association (ABPI), the World Intellectual Property Organization (WIPO), and the Brazil-Canada Chamber of Commerce (CCBC). It should be noted, however, that the accreditation of the CCBC Arbitration and Mediation Center is temporarily suspended.
Dispute resolution proceedings under the SACI-Adm Rules may result in the maintenance of the domain name by the respondent, the transfer of the domain name to the complainant, or the cancellation of the domain name, depending on the parties’ requests or the specific circumstances of the case.
Thus, accredited institutions administer the domain name dispute resolution procedure based on the SACI-Adm Rules, and decisions are implemented by “registro.br” itself.
Upon completing 15 years of existence, SACI-Adm has established itself as an indispensable instrument for the protection of intellectual property rights in the Brazilian digital environment, having already resolved more than 767 proceedings initiated under its rules. Its agile and specialized model represents an effective alternative to the Judiciary, including through the self-executory nature of its decisions, ensuring greater legal certainty for trademark holders and other distinctive signs. The experience accumulated over this period demonstrates the relevance of the system not only as a dispute resolution mechanism, but also as an important pillar in strengthening internet governance in Brazil.
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Author: Mariana de Araújo M. Lima Di Pietro, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados
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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”