Winning Domain Disputes: Why SACI-Adm Is Better for Trademark Owners than UDRP

When a third party registers a .br domain name that infringes your trade mark rights, Brazilian law provides a specialised administrative mechanism for resolving the dispute without going to court: the Administrative System for Internet Conflicts (“Sistema Administrativo de Conflitos de Internet relativos a Nomes de Domínio sob o .br” — SACI-Adm). Created in 2010 by the Brazilian Internet Steering Committee (CGI.br) and operated through accredited institutions, SACI-Adm offers trade mark owners a faster, lower-cost alternative to federal court litigation — and in several respects, a more favourable standard than the Uniform Domain-Name Dispute-Resolution Policy (UDRP) used for generic top-level domains.

What Is SACI-Adm?

SACI-Adm is an administrative dispute resolution system applicable to .br domain names registered from October 1, 2010 onwards. All .br domain holders agree to SACI-Adm jurisdiction through the registration contract with Registro.br. The system was revised in 2022, with the updated regulation entering into force on October 1, 2022.

SACI-Adm proceedings are conducted by accredited institutions, currently including:

• WIPO Arbitration and Mediation Center (World Intellectual Property Organization)
• CCBC (Chamber of Commerce Brazil-Canada)
• ABPI / CASD-ND (Brazilian Intellectual Property Association’s Dispute Resolution Chamber for Domains)

The complainant selects which institution will administer the case and chooses whether the dispute will be decided by one or three experts.

The Grounds for a Complaint

To succeed in a SACI-Adm proceeding, the complainant must demonstrate two elements:

• The domain name is identical or confusingly similar to a trade mark, trade name, business name, personal name, pseudonym, or character over which the complainant has rights. Importantly, the complainant’s rights are not limited to registered trade marks — SACI-Adm recognises a broader range of prior rights than the UDRP, which is limited to trade mark rights.
• The domain was registered or is being used in bad faith.

The Disjunctive Bad Faith Standard: SACI-Adm’s Key Advantage

This is where SACI-Adm diverges most significantly from the UDRP — and where the strategic advantage for trade mark owners is greatest. Under the UDRP, the complainant must prove that the domain was registered AND is being used in bad faith. This conjunctive standard creates difficulties when a domain was registered in bad faith but is not currently being used (passive holding), or when the current use is arguably legitimate even though the original registration was opportunistic.

Under SACI-Adm, the standard is disjunctive: the complainant must prove that the domain was registered OR is being used in bad faith. This means that proving bad faith registration alone is sufficient, even if the domain is not currently being used in a way that demonstrates bad faith. Conversely, proving bad faith use is sufficient even if the registration itself was not clearly made in bad faith.

This disjunctive standard materially reduces the evidentiary burden on complainants and closes the loophole that sometimes protects cybersquatters under the UDRP.

Indicators of Bad Faith

The SACI-Adm regulation identifies several circumstances that may constitute bad faith, including:

• The holder registered the domain primarily for the purpose of selling, renting, or transferring it to the complainant or a competitor for profit.
• The holder registered the domain to prevent the complainant from reflecting its trade mark in a corresponding domain name, provided there is a pattern of such conduct.
• The holder registered the domain primarily to disrupt the business of a competitor.
• The holder is using the domain to intentionally create confusion with the complainant’s distinctive sign, attracting internet users to the holder’s website for commercial gain.

The Procedure

SACI-Adm proceedings follow a structured timeline designed for efficiency:

• Filing: The complainant files a complaint with the chosen accredited institution, specifying whether they seek transfer or cancellation of the domain and selecting one or three experts.
• Notification and domain freeze: The institution notifies the domain holder by email and informs NIC.br, which freezes the domain, preventing transfer during the proceeding.
• Defence: The domain holder has a fixed period to submit a defence, including evidence of their right to the domain (trade mark registration, prior use, authorisation), contesting bad faith, and selecting the number of experts.
• Expert decision: The experts decide the case based on Brazilian law and the evidence submitted. There is typically no hearing unless the experts determine one is strictly necessary.
• Implementation: NIC.br has 15 business days from notification of the decision to implement it — maintaining, transferring, or cancelling the domain.
• Court override: If the losing party commences a court action within 15 business days of the published decision, NIC.br suspends implementation pending the court’s determination.

The entire process is designed to conclude within a maximum of 90 days, although extensions are possible in exceptional circumstances.

SACI-Adm vs. UDRP: A Strategic Comparison

• Bad faith standard: SACI-Adm uses a disjunctive standard (registered OR used in bad faith), while the UDRP requires the conjunctive (registered AND used in bad faith). This is the most significant strategic difference.
• Scope of prior rights: SACI-Adm recognises trade marks, trade names, business names, personal names, pseudonyms, and characters. The UDRP is limited to trade mark rights.
• Applicable law: SACI-Adm decisions are based on Brazilian law, which provides a domestic legal framework that may be more predictable for parties operating in Brazil.
• Cost: SACI-Adm proceedings are generally lower cost than UDRP proceedings, with fixed fees that are transparent from the outset.
• Speed: The 90-day maximum timeline makes SACI-Adm comparable to or faster than the UDRP.
• Judicial respect: Brazilian courts have historically shown strong deference to SACI-Adm expert decisions. Of the small number of SACI-Adm decisions that have been challenged in court, judges have overwhelmingly upheld the expert determination.

SACI-Adm vs. Federal Court Litigation

The alternative to SACI-Adm is filing a lawsuit before a Brazilian federal court. While court litigation provides a broader range of remedies (including damages, which SACI-Adm cannot award), it has significant disadvantages:

• Time: Brazilian court proceedings can take years to reach a final decision, even with preliminary injunctions.
• Cost: Court litigation is substantially more expensive, requiring legal representation, court fees, expert fees, and potentially translation costs.
• Complexity: Court proceedings involve formal pleading requirements, potential evidentiary hearings, and multiple levels of appeal.

For cases where the primary objective is to obtain transfer or cancellation of the domain — without seeking monetary damages — SACI-Adm is almost always the preferred route.

Strategic Recommendations

• Use SACI-Adm as the default route: For .br domain disputes where the objective is transfer or cancellation, SACI-Adm offers the best combination of speed, cost, and a favourable standard.
• Leverage the disjunctive standard: Structure your complaint to clearly demonstrate either bad faith registration or bad faith use — you do not need to prove both.
• Choose the right institution: Consider the expertise and costs of each accredited institution. WIPO brings international expertise; ABPI/CASD-ND offers deep local knowledge.
• Compile strong evidence before filing: SACI-Adm proceedings are primarily decided on written submissions. Ensure your evidence package is comprehensive from the outset.
• Reserve court action for damages: If you seek monetary compensation in addition to domain transfer, consider using SACI-Adm for the domain and a parallel court action for damages.

Common Mistakes

• Going directly to court when SACI-Adm would suffice: Court litigation is slower, costlier, and unnecessary when the goal is simply to recover the domain.
• Assuming the UDRP applies to .br domains: The UDRP does not apply to .br domains. SACI-Adm is the exclusive administrative mechanism.
• Filing without sufficient evidence: SACI-Adm decisions are based on written submissions. Weak or incomplete evidence packages lead to unsuccessful complaints.
• Ignoring the 15-day court challenge window: If the domain holder files a court action within 15 business days, NIC.br will not implement the SACI-Adm decision. Be prepared for this possibility.

Key Takeaway

SACI-Adm is one of the most trade mark owner-friendly domain dispute systems in the world. Its disjunctive bad faith standard, broader recognition of prior rights, low cost, fast timeline, and strong judicial deference make it a powerful tool for recovering .br domains from cybersquatters and bad faith registrants. For any trade mark owner facing a .br domain conflict, SACI-Adm should be the first option considered — before court litigation and certainly before attempting to negotiate with a squatter from a position of uncertainty.