second international conference for cctld registries and registrars of cis, central and eastern...

Second International conference for ccTLD registries and registrars of CIS, Central and

Eastern Europe

Update on WIPO Domain Name Dispute Resolution and ccTLD Program, and Registry and Registrar Best Practices

Francisco RiosWIPO Arbitration and Mediation Center

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WIPO Arbitration and Mediation Center – September 8, 2009

WIPO Arbitration and Mediation Center

• Established 1994• To promote and provide services for resolution of commercial disputes

between private parties involving intellectual property (IP) and technology, through procedures other than court litigation (ADR).

• Not-for-profit ADR services include: Arbitration (‘classic’ and expedited) Mediation Expert Determination (since 2007) Domain Name Dispute Resolution (DNDR)

(e.g. UDRP)

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WIPO Center (non-DN) Cases – A Snapshot

General Subject Matter Type of Procedure

Over 70 mediations and 110 arbitrations administered

Expedited Arbitration

10%

Arbitration 49%

Mediation 41%

IT22%

Trademarks 5%

Patent 46%

Other 18%

Copyright 9%

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WIPO - Domain Name Dispute Resolution (DNDR) Services

• Provider of DNDR services under the Uniform Domain Name Dispute Resolution Policy (UDRP).

• UDRP introduced in 1999, on WIPO’s recommendation, to provide TM owners with a quick and cost-effective mechanism for addressing the abusive use of a trademark in a domain name (‘cybersquatting’)

• UDRP is applicable to generic top level domains (gTLDs) (e.g. “.com”, “.net”, “.org” etc).

• Different mechanisms applicable to individual country code TLDs (ccTLDs) (e.g. “.me”, “.au”, “.fr”, “.pl”). Many ccTLD Registries have adopted the UDRP mutatis mutandi, or a dispute policy based on it.

• WIPO a Provider for 58 ccTLDs and maintains a ccTLD Program to help ccTLD administrators in developing best practices intended to prevent and resolve disputes in their domains.

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Resources and Information

• Provides a range of publicly available UDRP information and resources on its website to assist filing parties and panels, including filing guidance, model pleadings, FAQs, trademark portal, applicable gTLD and ccTLD Policies and Rules. http://www.wipo.int/amc/en/domains/index.html

• The WIPO Overview of Panel Decisions at http://www.wipo.int/amc/en/domains/search/overview/index.html

promotes awareness of WIPO panel positions in order to: facilitate decision process and enhance consistency assist parties (considering) filing complaints or responses inform all interested parties on the application of UDRP criteria

• Covers 26 principal issues, with consensus on most.

• The WIPO Legal Index http://wipo.int/amc/en/domains/ also provides selected panel decisions on many well-settled (and also some of the more contentious) aspects of the UDRP.

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WIPO Domain Name Disputes – All Cases by Industry 2008 -2009

Electronics4%

Entertainment5%

Fashion5%

Food, Beverages and Restaurants

8%

Media and Publishing

6%

Internet and IT7%

Luxury Items1%

Hotels and Travel5%

Heavy Industry and Machinery

5%

Insurance2%

Banking and Finance

8%Automobiles3%

Other14%

Transportation5%

Telecom3%

Sports2%

Retail8%

Biotechnology and Pharmaceuticals

10%

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Current issues in domain name dispute resolution

• Growth of professional ‘domainer’ industry, and implications for assessment by panels of possible bad faith in cases involving automated or large-scale domain name registrations.

• Widespread use of privacy and proxy registration services (identity ‘shields’)

• DN monetization: parking/landing pages - ‘generic’ v ‘trademark’ value advertising revenue arrangements (e.g. Google Ad Sense) –

responsibility for third-party content

• Domain Name Portfolios: Effect of investment vehicles amassing large portfolios of domain names, being in turn acquired by other domain name investors. Number of domain names may be in the thousands, even the hundreds of thousands, and some cases acquisitions occur under identify shielding.

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Current issues in domain name dispute resolution

• Total domain name registrations today approaching 180 million.

• A significant number of new gTLDs may be around the corner.

• Some commentators report an increase in cybersquatting incidence of 18% from 2007 to the end of 2008

For example, Markmoniter in its Brandjacking Index for 2008, reported almost 450,000 suspected cases of cybersquatting based on tracking of only 30 popular brands.

• Last year WIPO saw 2,329 complaints filed under the UDRP (the busiest year on record, up 8% over ’07).

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Total Domain Name Registrations

Source: Verisign Domain Name Industry Brief – February 2009

2008: 177 million DNs registered, a total up 16% from 2007 Including 71.1 million ccTLDs, up 22% from 2007

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Reported Cybersquatting 2008

Source: Mark MonitorTM Brand Jacking Index – 2008 - The Year in Review

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WIPO Domain Cases per Year(as at September 2009)

WIPO Majority UDRP Provider 2008: 6-7 cases per calendar day

0

500

1000

1500

2000

2500

1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

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WIPO Domain Name Case Outcome

1702, 15%

130, 1%

9535, 84%

Cancellation

Transfer

Complaint denied

Overwhelming majority result in transfer – respondent default rate (approx. 75%) - cancellation rarely sought remedy due to risk of cancelled DN’s being ‘snapped up’

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Top 25 WIPO Complainant Country FilingCountry Number of Cases Percentage of CasesUnited States of America 6625 43.37%France 1655 10.83%United Kingdom 1153 7.55%Germany 877 5.74%Switzerland 767 5.02%Spain 706 4.62%Italy 487 3.19%Canada 307 2.01%Netherlands 285 1.87%Australia 272 1.78%Sweden 220 1.44%Japan 177 1.16%India 148 0.97%Denmark 143 0.94%Brazil 133 0.87%Austria 117 0.77%Mexico 105 0.69%Turkey 95 0.62%Finland 90 0.59%Monaco 74 0.48%China 70 0.46%Belgium 68 0.45%Republic of Korea 68 0.45%Ireland 56 0.37%Singapore 45 0.29%

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Top 25 WIPO Respondent Country FilingCountry Number of Cases Percentage of CasesUnited States of America 6016 39.38%United Kingdom 1286 8.42%China 769 5.03%Canada 727 4.76%Spain 699 4.58%Republic of Korea 605 3.96%France 488 3.19%Australia 363 2.38%Netherlands 245 1.60%India 239 1.56%Italy 227 1.49%Germany 226 1.48%Russian Federation 215 1.41%Switzerland 210 1.37%Bahamas 168 1.10%Panama 166 1.09%Turkey 139 0.91%Mexico 128 0.84%Saint Kitts and Nevis 119 0.78%Sweden 103 0.67%Japan 99 0.65%Ireland 82 0.54%Belize 80 0.52%Kenya 79 0.52%Israel 75 0.49%

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WIPO Case Languages Used

Language of Proceedings – Reg Ag’ment - Panel Discretion – Center Procedure

Case Language Number of Cases Percentage of CasesEnglish 13716 89.78%Spanish 570 3.73%French 380 2.49%Korean 229 1.50%German 169 1.11%Chinese 69 0.45%Dutch 69 0.45%Italian 28 0.18%Japanese 17 0.11%Russian 10 0.07%Portuguese 6 0.04%Romanian 5 0.03%Danish 3 0.02%Swedish 3 0.02%Hebrew 1 0.01%Norwegian 1 0.01%Total: 15276

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gTLDs in WIPO CasesgTLDs Number of Domain Names Percentage.com 18858 78.08%.net 2552 10.57%.org 1499 6.21%.info 750 3.11%.biz 352 1.46%.mobi 113 0.47%.name 15 0.06%.travel 8 0.03%.cat 4 0.02%.aero 1 0.00%.edu 1 0.00%

Overall to date, the vast majority of DN disputes have concerned “.com”

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Top 20 ccTLDs in WIPO Cases

0 50 100 150 200 250 300

.fr.ch.au.es.tv.nl

.mx.ro

.w s.cc.ie

.nu.ir

.me.bz.ph.ve.la.li

.as

As a proportion of the total, the relative number of ccTLD domain name cases filed with WIPO has been increasing over the years. The number of ccTLD complaints filed with WIPO in 2000, was less than 1% of the total; 13% in 2008.

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Domain Name Scripts in WIPO Cases

Non-ASCII characters, or Internationalized Domain Names, are available at the second level in some gTLDs (.com, .net, .org, .info, .biz) and many ccTLDs (e.g., .ch, .de, .cn, .jp, .kr) (e.g. 三共 .com )

Character Set Percentage of Domain NamesASCII (English) 99.55%German 0.13%Chinese 0.07%French 0.07%Japanese 0.05%Korean 0.05%Spanish 0.04%Hebrew 0.01%Norwegian 0.01%Swedish 0.01%To be determined 0.01%Danish 0.00%

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Key Features of (Existing) DN Dispute Mechanisms – the UDRP

• International, curative procedure• Contract-based (RA – RAA - ICANN)• Permits trademark owners to resolve clear cases of abusive domain

name registration (‘cybersquatting’) • Direct enforcement through registrars (‘10-b/day rule’)• Without going to court but preserving court options (MJ derived from

RA)• Time and cost effective (approx 60 days, USD1,500 for single member) • What is required?

Trademark must be identical or confusingly similar to the domain name (Policy, s. 4.(a)(i)); and

The registrant of the domain name must have no rights or legitimate interests in the domain name (Policy, s. 4.(a)(ii)); and

The domain name must have been registered and used in bad faith (Policy, s. 4.(a)(iii)).

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eUDRP

• Through limited, targeted amendments to the UDRP Rules, WIPO’s proposal to ICANN for an “eUDRP” provides a sound, fair basis on which to preserve reasonable, effective notice of the commencement of UDRP proceedings while removing paper pleadings from the UDRP process. Importantly, it does so without causing prejudice to either party, which in cases administered by the WIPO Center could exclusively use email.

• WIPO communicated its eUDRP proposal to ICANN in late December 2008. After informal consultation, ICANN posted the proposal for a 30-day public comment period (July 13 to August 12, 2009). Comments submitted showed clear support overall. It is WIPO’s strong hope that ICANN will confirm its adoption of the proposal within a reasonable time

• http://www.wipo.int/export/sites/www/amc/en/docs/icann301208.pdf

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ccTLD Registration Models

• “Open” vs. “Restricted”

• Types of Restrictions Location requirement

Nationality/Address Verification Entity vs. individuals

(Numerical) Application limits “Yellow pages”

Subdomains Justification of application Verification

• Trend towards open models (+ ADR)

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ccTLD Dispute Models

• No obligation to adopt the UDRP But protection of IP rights?

National courts Less suitable the more “open” a ccTLD is

• WIPO ccTLD Program: advice on request WIPO ccTLD Best Practices

Avoiding conflicts through appropriate registration practices e.g.: registration agreement, contact details, WHOIS,

submission to administrative procedure Protecting IP in ccTLDs through administrative procedures

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UDRP as a flexible modelKey Features (1)

• Mandatory procedure - contractual basis Part of domain name registration agreement

• Efficient (quick results at moderate costs) Direct enforcement

Transfer or cancellation Limited scope and streamlined procedure

Written (online) procedure Single exchange of pleadings Deadlines

Blocking dn transfers during procedure

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UDRP as a flexible modelKey Features (2)

• Due process safeguards Preserve recourse to national courts of justice

Facilitates acceptance (UDRP: <1% contested) Neutrality

Independent of dn registration and administration Impartial and independent decision-makers Reasoned decisions, available to the public

Notice All possible means (Whois)

Burden of proof on Complainant Complainant pays fees

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UDRP as a flexible model Adjustable elements (1)

• Bad faith registration and/or use or any infringement of (IP) rights?

Infringement under national law: .ch, .fr

• Local rights only or also “foreign” rights? ccTLD typically addresses a certain territory Location requirement for dn registration?

• Trademarks only? may also concern different types of intellectual property

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UDRP as a flexible model Adjustable elements (2)

• Procedure Local language(s) Nationality and qualification of Panelists

Factors: Decisions to be made in accordance with local law rather

than standard (bad faith) conditions Local/regional and international dispute resolution providers Mediation element

.ch, .uk

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UDRP as a flexible model

• Balance:

Parties’ interest in predictability, and IP owners’ interest in uniformity and possibility of consolidating complaints against the same domain name holder

vs Desire to adapt to local environment

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WIPO ccTLD Experience

• 58 ccTLDs using WIPO dispute resolution services (September 2009)

Initial period: smaller (.sh) or “de facto” gTLDs (.tv)

Then: more established TLDs (.au, .ie, .mx, .nl, .ch, .fr)

Added in 2008 - 2009: .ao (Angola), .bo (Bolivia), .bm (Bermuda), .me

(Montenegro), .mp (Mariana Islands) .pe (Peru), .sl (Sierra Leone)

• ccTLD-involving WIPO cases: December 1999 to September 2009: 1,188

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WIPO ccTLD Experience Types of Policies

• UDRP: 36 .ag, .am, .as, .bm, .bs, .bz, .cc, .cd, .co, .cy, .dj, .ec, .fj, .gt, .ki, .la,

.lc, .md, .me, .mw, .na, .nr, .nu, .pa, .pk, .pn, .pr, .ro, .sc, .sl, .tk, .tt, .tv, .ug, .ve, .ws

• Variations of UDRP: 13 .ae, .ao, .au, .bo, .es, .ie, .ir, .nl, .mp, .mx, .pe, .ph, .tm

• Other (UDRP-inspired) administrative procedure: 5 .ch, .fr, .li, .re, .ma

• Arbitration: 4 .ac, .io, .pl, .sh

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WIPO ccTLD Database

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Registry and Registrar Best Practices

• ICANN is currently working with registrars on a draft Best Practices document intended to better protect registrants in UDRP proceedings

• Although non-binding as such it is expected to provide ICANN’s almost 1,000 accredited registrars with uniform guidance on such matters as (1) how and when to timely lock disputed domain names (2) how and when to provide relevant requested registrar verification information to Providers (which is required for notification and language determination purposes) (3) how to react to and give effect to settlement agreements reached between disputing parties in a UDRP proceeding.

• A revised draft of the guidelines is currently being prepared and is expected to be published within the next two weeks or so.

• Previous version of the draft is available at http://www.icann.org/en/compliance/draft-advisory-best-practices-udrp-complaint-31oct08-en.pdf

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ICANN-Envisaged New gTLD Expansion:Trademark-related Concerns

• “.com” → “.tm”, “dictionary”, etc.• Presents business opportunities as well as legal and practical

challenges.• WIPO Press Release of March 16, 2009: “This is a watershed

moment in the development of the Domain Name System (DNS), and is of genuine concern for trademark holders.”

• Concerns broadly shared and expressed, including by governments (GAC Principles regarding New gTLDs, March 2007, and ensuing documents).

Trademark abuse → consumer confusion → undermining of public trust in the DNS

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WIPO Recommendations

1. Trademark-based Pre-Delegation Dispute Resolution Procedure (published in DAG I & II)

• WIPO Center responded on January 18, 2008, to ICANN’s request for

“Expressions of Interest from Potential Dispute Resolution Service

Providers for New gTLD Program.”

• Worked with ICANN in the development of the substantive criteria for the

Legal Rights Objections (LRO) procedure - taking into account the

“WIPO Joint Recommendation Concerning Provisions on the Protection

of Marks, and Other Industrial Property Rights in Signs, on the Internet.”

• Accepted to administer disputes under LRO Procedure.

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2. Trademark-Based Post-Delegation Dispute Resolution Procedure

• In Jan 18, 2008 letter, WIPO called for a permanent administrative option to allow for filing of complaints, when the registry’s actual manner of operation or use is alleged to cause or materially contribute to trademark abuse.

• ICANN confirmed availability of trademark-based post-delegation mechanism in the New gTLD Program Explanatory Memorandum on “Protection of Rights of Others in New gTLDs” of Oct 8, 2008

• WIPO Center communicated to ICANN on Feb 5, 2009, a substantive proposal for a trademark-based post-delegation dispute resolution procedure.

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2. Trademark-Based Post-Delegation Dispute Resolution Procedure (cont’d)

• Intended as a form of standardized assistance to ICANN’s own compliance oversight responsibilities, provides an administrative alternative to court litigation, encourages responsible conduct by relevant actors, and enhances the security and stability of the DNS.

• The criteria build on pre-delegation LRO criteria and consideration factors, existing UDRP jurisprudence, and accepted principles of law.

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Scenarios:

• E.g., Registry uses the TLD for a purpose unreasonably inconsistent with relevant representations made in the application phase, such that trademarks are infringed.

• E.g., TLD operator turns a blind eye to systemic cybersquatting in its domain, instead of adopting appropriate mechanisms to counter such abuse.

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• Given the perceived convergence of registry, registrar, and registrant roles within the DNS, WIPO Center further recommends to extend the concept behind this proposal also to address relevant registrar conduct.

• See WIPO Letter to ICANN of April 9, 2009, on observed conduct of one particular ICANN accredited registrar. Alleged conduct in lawsuits involving the registrar included “UDRP evasion services” and “contributory cybersquatting.”


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3. Discussion Draft Expedited (Domain Name) Suspension Mechanism

• Communicated to ICANN on April 3, 2009.

• Intended to present options for brand owners to combat cybersquatting in a cost and time effective manner.

• Intended as a narrowly tailored complement to the

• UDRP.

• Includes an important safety valve mechanism for defaulting respondents.

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WIPO Comments to IRT Reports

• WIPO Comments to Draft IRT Report (May 10, 2009).

• WIPO Comments to Final IRT Report (June 18, 2009).

• IRT Reports represent substantial progress and a serious foundation for mechanisms designed to prevent to trademark abuse.

• WIPO Center commends the IRT for the Final IRT Report, and the consequential efforts of individual IRT members.

• WIPO Center looks forward to continued dialogue.

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General Comments - IP Clearinghouse

• System design should minimize burdens on users and stakeholders.

• Implementation should take account of operational realities.

• Relationship between mechanisms should be further clarified.

IP Clearinghouse

• Ubiquitous role envisaged for the Clearinghouse calls for adequate safeguards and ICANN oversight.

• Differentiation of roles may be appropriate for the Clearinghouse.

• Trademark owners should not shoulder the entire burden of financing a Clearinghouse.

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Uniform Rapid Suspension Mechanism

• Requiring panelist evaluation even in URS default cases would unnecessarily increase costs and burdens to trademark owners.

• The duration of the proposed remedy is of limited effectiveness.• The URS must interoperate with the UDRP.• The URS substantive criteria adaptations are not clear.• Elements of the URS may be adjusted with a view to time and cost-

efficiency.• Looking at WIPO UDRP Cases - the vast majority default rate in WIPO

cases around 75%

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Post-Delegation Dispute ResolutionMechanism at the Top Level

• Post-delegation system design must bear in mind its intended preventive effect.

• Trademark owners should be given the option to initiate a post-delegation sua sponte.

• WIPO Center recommends an analogous dispute resolution procedure for ICANN-accredited registrars.

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• In tandem with the introduction of new gTLDs, the introduction of IDNs into top-level domains is also expected soon.

ICANN’s IDNC Working Group has recommended a mechanism to introduce a limited number of non-contentious IDN ccTLDs, based on an ISO list of two letter country codes, via an IDN ccTLD ‘Fast Track’ Process

ICANN’s Generic Names Supporting Organization (GNSO) has also recommended that some of the proposed new gTLDs be internationalized domains

Implications for substantive UDRP analysis? (identity and confusing similarity)

Internationalized Domain Names (IDNs)

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Additional Information

[email protected] and [email protected]

Website: http://www.wipo.int/amc/en/domains/index.html

WIPO activities related to new gTLDs http://www.wipo.int/amc/en/domains/newgtld

Selected WIPO Correspondence with ICANN http://www.wipo.int/amc/en/domains/resources/icann/

gTLD Reportshttp://www.wipo.int/amc/en/domains/reports/

Upcoming Events: http://www.wipo.int/amc/en/events/

second international conference for cctld registries and registrars of cis, central and eastern...

Documents

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wipo domain

mediation center slide

udrp slide

wipo legal index http

wipo center nondn cases

dispute resolution policy

arbitration classic