Public Interest Registry’s General Counsel Brian Cimbolic has laid out a new two-step appeal process for their .org top-level domain under their Anti-Abuse Policy in a post on the registry blog. Under the new appeals process registrants who believe their .org domain names have been suspended unfairly can contact PIR and then appeal to a neutral third party. The goal is to help build confidence in a safer, stronger DNS.
A few announcements from EURid, the top-level domain registry for .eu. First up, EURid has had to defer allowing EEA citizens to register .eu domain names.
This follows the announcement last month where the European Free Trade Association (EFTA) had reached an agreement that would extend the citizenship rule to EEA nationals.
EURid has announced the promotional fee for disputing .eu and .ÐµÑ domain names will remain at â¬1,000 for 2018. The fee covers Alternative Dispute Resolution cases for EURid’s top level domains lodged both bodies able to hear disputes – the Czech Arbitration Court (CAC) and the World Intellectual Property Organisation (WIPO Center).
The â¬1,000 discount applies to all complaints filed, irrespective of the number of domain names disputed and panel type requested.
If you want to dispute a .eu or .ÐµÑ domain name registration and believe that you have a prior right (within the EU or EEA) to the domain name (e.g. you hold a trademark, trade name, company name, family name, etc) and the current holder has registered or uses the domain name in bad faith, you can challenge its registration by initiating an ADR procedure in accordance with the ADR rules.
Concerns over domain name infringement and cybersquatting have declined in importance for trademark practitioners over the last year, according to the latest annual Global Trademark Benchmarking Survey by World Trademark Review.
The survey of over 550 trademark practitioners, both in-house and in private practice, found a majority (60.5%) of respondents stated their domain enforcement strategy hadnât changed in the last 12 months in light of the gTLD rollout. The figure was much the same for âcorporate respondents (59.4%). This is a nearly 10% higher figure than the year before (2014), and 30% higher than in 2011 (which was, of course, during the planning stages of the new gTLDs). On the flip-side, only 15.7% of practitioners said that their enforcement strategy had changed in the last 12 months due to the rollout (the highest figures since 2013).â
âPerhaps more tellingly, when in-house respondents were asked to rank a variety of issues in terms of the threat they pose to trademark portfolios, domain name infringement slipped five places (from being the second most threatening issue in 2014 to seventh last year)â according to a post on the WTR blog. âThis isnât to say all online threats were downgraded in this yearâs survey; in fact, the online sale of counterfeits rose from sixth to top place in the list. However, it does suggest that trademark counsel strategies for domain name infringement are in place and deemed to be working.â
WTR note that previous surveys found there were concerns on the impact on budgets and enforcement strategies over the potential impact of new gTLDs. However they believe itâs likely âthe survey shows this relative calm a sign that the worst fears of counsel did not become a reality, that pre-existing strategies were well-suited to the expanded online space [and] that enforcement approaches have already been cannily adapted to cater to the new environment.â
For more information, see the WTR blog post at:
Abstract: When the Oscar-winning actress Julia Roberts fought for control of the domain name, what was her aim? Did she want to reap economic benefits from the name? Probably not, as she has not used the name since it was transferred to her. Or did she want to prevent others from using it on either an unjust enrichment or a privacy basis? Was she, in fact, protecting a trademark interest in her name? Personal domain name disputes, particularly those in the space, implicate unique aspects of an individualâs persona in cyberspace.Â Nevertheless, most of the legal rules developed for these disputes are based on trademark law.
Although a number of individuals have successfully used these rules in practice, the focus on trademark law has led to inconsistent and often arbitrary results. Additionally, commentators have questioned recent expansions of trademark law in the Internet context.
This Article suggests that if personal names merit legal protection in cyberspace, it should be under an appropriate set of legal rules, rather than through further expansion of trademarks. This Article develops a new framework for personal domain name disputes based on the theories underlying the right of publicity tort. Unlike trademark law, this tort is aimed at the protection of individual names and likenesses. It has not been utilized much in cyberspace largely because of time, cost, and jurisdictional disadvantages of litigation as opposed to the quicker and cheaper, but trademark-based, Uniform Domain Name Dispute Resolution Policy (âUDRPâ). This article suggests the creation of a new personal domain name dispute resolution policy (âPDRPâ) that combines the procedural advantages of the UDRP with the theory underlying the right of publicity tort.
This article by Jacqueline D. Lipton is available for download in full from:
Purpose (Brief): ICANN is posting a draft review report [PDF, 1.27 MB] on the rights protection mechanisms (RPMs) established as safeguards in the New gTLD Program. This paper is intended to provide an outline for an initial review of the effectiveness of the rights protection mechanisms.
Particularly, this paper reviews the data and input collected in many of the key areas relating to rights protection mechanism, including the Trademark Clearinghouse, Uniform Rapid Suspension system, and Post-Delegation Dispute Resolution Procedures.
Public Comment Box Link: https://www.icann.org/public-comments/rpm-review-2015-02-02-en
This ICANN announcement was sourced from:
[news release] Aston Merrygold, former member of boyband JLS, has been awarded the domain name www.astonmerrygold.co.uk following a complaint to Nominetâs Dispute Resolution Service (DRS). The decision marks the 10,000th domain dispute to pass through the DRS since it was established over 12 years ago.
The decision to award Mr. Merrygold the domain was made by independent legal expert Dr. Clive Trotman from Nominetâs DRS panel. The original registrant of the domain first registered it the day after JLSâ appearance in the X Factor final in December 2008, along with similar domain names for the other members of the group. Despite the original registrant never using the domain to host any content, it was ruled that the registration was made in order to take unfair advantage of Mr. Merrygoldâs rights.
The Merrygold case marks the 10,000th case since the DRS was established over 12 years ago to offer an efficient and transparent method of resolving disputes relating to .uk domain names, which are administered by Nominet. The DRS seeks to settle disputes through mediation and, where this is not possible, through an independent expert decision. Details on other recent, notable DRS decisions can be found below.
A new Chair of the DRS Expert Panel
As the milestone 10,000th case passes, Nominet is also announcing a new Chair of the Expert Panel that decides DRS outcomes. Existing Chair Tony Willoughby, who has been in the role since the DRS was founded, will be stepping down in January. Nick Gardner, who is currently a member of the DRS Expert Review Group that hears appeal cases, will step into the role. Gardner practised as a lawyer with leading international law firm Herbert Smith LLP in London for over 25 years, with 18 years as a partner in its intellectual property and technology practice.
Gardner said: âIâm proud to take over from Tony Willoughby as the new Chair of the Expert Panel. Itâs a daunting task, but Iâm looking forward to the challenge. The DRS has an excellent reputation for resolving domain name disputes and I hope to maintain that in the years ahead, working with the incredibly professional experts that make up the panel.â
DRS @ 10,000 disputes: recent cases
To make a complaint through the DRS, you need to have rights (such as a trade mark) in a name which is the same as or similar to the domain name you are concerned about. The DRS can usually provide a quicker and cheaper resolution to disputes than going through the courts as this service is based on free, confidential mediation. In the event of deadlock, complainants can pay to appoint independent legal experts from a panel to make a full or summary decision.
Alongside astonmerrygold.co.uk, other notable recent cases include:
US fashion company J. Crew International complained about the domain jcrewmercantile.co.uk, registered in May by an individual in China. J. Crew applied for two trademark applications for J. Crew Mercantile long before this domain was registered, both of which generated considerable media speculation about the intended use of the brand. The respondent in this case claimed that the domain was not infringing trademarks and that its intended use was for a non-profit consulting website rather than selling clothes. The DRS expert found that J. Crew owned the relevant rights and ruled that jcrewmercantile.co.uk was an abusive registration. Since this is the third adverse decision against the same registrant in the past four months, there is now a presumption that all registrations made by this individual are abusive.
National Westminster Bank Plc made a complaint about natweest-online.co.uk, which had been registered by an individual based in Wyoming in the US. There was no response to the complaint from the registrant, leading to a summary decision which ruled the registration as abusive and ordered the domain to be transferred.
Car manufacturer Ford complained about the domain name newfordpartsonline.co.uk, which was registered to a business called Newford Parts Centre which sells original parts for old Ford vehicles. Ford complained that the domain was unfairly using its trademarked company name to increase trade. The website itself also featured the Ford logo and several images of Ford cars, despite the registrant not being officially connected to Ford in any way. The registrant argued that the domain name was legitimate, since it trades under the name Newford Parts Centre and is not in competition with Ford. However, a DRS expert ruled that the domain took unfair advantage of Fordâs rights and constituted an abusive registration.
These rulings, along with all others made over the last 12 years, are publicly available to view via Nominetâs website.
Â About Nominet
Domain names are one of the key building blocks of the internet â an essential component of every email address and website. Millions of businesses and consumers now depend on Nominetâs services, which underpin a critical part of the UK Internet economy. Â Nominet is a private, not-for-profit business, responsible for the smooth and secure running of the .uk internet infrastructure.Â We have over 2,800 members and are committed to acting in the public interest.
With the proceeds of our successful registry business, we set up and support the Nominet Trust, an independent charitable foundation focussed on increasing access, safety and education on internet issues. As part of our commitment to making the internet a more trusted space, we have also developed an information and advice portal – www.knowthenet.org.uk – which helps internet users to get the most of being online by staying safe, legal, and informed.
This Nominet news release was sourced from:
[news release]Â The fee for a basic .eu Alternative Dispute Resolution (ADR) procedure will be cut by a further 50%, according to the .eu registry EURid and the Czech Arbitration Court (CAC), the institution appointed to rule on Alternative Dispute Resolution proceedings for the .eu top-level domain.
The announcement heralds the third year in a row that the cost of .eu ADR proceedings has been reduced.
âThe continued reduction of ADR fees will further help rights holders to overcome the financial barrier that prevented them from claiming their rights through .eu ADR proceedings,â commented Czech Arbitration Court Board Member, Petr HostaÅ¡.
EURidâs General Manager Marc Van Wesemael added, âAt EURid, we want anyone with a legitimate prior rights claim to be able to challenge a .eu registration. Making the .eu ADR process more affordable, and therefore accessible, is one way of doing this.â
People can challenge a .eu registration if they believe they have a prior right to the domain name and the current holder has registered the name for speculative or abusive purposes. EURid offers the fast and convenient .eu ADR procedure through the independent CAC specifically for this purpose. No travel is required as all cases are conducted online and by email, and in 24 official EU languages. Cases take an average of four months to resolve.
EURid appointed the CAC in 2005 as its ADR provider. In order to make .eu ADR decisions, the CAC selects one or more panellists from its list of 112 accredited international experts.
Since the ADR procedure first became available in 2006, 686 cases have been filed â of which 51 in 2013. The ADR panel accepted 35 complaints last year, 10 are still pending. More information about the terms and conditions of the new .eu ADR price structure is available at eu.adr.eu.
This EURid news release was sourced from:
The Public Interest Commitment Dispute Resolution Procedures (PICDRP) is finalized and now available.
- View the PICDRP [PDF, 208 KB]
The PICDRP is a procedure created to address potential complaints that a Registry Operator may not be complying with its voluntary or mandatory commitments as identified in Specification 11 of their Registry Agreement.
A draft procedure was published for public comment in March 2013.Â ICANN considered the inputs received from the draft procedures and published a revised PICDRP for comment in October 2013.Â The approved PICDRP incorporates the feedback received from both public comment forums.
This ICANN announcement was sourced from:
ICANN is seeking expressions of interest to serve on the PICDRP Standing Panel.
- As part of the New gTLD Program, ICANN has put in place the Public Interest Commitment Dispute Resolution Procedure [PDF, 208 KB] (“PICDRP”) to address reports of a Registry Operator’s non-compliance with one or more of the public interest commitments included in Specification 11 of its Registry Agreement with ICANN.
- During the compliance review and investigation process for a report submitted to ICANN under the PICDRP, ICANN may call upon the Standing Panel to review one or more reports in order to evaluate whether the Registry Operator was or was not in compliance with Specification 11 of the Registry Agreement.
Composition of Standing Panel
- The Standing Panel shall consist of a minimum of three members, with more members to be added as deemed necessary. Not all members of the Standing Panel are necessary to the consideration of each report referred by ICANN.
- The Standing Panel members should have diversity in geographic and cultural representation. Diversity of experience will be considered in completing the composition of the Panel.
Proposed Qualifications of Standing Panel Members
- In consideration of the scope and areas of expertise required, that Standing Panel members, in the aggregate, should have expertise and significant knowledge in the following (or similar) aspects/areas.
- Online content
- Public policy
- Trademark protection
- International dispute resolution
- Cultural studies
- Judicial and/or legal experience
- DNS technical experience
- Regulatory background
- Sociological research experience
- Contract interpretation experience
- Licensing experience
- Panel members should have demonstrated recognition of expertise and knowledge through high-level positions, peer group recognition, and/or history of publications/presentations on relevant topics.
Conflict of Interests
All Panel members must be independent from ICANN (i.e., not an ICANN employee; not a member of any ICANN Sponsoring Organization or Advisory Committee; not affiliated with any registrar or registry holding a contract with ICANN). Further, all Panel members must adhere to ICANN’s conflicts of interest policy and annually complete a Conflicts of Interest Disclosure Form.
- To keep the costs and burdens of evaluation as low as possible, absent exceptional circumstances, the Standing Panel is expected to conduct its proceedings by email, by telephone and otherwise via the Internet.
- It is anticipated that the Standing Panel may start to have matters referred to it by ICANN within one month of the Panel formation. The members of the Standing Panel will be required to review reference and training materials prior to receiving matters such that the Panel members understand the Public Interest Commitments Dispute Resolution Process. For each matter referred, the Standing Panel will be expected to evaluate compliance by the Registry Operator and report its evaluation results to ICANN. The Standing Panel is expected to deliver its evaluation results to ICANN within 15 days of reference by ICANN.
- At present it is unclear how many matters will be referred to any given Standing Panel member; over time this may become more predictable based on the nature and number of the reports submitted.
Fees for Service on Standing Panel
Fees to be determined based on, among other things, proposals received.
Terms of Standing Panel Member
For the purpose of continuity and consistency, the terms of Standing Panel members will be staggered. For a start, the terms of two of the Standing Panel member shall be two (2) years and the term of the third member shall be one (1) year. Subsequent terms of new members and renewal of terms shall be two (2) years and members, with agreement from ICANN, are allowed to renew for a maximum of two (2) terms.
It is anticipated that the Standing Panel membership will be announced by end of January or early February 2014.
Expressions of Interest
Expressions of Interest, which will be maintained as confidential, should be sent to PICDRP-SP-EOI@icann.org no later than 20 January 2014. Respondents are urged to read the PICDRP [PDF, 208 KB] prior to submitting an Expression of Interest.
This ICANN announcement was sourced from: