Internet Domain Name Dispute Resolution in India and the Role of Arbitration by Ruchi Rampuria & Vishal Thakur

Abstract: This paper tries to highlight the role of arbitration in the field of dispute arising out of domain name in India and the problems which prove a hurdle in making arbitration as an effective means of dispute resolution

Abstract: This paper tries to highlight the role of arbitration in the field of dispute arising out of domain name in India and the problems which prove a hurdle in making arbitration as an effective means of dispute resolution.

Domain name is an address of a computer network that identifies the owner of the address for example abc.com. It is used by commercial organizations to promote their products; therefore serving the function of a trademark and is thus entitled to equal protection as a trademark.

The domain name system allows every server connected to the internet, to be accessed from anywhere resulting in the trademarks registered in the domain owner’s jurisdiction being displayed in other jurisdictions, where different persons may hold the mark. Due to this unique problem, persons with the same name in several jurisdictions may stake competing claims over the same name chosen as a trademark or as a domain name by a server. The resolution of such conflicts has thrown serious challenges to the legal systems all over the globe, in view of the fact that even if there is no actual infringement, there is always a danger of trademark dilution.

In India the dispute arising out of domain name are handled under In Domain Name Disputes Resolution Policy. It provides for adjudication of all disputes arising out of the registration and use of domain names, all the disputes are resolved through the means of arbitration under The Arbitration and Conciliation Act 1996.

However, there are lacunas in the operation of this policy for example the IN Domain Name Dispute Resolution Policy is neither a statute nor an Act also the status of an Arbitrator under the INDRP is neither that of a Judge nor that of a Judicial Officer, the Tribunal, therefore, is not a forum which can be said to provide adequate and effective machinery for the redress of all the disputes. The aim of this paper is to identify these problems and suggest a solution for the same.
To download this paper in full on the SSRN website, go to:
ssrn.com/abstract=2035561

National Arbitration Forum Loses in Disputes Cases To WIPO

The National Arbitration Forum announced they handled a total of 2,082 domain name dispute cases that were filed in their dispute resolution program in 2011, up 18 percent from 2009 (1,759 cases) and down four percent from 2010 (2,177 cases).

The National Arbitration Forum announced they handled a total of 2,082 domain name dispute cases that were filed in their dispute resolution program in 2011, up 18 percent from 2009 (1,759 cases) and down four percent from 2010 (2,177 cases).This compares to the WIPO that handled 2764 cases in 2011, up 31 percent from 2009 when they handled 2107 cases, and up 2.5 per cent from 2010 when it handled 2696 cases.In their announcement, the Forum noted since their first case in 1999, they have resolved nearly 18,000 cases as of the end of 2011. But during 2011 more than 2000 cases were filed with 96.2 percent involving generic top level domain names. There were also around 70 cases involving a .US ccTLD that was resolved under the United States Dispute Resolution Policy (usDRP) while three cases were administered under the United States Nexus Dispute Policy (usNDP).There were also ten cases were administered under the FORUM’s new Rapid Evaluation Service (RES) for .XXX domain names.”Our experience tells us parties, particularly domain name registrants, prefer the National Arbitration Forum because documents are easily accessible in our online portal,” said Kristine Dorrain, Director of Internet and IP Services, who manages the FORUM’s dispute resolution programs at National Arbitration Forum. “Complaint or Response filing is accomplished in just a couple of minutes.”

WIPO: Trademark Rights Protection Mechanisms for New gTLDs

For ICANN’s New gTLD Program, a range of “Rights Protection Mechanisms” (RPMs) has been established. Prior to any new gTLDs being approved and becoming operational, these new gTLD RPMs include pre-delegation objection procedures described in more detail on the Center’s dedicated portal: Legal Rights Objections under ICANN’s New gTLD Program – Filing a Legal Rights Objection at WIPO: What You Need To Know

For ICANN’s New gTLD Program, a range of “Rights Protection Mechanisms” (RPMs) has been established. Prior to any new gTLDs being approved and becoming operational, these new gTLD RPMs include pre-delegation objection procedures described in more detail on the Center’s dedicated portal: Legal Rights Objections under ICANN’s New gTLD Program – Filing a Legal Rights Objection at WIPO: What You Need To Know.

In addition, ICANN has established a range of mechanisms available for use once a new gTLD has been approved and becomes operational, including a Trademark Clearinghouse (for use with Sunrise periods and Trademark Claims services), a Uniform Rapid Suspension system (URS), and a Post Delegation Dispute Resolution Procedure (PDDRP). The existing Uniform Domain Name Dispute Resolution Policy (UDRP) will also apply to all new gTLDs. A WIPO summary of each such RPM follows; policy background is available in the overview of WIPO Observations on New gTLD Dispute Resolution Mechanisms.

Trademark Clearinghouse

The Trademark Clearinghouse is a centralized database of verified data on registered (or court-validated, or treaty-protected) trademarks. The Clearinghouse is intended to minimize burdens on bona fide trademark owners by allowing them to deposit, for a (yet-to-be-determined) fee, their trademark data with one centralized source, rather than with each new gTLD registry; new gTLD registries will be able to retrieve such centralized data from the Clearinghouse.

The Clearinghouse is not itself an RPM, but rather facilitates use of RPMs such as Sunrise registration periods (during which trademark owners can purchase domain names before the general public, usually for a premium fee), Trademark Claims services (notice to a prospective domain name registrant of a potential conflict between the domain name and an existing trademark, with a notice to the trademark owner if the domain name is registered following the registrant’s representation of non infringement), and URS proceedings (described below).

It is important to note that, as adopted by ICANN, Sunrise periods (available for at least 30 days) and Claims services (available only for 60 days) are limited to exact matches of a domain name to a word mark, i.e., these services will not cover typos or “mark + term” scenarios.

URS

The URS is intended to be a lighter, quicker complement to the existing UDRP. Like the UDRP, it is intended for clear-cut cases of trademark abuse. Under the URS, the only remedy which a panel may grant is the temporary suspension of a domain name for the duration of the registration period (which may be extended by the prevailing complainant for one year, at commercial rates). Initial URS timelines, at least from filing to a determination, are similar to those of the UDRP; also, the URS substantive criteria mirror those of the UDRP (but with additional registrant defenses).

It is important to note that, as adopted by ICANN, once a determination is rendered, a losing registrant has several appeal possibilities (from 30 days up to one year); trademark owners may consider this in deciding whether to use the URS or the UDRP, which provides a transfer, and thus does not carry a monitoring burden with it. (Either party may file a de novo appeal (for a fee) within 14 days.) There are also penalties for filing “abusive complaints” which may result in a ban on future URS filings.

PDDRP

The PDDRP is an administrative (court alternative) option for trademark owners to file an objection against a registry whose “affirmative conduct” in its operation or use of its gTLD is alleged to cause or materially contribute to trademark abuse. In this way, the PDDRP is intended to act as a higher-level enforcement tool to assist ICANN compliance activities, where rights holders may not be able to continue to turn solely to lower-level multijurisdictional enforcement options in a vastly expanded DNS.

It is important to note that, as adopted by ICANN, the PDDRP involves a number of procedural layers, such as an administrative compliance review, appointment of a “threshold review panel,” an expert determination as to liability under the procedure (with implementation of any remedies at ICANN’s discretion), a possible de novo appeal (under the same process), and further appeal to arbitration under ICANN’s registry terms. Beyond this, any PDDRP remedy specifically excludes third-party-registered second-level infringing names (which may have been the basis for filing the PDDRP case), and requires specific bad-faith conduct including profit from encouraging infringement in addition to “the typical registration fee.” Also, attorney fees are available against complainants only.

UDRP

The UDRP is an out-of-court dispute resolution mechanism for trademark owners to resolve clear cases of bad-faith, abusive registration and use of domain names. The UDRP applies (by contract) to all domain name registrations in ICANN-approved gTLDs (e.g., .com, .net, .org). The UDRP or a variant also applies to a number of ccTLDs (more information). Standing to file a UDRP complaint is limited to trademark owners, who must demonstrate their rights. To prevail in a UDRP complaint, the complainant must further demonstrate that the domain name registrant has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. In the event of a successful claim, the infringing domain name registration is transferred to the complainant’s control.

More detailed UDRP background information is available in the WIPO Center’s publication: The UDRP and WIPO – INTA Conference Paper 2011, and on the Center’s UDRP resources page.

Complementing the WIPO UDRP Search Facility are a Legal Index of WIPO UDRP Panel Decisions and a globally used jurisprudential overview of UDRP cases available in the Center’s WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

This WIPO announcement was sourced from:
wipo.int/amc/en/domains/rpm/

An Empirical Analysis of Fair Use Decisions under the Uniform Domain-Name Dispute-Resolution Policy by David A. Simon [Harvard Law School]

Abstract: For over ten years, the Uniform Domain-Name Dispute-Resolution Policy (UDRP) has resolved nearly 20,000 domain-name disputes brought before the World Intellectual Property Organization (WIPO), a United Nations organization that arbitrates UDRP disputes. The UDRP allows the holder of a legally protectable trademark to initiate proceedings to cancel the domain name or have it transferred to the trademark owner. Domain-name holders, though, have a number of defenses, including using their domain names in a noncommercial, fair manner. Although several empirical studies have analyzed various aspects of the UDRP, none has specifically examined this fair use defense.

Abstract: For over ten years, the Uniform Domain-Name Dispute-Resolution Policy (UDRP) has resolved nearly 20,000 domain-name disputes brought before the World Intellectual Property Organization (WIPO), a United Nations organization that arbitrates UDRP disputes. The UDRP allows the holder of a legally protectable trademark to initiate proceedings to cancel the domain name or have it transferred to the trademark owner. Domain-name holders, though, have a number of defenses, including using their domain names in a noncommercial, fair manner. Although several empirical studies have analyzed various aspects of the UDRP, none has specifically examined this fair use defense.This study does what others have not. It analyzes the fair use defense in decisions before WIPO. Using WIPO’s online decision database, this study found that arbitrator and respondent nationality influence the success of a respondent’s fair use claim to a statistically significant degree. Specifically, respondents from the United States are more likely than those from other countries to succeed on a fair use defense. Additionally, arbitrators from the United States are more likely than those from other countries to find that a respondent’s use of a domain name was fair.This means that, under the UDRP, respondents from the United States enjoy greater speech protections than those from other countries, and that arbitrators from the United States are more sympathetic to speech interests than arbitrators from other countries. To improve the UDRP, I propose two revisions. First, ICANN should adopt a choice of law provision stating that the law of the respondent’s home country governs fair use disputes. Second, ICANN should implement a panel assignment provision in fair use cases that requires arbitrators to share the nationalities of the litigants.To download this paper by David A. Simon from Harvard Law School, go to:
ssrn.com/abstract=1887888

.SE introduces faster and less expensive ADR for disputes over .SE domains

.SE - Sweden - logo.SE (The Internet Infrastructure Foundation) now offers the option of faster and less expensive processing of ADR cases in the event of a domain name dispute.

.SE - Sweden - logo.SE (The Internet Infrastructure Foundation) now offers the option of faster and less expensive processing of ADR cases in the event of a domain name dispute.

[news release] Under the accelerated ADR, the dispute is decided by an arbitrator within 10 working days, instead of 30 days, at a cost of SEK 2,000. This option is based on the counterparty failing to respond to the ADR petition. Otherwise, the same prerequisites apply as during a standard ADR.

Since 2003, the “first come, first serve” principle applies to the allocation of .se domain names: the first party to apply for an available domain name receives it without a preliminary examination. A party who believes that someone else has registered a domain name to which the aforementioned party is entitled may appeal the allocation of the domain name retrospectively through an Alternative Dispute Resolution proceeding (ADR), which is an easier and less expensive alternative than going to court. Very few registrations of .se domains lead to disputes. In 2010, 80 cases were decided, although the average has been between 40 and 50 since ADRs were introduced in 2003.

Accelerated ADR

.SE now offers the option of selecting an accelerated ADR proceeding on submission of an ADR petition. The accelerated ADR proceeding is only applied if the counterparty fails to respond to the ADR petition. In this event, the case is processed within 10 working days instead of the standard 30 days. The arbitrator considers all prerequisites applicable in a standard ADR case, but announces his/her decision without further justification, meaning that the arbitrator does not account for his/her arguments in the case.

Accelerated ADR costs

The cost of an accelerated ADR proceeding is SEK 2,000. The fee is lower since the case is only decided by one arbitrator, without said arbitrator accounting for his/her arguments in the case
“We have introduced the accelerated ADR proceeding because we have noticed that many counterparties fail to respond to ADR petitions. Introducing an accelerated ADR allows these specific cases to be decided faster and at a lower cost. This means that the obvious cases of domain-name registration abuse are addressed more promptly,” says .SE’s Senior Legal Counsel Elisabet Ekstrand.

Read more about accelerated ADR proceedings

This .SE news release was sourced from:
www.iis.se/en/pressmeddelanden/se-infor-snabbare-och-billigare-atf-for-tvister-om-se-domaner

Europe Registry logoTo register your .SE domain name, check out Europe Registry here.

WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Practices and Precedents – October 2011

WIPO logoThe WIPO Arbitration and Mediation Center plans to hold its annual Advanced Workshop on Domain Name Dispute Resolution in Geneva (Switzerland) Tuesday, October 11 and Wednesday, October 12, 2011. Further information on the program and registration modalities will be posted in the near future

WIPO logoThe WIPO Arbitration and Mediation Center plans to hold its annual Advanced Workshop on Domain Name Dispute Resolution in Geneva (Switzerland) Tuesday, October 11 and Wednesday, October 12, 2011. Further information on the program and registration modalities will be posted in the near future.

The WIPO Center’s domain name dispute resolution service gives effect to the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) at the recommendation of WIPO. The UDRP provides holders of trademark rights with an administrative mechanism for the efficient resolution of disputes arising out of the bad-faith registration and use by third parties of Internet domain names corresponding to those trademark rights. The UDRP applies to disputes in the current and expected generic top-level domains (gTLDs), as well as an increasing number of country code top-level domains (ccTLDs). The principal remedy available under the UDRP is the transfer of the domain name. In December 1999, the WIPO Arbitration and Mediation Center received its first case under the UDRP. To date, trademark owners from around the world have filed over 19,000 such cases with the Center.

The Advanced Workshop will focus mainly on the trends of UDRP decisions with regard to the most important substantive and procedural issues. Thus, in addition to those wishing to gain insight into the UDRP mechanism, this Advanced Workshop is of particular interest to those who have been or who may become involved in UDRP proceedings. The 2011 Workshop will also cover evolving developments in WIPO Center practices and resources, as well as ICANN’s plans for the launch of new gTLDs, topics of interest to parties to a domain dispute as well as trademark holders generally. The Advanced Workshop also represents an opportunity for registrars and ccTLD administrators to increase their knowledge of UDRP decisions.

The faculty will consist of experienced WIPO UDRP panelists, a trademark in-house counsel and senior legal staff of the Center. The Workshop will include practical break-out sessions, followed by discussion between participants and instructors.

If you wish to be informed once further Domain Name Workshop information is available, please send an email to arbiter.meetings@wipo.int indicating your interest.

This WIPO announcement was sourced from:
wipo.int/amc/en/events/workshops/2011/domainname/

The National ccTLD Disputes: Between State Actors and Non-State Actors by Y.J. Park

Since 1985, non-state actors under Jon Postel’s leadership have experimented creating virtual national spaces on the Internet through so-called “ccTLDs. There are 251 ccTLDs on the Internet. In 1998, ICANN – the newly established coordination body for Internet addresses including ccTLDs – stressed out the principle of private sector leadership instead of public sector administration of Internet identifiers. ICANN’s coordination of ccTLDs required state actors to comply with the principle of private sector leadership in a top-down manner.

Since 1985, non-state actors under Jon Postel’s leadership have experimented creating virtual national spaces on the Internet through so-called “country code top level domain names” (ccTLDs). There are 251 ccTLDs on the Internet. In 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) – the newly established coordination body for Internet addresses including ccTLDs – stressed out the principle of private sector leadership instead of public sector administration of Internet identifiers. ICANN’s coordination of ccTLDs required state actors to comply with the principle of private sector leadership in a top-down manner.As of 2009, the question of how to govern ccTLDs is still disputed at the national level between state actors and non-state actors, with state actors starting to reassert their power over ccTLDs, ignoring the principle of private sector leadership recommended by ICANN. This study presents five different national ccTLDs dispute cases, to investigate why national ccTLDs disputes have increased after the establishment of ICANN and how are state actors trying to regain control over ccTLDs.To download and read this article by Y. J. Park in the International Journal of Communications Law and Policy, see:
ijclp.net/files/ijclp_web-doc_10-13-2009.pdf

WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Practices and Precedents

WIPO, Geneva, Switzerland, Tuesday and Wednesday, October 19 and 20, 2010

Overview

The WIPO Arbitration and Mediation Center is internationally recognized as the leading institution in the resolution of Internet domain name disputes. Since December 1999, the Center has administered over 32,000 proceedings, of which over 17,000 under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by ICANN. The UDRP applies to disputes in the generic top-level domains (gTLDs) (e.g., .com, .net, .org, .mobi), as well as an increasing number of ccTLDs

WIPO, Geneva, Switzerland, Tuesday and Wednesday, October 19 and 20, 2010

Overview

The WIPO Arbitration and Mediation Center is internationally recognized as the leading institution in the resolution of Internet domain name disputes. Since December 1999, the Center has administered over 32,000 proceedings, of which over 17,000 under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by ICANN. The UDRP applies to disputes in the generic top-level domains (gTLDs) (e.g., .com, .net, .org, .mobi), as well as an increasing number of ccTLDs.

The UDRP provides holders of trademark rights with an administrative mechanism for the efficient resolution of disputes arising out of the bad-faith registration and use by third parties of Internet domain names corresponding to those trademark rights.

The evolving nature of the domain name registration system (DNS) is causing growing concern for trademark owners around the world, leading to a large number of UDRP cases filed with the Center, and an increasing demand for training in this area. The Workshop will pay particular attention to the numerous developments in relation to UDRP decision precedent and process, including the WIPO-initiated eUDRP.

Faculty

Faculty for this Workshop will consist of experienced WIPO UDRP panelists with extensive domain name expertise, and senior legal staff of the WIPO Arbitration and Mediation Center.

Presentations

bernstein willoughby
David H. Bernstein
Debevoise & Plimpton
New York
USA
Tony Willoughby
Rouse Legal
London
United Kingdom

Breakouts

barbero donahey harris
Luca Barbero
Studio Barbero
Torino
Italy
Scott M. Donahey
Arbitrator and Mediator
Palo Alto
USA
Matthew Harris
Waterfront Partnership Solicitors
London
United Kingdom
lyon towns bettink
Richard Lyon
Spencer Crain Cubbage Healy & McNamara pllc
Dallas
USA
Bill Towns
Novak Druce & Quigg LLP
Houston
USA
Wolter Wefers Bettink
Houthoff Buruma
Amsterdam
the Netherlands

Full profiles are available here.

Program

Through various presentations and exercises, participants in the Workshop will receive information on, inter alia:

  • the Center’s domain name dispute resolution services
  • the legal framework of the UDRP
  • the trends of UDRP decisions with regard to the most important substantive and procedural issues
  • emerging challenges and procedural developments
  • developments in the Domain Name System more generally, including future dispute options

The instructors will introduce selected topics and discuss these with the participants on the basis of UDRP case scenarios. Examples include Geographical Scope and Timing of Trademark, Unregistered Trademark Rights, Personal Names / Geographical Terms, Licensee Rights, Rights Among Corporate Entities, Content of Website, “Sucks Cases”, Internationalized Domain Names, Privacy and other Registrar issues, Parking and Landing Pages, and Consent to Transfer.

Who Should Attend

The target audience for this Workshop includes practitioners who already have some experience with the UDRP through case filing or previous Workshops, as well as those who may become involved in UDRP proceedings. Registrars and ccTLD administrators may also take this opportunity to increase their knowledge of the UDRP process and current issues in the Domain Name System.

Participants will be expected to have a basic understanding of the domain name system in general and the UDRP process in particular. Course material will be provided ahead of the program. Proficiency in English is essential for participation.

Certificate of Participation (including for CLE/CPD)

All participants who complete the program will be awarded a certificate of participation. Those who have applied for Continuing Legal Education (CLE) or Continuing Professional development (CPD) credit will receive a special certificate to this effect.

Practical information

Venue Timetable Language
WIPO Headquarters, Geneva, Switzerland The program will run from 9 a.m. to 6 p.m. on the first day and 9 a.m. to 4 p.m. on the second.  A cocktail will be offered on the first evening English

Registration and Fee

Participation Registration Fee Cancellations How to apply
Participation in the Workshop will be limited to 50 persons 1,400 Swiss francs.  Please refer to the Registration form for a full schedule of fees The registration fee paid to WIPO will be refunded only for cancellations received before October 5, 2010 Through the Registration Form or online

Hotel Accommodation and Other Useful Information

Please click here.

Contact Details

WIPO Arbitration and Mediation Center
World Intellectual Property Organization (WIPO)
34, chemin des Colombettes
1211 Geneva 20, Switzerland
T (41-22) 338 8247 – F (41-22) 338 8337
E arbiter.meetings@wipo.int
W http://www.wipo.int/amc/

Other Workshops Organized by the WIPO Arbitration and Mediation Center

This WIPO announcement was sourced from:

'Fast tracking' domain name and trade mark disputes in Australia

A recent Australian Federal Court ‘Fast Track List’ decision confirmed that use of a trade mark in a domain name, along with use of the trade mark on associated web sites, can constitute trade mark infringement. This list is an increasingly important part of a trade mark owner’s arsenal in dealing with trade mark infringement and misuse of domain names. Continue reading “'Fast tracking' domain name and trade mark disputes in Australia”

‘Fast tracking’ domain name and trade mark disputes in Australia

A recent Australian Federal Court ‘Fast Track List’ decision confirmed that use of a trade mark in a domain name, along with use of the trade mark on associated web sites, can constitute trade mark infringement. This list is an increasingly important part of a trade mark owner’s arsenal in dealing with trade mark infringement and misuse of domain names.

A recent Australian Federal Court ‘Fast Track List’ decision confirmed that use of a trade mark in a domain name, along with use of the trade mark on associated web sites, can constitute trade mark infringement. This list is an increasingly important part of a trade mark owner’s arsenal in dealing with trade mark infringement and misuse of domain names.Partner Tim Golder and Senior Associates Jesse Gleeson and Mark Williams from the Australian law firm Allens Arthur Robinson report on this.How does it affect registrants of .AU domain names?The article examines the following points:

  • It is unlikely that mere registration of a domain name incorporating a trade mark will constitute trade mark use under Australian trade mark law; however, when coupled with use of the trade marks on websites linked to the domain name, the use of the trade mark in the domain name can constitute trade mark use.
  • The meaning of ‘geographical origin’ has been read narrowly. Accordingly, traders who use the name of a building or complex (which is the registered trade mark of a third party) in relation to their own goods or services, may not be able to rely on the ‘geographical origin’ defence to trade mark infringement.
  • The narrow interpretation of ‘generally accepted within the relevant trade’ means that it may now be more difficult to have trade mark registrations cancelled by the court for genericism.
  • This case is an example of how the Fast Track List in the Federal Court can be used to resolve disputes efficiently and pragmatically, and how additional relief can be granted to that available under the Uniform Domain Name Dispute Resolution Procedure (UDRP) and the Australian Uniform Domain Name Dispute Resolution Procedure (auDRP) (which are limited to transferring or cancelling domain name registrations).

To read the full article on the Allens Arthur Robinson website, see:
www.aar.com.au/pubs/ip/foipapr10_01.htm