Tag Archives: Uniform Domain Name Dispute Resolution Policy

Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property, and Restitution by Jacqueline D. Lipton, Case Western Reserve University School of Law

Abstract: The year 2009 marks the tenth anniversary of domain name regulation under the Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP). Adopted to combat cybersquatting, these rules left a confused picture of domain name theory in their wake. Early cybersquatters registered Internet domain names corresponding with other’s trademarks to sell them for a profit. However, this practice was quickly and easily contained. New practices arose in domain name markets, not initially contemplated by the drafters of the ACPA and the UDRP. One example is clickfarming – using domain names to generate revenues from click-on advertisements.

To avoid trademark liability, most clickfarmers and cybersquatters utilize personal names, geographic and cultural indicators, and generic terms as domain names. The application of current regulations to these practices is unclear, largely because of the lack of a coherent policy basis for domain name regulation.

This article develops a new model for domain name regulation. It incorporates trademark policy within a broader theoretical framework incorporating aspects of restitution and property theory. The author suggests that a broader theoretical approach to domain name regulation would facilitate the development of more coherent domain name rules in the future. This discussion is particularly timely in light of the forthcoming implementation of a new generic Top Level Domain (gTLD) application process.

This article by Jacqueline D. Lipton is available for download in full from:

Celebrity in Cyberspace: A Personality Rights Paradigm for Personal Domain Name Disputes by Jacqueline D. Lipton, Case Western Reserve University School of Law

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 individual’s persona in cyberspace.  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 (“UDRP”). This article suggests the creation of a new personal domain name dispute resolution policy (“PDRP”) 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:

ICANN Announces UDRP Policy Implementation Update

ICANN logoICANN announces the implementation of amended rules for the Uniform Domain Name Dispute Resolution Policy (UDRP).


The UDRP is a consensus policy that is applicable to all ICANN-accredited registrars. The updates include:

  1. “Lock” and “pendency” are now defined terms in the UDRP Rules;
  2. UDRP complainants no longer have to transmit a copy of the complaint to the respondent (rule 3(b)(xii));
  3. Rule 4(b) requires registrars to lock the disputed domain name(s) within two (2) business days of receiving a UDRP complaint from a UDRP provider;
  4. Rule 4(e) provides that when a UDRP provider informs the registrar that the UDRP proceeding has been withdrawn or dismissed, the registrar must remove the lock within one (1) business day of receiving notice;
  5. Rule 5(b) provides that respondents may request an additional four (4) calendar days to respond to a complaint and UDRP providers will automatically grant the extension, if requested;
  6. Rule 16(a) provides that registrars must notify the parties, the provider and ICANN of the date for implementation of the decision within three (3) business days of receiving the decision from the provider;
  7. Rule 17 outlines a new procedure to be used in cases that are settled between parties outside the UDRP case.

These amendments to the UDRP rules were designed to reduce the risk of cyberflight during a UDRP proceeding.

A link to a redline version of the amended UDRP Rules can be found here: http://www.icann.org/en/system/files/files/udrp-rules-redline-24sep14-en.pdf [PDF, 204 KB]


On 23 September 2013, the ICANN Board adopted the GNSO Council Policy Recommendations on the Locking of a Domain Name subject to UDRP Proceedings as set forth in the Final Report (see http://gnso.icann.org/en/issues/locking/domain-name-final-05jul13-en.pdf [PDF, 1.01 MB]).

The Generic Names Supporting Organization (GNSO) unanimously approved at its meeting on 1 August 2013 the recommendations of the Locking of a Domain Name subject to UDRP Proceedings PDP Working Group. The 17 recommendations are intended to clarify and standardize the process for locking of a domain name subject to UDRP Proceedings, including:

  • Definition of “locking”
  • Requiring registrar to apply lock within 2 business days following request for verification
  • Removing obligation for complainant to notify the respondent at the time of filing, but add automatic extension of 4 days to response time upon request
  • Step by step clarification of requirements of different parties involved
  • Development of educational and informational materials to assist in informing affected parties of new requirements and recommended best practices

Following ICANN Board approval, an Implementation Review Team (“IRT“), comprised of GNSO Working Group members, was convened and worked with ICANN staff in drafting the amended UDRP Rules. ICANN staff held regular meetings with the IRT to ensure that the recommendations were implemented in accordance with the Working Group’s intent.

Effective Date

These new requirements will take effect and will be enforced by ICANN as of 31 July 2015. All ICANN-accredited registrars are required to comply by this date.

This ICANN announcement was sourced from:

The Prevention of Cybersquatting in Europe: Diverging Approaches and Prospects for Harmonization by Ventsislav Pantov [MIPLC Master Thesis Series]

Social Science Research Network logoAbstract: This thesis examines the phenomenon of cybersquatting, its nature and development and the means employed against it in the European continent.

The analysis shows that there is a myriad of approaches in combating cybersquatting. First, many systems of domain name dispute resolution exist, both private and official. Most of the Alternative Dispute Resolution (ADR) systems that have been adopted largely rest on the Uniform Domain Name Dispute Resolution Policy (UDRP) which is already established and has gained a track record. Some jurisdictions have adopted the UDRP completely in spite of its narrow scope. Others have preferred to extend the range of distinguishing signs protected and have adopted extended versions of UDRP. A third group of countries has developed their own sui generis ADRs that are unconnected to the UDRP. The most distinctive characteristic of all ADR examples analyzed is the availability of twofold procedure due to their “open ended” nature. Meanwhile, some jurisdictions have adopted classic arbitration procedures for their domain name disputes which result in final judgments with res judicata effect.

As regards substantive grounds of claim there is also a large variety of approaches. Notably, most of the European countries prefer to extract the bases of anticybersquatting claims from general laws regarding trademarks, unfair completion, passing off, personal and trade name protection. This paper demonstrates that in some cases the traditional legal measures turn out to be insufficient for the challenges of the Internet, which leads to unsatisfactory jurisprudential solutions. In this regard, the cybersquatting activities taking the shape of blocking registrations cause problems for the courts either in establishing “use in commerce” in the trademark context, or misrepresentation in the circumstances of a passing off action. Another tension is observed in the field of clashes between competing rights such as trademarks and personal and trade names, which due to the lack of clear rules results in uncertainty.

Few jurisdictions (e.g. Belgium, Finland, France and Denmark) considered the issue significant enough to enact tailor-made anticybersquatting legislation. The enactment of an anticybersquatting act solves to a great extent the problems caused by the attempts to adapt traditional legal principles, without prejudice to their subsidiary application. Thus, the available examples of special anticybersquatting legislation originating from Belgium and Finland combined with some solutions borrowed from the U.S. Anticybersquatting Consumer Protection Act form the basis of a proposal for enactment of an instrument harmonizing anticybersquatting law in Europe. This process is also conceivable, given the fact that the .eu domain names related disputes are already uniformly managed on an EU level by a Commission Regulation, which also provides some useful examples. Finally, some potential obstacles on the way of harmonization as well as some arguments against it are also considered.

This abstract was sourced, and the article is available to download in full, from:

.PW First TLD To Adopt Uniform Rapid Suspension Rights Protection Mechanism

Professional Web logo[news release] The .pw Registry is pleased to announce its adoption of ICANN’s latest rights protection mechanism, the Uniform Rapid Suspension (URS). By doing so, the .pw Registry becomes the first TLD to adopt the newest rights protection mechanism from ICANN. Sandeep Ramchandani, Business Head – .pw Registry said, “Proactive abuse mitigation is one of our primary tenets. URS offers brand owners a highly effective, quick and inexpensive mechanism to eliminate names that violate their trademarks. We are glad to be leading from the front by becoming the first extension globally to adopt it.”

The URS seeks to provide trademark holders with faster protection against infringement than the existing Uniform Domain Name Dispute Resolution Policy (UDRP). While the UDRP, a more expensive and long process, awards ownership of a domain to the winner of a dispute, the URS ensures faster protection by immediately suspending the infringing domain and then proceeding to a trial. The URS also discourages infringement and wrongful cases by charging trial fees from the unsuccessful applicant.

Kristine Dorrain, Director of Internet and IP Services, National Arbitration Forum (NAF) commented, “The National Arbitration Forum is pleased that .pw Registry has selected the URS as one of its dispute resolution options. Currently, .pw Registry is the first and only voluntary adopter of URS, in advance of the new gTLD program. The adoption of URS, in addition to UDRP, demonstrates .pw Registry’s commitment to protecting the .pw domain name space from cybersquatting activity.”

Mr. Ramchandani added, “The URS is a compulsory feature for all new gTLDs and our advance implementation will give NAF, brand owners, registries, registrars and ICANN an opportunity to test its effectiveness in a live environment. One of our goals in the adoption of URS is also to help the community by ensuring a more refined and predictable experience when the URS roll-out takes place across more than a thousand new gTLDs. To that end, we will be sharing our implementation lessons and best practices with the community in addition to opening a communication channel to relay policy related feedback to ICANN and NAF.”

For information on the URS and how to file a URS complaint, please click here

About .pw – the Professional Web:
.pw – the Professional Web, is a TLD that has been opened globally to create a dedicated namespace for professionals and businesses to set up an online presence, with a first choice domain name at an affordable price point. The .PW is offered by 100+ accredited Registrars across the globe. For more information, please visit registry.pw

This .pw news release was sourced from:

On the Duality of Internet Domain Names: Propertization and its Discontents by Frederick M. Abbott

Abstract: Domain names may have substantial economic or social value. They are often the object of dispute, whether based on allegations of abuse, or in contests over ownership. There is a recent judicial trend, particularly in the Court of Appeals for the Ninth Circuit, toward characterizing domain names as “property” (and more specifically, “intangible property”) subject to rules of sale and transfer typical of personal property. This judicial characterization identifies “alienability” as a fundamental characteristic of domain names. This sets up a real or potential conflict with jurisdictions or forums where domain names have been judicially or administratively characterized as “contract rights” based on the legal relationship between the domain name registrant and the registrar.

Pursuant to the contract rights characterization, sales and transfers of domain names are subject to rules flowing from ICANN that govern the relationship among registries, registrars and registrants, and prescribe certain representations and warranties in connection with sales and transfers. This includes subjecting domain name registrants to alternative dispute settlement under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Several recent decisions among Ninth Circuit courts applying the federal Anticybersquatting Consumer Protection Act (ACPA), on one side, and administrative panels applying the UDRP, on the other, call attention to the possibility for different dispute settlement outcomes depending on whether domain names are treated as freely alienable property or contract rights incorporating various obligations on transferors and transferees.

In this article, the author, an experienced administrative panelist for the WIPO Arbitration and Mediation Center, analyzes the legal bases used to characterize Internet domain names, and suggests that it may not be necessary to draw a line between “intangible property” and “contract rights”. Domain names may be treated as both. There is nothing unique about attaching conditions to the transfer of intangible property. For example, US law that authorizes assignment and transfer of trademarks conditions the transfer on associating the goodwill of the business. Similarly, domain names in transfer may be treated as intangible property conditioned with contract representations and warranties made pursuant to ICANN rules.

The UDRP provides for flexible assessment of the rights and legitimate interests of domain name registrants. These rules have allowed UDRP panels to consider the circumstances prevailing when a domain name transfer takes place, whether between related or unrelated parties, and this type of flexibility should appropriately take account of rights of transferors and transferees. Given the different contexts in which the UDRP and ACPA were adopted, and in which they are implemented, it should be expected that jurisprudential conflicts will from time to time arise and require attention. This article calls attention to one such conflict and proposes to resolve it through recognition that the legal character of the domain name need not be limited to a single class of subject matter.

To download this paper, to be published in a forthcoming edition of the N.Y.U. Journal of Intellectual Property and Entertainment Law, go to:

ICANN: Uniform Rapid Suspension Procedure and Rules

ICANN new generic Top Level Domains logoAn updated version of the Uniform Rapid Suspension System (URS) Procedure [PDF, 168 KB] and the URS Rules are now available for download.

The URS is one of several new Rights Protection Mechanisms available in the New gTLD Program. It complements the existing UDRP by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement.

The URS Procedure defines the URS claims process. The Rules will help service providers implement URS in a consistent manner.

Since the last URS Procedure was posted on 4 June 2012, minor revisions have been made in the present rather than future tense. Other revisions clarify and simplify some provisions as well as make minor typographical corrections. Also, a set of Rules [PDF, 82 KB] has been developed and added, similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) rules, to provide guidance on all aspects of the URS proceedings.

In addition to the Rules posted by ICANN, each URS service provider is expected to produce supplemental rules to help standardize conduct for that provider’s interactions with complainants and respondents, but that are not inconsistent with the Procedure or the Rules.

The URS was developed by the community, for the community and is another testament to the multistakeholder model.

Download the URS Procedure [PDF, 168 KB] and Rules [PDF, 82 KB].

Learn more about Uniform Rapid Suspension.

This ICANN announcement was sourced from:

Daily Wrap: Christians Oppose Sex (gTLDs), .RADIO Conflicts And IOC’s Amazing UDRP Success

One of the four applicants for the .RADIO gTLD, BRS Media, is claiming “ICANN’s Governmental Advisory Committee has a ‘direct conflict of interest’ over the gTLD,” reports Domain Incite. The issue comes about from another applicant, the European Broadcasting Union, having observer status at the GAC.

It is well known that many Christians publicly oppose anything to do with sex, and this opposition has transferred to the new gTLD arena with Domain Incite reporting “Morality In Media, one of the groups that fought the approval of .xxx for years, has launched a letter-writing campaign against the proposed .sex, .porn and .adult top-level domains.” The complaints, so far anyway, are only against gTLDs ICM Registry has applied for. But there are two .SEX applications – the second is from Internet Marketing Solutions Limited, while there is also an application for .SEXY.

The International Olympic Committee has been busy not only preparing for the London Olympics in a few weeks, but also “for domain owners, and anyone else, who uses a word or phrase that could be construed as being sponsored by the IOC or any of its affiliates,” notes Dan Duval, one of Sedo’s legal staff.

“Decisions dealing with the 2012 Olympics have shown that World Intellectual Property Organization (WIPO) panels are willing to broaden their interpretation of the Uniform Domain-Name Dispute Resolution Policy (UDRP) beyond traditional trademark rights, especially when dealing with domains containing any word that could be associated with the Olympics,” continues Duval.

Success by the IOC included “a WIPO panel forced the transfer of mylondon2012.com to the London Organizing Committee for the Olympic Games (LOCOG). The owner registered the domain in 2005, the same day the IOC announced the location of the 2012 Summer Olympics.”

The article concludes suggesting registrants “steer clear of domains containing words or combinations of words that could result in the forced transfer of such domains to the IOC, as with a domain as seemingly harmless as mylondon2012.com.”

The Paris based registry start-up Starting Dot submitted five applications for community-based new gTLDs as part of ICANN’s new gTLD programme. The TLDs are .ARCHI, .BIO, .SKI, .DESIGN and .IMMO and will use the registry system of the German based provider KSregistry GmbH as technical framework. Starting Dot is a new registry managing a portfolio of new industry-related TLDs that was founded in Paris in October 2011.

Unsuccessful harvest for the Champagne domain by David Taylor and Jane Seager, Hogan Lovells

Hogan Lovells logoJane Seager imageThe Comité Interprofessionnel du Vin de Champagne (CIVC, the representative body of French Champagne producers), a body established by statute under the laws of France, recently lost a Complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organization (WIPO). The Complaint concerned the domain name <champagne.co> (the Domain Name), and was denied on the grounds that the CIVC (the Complainant) failed to prove that the Domain Name was identical or confusingly similar to a trade mark or service mark in which it had rights as per Paragraph 4(a)(i) of the UDRP.

As reported in the February 2010 issue of Anchovy News, the UDRP was adopted by .CO Internet S.A.S. (the entity responsible for the .CO extension opened for general registration on 20 July 2010) for the settlement of disputes relating to .CO domain names. Whilst .CO is in fact the country code Top Level Domain (ccTLD) for Colombia, it has been widely marketed as a new “generic” extension that may be used as an alternative to .COM and could potentially stand for company, corporation, commerce, communities, content etc. As a result of this registrations under .CO have proved popular.
David Taylor image
The Respondent in the case at hand was a Steven Vickers, based in the UK, who operated an IT consultancy and computer sales business in London, and did not trade in champagne or beverages of any kind. The Respondent registered the Domain Name on 21 July 2010. The Complainant, whose statutory purpose includes defending, preserving and promoting the interests of all those involved in the production and marketing of the wines sold under the appellation of origin “Champagne”, filed a Complaint with WIPO on 12 April 2011 seeking transfer of the Domain Name.

To be successful under the UDRP, a complainant has the burden of proving that:

  • The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

The term “rights” under Paragraph 4(a)(i) of the UDRP refers to a trade mark or service mark which can either be registered or unregistered. As it did not provide any evidence of a registered trade mark in the term CHAMPAGNE, the Complainant tried to establish rights for the purpose of paragraph 4(a)(i) of the UDRP by other means, but ultimately failed to do so.

Firstly, the Complainant sought to establish its rights to meet the first requirement of the UDRP by relying on its rights in the term CHAMPAGNE as an appellation of origin under French law and a geographical identifier under European Union law. The Panel highlighted that it was well established that such rights should remain outside the scope of the UDRP, in line with comments made in Paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The only exception to this principle is where a complainant shows “that it has rights in the term and that the term is being used as a trade mark for goods or services other than those that are described by or related to the geographical meaning of the term (secondary meaning)”.

As the Panel explained, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings in order to constitute a trade mark. Therefore, a geographical indication such as “Champagne” did not constitute a trade mark in the Panel’s opinion since it did not distinguish the wine of one champagne producer from the wine of another. The Panel highlighted the purpose of a geographical identification which is to protect specific producers of a geographical region from loss caused by traders wrongfully applying the identifier to goods which have not been produced in the particular region, taking profit from the goodwill arising out of the reputation which the producers of the protected products have built up.

Secondly, the Panel rejected the Complainant’s argument that it had unregistered rights in a mark as a result of succeeding in passing off actions before courts in the UK. Referring to the Nominet Appeal Decision in relation to the domain name <champagne.co.uk> the Panel highlighted that “(…) care needs to be taken not to equate this right under the law of passing off to what is sometimes referred to as “unregistered trade mark” rights in a brand name.” (DRS 4479, Comité Interprofessionnel du Vin de Champagne v Steven Terence Jackson, 17 August 2007). In this Nominet case the Complainant was successful as it established that it had rights in the term CHAMPAGNE protected under English law. However there was no finding in this decision that the Complainant had unregistered trade mark rights, as required by the UDRP.

To support his finding, the Panel also referred to Dr David Lindsay’s text book on International Domain Name Law:

“A common law trademark in an English-oriented legal system is an unregistered mark the unauthorized use of which will give rise to an action for passing off.

It is not every action in passing off that will amount to common law trademark rights, but only the sub-set of the action for passing off that involves misrepresentations arising from the unauthorized use of a mark.”

Thus, the Panel rejected this argument as well and found that it could not serve to satisfy the first requirement of the UDRP.

In addition, the Panel stated that the fact that the Complainant had succeeded in having “champagne-related” domain names transferred to it under other administrative proceedings in relation to the domain names <champagne.co.uk>, <champagne.ie>, champagnes.fr> and <champagnes.be> was irrelevant. Indeed, alternative dispute resolution procedures applicable to domain names registered under .FR, .BE, .CO.UK and .IE are different from the UDRP and grant protection to a wider variety of names.

Then, although the Panel had no obligation to make any finding on the issue of whether the Domain Name had been registered and used in bad faith, it nevertheless decided to detail this particular point. The Panel found that the sole fact of having the intention to rent, sell or otherwise transfer the Domain Name to a third party, as opposed to the Complainant or to a competitor of the Complainant, did not amount to bad faith registration and use for the purpose of the UDRP.

Finally, the Panel rejected the Respondent’s claim that this case was one of reverse domain name hijacking. As the Panel stated, under the UDRP, “reverse domain name hijacking” is defined as “using the policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. The Respondent had contended that since the Complainant was a complex and legally represented organisation, it could not possibly have thought that it had sufficient grounds for winning this case. To the Respondent, the deficiencies in the Complaint made it obvious that the Complainant knew that the Complaint would be denied.

However, in previous WIPO cases, nominated Panels had noted that “mere lack of success of the complaint is not in itself sufficient to constitute reverse domain name hijacking”. In fact the Respondent would have had to prove that “a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith”, and that “a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”.

In the present case, the Panel was of the opinion that since the Complainant had been involved in many such disputes concerning its intellectual property rights in the name “champagne”, it must clearly have appreciated whether or not it detained a trade mark or service mark in such expression, but even so there were defects in the Complainant’s case. The Panel then underlined the difficulties of having to decide whether such defects were as a result of bad faith, or whether they were simply due to a wrongful appreciation of the issues and of the relevant evidence. The Panel chose to swing the balance in favour of the latter, after listing a series of reasons as to why the Complainant could not have acted in bad faith. The most relevant reason for the Complainant’s lack of bad faith was linked to the fact that if the Complainant had managed to establish that it did have a trade mark or service mark, it would have been very difficult for the Respondent to prove that it registered the Domain Name for another purpose other than to sell it to the Complainant, and in such a scenario the Complainant’s chances of success would have then been real.

This decision illustrates how the concept of “rights” under Paragraph 4(a)(i) of the UDRP is not a loose concept and will be subject to close examination by panels. Many alternative dispute resolution procedures applicable to ccTLDs grant protection to a wide variety of names such as personal names, company names or geographical identifiers. However, the UDRP does not and is limited to trade or service marks for which there is greater harmonisation than for other types of rights. Trying to make other types of protected names fit into the UDRP is like trying to fit a square peg in a round hole and will likely result in rejection of a potential complaint.

The decision is available at: www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2011-0026

This Anchovy News article by by David Taylor and Jane Seager from law firm Hogan Lovells was reproduced with permission.

WIPO Advanced Workshop on Domain Name Dispute Resolution: Overview of Precedent and Practice

WIPO logoThe WIPO Arbitration and Mediation Centre is holding a workshop that will focus on the numerous developments in relation to UDRP decision precedent and process, including the 2011-launched WIPO Overview of WIPO Panel Views on Selected UDRP Questions at WIPO’s headquarters in Geneva, Switzerland on Tuesday and Wednesday, 11 and 12 October, 2011.

WIPO has expressed fears the new generic top-level domain (gTLD) process will lead to a dramatic increase in domain name disputes, and while this seminar will no doubt be an avenue for WIPO to reinforce their fears as well as the UDRP developments.

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

  • the WIPO Centre’s domain name dispute resolution services
  • the legal framework of the UDRP
  • with focus on the WIPO Overview 2.0, the trends of UDRP decisions on the most important substantive and procedural issues
  • emerging challenges and procedural developments
  • developments in the Domain Name System more generally, including future dispute options.

Using the WIPO Overview 2.0 as principal guide, 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, Gripe Sites, Internationalised Domain Names, Disclaimed or Design Elements in Trademarks, Privacy and other Registrar issues, Parking and Landing Pages, Wilful Blindness, the Conjunctive Requirements, the Role of Precedent, Laches, Consolidation and Reverse Domain Name Hijacking.

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.

WIPO is internationally recognised as the leading institution in the resolution of Internet domain name disputes. Since December 1999, the WIPO Centre has administered over 36,000 proceedings, of which over 20,000 under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by ICANN. The UDRP applies to disputes in gTLDs, as well as an increasing number of country code top-level domains (ccTLDs).

Presentations will be given by David H. Bernstein from Debevoise & Plimpton in New York and Tony Willoughby from Rouse Legal in London.

There will also be breakouts led by Luca Barbero (Studio Barbero, Torino, Italy), Scott M. Donahey (Arbitrator and Mediator, Palo Alto, USA), Matthew Harris (Waterfront Partnership Solicitors, London), Richard Lyonm (Spencer Crain Cubbage Healy & McNamara, Dallas, USA), Bill Towns (Novak Druce & Quigg LLP, Houston, USA) and Wolter Wefers Bettink (Houthoff Buruma, Amsterdam).

Registration costs 1,400 Swiss francs and participation will be limited to 50 people. For more information see www.wipo.int/amc/en/events/workshops/2011/domainname.