WIPO Archives - Page 4 of 4 - Goldstein Report

Domain name disputes: the UDRP 10 years on by Tony Willoughby

Legal context: Domain name disputes now form a significant practice area for IP lawyers. However, they rarely merit the expense of litigation. The favoured route to resolution of these disputes tends to be the Alternative Dispute Resolution (ADR) policies for the various domains, the most used of which is the Uniform Domain Name Dispute Resolution Policy (UDRP), which celebrates its 10th anniversary this year (2009).

Legal context: Domain name disputes now form a significant practice area for IP lawyers. However, they rarely merit the expense of litigation. The favoured route to resolution of these disputes tends to be the Alternative Dispute Resolution (ADR) policies for the various domains, the most used of which is the Uniform Domain Name Dispute Resolution Policy (UDRP), which celebrates its 10th anniversary this year (2009).Key points: Complaints launched under the UDRP are decided by independent panellists selected from lists held by the various UDRP service providers, one of which is the World Intellectual Property Organization. The panellists are mainly trade mark lawyers. They come from all over the world. That fact combined with the fact that there is no system of binding precedent under the UDRP means that there is scope for divergence of view among panellists. Of late, panellists have been demonstrating potentially significant divergence of views in relation to the practices of domainers (ie entities whose business is the commercial exploitation of domain names). This article celebrates the success of the UDRP over the last 10 years, but highlights the need for consensus among panellists if the UDRP is to maintain its usefulness in the face of these new domainer practices and principally the automated bulk transfer and commercialisation of domain names.Practical significance: If some route to consensus is not found (by amendment to the UDRP or otherwise), there is a risk that the outcome of disputes involving domainers as respondents will become something of a lottery, leading to a reduced willingness on the part of rights owners to rely on an otherwise cheap and effective form of ADR.To download this research in paper by Tony Willoughby in the Journal of Intellectual Property Law & Practice in full, see:
jiplp.oxfordjournals.org/cgi/content/abstract/4/10/714

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 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


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

Breakouts


Luca Barbero Studio Barbero Torino Italy	Scott M. Donahey Arbitrator and Mediator Palo Alto USA	Matthew Harris Waterfront Partnership Solicitors London United Kingdom

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, âSucks Casesâ, 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.Â 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.Â 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

WIPO Arbitration Workshop
October 21 and 22, 2010
WIPO Workshop for Mediators in Intellectual Property Disputes
May 30 and 31, 2011

This WIPO announcement was sourced from:

wipo.int/amc/en/events/workshops/2010/domainname/

The Menace of Cybersquatting!

by Rodney D. Ryder & Ashwin Madhavan [The Icfai University Journal of Intellectual Property Rights]

Abstract: The advent of technologies has brought many complexities. The World Wide Web and domain names are the contributions of technological development during the recent past. The new tech-inventions have resulted in various issues of the intellectual property rights and their protection. The relations between the domain name and copyrights on one hand and the trademarks on the other, are well envisaged and an opinion is cropping up whether the use of marks in the name and style of domain names are diluting the trademarks

by Rodney D. Ryder & Ashwin Madhavan [The Icfai University Journal of Intellectual Property Rights]

The World Wide Web or the cyberspace is becoming a platform for squatting activities resulting in loss to the copyright and trademark owners. Though the World Intellectual Property Organization (WIPO) and Internet Corporation for Assigned Names and Numbers (ICANN) are trying to resolve the related disputes, they are not able to avert the squatting and provide required protection.

To download this paper by by Rodney D. Ryder & Ashwin Madhavan, originally published in The Icfai University Journal of Intellectual Property Rights, see:
ssrn.com/abstract=1410502

Disputed Domains Heard By WIPO Increases 18% in 2009

In 2009, the number of disputed domain names arbitrated by WIPO jumped for the third consecutive year, jumping by 18.5 per cent to 4,688 from 3,958 in 2008. This compares to an increase in domain registrations of eight percent over the same period to 192 million from 177 million in 2008.However there was a decrease in domain name disputes heard by WIPO’s (World Intellectual Property Organization) dispute resolution services, with the number heard decreasing from 2,329 to 2,107.Since the UDRP’s launch in December 1999, the WIPO Arbitration and Mediation Center (the Center) has received more than 17,000 UDRP-based cases. A total of some 31,000 domain names covering both generic and country code Top Level Domains (gTLDs and ccTLDs) have been handled by WIPO.WIPO also expressed concerns on the possibility of an increase in domain disputes with the introduction of new generic Top Level Domains, claiming “the associated potential for trademark abuse is a serious concern for brand owners and users. There are also concerns that this move will inhibit the development of an innovative Domain Name System that minimizes consumer confusion.”However the minimal number of domain names disputed in the new gTLDs already introduced would seem to contradict their concerns. There were 33 disputed .MOBI domain names making up 0.77 per cent of all disputed domain names in the gTLDs. For .BIZ there were eleven disputed domain names (0.70%), .PRO (11 or 0.26%), .ASIA,.NAME, .TEL (each with 6 or 0.14%) and .TRAVEL (4 or 0.09%).This compares to the number of disputed country code Top Level Domains that were disputed, rising to 14.4 per cent of all disputed domains in 2009 from 13.7 per cent in 2008. In 2000 they made up 0.9 per cent of all cases and in 2005 6.5 per cent. This is partly a result of WIPO hearing disputes for more ccTLDs, adding six more in 2009.One of the most popular sectors for disputed domain names was sport, with football/soccer featuring strongly in WIPO’s caseload including the upcoming World Cup. English Premier League teams Fulham, Liverpool, Manchester United, Tottenham and West Ham brought a consolidated action against a single respondent engaged in selling tickets via domain names which included their respective club names. The decision established an important precedent about whether and when WIPO complainants are entitled to bring a consolidated complaint against a respondent. Other football related complaints were filed on behalf of the South African Football Association, AC Milan, and Manchester City FC.The top five areas of complainant activity were biotechnology and pharmaceuticals, banking and finance, Internet and IT, retail, and food, beverages and restaurants, all accounting for more than seven per cent of all complaints. As in past years, pharmaceutical manufacturers brought the largest number of cases due to permutations of protected names on web sites offering or linking to online sales of medications. The WIPO Center’s caseload in 2009 covered a wide range of business and public interest sectors.”The UDRP has proven to be a pioneering and globally applicable low-cost alternative to court litigation. It offers a practical solution to the abusive registration of trademarks as domain names, a very real issue where the practical effect, legal status and desired outcome are normally not confined to any particular location,” said WIPO Director General Francis Gurry.”Another key element of the UDRP’s popularity is the straightforward enforcement of panel decisions, without need for further judicial intervention, although this still remains an option. The UDRP can provide inspiration for alternative self-regulation in areas of commerce and other human activity that cross jurisdictional borders,” said Mr. Gurry. He noted, in particular, the relevance of a UDRP-type approach to resolving disputes arising from a range of uses of identity on the Internet, such as on social networking sites, auction platforms and in search engines.Parties based in 114 countries were named in WIPO cases in 2009, up 10% on the previous year, reflecting the global reach of cybersquatting and WIPO’s services. In 2009, the Inter-Continental Hotel Group filed the largest UDRP dispute on record, involving 1,542 domain names in a single WIPO case.Cases in 2009 were handled by 310 WIPO panellists from 46 countries. Although down 2% from 2008, English remained the most common language for WIPO proceedings (84%), largely because the majority of domain names involved were registered with US-based registrars.Cases were also processed in 13 other languages, including (in order of frequency) Spanish, French, Dutch, German, Chinese, Italian, Japanese, Korean, Swedish, Polish, Portuguese, Romanian, and Turkish. The character set of the disputed domain names themselves remained overwhelmingly ASCII (English alphabet), with a small number of domain names in Chinese, Danish, French, German, Turkish and Spanish.The United States of America (USA), France, the United Kingdom (UK), Germany, Switzerland and Spain remained the most frequent bases for complainants through 2009. The USA, UK, China, Canada, Spain, and the Republic of Korea were cited most frequently as respondents in alleged cybersquatting cases.Among Top Level Domains, the .com gTLD remained the solid leader in terms of the number of domain names featuring in WIPO cases (87%).Almost 24% of all cases filed in 2009 were settled prior to a panel decision. Of the remainder, 87% of the panel decisions ordered the transfer of the domain name(s) to the complainant (or cancellation of the name), and 13% denied the complaints, leaving the names in the possession of the registration holder.For more information including tables and graphs that go with the WIPO report, see:
www.wipo.int/pressroom/en/articles/2010/article_0007.html

WIPO Launches Paperless UDRP Proceedings

From Monday, December 14, 2009, the WIPO Arbitration and Mediation Center will launch essentially paperless UDRP procedures.Â This removes the requirement for mandatory filing and notification of paper pleadings in WIPO cases filed under the Uniform Domain Name Dispute Resolution Policy (UDRP).

This latest development of the UDRP is expected to substantially improve the efficiency of the mechanism by reducing the time and cost involved in submitting WIPO UDRP filings and to save up to one million pages of paper filed per year making it a greener and largely paperless procedure.Â While this leaner, more efficient procedure will become mandatory from March 1, 2010, ICANN in an announcement dated December 7, 2009, has signaled that UDRP providers may begin accepting electronic filings with immediate effect as long parties also have the option of submitting hard copies.

The modified Rules arose from a WIPO Center proposal made to ICANN in December 2008.Â Following an ICANN public comment process on the proposal in August 2009 which reflected broad support from UDRP stakeholders, an amendment package was submitted by WIPO to ICANN in September 2009.Â These modifications to the Rules governing the UDRP were approved by the ICANN Board at its Seoul meeting on October 30, 2009 with an implementation process subsequently announced by ICANN on December 7, 2009.

In line with ICANNâs announcement the WIPO Center will, from Monday December 14, 2009, allow all parties in UDRP cases administered by WIPO to submit electronic-only filings, using email.Â Those parties who elect to do so may be further guided by the modified WIPO Supplemental Rules, which have been slightly revised for this specific purpose (as pre-published with the WIPO amendment package sent to ICANN in September 2009).

The modified WIPO Supplemental Rules contain guidance on formatting modalities for electronic-only filing of UDRP cases.Â Parties who do not yet wish to use the new paperless option remain guided by the existing WIPO Supplemental Rules;Â such parties may continue to file in hard copy until February 28, 2010.Â The newly modified UDRP Rules continue to contain safeguards to ensure fair and effective notification of the complaint to the respondent.

Additional information about the new procedure, including modified filing guidelines, model pleadings for both parties and FAQs will be available on the website of the WIPO Center.

This WIPO news release was sourced from:
www.wipo.int/pressroom/en/articles/2009/article_0057.html

New UDRP Rules – Implementation Process and Paperless Filing at WIPO: What You Need To Know

On October 30, 2009, the Internet Corporation for Assigned Names and Numbers (ICANN) Board approved WIPOâs proposal to amend the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) to allow for electronic-only filing of pleadings under the Uniform Domain Name Dispute Resolution Policy (UDRP)

On December 7, 2009, ICANN announced a phased implementation procedure for the modified Rules.

The modified Rules become mandatory on March 1, 2010, and prior to that, provision is made for the optional filing of UDRP pleadings in electronic-format by email and notification in accordance with the new Written Notice provisions in the modified Rules. The WIPO Center will be inviting such filings and commencing use of the Written Notice provisions as of December 14, 2009. Parties who elect not to make use of this new WIPO facility may continue to file pleadings in hard copy up until February 28, 2010.

The modified version of the Rules, along with the WIPO Centerâs new WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules), and the leaner filing and notification facility offered by WIPO during the transition phase, includes procedural modification of benefit to both Parties to a WIPO UDRP proceeding. These are expected to include time and cost saving for both Parties in preparing and submitting pleadings, and continuing safeguards for fair notice of the dispute to Respondents (including WIPOâs obligation as a UDRP Provider to send the Respondent the full Complaint including all annexes by email on Notification of the proceedings, along with sending Written Notice of the dispute to the Respondentâs available postal information, and also by fax).

Below are answers to some frequently asked questions regarding these changes and what they may mean for Parties filing UDRP pleadings with the WIPO Center.

Should you need additional procedural information, please do not hesitate to write to or contact the WIPO Center directly at arbiter.mail@wipo.int or by phone at +41 22 338 8247.

Can I file my UDRP Complaint or Response including all annexes with WIPO solely in electronic format?

Yes. As of December 14, 2009, you will be able to file your Complaint or Response (including all applicable annexes) in electronic format only. This can be done by simply submitting to the WIPO Center at domain.disputes@wipo.int. Relevant guidance on format modalities can be found in the modified WIPO Supplemental Rules at Annex E. As of March 1, 2010, you will be required to file all pleadings in electronic format only, in accordance with the modified Rules.

Can I still file a UDRP Complaint or Response with WIPO in hard copy?

Yes, until February 28, 2009. The WIPO Center will continue to allow Parties to file hard copy pleadings until February 28, 2010, as provided for in the ICANN announcement.

Does filing my UDRP Complaint or Response in electronic format with WIPO mean that I no longer have to ship multiple sets of hard copies?

Yes. The modified Rules remove the requirement for paper pleadings, and from December 14, 2009, either Party to a WIPO UDRP proceeding may elect to file their Complaint or Response (as well as any other substantive documents which may be required in accordance with paragraph 12 of the Rules) in electronic-only format (e.g. â by email).

Will I have to file my WIPO UDRP Complaint or Response in electronic format from March 1, 2010?

Yes. From March 1, 2010, the modified Rules and modified WIPO Supplemental Rules become mandatory, and all WIPO UDRP proceedings will need to be filed and administered under the modified Rules from that date. This means that Complaints and Responses filed with WIPO on or after March 1, 2010 will need to be submitted electronically including all annexes. The relevant file format and size guidelines for the filing of electronic pleadings and annexes can be found in Annex E to the modified WIPO Supplemental Rules.

What is the (recommended) file size for one email communications according to the modified WIPO Supplemental Rules?

10 MB. Other than by prior arrangement with the WIPO Center, the size of any email communication (including attachments) transmitted to the WPO Center in connection with any UDRP proceeding should be no larger than 10 MB (ten megabytes). When larger amounts of data need to be transmitted the files can be âsplitâ across more than one email communication.

What is the (recommended) size modality for individual files?

10 MB. Other than by prior arrangement with the WIPO Center, the size of any individual file (such as a document in Word, PDF or Excel format) transmitted to the WIPO Center in connection with any UDRP proceeding should itself be no larger than 10 MB (ten megabytes). When larger amounts of data need to be transmitted, larger files can be âsplitâ into a number of separate files or documents each no larger than 10 MB.

What is the (recommended) total file size modality in UDRP cases?

10 MB. The total size of one pleading (including any annexes) filed in relation to a UDRP dispute should not exceed 50 MB (fifty megabytes), other than in exceptional circumstances (including in the case of pleadings concerning a large number of disputed domain names) where previously arranged with the WIPO Center.

I have been named as a Respondent in a WIPO UDRP proceeding being administered under the new facility â does that mean that I will receive full copies of the Complaint filed under the modified Rules more quickly?

Yes, it should. The WIPO Center will send electronic copies by email of Complaints along with complete sets of annexes to Respondents in all cases upon the formal Notification of Complaint and Commencement of Administrative Proceedings. This should enable Respondents to begin the preparation of their Response immediately, as they will have access to all of the relevant pleadings on the day of formal notification.

Will I, as a Respondent, receive notice of the WIPO UDRP proceeding to my physical address?

Yes . The WIPO Center will also send, in accordance with paragraph 2(a)(i) of the modified Rules, Written Notice of the Complaint filed with WIPO to available physical addresses for the Respondent, including those provided in the publicly-available WhoIs records, directly by the Respondent, and/or by Complainant in its Complaint.

Can I as a Respondent provide an additional email address to which I want the Complaint filed with WIPO and annexes to be sent?

Yes. The Written Notice document will provide the Respondent with procedural guidance on how to file its Response, and will invite the Respondent to provide the WIPO Center with any additional email addresses (if any) to which the Respondent would like a copy of the complete Complaint to be sent.

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