Tag Archives: World Intellectual Property Organization

WIPO to ICANN: On URS “Summits”, It’s Our Way or the Highway by Philip Corwin, Internet Commerce Association

Overview: Timely implementation of the URS, a required RPM for new gTLDs, is critical to the success of the program as well as to the adequacy of registrant rights – for now just at new gTLDs, but with its possible extension to incumbent gTLDs sure to be a subject of future debate.After noting that ICANN’s draft FY 13 budget called for budgeting $175,000 toward two undefined URS “Summits” for the purpose of “reconfiguration” of the present URS model, ICA filed a document disclosure request seeking background information on this earmark, and particularly to find the data and analysis justifying the conclusion that the current URS policy – adopted unanimously by ICANN’s Board after two years of multi-stakeholder debate – cannot meet the desired price target and therefore must be reopened.ICANN responded to our request within their thirty day response period with just minutes to spare. Unfortunately, what they disclosed arrived just after the end of the Prague meeting, so it could not inform the URS implementation discussions there.Our key take-aways from the disclosed documents are:

  • Most of the information we requested does not exist because virtually no planning has occurred for the “Summits”, which is just a placeholder term.
  • ICANN envisioned the “community discussion” facilitated by the Summit process as taking place in Geneva, Switzerland under the auspices of WIPO, which is headquartered there. Geneva is one of the most expensive cities in the world; most of the budget request would go toward staff travel and the hiring of a “professional facilitator” to develop a revamped URS Model.
  • The relevant Business Case Data Sheet does not include any role for the GNSO Council between development of a revamped URS Model and the solicitation of providers through an RFP, notwithstanding the clear potential for adoption of major URS policy changes.
  • It is not clear whether participation in the Summits is envisaged as open to all or limited to select invitees – in any event, the Geneva location and associated costs would tend to skew participation toward well-funded brand/trademark interests.
  • WIPO advised ICANN in mid-April that the Summits proposal “does not inspire confidence on WIPO’s part in our hosting a URS session at this stage.” It went on to say that it wanted “fundamental changes” based on its long-standing positions on elements of a rapid suspension process, adding, “We would consider an express prior commitment to such a shift, including the requisite Board support, as a pre-condition to a fruitful meeting on the URS.” In other words, WIPO wants the URS model results of the multi-stakeholder process replaced by its mono-stakeholder dictate, and won’t agree to host any “Summits” unless their outcome is largely pre-ordained.
  • The major URS change desired by WIPO is “a shift to the proposed respondent-default basis without panel”. This translates to a system in which a registrant failing to file a response within the URS’ tight time frame would automatically have his domain suspended, without any expert human reviewing the complaint to see if it stated a clear and convincing case of trademark infringement – a system reminiscent of the now-deceased SOPA legislation in which domains were to be blocked and crippled on mere allegations of IP infringement absent any judicial review, with the burden on the registrant to undo the damage after his website was shuttered.

Based on what was revealed in the disclosed documents, little to no URS implementation has occurred over the past year notwithstanding its critical role in the new gTLD program. There was also not a single disclosed memo analyzing the cost of implementing various aspects of the URS policy now contained within the Applicant Guidebook.We believe that the Summits concept will lead to unnecessary controversy and delay the launch of new gTLDs, and instead urge ICANN to provide staff support to an open and transparent multi-stakeholder URS implementation effort.Those interested in more details and analysis can read on…On May 29th we submitted a DIDP request to ICANN to try to get some basic information regarding what exactly was going on with implementation of Uniform Rapid Suspension (URS)(see internetcommerce.org/URS_DIDP for our request letter and background, and www.icann.org/en/about/transparency for ICANN’s response). In particular, we wanted to know what implementation had occurred to date, and in conjunction with whom, because there has been no initiation of an open implementation process such as that already executed for the Trademark Clearinghouse (TMC) – even though ICANN staff stated at both the Dakar and San Jose meetings that one would be commencing shortly. We also wanted to review any cost data analysis that justified the conclusion that the URS policy hammered out through long and arduous multi-stakeholder negotiations couldn’t be executed by arbitration providers at anything near the target filing fee, and that the URS therefore required “reconfiguration” through two “Summits”.URS is very important for several reasons:

  1. It, along with the TCM, is a required Rights Protection Mechanism (RPM) for new gTLDs. As a result, if URS policy is not locked down and arbitration providers put in place by the time that new gTLDs are ready for delegation to the root, their launch and the entire program will be unnecessarily delayed.
  2. URS policy will affect the economic prospects of new gTLDs. If it is altered to unreasonably diminish registrants’ due process rights then the registration of domains at new gTLDs may be inordinately depressed, and the optimum competition and innovation potential of new gTLDs will go unrealized.
  3. At the future point in time that ICANN finally undertakes UDRP reform (mid-2014 initiation at the earliest under the relevant GNSO Council resolution) there will undoubtedly be calls from trademark interests to impose URS on .com and other incumbent gTLDs. So it is important to all existing domain registrants that the URS truly be a narrow supplement to the UDRP used solely for incontrovertible instances of cybersquatting and providing adequate due process rights – and not a cut-rate substitute for the UDRP that abets reverse hijacking of the most valuable domains.

Our letter made clear that we hoped the requested materials could be made available by the start of the Prague meeting “so that we and others may be provided with the maximum amount of factual background to inform our remarks, activities, and interactions in Prague”. While ICANN did adhere to its target response time of 30 days, it did so with only minutes to spare – the response and accompanying documents were e-mailed shortly before midnight Prague time on Thursday, June 28th. Unfortunately, that was hours after the conclusion of the Public Forum at which we delivered remarks to the Board regarding URS implementation, and the day after a 90 minute session dealing exclusively with the URS. Had the DIDP response been delivered but forty-eight hours earlier we would have shared the materials with the entire community to better inform the discussion. But we are sharing them now in the hope that they shape the path of URS implementation in a positive direction.So what exactly did ICANN provide us with?The Cover MemoThis document affirms that the “Summit” concept is still completely amorphous and that ICANN still has no concrete blueprint for facilitating URS implementation:Much of the information sought within the request is not in existence. As Kurt Pritz, the key staff person responsible, publicly discussed during multiple sessions at the ICANN meeting in Prague (June 2012), the inclusion of a budget item in the FY13 did not arise as a result of extensive scoping or planning work. Rather, the budget item was included in the budget as a placeholder, in recognition that community discussion was needed. The budget was placed first; the planning is yet to come, and the URS session in Prague was one of the first steps. (Emphasis added)As for any data or analysis identifying which elements of the current URS Model caused staff to reach the conclusion that the price target is unattainable, nothing new is provided:The documentation of provider inability to meet the cost target of US$300–‐500 is already publicly available. For example, NAF submitted a public letter in June 2011 regarding the insufficiency of the cost model.We don’t really find this part of the response satisfactory because, again, there is no systematic analysis of the cost factors attributable to discrete URS elements, and that should be the starting point for any discussion about reconfiguring the model, much less decisions about what if anything needs to be revised. As for the National Arbitration Forum (NAF) letter, we have searched the ICANN website using multiple terms but have yet to locate it – regardless, that letter was sent in June 2011, the month in which the Board met in Singapore, adopted the Applicant Guidebook, and gave the new gTLD program a green light to proceed to the application stage, so it’s hardly new information and does not explain why no real implementation has been initiated over the past year. It’s also well known that NAF is providing a rapid suspension option as a UDRP alternative for the .XXX TLD, and that they charge the same for a filing ($1300) as for a single panelist UDRP case. If anything, NAF’s input and conduct indicates that the target of a $300-500 URS fee may be quite unrealistic and should be abandoned rather than used as an excuse to reopen a settled policy matter that generated significant controversy and heated debate.The memo then goes on to state that no decision has yet been made to alter the URS, that the Summit process envisions a “community discussion”, and that no detailed Summit planning has yet occurred :There have been no decisions made to change from what is set forth in the Applicant Guidebook. A discussion of prioritization of the characteristics of the URS is part of the anticipated community discussion that is imagined through the summit proposal.Because the Summit planning efforts anticipated within your Request have not taken place, the broad range of documentation you request does not exist within ICANN. (Emphasis added)Finally, after informing us that most of what we requested does not exist, the memo then informs us that some of what little relevant material does exist is being denied under the “Defined Condition of Non-Disclosure set forth in the DIDP”. That’s a bit frustrating.The Disclosed Supporting DocumentsWhile our 6-page document request letter elicited only 4 pages of disclosed documents, they are nonetheless of some considerable value and interest.The first is a “FY13 Business Case Data Sheet” that again asserts, without backup data or analysis, that “there is a significant gap between the features specified for the URS procedure and the desired cost”. The most revealing aspect of this document is the Scope section:The scope of the project is to develop a URS Model (including administrative procedures and rules) and to select URS dispute resolution providers.The following work will be required to accomplish this:

  1. Determine the makeup of a group to meet in a summit of UDRP provider representatives and community members;
  2. Conduct 2 summit sessions in Geneva (one in FY12 and one in FY13) to consider the challenges for implementation and propose a model for community consideration;
  3. Based on the outcome of those consultations draft a proposed set of procedures and rules to govern the URS process;
  4. Conduct formal RFP for URS providers;
  5. Appove [sic] and publish list of approved providers. (Emphasis added)

The major points we draw from this are:

  1. Despite the cover memo’s reference to “community participation” the Summits as envisioned will not necessarily be open to all individuals and organizations that wish to participate – the makeup of the “group” is yet to be determined, and would consist of some community members and of representatives of existing UDRP providers (but not of potential new URS providers).
  2. The two Summits were envisioned as being held in Geneva, Switzerland; most likely due to the fact that the World Intellectual Property Organization (WIPO) is headquartered there and was envisioned as the host. Geneva is one of the ten most expensive cities in the world based on anyone’s analysis (see en.wikipedia.org/wiki/List_of_most_expensive_cities_for_expatriate_employees#ECA_International); while corporate brand interests would not likely find that a significant barrier to participation, having to travel to and book accommodations in Geneva — not once but twice — would likely be an insurmountable obstacle for many parties, including academics and NGOs, that played an integral role in shaping the present URS model.
  3. If the two Summits reached consensus on a new model it would then be put out for community comment. While that after-the-fact review is commendable it is not the same as open community participation in recasting the URS. And, from the viewpoint of new gTLD applicants burning cash and anxious for delegation, it adds another time-consuming step to the process.
  4. Following that community review the arduous task of drafting proposed procedures and rules – true implementation! — would finally commence. That would chew up considerably more time, especially as “the devil is in the details” when it comes to translating broad policies into precise implementation language.
  5. Once the procedures and rules were finalized a RFP would be conducted for URS providers. More time would be consumed to draft the RFP, review the responses, and appoint providers.
  6. In addition to the above, two critical steps are conspicuously missing from the Scope section–

The first is review of any proposed changes in URS policy by both the GNSO Council and the Board. The GNSO has already expressed concern that its gTLD policy primacy could be undermined by the contemplated Summit process – and ICA firmly believe that any policy alterations of URS or other aspects of the new gTLD program should be made in “regular order” with the GNSO playing its standard policy review and approval role, followed by Board scrutiny and approval.The second is the drafting and adoption of a standard contract between ICANN and selected URS providers. The STI-RT group that shaped the adopted consensus URS model was quite adamant that, unlike the current practice for UDRP providers, there should be a binding contract between ICANN and all URS providers. ICA seconds that position wholeheartedly, as we believe that a contract establishing the bounds of provider powers and giving ICANN a flexible range of enforcement mechanisms is an integral aspect of assuring registrant rights under this new RPM.This Data Sheet also discloses that the majority of the $170,000 funding placeholder requested for the Summits is earmarked for ICANN staff travel ($70,000 – Geneva’s costliness being no impediment when one has $350 million in applicant fees to draw upon) and for retention of a “professional facilitator and writing specialist” ($40,000). It’s not clear why ICANN believes that a professional facilitator, a departure from standard ICANN practice, would be required to guide Summit discussions.The final major observation we have regarding the Data Sheet is that the multiple steps envisioned for the contemplated process will be quite time-consuming, and cause us to doubt that ICANN could meet its stated goal of having the URS model recast and providers in place by June 2013 if this path is followed. In fact, if the proposed revision of the URS becomes a multi-step magnet for controversy, it could easily delay initial delegations of new gTLDs into 2014 or beyond.The second page of disclosed documents is the one that inspired the headline of this essay, and consists of a short April 12, 2012 e-mail from Erik Wilbers of WIPO to Kurt Pritz of ICANN. We quote and comment upon it with some slight trepidation as we recall that during an ICANN meeting session early on in URS development we orally quoted from a letter that WIPO had sent to ICANN that we believed indicated that the model being contemplated would most likely be a significant substitute for UDRP filings rather than the intended narrow supplement. At the end of the session a WIPO staff person approached us and angrily proclaimed. “You are not allowed to quote from our letter!” We replied that we would make fair use of public documents whenever we wished and that we believed that open and informed debate, not censorship, was the proper basis for policy decisions.Here are the relevant portions of the Wilbers e-mail:As promised, we now come back to the subject of your brief recent call.Frankly, the development of this file does not inspire confidence on WIPO’s part in our hosting a URS session at this stage.Starting with the blueprint offered three years ago (under the term ‘ESM’) through the observations submitted in response to various URS drafts (such as the detailed operational listing in WIPO’s letter of December 2, 2010), WIPO’s experience-based suggestions for a fair and workable URS structure have been well known throughout the deliberations that have begotten the URS as adopted by the Board.Thus, it would seem unlikely that these stakeholders would now feel able to commit to the rather fundamental changes we believe to be in everyone’s interest – notably a shift to the proposed respondent-default basis without panel, subject to appropriate safeguards. We would consider an express prior commitment to such a shift, including the requisite Board support, as a pre-condition to a fruitful meeting on the URS. (Emphasis added)From this correspondence we can conclude that WIPO was asked to host the URS “Summits” in Geneva. We believe that having WIPO play such a role would be a mistake, as in our view they have not acted as a neutral party seeking to achieve a reasonable balance between registrant and rights holder interests in the URS debate, but as a vigorous advocate for the primacy of trademark over registrant rights. Further, as the e-mail demonstrates, they have never accepted the legitimacy of the URS model arrived at through ICANN’s multi-stakeholder consensus process but remain committed to discarding it in favor of a model closely adhering to their proposed (and rejected) ESM.Second, WIPO would only consent to hosting URS Summits if their result was largely pre-ordained – in which event, we ask, why bother holding the Summits at all? As a pre-condition to playing host, WIPO wants an express prior commitment, guaranteed by “requisite [ICANN] Board support” that “rather fundamental changes” will result — the principal one being “a shift to the proposed respondent-default basis without panel, subject to appropriate safeguards”. This imperious demand should be dismissed out of hand by members of ICANN’s Board should it ever reach them.Of course, the present URS model is a compromise in which the narrow time window in which the registrant must respond is counterbalanced by the assurance that even when the registrant misses that deadline the complaint will still be reviewed by a trademark law expert to determine whether it presents a prima facie case of infringement through clear and convincing evidence. What WIPO wants – “respondent-default basis without panel” — is a process in which all default cases would be decided in favor of the complainant absent any examiner review. This bears a striking resemblance to the recently deceased SOPA legislation, in which domains would first be blocked or denied payment and ad services absent any judicial review, with the burden on the registrant to prove his innocence after his website is shuttered and he is deprived of income and speech.In this context, WIPO’s reference to the retention of “appropriate safeguards” is worthless – the assurance of expert examiner review is the appropriate and necessary safeguard for registrants and this is precisely what WIPO seeks to eliminate. We have no objection to a URS being provided at the lowest possible cost to complainants – but not when the cost target takes primacy over retention of the most important and meaningful guarantee of registrant rights.The remaining two pages of disclosed documents consists of e-mails between ICANN staff discussing the “mess with the GNSO” triggered by the surfacing of the Summits concept in a draft budget, as well as the inquiries it triggered from other parties.Closing ThoughtsWe remain incredulous and disturbed that a year after launching the new gTLD program’s application phase virtually nothing has been done by ICANN to implement the URS. What is clearly required is a process for expedited discussion and resolution of implementation of this required RPM, conducted in a manner that won’t reopen the existing model in fundamental ways and thereby set off a multi-tiered controversy that will inordinately delay the delegation of new strings and the offering of domains to general public registrants.Given its insistence on “rather fundamental changes” as a pre-condition for even hosting discussions in Geneva, and its goal of a URS model that is at broad variance with the existing consensus model and that would jettison the most fundamental registrant safeguard – the assurance that every complaint will be reviewed by a competent examiner to see if passes ‘the laugh test’ – it seems evident to us that WIPO is part of the problem and not the solution when it comes to URS implementation, and that the road to timely URS implementation does not pass through Geneva.While we remain skeptical that a URS preserving essential registrant rights can be provided within the $300-500 price target range, we do believe that a URS that is utilized only for incontrovertible cases of cybersquatting – that is, cases in which an examiner can reach a firm conclusion within a very brief time span (and if he cannot, then the complaint properly belongs in a UDRP or litigation) — can be offered for a significantly lower fee than a UDRP.The 90-minute URS discussion session held in Prague revealed that there are parties on all sides of this question who share a common goal of implementing a URS that is rapid, cost-effective, and rights protective and are willing to engage in goodwill discussions to achieve it. Rather than expending $175,000 on a cumbersome, multi-stage “Summits” process we would urge that ICANN allocate some professional staff to facilitate an Implementation Advisory Group (IAG) that is open to all interested parties and transparent in operation — similar to the one that has achieved so much progress on the TMC — to tackle the issue. If this IAG comes up with recommended alterations to the present model that implicate policy they should of course be considered by the GNSO, followed by the Board, hopefully on an expedited basis.As for selecting URS providers, ICANN legal staff should be devising a standard contract that will be required for all those entities who wish to provide this service. The RFP should be widely distributed as there are many competent arbitration providers around the world, beyond WIPO and NAF, who are quite capable of assembling trademark experts to administer a narrow rights protection procedure focused solely on clear-cut infringement. In fact, given that WIPO is clearly hostile to the current URS model, and that NAF is on record regarding the high fee it would charge, am aggressive RFP outreach could attract competent new arbitration providers and help assure that the WIPO-NAF duopoly that has dominated UDRP decision-making is not replicated for the URS. That would be another positive pro-competitive outcome for the new gTLD program.The time for initiating implementation of the multi-stakeholder consensus URS model contained in the Guidebook is long past due. So let’s get on with it through a multi-stakeholder discussion that dispenses with any need for a cumbersome and exclusionary Summits approach guided by an expensive professional facilitator. ICANN community members, acting in an expeditious manner and in a cooperative spirit of goodwill, are fully capable of getting the job done on their own — if they are allowed to do so.This article by Philip Corwin was sourced from the Internet Commerce Association website with permission at http://internetcommerce.org/WIPO2ICANN_URS_Summits.

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).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.

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.


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.


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.


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 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.

WIPO Launches Dispute Resolution Services for .QA and قطر. (Qatar)

WIPO logoAs of 22 August, the WIPO Arbitration and Mediation Center commenced providing .domain name dispute resolution servicesfor both QA and قطر. (Qatar) in accordance with the Qatar Domains Registry Domain Name Dispute Resolution Policy (“Policy”) and Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (“Rules”), and WIPO Supplemental Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (“Supplemental Rules”).
Qatar Domains Registry provides for registration of domain names which utilize the two-letter country code in Latin characters, i.e., .QA, as well as the قطر. IDN ccTLD in Arabic script. قطر. results from ICANN’s IDN ccTLD Fast Track Process which was designed to introduce into the Domain Name System Internet extensions (top-level domains) corresponding to a meaningful representation of a country or territory name in non-Latin (or non-ASCII) script. The Policy, Rules and Supplemental Rules are applicable to disputed domain name registrations within both the Latin script (.QA) and Arabic script IDN (قطر.) ccTLD spaces.

The Policy, Rules and Supplemental Rules for .QA and قطر. also feature upgrades based on the WIPO-proposed paperless Uniform Domain Name Dispute Resolution Policy (UDRP) model, the latter in effect at WIPO since December 2009. This includes paperless filings by parties while retaining the safeguard of hardcopy notification by the WIPO Center.

In addition to .QA and قطر. (Qatar), the Center also provides domain name dispute resolution services for both .AE and امارات. (United Arab Emirates).

WIPO Announces New Schedule of UDRP Fees With Credit Card Facility

WIPO logoThe WIPO Center now offers a new (SSL) online payment facility for easier processing of domain name dispute filing fees by credit card. This facility is available for filing fees payable under the applicable WIPO UDRP Schedule of Fees (as set out below), as well as for applicable WIPO ccTLD Fee Schedules.

The following schedule of fees applies in connection with any domain name administrative proceeding initiated on or after December 1, 2002, that is to be administered by the WIPO Arbitration and Mediation Center (the “Center”) under the Rules for Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 (the “Rules”) or under variations thereof adopted by certain ccTLD registration authorities:

Single Panelist

Number of Domain Names Included in the Complaint Fee (United States Dollars)
1 to 5 1500 [Panelist: 1000; Center: 500]
6 to 10 2000 [Panelist: 1300; Center: 700]
More than 10 To be decided in consultation with the WIPO Arbitration and Mediation Center

Three Panelists

Number of Domain Names Included in the Complaint Fee (United States Dollars)
1 to 5 4000 [Presiding Panelist: 1500; Co-Panelist: 750; Center: 1000]
6 to 10 5000 [Presiding Panelist: 1750; Co-Panelist: 1000; Center: 1250]
More than 10 To be decided in consultation with the WIPO Arbitration and Mediation Center

1. The fee consists of an amount to be retained by the Center as an administration fee and an amount to be paid to a Panelist.

2. In the event of the withdrawal of a complaint in accordance with Paragraph 4 of the Rules and Paragraph 5(b) of the Supplemental Rules, or the termination of an administrative proceeding prior to the appointment of an Administrative Panel, for cases involving up to 10 domain names the Center shall withhold a processing fee in the amount of the Center’s share of the total fee; for cases involving more than 10 domain names the Center shall determine in its sole discretion the processing fee to be withheld by the Center. In the event of the termination of an administrative proceeding after the appointment of an Administrative Panel, the Center shall determine in its sole discretion whether any amount of fee paid by either party shall be refunded.

3. Payments shall be made by any of the following means only:

(i) Bank transfer:
WIPO Account IBAN CH68 0483 5063 0397 8200 0, Credit Suisse, 1211 Geneva 70, Switzerland, Swift Code: CRESCHZZ80A
(When making the transfer, please indicate the purpose of the payment, including the case reference if available, or the names of the parties to the administrative proceeding.)

(ii) Check:
Beneficiary: World Intellectual Property Organization (WIPO)
Arbitration and Mediation Center
34, chemin des Colombettes
1211 Geneva 20

(When mailing the check, please mention the paying party and the case reference.)

(iii) Deduction from WIPO current account

(iv) Credit card (American Express, Visa, MasterCard):
(Payment by credit card should be made using the WIPO Center’s secure online payment facility. For payment-related queries or difficulties, please call (+41 22) 338 8247.)

4. Payments in cash will not be accepted.

5. All bank charges, transfer fees or other amounts that may be levied in connection with a payment made to the Center shall be the responsibility of the party making the payment.

This WIPO update was sourced from:

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.

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 Launches Paperless UDRP Proceedings

From Monday, December 14, 2009, the WIPO Arbitration and Mediation Center will launch essentially paperless UDRP procedures. 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. 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. 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. 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 ICANN’s 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. 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. Parties who do not yet wish to use the new paperless option remain guided by the existing WIPO Supplemental Rules; such parties may continue to file in hard copy until February 28, 2010. 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: