Transcript WIPO Arbitration and Mediation Center

Second International conference for ccTLD
registries and registrars of CIS, Central and
Eastern Europe
Update on WIPO Domain Name Dispute Resolution and ccTLD Program, and
Registry and Registrar Best Practices
Francisco Rios
WIPO Arbitration and Mediation Center
WIPO Arbitration and Mediation Center
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Established 1994
To promote and provide services for resolution of commercial disputes
between private parties involving intellectual property (IP) and
technology, through procedures other than court litigation (ADR).
Not-for-profit ADR services include:
 Arbitration (‘classic’ and expedited)
 Mediation
 Expert Determination (since 2007)
 Domain Name Dispute Resolution (DNDR)
(e.g. UDRP)
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Center (non-DN) Cases – A Snapshot
Expedited
Arbitration
10%
Other
18%
Arbitration
49%
Mediation
41%
Patent
46%
IT
22%
Copyright
9%
Type of Procedure
Trademarks
5%
General Subject Matter
Over 70 mediations and 110 arbitrations administered
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO - Domain Name Dispute Resolution
(DNDR) Services
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Provider of DNDR services under the Uniform Domain Name Dispute
Resolution Policy (UDRP).
UDRP introduced in 1999, on WIPO’s recommendation, to provide TM
owners with a quick and cost-effective mechanism for addressing the
abusive use of a trademark in a domain name (‘cybersquatting’)
UDRP is applicable to generic top level domains (gTLDs) (e.g. “.com”,
“.net”, “.org” etc).
Different mechanisms applicable to individual country code TLDs
(ccTLDs) (e.g. “.me”, “.au”, “.fr”, “.pl”). Many ccTLD Registries have
adopted the UDRP mutatis mutandi, or a dispute policy based on it.
WIPO a Provider for 58 ccTLDs and maintains a ccTLD Program to
help ccTLD administrators in developing best practices intended to
prevent and resolve disputes in their domains.
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WIPO Arbitration and Mediation Center – September 8, 2009
Resources and Information
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Provides a range of publicly available UDRP information and resources
on its website to assist filing parties and panels, including filing
guidance, model pleadings, FAQs, trademark portal, applicable gTLD
and ccTLD Policies and Rules.
http://www.wipo.int/amc/en/domains/index.html
The WIPO Overview of Panel Decisions at
http://www.wipo.int/amc/en/domains/search/overview/index.html
promotes awareness of WIPO panel positions in order to:
 facilitate decision process and enhance consistency
 assist parties (considering) filing complaints or responses
 inform all interested parties on the application of UDRP criteria
Covers 26 principal issues, with consensus on most.
The WIPO Legal Index http://wipo.int/amc/en/domains/ also provides
selected panel decisions on many well-settled (and also some of the
more contentious) aspects of the UDRP.
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Domain Name Disputes – All Cases by
Industry 2008 -2009
Transportation
5%
Sports
2%
Telecom
3%
Automobiles
3%
Other
14%
Entertainment
5%
Media and
Publishing
6%
Internet and IT
7%
Biotechnology and
Pharmaceuticals
10%
Electronics
4%
Retail
8%
Luxury Items
1%
Banking and
Finance
8%
Fashion
5%
Insurance
2%
Hotels and Travel
5%
Food, Beverages
and Restaurants
8%
Heavy Industry and
Machinery
5%
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WIPO Arbitration and Mediation Center – September 8, 2009
Current issues in domain name dispute
resolution
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Growth of professional ‘domainer’ industry, and implications for
assessment by panels of possible bad faith in cases involving
automated or large-scale domain name registrations.
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Widespread use of privacy and proxy registration services (identity
‘shields’)
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DN monetization:
 parking/landing pages - ‘generic’ v ‘trademark’ value
 advertising revenue arrangements (e.g. Google Ad Sense) –
responsibility for third-party content
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Domain Name Portfolios: Effect of investment vehicles amassing large
portfolios of domain names, being in turn acquired by other domain
name investors. Number of domain names may be in the thousands,
even the hundreds of thousands, and some cases acquisitions occur
under identify shielding.
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WIPO Arbitration and Mediation Center – September 8, 2009
Current issues in domain name dispute
resolution
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Total domain name registrations today approaching 180 million.
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A significant number of new gTLDs may be around the corner.
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Some commentators report an increase in cybersquatting incidence of
18% from 2007 to the end of 2008
 For example, Markmoniter in its Brandjacking Index for 2008,
reported almost 450,000 suspected cases of cybersquatting
based on tracking of only 30 popular brands.
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Last year WIPO saw 2,329 complaints filed under the UDRP (the
busiest year on record, up 8% over ’07).
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WIPO Arbitration and Mediation Center – September 8, 2009
Total Domain Name Registrations
2008: 177 million DNs registered, a total up 16% from 2007
Including 71.1 million ccTLDs, up 22% from 2007
Source: Verisign Domain Name Industry Brief – February 2009
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WIPO Arbitration and Mediation Center – September 8, 2009
Reported Cybersquatting 2008
Source: Mark MonitorTM Brand Jacking Index – 2008 - The Year in Review
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Domain Cases per Year
(as at September 2009)
2500
2000
1500
1000
500
0
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
WIPO Majority UDRP Provider
2008: 6-7 cases per calendar day
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Domain Name Case Outcome
130, 1%
1702, 15%
Cancellation
Transfer
Complaint denied
9535, 84%
Overwhelming majority result in transfer – respondent default rate (approx.
75%) - cancellation rarely sought remedy due to risk of cancelled DN’s being
‘snapped up’
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WIPO Arbitration and Mediation Center – September 8, 2009
Top 25 WIPO Complainant Country Filing
Country
United States of America
France
United Kingdom
Germany
Switzerland
Spain
Italy
Canada
Netherlands
Australia
Sweden
Japan
India
Denmark
Brazil
Austria
Mexico
Turkey
Finland
Monaco
China
Belgium
Republic of Korea
Ireland
Singapore
Number of Cases
6625
1655
1153
877
767
706
487
307
285
272
220
177
148
143
133
117
105
95
90
74
70
68
68
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Percentage of Cases
43.37%
10.83%
7.55%
5.74%
5.02%
4.62%
3.19%
2.01%
1.87%
1.78%
1.44%
1.16%
0.97%
0.94%
0.87%
0.77%
0.69%
0.62%
0.59%
0.48%
0.46%
0.45%
0.45%
0.37%
0.29%
WIPO Arbitration and Mediation Center – September 8, 2009
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Top 25 WIPO Respondent Country Filing
Country
United States of America
United Kingdom
China
Canada
Spain
Republic of Korea
France
Australia
Netherlands
India
Italy
Germany
Russian Federation
Switzerland
Bahamas
Panama
Turkey
Mexico
Saint Kitts and Nevis
Sweden
Japan
Ireland
Belize
Kenya
Israel
Number of Cases
6016
1286
769
727
699
605
488
363
245
239
227
226
215
210
168
166
139
128
119
103
99
82
80
79
75
Percentage of Cases
39.38%
8.42%
5.03%
4.76%
4.58%
3.96%
3.19%
2.38%
1.60%
1.56%
1.49%
1.48%
1.41%
1.37%
1.10%
1.09%
0.91%
0.84%
0.78%
0.67%
0.65%
0.54%
0.52%
0.52%
0.49%
WIPO Arbitration and Mediation Center – September 8, 2009
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WIPO Case Languages Used
Case Language
English
Spanish
French
Korean
German
Chinese
Dutch
Italian
Japanese
Russian
Portuguese
Romanian
Danish
Swedish
Hebrew
Norwegian
Total:
Number of Cases Percentage of Cases
13716
89.78%
570
3.73%
380
2.49%
229
1.50%
169
1.11%
69
0.45%
69
0.45%
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0.18%
17
0.11%
10
0.07%
6
0.04%
5
0.03%
3
0.02%
3
0.02%
1
0.01%
1
0.01%
15276
Language of Proceedings – Reg Ag’ment - Panel Discretion – Center Procedure
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WIPO Arbitration and Mediation Center – September 8, 2009
gTLDs in WIPO Cases
gTLDs
.com
.net
.org
.info
.biz
.mobi
.name
.travel
.cat
.aero
.edu
Number of Domain Names Percentage
18858
78.08%
2552
10.57%
1499
6.21%
750
3.11%
352
1.46%
113
0.47%
15
0.06%
8
0.03%
4
0.02%
1
0.00%
1
0.00%
Overall to date, the vast majority of DN disputes have concerned “.com”
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WIPO Arbitration and Mediation Center – September 8, 2009
Top 20 ccTLDs in WIPO Cases
.as
.li
.la
.ve
.ph
.bz
.me
.ir
.nu
.ie
.cc
.w s
.ro
.mx
.nl
.tv
.es
.au
.ch
.fr
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100
150
200
250
300
As a proportion of the total, the relative number of ccTLD domain name
cases filed with WIPO has been increasing over the years.
The number of ccTLD complaints filed with WIPO in 2000, was less than
1% of the total; 13% in 2008.
WIPO Arbitration and Mediation Center – September 8, 2009
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Domain Name Scripts in WIPO Cases
Percentage of Domain Names
Character Set
99.55%
ASCII (English)
0.13%
German
0.07%
Chinese
0.07%
French
0.05%
Japanese
0.05%
Korean
0.04%
Spanish
0.01%
Hebrew
0.01%
Norwegian
0.01%
Swedish
0.01%
To be determined
0.00%
Danish
Non-ASCII characters, or Internationalized Domain Names, are
available at the second level in some gTLDs (.com, .net, .org, .info, .biz)
and many ccTLDs (e.g., .ch, .de, .cn, .jp, .kr) (e.g. 三共.com )
WIPO Arbitration and Mediation Center – September 8, 2009
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Key Features of (Existing) DN Dispute
Mechanisms – the UDRP
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International, curative procedure
Contract-based (RA – RAA - ICANN)
Permits trademark owners to resolve clear cases of abusive domain
name registration (‘cybersquatting’)
Direct enforcement through registrars (‘10-b/day rule’)
Without going to court but preserving court options (MJ derived from
RA)
Time and cost effective (approx 60 days, USD1,500 for single member)
What is required?
 Trademark must be identical or confusingly similar to the
domain name (Policy, s. 4.(a)(i)); and
 The registrant of the domain name must have no rights or
legitimate interests in the domain name
(Policy, s. 4.(a)(ii)); and
 The domain name must have been registered and used in bad
faith (Policy, s. 4.(a)(iii)).
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WIPO Arbitration and Mediation Center – September 8, 2009
eUDRP
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Through limited, targeted amendments to the UDRP Rules, WIPO’s
proposal to ICANN for an “eUDRP” provides a sound, fair basis on
which to preserve reasonable, effective notice of the commencement
of UDRP proceedings while removing paper pleadings from the UDRP
process. Importantly, it does so without causing prejudice to either
party, which in cases administered by the WIPO Center could
exclusively use email.
WIPO communicated its eUDRP proposal to ICANN in late December
2008. After informal consultation, ICANN posted the proposal for a 30day public comment period (July 13 to August 12, 2009). Comments
submitted showed clear support overall. It is WIPO’s strong hope that
ICANN will confirm its adoption of the proposal within a reasonable
time
http://www.wipo.int/export/sites/www/amc/en/docs/icann301208.pdf
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WIPO Arbitration and Mediation Center – September 8, 2009
ccTLD Registration Models
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“Open” vs. “Restricted”
Types of Restrictions
 Location requirement
 Nationality/Address
 Verification
 Entity vs. individuals
 (Numerical) Application limits
 “Yellow pages”
 Subdomains
 Justification of application
 Verification
Trend towards open models (+ ADR)
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WIPO Arbitration and Mediation Center – September 8, 2009
ccTLD Dispute Models
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No obligation to adopt the UDRP
 But protection of IP rights?
 National courts
 Less suitable the more “open” a ccTLD is
WIPO ccTLD Program: advice on request
 WIPO ccTLD Best Practices
 Avoiding conflicts through appropriate registration practices
e.g.: registration agreement, contact details, WHOIS,
submission to administrative procedure
 Protecting IP in ccTLDs through administrative procedures
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WIPO Arbitration and Mediation Center – September 8, 2009
UDRP as a flexible model
Key Features (1)
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Mandatory procedure - contractual basis
 Part of domain name registration agreement
Efficient (quick results at moderate costs)
 Direct enforcement
 Transfer or cancellation
 Limited scope and streamlined procedure
 Written (online) procedure
 Single exchange of pleadings
 Deadlines
 Blocking dn transfers during procedure
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WIPO Arbitration and Mediation Center – September 8, 2009
UDRP as a flexible model
Key Features (2)
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Due process safeguards
 Preserve recourse to national courts of justice
 Facilitates acceptance (UDRP: <1% contested)
 Neutrality
 Independent of dn registration and administration
 Impartial and independent decision-makers
 Reasoned decisions, available to the public
 Notice
 All possible means (Whois)
 Burden of proof on Complainant
 Complainant pays fees
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WIPO Arbitration and Mediation Center – September 8, 2009
UDRP as a flexible model
Adjustable elements (1)
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Bad faith registration and/or use or any infringement of (IP)
rights?
 Infringement under national law: .ch, .fr
Local rights only or also “foreign” rights?
 ccTLD typically addresses a certain territory
 Location requirement for dn registration?
Trademarks only?
 may also concern different types of intellectual property
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WIPO Arbitration and Mediation Center – September 8, 2009
UDRP as a flexible model
Adjustable elements (2)
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Procedure
 Local language(s)
 Nationality and qualification of Panelists
 Factors:
 Decisions to be made in accordance with local law rather
than standard (bad faith) conditions
 Local/regional and international dispute resolution providers
 Mediation element
 .ch, .uk
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WIPO Arbitration and Mediation Center – September 8, 2009
UDRP as a flexible model
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Balance:
 Parties’ interest in predictability, and IP owners’ interest in
uniformity and possibility of consolidating complaints against the
same domain name holder
vs
 Desire to adapt to local environment
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO ccTLD Experience
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58 ccTLDs using WIPO dispute resolution services (September
2009)
 Initial period:
 smaller (.sh) or “de facto” gTLDs (.tv)
 Then:
 more established TLDs (.au, .ie, .mx, .nl, .ch, .fr)
 Added in 2008 - 2009:
 .ao (Angola), .bo (Bolivia), .bm (Bermuda), .me
(Montenegro), .mp (Mariana Islands) .pe (Peru), .sl (Sierra
Leone)
ccTLD-involving WIPO cases:
 December 1999 to September 2009: 1,188
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO ccTLD Experience
Types of Policies
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UDRP: 36
 .ag, .am, .as, .bm, .bs, .bz, .cc, .cd, .co, .cy, .dj, .ec, .fj, .gt, .ki, .la,
.lc, .md, .me, .mw, .na, .nr, .nu, .pa, .pk, .pn, .pr, .ro, .sc, .sl, .tk,
.tt, .tv, .ug, .ve, .ws
Variations of UDRP: 13
 .ae, .ao, .au, .bo, .es, .ie, .ir, .nl, .mp, .mx, .pe, .ph, .tm
Other (UDRP-inspired) administrative procedure: 5
 .ch, .fr, .li, .re, .ma
Arbitration: 4
 .ac, .io, .pl, .sh
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO ccTLD Database
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WIPO Arbitration and Mediation Center – September 8, 2009
Registry and Registrar Best Practices
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ICANN is currently working with registrars on a draft Best Practices
document intended to better protect registrants in UDRP proceedings
Although non-binding as such it is expected to provide ICANN’s almost
1,000 accredited registrars with uniform guidance on such matters as
(1) how and when to timely lock disputed domain names (2) how and
when to provide relevant requested registrar verification information to
Providers (which is required for notification and language determination
purposes) (3) how to react to and give effect to settlement agreements
reached between disputing parties in a UDRP proceeding.
A revised draft of the guidelines is currently being prepared and is
expected to be published within the next two weeks or so.
Previous version of the draft is available at
http://www.icann.org/en/compliance/draft-advisory-best-practices-udrpcomplaint-31oct08-en.pdf
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WIPO Arbitration and Mediation Center – September 8, 2009
ICANN-Envisaged New gTLD Expansion:
Trademark-related Concerns
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“.com” → “.tm”, “dictionary”, etc.
Presents business opportunities as well as legal and practical
challenges.
WIPO Press Release of March 16, 2009: “This is a watershed
moment in the development of the Domain Name System
(DNS), and is of genuine concern for trademark holders.”
Concerns broadly shared and expressed, including by
governments (GAC Principles regarding New gTLDs, March
2007, and ensuing documents).
Trademark abuse → consumer confusion → undermining of public
trust in the DNS
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Recommendations
1. Trademark-based Pre-Delegation Dispute Resolution Procedure
(published in DAG I & II)
• WIPO Center responded on January 18, 2008, to ICANN’s request for
“Expressions of Interest from Potential Dispute Resolution Service
Providers for New gTLD Program.”
• Worked with ICANN in the development of the substantive criteria for the
Legal Rights Objections (LRO) procedure - taking into account the
“WIPO Joint Recommendation Concerning Provisions on the Protection
of Marks, and Other Industrial Property Rights in Signs, on the Internet.”
• Accepted to administer disputes under LRO Procedure.
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Recommendations
2. Trademark-Based Post-Delegation Dispute Resolution Procedure
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In Jan 18, 2008 letter, WIPO called for a permanent administrative
option to allow for filing of complaints, when the registry’s actual
manner of operation or use is alleged to cause or materially contribute
to trademark abuse.
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ICANN confirmed availability of trademark-based post-delegation
mechanism in the New gTLD Program Explanatory Memorandum on
“Protection of Rights of Others in New gTLDs” of Oct 8, 2008
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WIPO Center communicated to ICANN on Feb 5, 2009, a substantive
proposal for a trademark-based post-delegation dispute resolution
procedure.
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Recommendations
2. Trademark-Based Post-Delegation Dispute Resolution Procedure
(cont’d)
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Intended as a form of standardized assistance to ICANN’s own
compliance oversight responsibilities, provides an administrative
alternative to court litigation, encourages responsible conduct by
relevant actors, and enhances the security and stability of the DNS.
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The criteria build on pre-delegation LRO criteria and consideration
factors, existing UDRP jurisprudence, and accepted principles of law.
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Recommendations
2. Trademark-Based Post-Delegation Dispute Resolution Procedure
(cont’d)
Scenarios:
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E.g., Registry uses the TLD for a purpose unreasonably inconsistent
with relevant representations made in the application phase, such that
trademarks are infringed.
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E.g., TLD operator turns a blind eye to systemic cybersquatting in its
domain, instead of adopting appropriate mechanisms to counter such
abuse.
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Recommendations
2. Trademark-Based Post-Delegation Dispute Resolution Procedure
(cont’d)
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Given the perceived convergence of registry, registrar, and registrant roles
within the DNS, WIPO Center further recommends to extend the concept
behind this proposal also to address relevant registrar conduct.
See WIPO Letter to ICANN of April 9, 2009, on observed conduct of one
particular ICANN accredited registrar. Alleged conduct in lawsuits
involving the registrar included “UDRP evasion services” and “contributory
cybersquatting.”
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Recommendations
3. Discussion Draft Expedited (Domain Name) Suspension
Mechanism
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Communicated to ICANN on April 3, 2009.
Intended to present options for brand owners to combat cybersquatting
in a cost and time effective manner.
Intended as a narrowly tailored complement to the
UDRP.
Includes an important safety valve mechanism for defaulting
respondents.
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WIPO Arbitration and Mediation Center – September 8, 2009
WIPO Comments to IRT Reports
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WIPO Comments to Draft IRT Report (May 10, 2009).
WIPO Comments to Final IRT Report (June 18, 2009).
IRT Reports represent substantial progress and a serious foundation
for mechanisms designed to prevent to trademark abuse.
WIPO Center commends the IRT for the Final IRT Report, and the
consequential efforts of individual IRT members.
WIPO Center looks forward to continued dialogue.
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WIPO Arbitration and Mediation Center – September 8, 2009
General Comments - IP Clearinghouse
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System design should minimize burdens on users and stakeholders.
Implementation should take account of operational realities.
Relationship between mechanisms should be further clarified.
IP Clearinghouse
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Ubiquitous role envisaged for the Clearinghouse calls for adequate
safeguards and ICANN oversight.
Differentiation of roles may be appropriate for the Clearinghouse.
Trademark owners should not shoulder the entire burden of financing a
Clearinghouse.
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WIPO Arbitration and Mediation Center – September 8, 2009
Uniform Rapid Suspension Mechanism
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Requiring panelist evaluation even in URS default cases would
unnecessarily increase costs and burdens to trademark owners.
The duration of the proposed remedy is of limited effectiveness.
The URS must interoperate with the UDRP.
The URS substantive criteria adaptations are not clear.
Elements of the URS may be adjusted with a view to time and costefficiency.
Looking at WIPO UDRP Cases - the vast majority default rate in WIPO
cases around 75%
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WIPO Arbitration and Mediation Center – September 8, 2009
Post-Delegation Dispute Resolution
Mechanism at the Top Level
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Post-delegation system design must bear in mind its intended
preventive effect.
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Trademark owners should be given the option to initiate a postdelegation sua sponte.
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WIPO Center recommends an analogous dispute resolution procedure
for ICANN-accredited registrars.
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WIPO Arbitration and Mediation Center – September 8, 2009
Internationalized Domain Names (IDNs)
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In tandem with the introduction of new gTLDs, the introduction of IDNs
into top-level domains is also expected soon.
 ICANN’s IDNC Working Group has recommended a mechanism to
introduce a limited number of non-contentious IDN ccTLDs, based
on an ISO list of two letter country codes, via an IDN ccTLD ‘Fast
Track’ Process
 ICANN’s Generic Names Supporting Organization (GNSO) has also
recommended that some of the proposed new gTLDs be
internationalized domains
 Implications for substantive UDRP analysis?
(identity and confusing similarity)
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WIPO Arbitration and Mediation Center – September 8, 2009
Additional Information
Emails
[email protected] and [email protected]
Website: http://www.wipo.int/amc/en/domains/index.html
WIPO activities related to new gTLDs
http://www.wipo.int/amc/en/domains/newgtld
Selected WIPO Correspondence with ICANN
http://www.wipo.int/amc/en/domains/resources/icann/
gTLD Reports
http://www.wipo.int/amc/en/domains/reports/
Upcoming Events: http://www.wipo.int/amc/en/events/
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WIPO Arbitration and Mediation Center – September 8, 2009