DRS Flashcards
HISTORY
WIPO Arbitration and Mediation Center
Established in 1994 to provide alternative dispute resolution (ADR) services for the time and cost effective resolution of intellectual property (IP) disputes between private parties outside of court
Classical Arbitration & Mediation Services
Tailor-Made Dispute Resolution Procedures, e.g.
Leading provider of domain name dispute resolution services under the Uniform Domain Name Dispute Resolution Policy on a not-for-profit basis.
WIPO CENTER CASELOAD
400+ mediations and arbitrations Contractual: research & devpt. agmts. joint-ventures financing agmts. merchandising/licensing agmts. insurance agmts. new media agmts. copyright related agmts. Cases referred by courts to mediation Specialized schemes (e.g. WIPO Expedited Mediation and Expedited Arbitration for Film and Media, Mediations for International Trademark Oppositions (e.g. Singapore, Brazil)
Parties involved include large companies, SMEs, collecting societies, and individuals (authors, producers
Entertainment Chemistry Pharmaceuticals Information Technology Life Sciences Luxury Goods Mechanical Other
Wha is Arbitration ?
Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to an arbitrator, who gives a decision on the dispute that is binding on the parties
In contrast to mediation, once the parties have freely agreed to submit a dispute to arbitration, a party cannot unilaterally withdraw from the arbitration
What is Mediation ?
Mediation is an informal procedure in which a mediator endeavors, at the request of the parties to a dispute, to assist them in reaching a mutually satisfactory settlement of the dispute
The mediator does not have any power to impose a decision on the parties
Mediation is also voluntary in the sense that either party may, if it so chooses, abandon the mediation at any stage prior to the signing of an agreed resolution
Many IP disputes have characteristics that favor mediation. Eg in disputes in context of existing business relationship created by license, franchise, distributorship, publishing, sound recording etc, mediation offers non-confrontational procedure conducive to further development of the business relationship
Time and Cost-effective, and low-risk, therefore more IP lawyers/clients including mediation in contracts as pre-condition to resorting to arbitration/litigation
Benefits of ADR (Arb/Med.) Compared to Litigation
Rapid relief cannot easily be obtained through the courts. Alternative procedures offering temporary emergency relief therefore required
International character of disputes: ADR offers a single forum
In case of Arbitration, finality of the arbitral award. It is not subject to institutionalized appeal
Autonomy in selecting the decision-makers.
Neutrality: choice of procedural rules, applicable law, language, place
Confidentiality; and saves time and money
WIPO Domain Name Services
Principal policy administered by the WIPO Center is the Uniform Domain Name Dispute Resolution Policy (UDRP)
Of the approx 250 country code TLDs (ccTLDs), WIPO is accredited dispute resolution service provider for 76
Introduced in 1999, on WIPO’s recommendation, the UDRP provides brand owners with a quick and cost-effective mechanism for addressing trademark-abusive registration and use of a domain name, or “cybersquatting”
The UDRP is applicable to all the current generic top level domains (gTLDs) (e.g., “.com”, “.net”, “.org”, etc.)
UDRP will also be applicable to any new gTLDs.
ICANN – BRIEF HISTORY
July 1997 – President Clinton directs Secretary of Commerce to privatize management of the DNS
January 1998 – Dept. of Commerce issues proposal to empower non-profit entity to control the Internet and DNS
June 1998 – WIPO begins process to develop recommendations concerning IP/DN issues
November 1998 – Dept. of Commerce and ICANN enter into a Memorandum of Understanding, officially recognizing ICANN
Cybersquatting identified as immediate concern
April 1999 – WIPO issues Final Report of the WIPO Internet Domain Name Process
Advocating for uniform dispute resolution mechanism for domain name disputes
November 1999 – UDRP adopted
What is the Domain Name System?
The domain name system (DNS) is part of what makes the Internet accessible to users on a day-to-day basis
The Internet is comprised of millions of individual alphanumeric strings which serve as textual identifiers of a given IP address on the Internet - these are domain names (e.g. )
Domain names are generally available for registration on a first come, first served basis for a fee through a registrar
Over 1,000 ICANN-accredited registrars
Domain Names: a friendly form of Internet address
Domain names used to navigate on Internet
Principal system for routing traffic on the Net
Facilitate ease of use for individuals, consumers, business
Domain names used by enterprises
serve to identify and distinguish businesses and their goods and services: specify the on-line, Internet location
Businesses use names corresponding to trading name or registered trademark
Branding on the Internet is increasingly important
Promote easy-to-remember name or word
Corresponds to trademark investments made in the physical world
Domain Names and Trade Mark Rights
Domain names can be valuable virtual real estate. Eg, sex.com sold for 14 million; porn.com for 9.5 million; and beer.com for 7 million
Domain names are not protected as IP rights per se – but sometimes they can come into conflict with existing IP rights, such as trademarks
As a result, disputes between domain name registrants and trademark owners can, and do occur
One method of resolving these may be provided by the WIPO-recommended UDRP
UDRP - Background
WIPO advice to ICANN - 1998-1999
Need for a procedure permitting trademark owners to resolve clear cases of abusive domain name registration (‘cybersquatting’) without going to court
UDRP adopted by ICANN and took effect in 1999
UDRP has proven to be an effective expedient & alternative to court action, while preserving court options
Unique in the sense that it is made possible by a contract web of global scope – all gTLD domain name registrants must agree in their registration agreement to be bound by the UDRP
Principal advantages of UDRP
Efficient - Time and Cost Effective (filing fee US$ 1,500)
Predictable means of resolving clear cases of cybersquatting
International – enforceable across jurisdictions and effectively
The UDRP in essence:
An international administrative procedure
Based on a mandatory ‘contract web’ between ICANN, DN registrars, and DN registrants.
Designed to allow trademark owners to resolve clear cases of abusive domain name registration and use (‘cyber squatting’)
Allowing direct enforcement through registrars (‘10-b/day rule’)
Without going to court - but preserving court options (not Arbitration per se)
UDRP – Scope and Standing
Applicable to all gTLDs: .com, .net, .org., aero, .biz, .coop, .info, .museum, .name, .pro. (& some ccTLDs)
Standing – requires trademark rights
Remedies – limited to transfer or cancellation
no costs or damages
Source of law: contract
domain name registrants are bound to the UDRP through their registration agreement
The Three Elements
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)).
UDRP: Process (1)
The Complaint is filed by the Complainant
Since December 2009, filing may be done by simple email (attaching the Complaint and supporting annexes) sent to WIPO at domain.disputes@wipo.int
The Center requests domain name lock by Registrar, reviews Complaint for administrative compliance with the UDRP Rules, and notifies the Respondent
The Respondent is given 20 days to respond to the notified Complaint
An independent panel is appointed from the Center’s list (1- or 3-member Panels)
Intellectual property and Internet specialists
Some 450 members from more than 50 countries in all regions
Independent Panel issues a decision within 14 days
Based on written evidence (ie, Complaint, Response), no in-person hearings
The Registrar implements the Panel’s decision
At the end of 10 calendar days, if no court challenge
WIPO and Domain Name Disputes
Since the UDRP’s introduction in 1999, the majority of UDRP disputes globally have been filed with WIPO (approx 60%).
As at 2017, this includes over 39,000 UDRP or UDRP-based cases (gTLDs and ccTLDs) filed with WIPO, covering about 73,000 separate domain names.
WIPO AS UDRP PROVIDER
WIPO is the leading UDRP provider, with experience drawn from processing over 39,000 UDRP-based disputes WIPO Center Staff 24 nationalities, 27 languages Senior Legal Staff / Case Managers Case Secretariat IT Support
WIPO Panelists
WIPO Domain Name Panel Roster
Over 450 publicly-listed experts
Drawn from 60 countries, across all continents
WIPO UDRP COUNTRIES & LANGUAGES
Reflecting the global scope of this dispute mechanism, named parties to WIPO cases represent 175 countries as of 2017. The US, France, UK, Germany and Switzerland were the most frequent bases for complainants, while the US, China, the UK, Australia, and the Netherlands were the most represented countries by named respondent party. The majority (over 88%) of WIPO cases are in English, followed by Spanish (4%) and French (2.6%). An increasing number of cases are in Chinese. A range of real-time statistics and reporting on WIPO domain name cases is available online at: http://www.wipo.int/amc/en/domains/statistics/
TM rights
Trademark rights are a threshold requirement under the UDRP (paragraph 4(a)(i))
Registered or unregistered
Other rights not covered
Geographic location of mark generally irrelevant for the purpose of standing
Unregistered TM Rights (1)
Unregistered or common law rights may be established where a complainant can show that the claimed mark has become a ‘distinctive identifier’ associated with the complainant or its goods and services
E.g. Tom Cruise found to be a distinctive identifier of acting services provided by that individual
Rights or Legitimate Interests
Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.
You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Bad Faith registration of Domain Names
Evidence of registration/use in bad faith:
registration to sell or transfer to the trademark owner or competitor for profit
registration to prevent the trademark owner from registering (or a pattern of such conduct)
registration to disrupt a competitor’s business
intent to attract for commercial gain Internet users to the site by creating confusion as to its source
Evidence (1)
Policy does not contain detailed rules of evidence - case precedent particularly important.
Panels typically adopt a common sense approach, having regard to the particular circumstances of each case.
For example, internet savvy and history of the domain name registrant, and the fame (or otherwise) of Complainant’s mark.
Evidence in UDRP proceedings may not always be extensive, and reasonable inferences can play a role (e.g. where Resp. chooses not to respond).
Panel may also issue Panel Orders – having regard to procedural fairness & need for due expedition.
The onus is however squarely on the Complainant to make its case (whether or not there is a Response).
Mere statements, assertions or conclusions of law are not enough - some form of proof is required.
The standard is typically balance of probabilities.
Some Practice Points
UDRP is designed to resolve clear cases of abusive cyber squatting relatively inexpensively - may be less suited to more complex disputes.
As an expedited administrative process, typically involves a single round of written pleadings, without in-person hearings.
Panels only rarely issue orders requesting additional information or evidence.
Important for each party to - as far as possible - get it right and present appropriate evidence the first time.
Parties encouraged to make use of freely available WIPO resources and information regarding UDRP decision precedent (including the widely-used WIPO Overview and Legal Index), model pleadings, and filing guidelines.
