Internet Domain Name Dispute Resolution Flashcards
What is gTLD?
Generic top level domain
What is the ccTLD?
country code top level domain
Is a domain name an intellectual property right?
Pros: An exclusive property Often conflicts with other IPR Cons: No exclusive rights granted No enforcement of a right to a Domain Name
What kind of Benefits to use Domain Name Dispute Resolution?
Cost efficient
• Quick and cheap dispute resolution mechanism (but due process / fair; equitable)
• Limited remedies: transfer or cancellation of the domain name (N.B. No costs/damages)
• Self-enforcement of decisions (by registrars)
40 to 60 dispute is solve.
2000 US dolars
What is cybersquatting ?
the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.
What is ICANN?
1
What is UDRP?
1
What is UDR Procedure?
- Complaint by the Complainant
- Response within 20 by the Defendant
- Appointment of Panel (1-3 members Panels)
- Decision of the Panel (based on written evidence (ie, Complaint, Response), no hearings)
- Implementation of Panel’s decision by the Registrar within 10 days, unless the decision is challenged before state courts
types of cases:
transfer domain name
cancelation domain name
1) Notification
2) Response 20 days
3) Panel App
4) Decision 14 days to respond
Average duration: approx 60 days
What is UDR Procedure?
- Complaint by the Complainant
- Response within 20 by the Defendant
- Appointment of Panel (1-3 members Panels)
- Decision of the Panel (based on written evidence (ie, Complaint, Response), no hearings)
- Implementation of Panel’s decision by the Registrar within 10 days, unless the decision is challenged before state courts
types of cases:
transfer domain name
cancelation domain name
1) Notification (complainant )
2) directed to defendant he has to Response within 20 days
3) Panel Apply 3 members they have to respond
4) with Decision 14 days to respond
applementation the panel decision within 10 days
10 days to enforce the decision
or 10 days for defendant to go to normal court that way registrar wont have right to take action
Average duration: approx 60 days
What is required?
Complainant must prove 3 conditions
1) • Domain name must be identical or confusingly similar to a trademark of the Complainant (s. 4.(a)(i)); and
2) • The owner of the domain name must have no rights or legitimate interests in such domain name (s. 4.(a)(ii)); and
3) • The domain name must have been registered and used in bad faith (s. 4.(a)(iii))
Trademark Right - Confusion ?
How to assess identity and similarity?
Does addition of generic terms to a trademark into a domain name creates confusion?
What are the criteria?
Trademark Rights – Descriptive terms (1st Element)
Can a holder have a valid plea if the trademark has descriptive terms of the goods/services?
Can a figurative trademark be confused with a domain name?
What if the trademark contains descriptive terms but is famous for the goods/services provided?
Complainant must prove that he is the owner of a trademark registration or that he has an unregistered trademark
• How to assess if the domain name is identical or confusingly similar with the registered or unregistered TM of complainant:
• Comparison between the trademark and the domain name itself
• Possible likelihood of confusion from a user perspective
• Addition of generic terms (“trademark + sucks” and others terms) would be usually considered as similarly confusing
• Decorative elements (which can not be represented in a string of character) would usually not be a relevant criteria
• Date of registration is not a relevant criteria
• gTLDs is not a relevant criteria unless it forms part of the trademark
Legitimate interests (2nd Element)
Which are the criteria to assess if there is a legitimate interest?
What if the domain name is an echo of the authors creations (e.g. a fan site)?
What about misrepresentation or disruption of the holder’s business?
Is there a legitimate interest in criticizing a good (e.g. «wallmarktcanadasucks.ca»)?
- Burden of proof
- Complainant must show the absence of legitimate rights prima facie • Respondent must then show one of the three elements:
- (future) use of the domain name for goods/services in good faith • Commonly known by the domain name
- Fair use without intent of commercial gain
• Ex: generic / geographic terms (e.g.: www.atlantic.com)
• Examples of legitimate interests
• Fame of the trademark;
• Registration of other domain name by the respondent corresponding to
other dictionnary terms;
• Registration for the goods/service of the primary meaning of the term («apple.nz» for selling apple in New Zealand)
• Non-commercial us
- Can a fan site justify a right or legitimate interest in the disputed domain name?
- Yes
- if for fair-use purposes
- If active and non-commercial use of the DN
- If it is distinctive from the official site of the TM holder
- No
- If there is misrepresentation
- If the domain name is identical to the DN, or commercial gain which disrupts trademark holder’s business.
- Criticism / Freedom of Speech: “walmartcanadasucks.com”
- Different Panel Decisions • View 1
- Right to criticize does not necessarily extend to domain name (but if no confusion, likely to succeed)
- Criticism as pretext for commercial advantage not to be
- View 2 (not. US Parties)
- Fair use and non-commercial • Additional consideration:
- Genuine use
- Criticism founded (respondent); no commercial gain
- Apparent that not related to Claimant company • Link to TM’s Website of Claimant
Bad faith 3rd Element)
Can bad faith be found if the DN was registered before the trademark was registered?
What about registration of DN right after the announcement of a new product?
Can bad faith be found if the DN is not used?
- Complainant must prove bad faith in the registering and in the use of the domain Name
- Circumstances that become evidences of bad faith: • selling/renting the Domain Name to the Claimant
- Prevent the reflection of the TM in a corresponding Domain Name • Disruption of business
- Attract commercial gain by creating likelihood of confusion
- “monetization” and bona fide offering of goods or services
- Bad faith if commercial advantages/ offerings of good similar to the trademark registration
Case n1 www.parvi.com
Ville de Paris v Jeff Walter (WIPO Case No D2009-1278)
Facts: City of Paris (Complainant) obtained French trademark registration for provision of wifi services in the city. Walter (Respondent) registered the disputed domain name “PARVI” later. Respondent said he registered in good faith not knowing the trademark, means “small” in Latin and it was for a social networking site.
Issue: Does the absence of bad faith intent by the respondent at the time of acquisition of the disputed domain name inevitably preclude the complainant from succeeding under the Policy, even though the R has subsequently used the domain name in bad faith?
Answer: No
Held: Respondent was in the wrong. Pursuant to Paras 4(i) of the Policy and 15 of the Rules, panel orders R to transfer domain name to the C.
Reasoning: R did not demonstrate that he registered domain name for a proposed social networking site. Parvi is also not Latin for small, it is parvus.
- There were no “demonstrable preparations to use” the disputed domain name for the asserted purpose
- R does not have rights or legitimate interests in the disputed domain name
Complainant must prove that the disputed domain name “has been registered and is being used in bad faith” (Para 4(a)(iii) of the Policy)
- Octagon Trio of Cases: looked at whether registered in good faith but used in bad faith met the requirement of para 4aiii of the Policy
o Yes, bad faith can be deemed to have occurred if later on it’s used in bad faith
o The obligation to not use the domain name imposes a duty to investigate at time of registration AND now or in the future
Therefore, could be deemed retroactive bad faith registration
what is highjacking?
an act of illegally seizing an aircraft, vehicle, or ship while in transit; a hijack.
