New gTLDs @OBP Milano 18 novembre2009

The liberalization of new gTLDs

New Directions in Rights Protection – WIPO Overview of Rapid

Suspension and Post-Delegation Procedures

Register.it – DadaOnline Brand Protection Event

November 18, 2009

Leena BallardWIPO Arbitration and Mediation Center

Register.it – Dada: Online Brand Protection Event, Milan, November 18, 2009

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World Intellectual Property Organization (WIPO)

• Intergovernmental organization with 184 Member States, dedicated to the promotion of balanced and accessible intellectual property systems.

• Administers 23 treaties.

• WIPO Arbitration and Mediation Center. Extensive input on ICANN New gTLD Program, in particular

as to trademark protection mechanisms.


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WIPO Arbitration and Mediation CenterNon-Domain Names• ADR Resource Institution• Administering Authority

Arbitration, mediation, expert determination cases relating to patent, software/IT, copyright, trademark, consultancy, distribution agreements, joint venture, employment, etc.

Domain Names• Policy Development• Case Administration

Administered over 16,000 UDRP/UDRP-based cases, involving over 28,000 domain names.

Administered over 15,000 cases under registry-specific policies (.biz STOP, .info Sunrise, .name ERDRP, .mobi sunrise and Premium Name Trademark Application Rules).

Provides dispute resolution services to 60 ccTLDs.


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ICANN New gTLD Program:WIPO voices concerns

• Report of the First WIPO Internet Domain Name Process: Warns of the potential of abusive domain name registrations that

lead to consumer confusion and undermining of public trust in the Internet.

Recommends that any introduction of new gTLDs be in a “slow and controlled manner.”

• 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.”


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WIPO Activities Related to ICANN New gTLD Program

• Follows a decade of WIPO addressing questions raised by the intersection of the DNS and IP laws.

First and Second WIPO Internet Domain Name Processes. Report of the First WIPO Internet Domain Name Process led to

ICANN’s adoption of the UDRP. Registry-specific policy development (.biz, .info, .mobi, .asia) and

ccTLDs. Adopted in 2001, the “Joint Recommendation Concerning Provisions

on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet.”

Produced in 2005, upon ICANN’s request, Report on “New Generic Top-Level Domains: Intellectual Property Considerations.”


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ICANN New gTLD Program:WIPO Contributions

1. Trademark-Based Pre-Delegation Dispute Resolution Procedure for New gTLD Registries.

2. Trademark-Based Post-Delegation Dispute Resolution Procedure for New gTLD Registries ( / Registrars).

3. Discussion Draft Trademark-Based Expedited (Domain Name) Suspension Mechanism (2nd and lower level registrations).

4. Comments on IRT Draft and Final Reports.

5. Ongoing Engagement.


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WIPO Guiding Principles

• Safeguard observance of IP principles and laws in the DNS.

• Workable, efficient and scalable system design.

• Strike a balance between: IP interests (including orderly functioning of market/consumer

protection); practical interests of compliant registries/registrars to minimize

operational burdens; and, legitimate expectations of good-faith domain name registrants.


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WIPO Recommendations1. Trademark-based Pre-Delegation Dispute Resolution

Procedure (published in DAG I, II & III)• 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 and procedural rules for the Legal Rights Objections (LRO) procedure.

• Accepted to administer disputes under the LRO Procedure.• ICANN DAG v3 includes:

Substantive Criteria – reflecting the “WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet.”

New gTLD LRO Dispute Resolution Procedure. WIPO DRSP Rules for New gTLD Dispute Resolution Procedure. WIPO DRSP Schedule of Fees and Costs.


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WIPO Recommendations2. Trademark-Based Post-Delegation Dispute Resolution

Procedure

• In a January 18, 2008 letter, WIPO called for a permanent administrative option to allow for filing of complaints, when the registry operator’s actual manner of operation or use is alleged to cause or materially contribute to trademark abuse.

• ICANN confirmed the availability of trademark-based post-delegation mechanism in the New gTLD Program Explanatory Memorandum on “Protection of Rights of Others in New gTLDs” of October 8, 2008.

• WIPO Center communicated to ICANN on February 5, 2009, a substantive proposal for a trademark-based post-delegation dispute resolution procedure.


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Procedure (cont’d)

• 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.

• WIPO’s proposed criteria build on pre-delegation LRO criteria and consideration factors, existing UDRP jurisprudence, and accepted principles of law.


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Example scenarios include:

Registry operator uses the TLD for a purpose unreasonably inconsistent with relevant representations made in the application phase, such that trademarks are infringed.

Registry operator turns a blind eye to systemic cybersquatting in its TLD, instead of adopting appropriate mechanisms to counter such abuse.


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• Given the perceived convergence of registry, registrar, and registrant roles within the DNS, the 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 the observed conduct of one particular ICANN-accredited registrar, which led to ICANN’s announced de-accreditation of said registrar. Alleged conduct in lawsuits involving the registrar included “UDRP evasion services” and “contributory cybersquatting.”


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• Supported by the ICANN IRT Draft and Final Reports – dialogue on design elements.

• ICANN DAG III as such includes “Proposed Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP)” – October 2009. However: Top-Level: “by clear and convincing evidence that the registry

operator’s affirmative conduct in its operation or use of its gTLD, that is identical or confusingly similar to the complainant’s mark, causes or materially contributes to the gTLD: […]”

Does “affirmative conduct” include willful blindness?


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• ICANN DAG III as such includes “Proposed Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP)” – October 2009 Second-Level: “by clear and convincing evidence: (a) that there is

[a] substantial ongoing pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and (b) of the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD, that are identical or confusingly similar to the complainant’s mark, which: […]”

Relationship between (a) and (b) unclear. Is willful blindness “bad faith intent to profit”? Intent/pattern required for both registry and registrants?


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WIPO Recommendations3. Discussion Draft Expedited (Domain Name) Suspension

Mechanism

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. Remedy provided for suspension of a domain name (not transfer). “Automated” default judgments. Includes important safety valve mechanisms, including for defaulting

respondents. ICANN IRT recommends “Uniform Rapid Suspension Mechanism”

(URS) – May 2009. ICANN staff submits “URS” for GNSO Council Consideration – October

2009.


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WIPO Recommendations3. Discussion Draft Expedited (Domain Name) Suspension

Mechanism (cont’d)

WIPO observations on IRT URS submitted for GNSO consideration:

Requiring panelist evaluation even in URS default cases would unnecessarily increase costs and burdens to trademark owners.

The duration of the proposed remedy (balance of registration period) is of limited effectiveness.

The URS substantive criteria adaptations are not clear.

Elements of the URS may be adjusted with a view to time and cost-efficiency.


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WIPO UDRP Cases: Respondent Default

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

Looking at WIPO UDRP Cases - the vast majority are undefended - overall default rate in WIPO cases around 75%


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WIPO engages in continued dialogue

4. Comments on IRT Draft and Final Reports.

IRT Reports represent substantive 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 Comments to Draft IRT Report (May 10, 2009). WIPO Comments to Final IRT Report (June 18, 2009).

5. Ongoing ICANN Consultations.


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WIPO General Concerns

• Are current ICANN proposals sufficient to address concerns expressed to date by Governments, trademark owners, INTA, consumer groups, health authorities, etc.?

• System design of IP protection mechanisms are expected to be built upon the framework of existing intellectual property laws, unfiltered by special interests.

• RPMs should not saddle brand owners with a range of unwanted defensive registrations.

• Rights holder protection mechanisms should not primarily serve to facilitate implementation of ICANN’s New gTLD Program.

• ICANN adaptations of WIPO, IRT and other proposals risk undercutting their intended effectiveness.


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Additional Informationwww.wipo.int/amc/en/domains/newgtld/


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WIPO eUDRP Initiative• Proposed by WIPO in December 2008 to benefit all UDRP users and

providers.

• Benign, targeted procedural proposal to allow filing and notification of paperless UDRP pleadings – with the safety valve of “Written Notice.” (a notice letter – but not pleadings – is sent to respondents’ physical address; picked up in ICANN’s post-delegation mechanism.)

• ICANN-held public consultation on the WIPO eUDRP Proposal concluded in mid-Aug 09; comments on ICANN’s website.

Clear support, uncontroversial procedural reform.

• Minor revisions and explanatory memo from consultation forwarded by WIPO to ICANN on September 17, 2009.

• ICANN approval for the eUDRP at the ICANN Board meeting on October 30, 2009.

• WIPO’s strong hope is for ICANN to have the approved eUDRP to be implemented and applicable before the end of this year.


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Fast-Track concept publicized: WIPO 10 Years UDRP – What’s Next Conference: Press Release

“WIPO representatives raised the possibility of opportunities for complainants to express “an intent to file”, including to facilitate identification of respondents in cases involving privacy shields. They also discussed the possibility for respondents to express early consent to transfer, or to indicate an intent to participate in the UDRP proceedings through the filing of a response. Other WIPO concepts include form complaints in anticipated default cases, as well as panel decisions on a summary basis in obvious cases of this type, all subject to adequate safeguards for preserving party equality and respondent participation.”


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WIPO Fast-Track UDRP: the starting point

• Base starting point on WIPO thoughts (early 2009):

WIPO UDRP case settlement rate (roughly 25% of all WIPO cases) Default rate (roughly 75% of all decided cases) Existing UDRP Rules provide a flexible and fair framework to

accommodate new WIPO practice. Permits lowering WIPO UDRP fees by potentially 50%. Facilitates driving down the cost of parties preparing pleadings

(roughly 75% of cases default). Quicker timelines, e.g., by summary decisions in obvious cases. Providing a meaningful remedy (transfer), faster, and at reduced

cost in appropriate cases.


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WIPO Fast-Track option: design elements

•Practice-informed.

•Flexible dual-track pleading and decision process.

•Differentiated filing fees and word count / annex limits and panel composition (single-member).

•Built in “safety-valves” for parties including:

• 20-day (UDRP) response period fully preserved,

• Extra safeguards include:

• Can request “standard” (UDRP) proceedings throughout the process as appropriate.

• Panel discretion (including as to procedure) fully preserved.


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Additional Information

Email: [email protected]

[email protected]

New gTLDs @OBP Milano 18 novembre2009

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