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© Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, UK. The content of this packet is an introduction to Cooley (UK) LLP’s capabilities and is not intended, by itself, to provide legal advice or create an attorney-client relationship. Prior results do not guarantee future outcome.

UDRP and other acronymsReshaping online rights protection through ADR

Gareth DicksonFordham IP Conference, 2016

Review the UDRP

Look at other online RPMs

Propose the UDRP as a model for all online RPMs

In the next seven minutes we will:

AKA “THE UDRP”

Uniform Domain Name Dispute Resolution Policy

UDRP is:An administrative, contractual procedure

RIGHTSHOLDERS

ICANNRegistryoperator

Registrar

Registrar

Registrar

UDRP is:Popular, at least at WIPO

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# million registrations # UDRP cases # of domain names in UDRP cases

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# m

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Using statistics from Verisign (http://www.verisign.com/en_US/innovation/dnib/index.xhtml?loc=en_US)and WIPO (http://www.wipo.int/pressroom/en/articles/2016/article_0003.html)

• UDRP serves as a model for other dispute resolution initiatives

• BUT:

Image source:

https://icannwiki.com/Jay_WesterdalCC by 4.0

https://creativecommons.org/licenses/by/4.0/

Top LevelSpectrum CEOJay Westerdal,speaking toDomain Incitehttp://domainincite.com/19736-tls-says-feedback-will-be-udrp-proof-will-hire-lawyers-to-defend-registrants

UDRP is:Predictable; but to a fault?

<trademark.feedback> domain names present “a great opportunity for domainers to register domains that will be UDRP proof”

THE UDRP IS NOT THE ONLY WAY TO PROTECT TRADEMARKS

Other RPMs

High Court in London affirms 17 year-old ruling that domain names incorporating distinctive trading names can be transferred to the complainant regardless of how they are used:

“actionable passing off occurred at the point of registration of the Domain Names and therefore [the court] need not consider the steps

which the claimant suggests it would take to avoid confusion” (paragraph 17)

affirming British Telecommunications Plc & Ors v One In A Million Ltd & Ors

[1998] EWCA Civ 1272 (23 July 1998)

Protection exists at law:Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509 (Ch)

< trademark .tld >

Multiple layers of protection at ICANN

CommunityObjections

Legal RightsObjections

StringContention

Limited PublicInterest Objections

TMCH URS TMPDDRP

The most recent evolution of the UDRP

URS

New gTLDs only (at present)

Suspension

$375+ for Complaint (500 words); $400+

for Reply (2,500 words)

Must be clear and convincing

1 expert at first instance; 1 or 3

experts on appeal

UDRP

All gTLDs and some ccTLDs

Transfer or cancellation

$1,300+ for Complaint

(5,000 words); no fee for

Reply (5,000 words)

Balance of probabilities

1 or 3 experts; no appeal

Virgin Enterprises Limited v. lawrence fain (FA1402001545807)

• “the only use of the disputed domain name … is what appears to be a generic, monetized parking page for the registrar … which does not appear to include any references to Complainant, Richard Branson or the BRANSON trademark.

• Taken together, these issues – that is, failure to establish in the record that the relevant trademark is strong plus the absence of any evidence that the domain name is currently being used in a manner that is associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.”

Famous fails in the URS: <branson.guru>

Netflix, Inc. v. Masterclass Media et al. (FA1509001639527)

• Respondent: “I registered this domain with the intention of creating a fan site, with news and updates on the Complainant’s service. I have all intention of proceeding while respecting the Complainant's marks”.

• Expert:

• “Such a use by Respondent could evidence a legitimate noncommercial or fair use under the Policy. … Respondent has failed to put into the record any facts which support his claim.

• URS paragraph 8.4 states ‘[i]f the Examiner finds that … genuine issues of material fact remain in regards to any of the elements, the Examiner will reject the Complaint under the relief available under the URS.’ Because this record raises, but does not provide adequate information to conclude whether or not Respondent has a legitimate right or interest to the domain name, I must find for the Respondent on this element.” (emphasis added)

Famous fails in the URS: <netflix.news>

Banco Bilbao Vizcaya Argentaria v. Gandiyork SL (FA1403001548656)

• “Respondent has stated that it ‘provide[s] category 44 (*.LAND) services to Bellreguart, Beniarjo, Villalonga and Almoines, which are 4 neighboring towns’ – that is, towns that start with the letters B, B, V and A.  The Respondent’s provision of a ‘Superior Agronomical Engineer degree’ and ‘a map of the area’ are also informative.”

• Although Respondent “used the disputed domain name in connection with a monetized parking page that contains links related to the BBVA trademark, there is a key distinction in this case.  Namely … the Respondent in the instant case has stated that it was ‘most surprised’ to learn of the page, which differed from its own review of the website, and that its attempts to ‘cancel’ the monetized parking page were unsuccessful because ‘the domain is blocked because of this dispute.’  … this explanation from Respondent is plausible.”

Famous fails in the URS: <bbva.land>

“IF I HAD ASKED PEOPLE WHAT THEY WANTED, THEY WOULD HAVE SAID FASTER HORSES” – HENRY FORD

Reshaping RPMs

Industry is taking the lead

GNSO RPM PDP

Phase 1

TMCH

URS

PDDRP

Phase 2 UDRPSubstance

Procedure

ICANN is also reviewing RPMs

UDRP

Substance

Appeals Website content “and” vs “or”

Procedure

Presumptions Panelist selection

Damages / costs

ICANN’s first formal review of the UDRP will be thorough

Limitation periods RDNH

Unmasking privacy services

Mandatory mediation

“We have no remit or responsibility to render judgment on which sites are terrorists, which sites are good pharmacies, which sites are bad pharmacies, which sites are committing crime, which sites are infringing copyrights. … It's not for me and not for ICANN staff to make that decision. It's for us as a community. Businesses, registries, registrars, IP holders, those concerned with public safety, governments.”

ICANN President, ICANN54 Welcome Speech, Dublin October 19, 2015

The “logical” layer in which ICANN operates has only a limited remit

ICANN’s (decision-making) community

https://www.icann.org/sites/default/files/assets/org-chart-1800x1000-04mar14-en.png

“SO MANY OF OUR DREAMS AT FIRST SEEM IMPOSSIBLE, THEN THEY SEEM IMPROBABLE, AND THEN, WHEN WE SUMMON THE WILL, THEY SOON BECOME INEVITABLE.” – CHRISTOPHER REEVE

Conclusions: What next?

• Trademark protection via UDRP is stable and effective. Passing off is also a viable option in London post-Yoyo.email decision

• UDRP and URS panelists already determine whether “use” of a domain name is in bad faith – why limit the UDRP to trademarks?

• UDRP review is infrequent: now is the time for all sides to be bold, but realistic

• Focus on curative rather than preventative measures, to be administered by a third party

• Industry has shown RPMs can be innovative, and is actively looking into how best to resolve copyright issues

• Get involved with ICANN GNSO RPM PDP, either directly or via someone already part of ICANN-land

Conclusions

Gareth Dickson

Gareth helps clients resolve intellectual property and online disputes for which an international perspective is required, including in relation to software, e-commerce, social media, new gTLDs, apps and entertainment services. He is admitted to practice in England and Wales and in New York, and is a UDRP Panelist as well as a member of ICANN’s IP Constituency.

Whether acting for claimant or defendant, clients welcome Gareth’s proactive approach, his responsiveness and his team’s ability to win hard cases: in 2013 and 2014, Gareth led nine disputes to determination and won all nine. A tenth dispute was stayed when our client received all the relief sought on the claim form.

Working at the forefront of the development of the Internet as a tool of commerce, Gareth regularly advises clients on intermediary liability and safe harbour protection, as well as the IP and commercial issues associated with new technologies. In 2013 Gareth was appointed to the Law Society’s specialist Intellectual Property Law Committee, and in October 2014 he was appointed to the Law Society’s Civil Justice Committee. The World Intellectual Property Organization made Gareth their youngest UDRP panelist, in December 2014.

Gareth’s recent speaking engagements on digital media issues span the UK and the USA, including on online rights protection at the Fordham IP Conference, on social media at the Sweet & Maxwell Annual Trade Mark Conference, on mobile apps as part of London Technology Week, and on jurisdiction and intermediary liability at the IBC International Copyright Law Conference. Gareth is regularly quoted in the media, including The Times, Managing IP and World Trade Mark Review, regarding the intersection of law and technology.

AssociateCooley (UK) LLP

Dashwood 69 Old Broad Street London EC2M 1QS

t. +44 (0)20 7556 4479 m. +44 (0)79 2048 9719

@garethdicksonlinkedin.com/in/GarethDickson