WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes
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Transcript of WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes
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Chartered Institute of Arbitration Irish Branch
Monthly Round TableArbitration Forum
“WIPO Arbitration: current trends with intellectual & domain name disputes”
Domain Name Disputes
By Joseph Dalby BL
Monday 15 April 2013
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Chartered Institute of Arbitration Irish Branch
Monthly Round TableArbitration Forum
“WIPO Arbitration: current trends with intellectual & domain name disputes”
Domain Name Disputes
By Joseph Dalby BL
Monday 15 April 2013
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Dispute Resolutions Procedures for .ie, .com and .eu domains
Joseph Dalby BL
Law Library, Dublin4-5 Gray's Inn Sq, London
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Scope of Topic
Participants and policies
ICANN's Uniform Dispute Resolution Policy
.ie Dispute Resolution Policy
.ie DRP decisions
.eu Dispute Resolution Policy
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The Namespace
Generic Top Level Domains
- .com, .org., ..info
- sponsored domains, e.g. .aero, .Brand/city/cause/TBA
Country-code Top Level Domains
- .ie, etc.
Left and right of the dot
www.joseph.dalby.ie/about
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Electronic Commerce Act 2000
Power to authorise, prohibit or regulate the registration and use of the ie domain name in the State.
“for the purpose of easy comprehension, fairness, transparency, avoidance of deception, promotion of fair competition and public confidence”
“after consultation with Minister and such persons as appropriate” - Internet Corporation for Assigned Names and Numbers?
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Comreg's Powers
(a) specify .ie registry
(b) prescribe registration policies, including revocation
(c) appeal procedures for refusal / revocation
(d) fees
(e) other matters
(none acted upon?)
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Dispute Resolution Model
ICANN / Registry Policy
Compulsory contractual submission to “administrative procedure” by registrant
Registrar re-selling policy
Accredited dispute resolution providers
Neutrals
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.ie Dispute Resolution Policy
1.1 The Registrant agrees to submit to a mandatory administrative proceeding
… before an independent and impartial panel (“the Administrative Panel”).
The Administrative Panel shall be appointed by the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center (“the Provider”)
… in accordance with the WIPO Dispute Resolution Rules of Procedure for .ie Domain Name Registrations
… in the event a Complainant claims that:
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.ie DRP
1.1.1 a domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Registrant has no rights in law or legitimate interests in respect of a domain name; and
1.1.3 a domain name has been registered or is being used in bad faith.
.
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Reasons for Adaptations
.ie is managed registry
Restrictions on registration
– Authentication and documentary proof
– Real and substantial connection with Ireland
Cross-border reach (32 counties)
Non-commercial and fair use - ?
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Limitations on adaptations
1.1.3 registration or use in bad faith
1.2 Registration is not evidence of rights in law
1.3 Protected Identifiers include trade and service marks protected in the island of Ireland.
6.1 A Panel decision to transfer a domain name registration is subject to the prevailing party meeting the registration conditions for .IE
.ie Whois does not show date of registration
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Decisions
36 in 10 years arising from 180,000+ registrations including
cartridgeworld.ie
groupon.ie
monsterfinance.ie
todayfm.ie
taxassist.ie
fatboy.ie
facebook.ie
whatcar.ie
kelkoo.ie
adidas.ie
Buy-sell.ie
ikea.ie
three.ie
ebay.ie
champagne.ie
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Cross-border issues
Consistent with UDRP, the complainant must establish a prima facie case of factors within the the knowledge and control of the respondent.
Evidence of trade with Ireland suffices.
UK Trademarks is proof of protected identifier because enforceable in N. Ireland, but not third countries (cf Nominet). .
cf. If no trademark, businesses outside 32 counties must demonstrate real and substantial connection. (e.g shopelectric.ie)
Amount of turnover irrelevant / need for breakdown (asos.ie)
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ICANN UDRP
(i) domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) no rights or legitimate interests in respect of the domain name; and
(iii) domain name has been registered and is being used in bad faith.
“rock, paper, scissors?”
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UDRP, Para 2
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.
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Registration or Use
Ex ante registration system
Drawing away hits (assumed advertising revenue
Offers to sell / privilege
Incorporation for purposes of registration (daftmotors.ie, monterfinance.ie
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Procedure
WIPO Dispute Resolution Rules of Procedure for .ie Domain Name Registrations
No material differences
Any person or entity
Copy of the complaint to the Registrant and IEDR
Registry locks down domain name.
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Features
Written – hearings possible
One or three panels
Panel regulates procedure
Subject to equitable treatment (“equity”?)
Reasoned decision, which Registry accepts.
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Judicial Control
WIPO Rules:
Panel has discretion to suspend or terminate or to proceed to a decision
Party not precluded from initiating litigation
IEDR – a judicially reviewable body?
– body exercising statutory powers?
– Cyberbritain JR in UK
Does Arbitration Act 2010 apply?
– Is Ireland place of arbitration?
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.eu Dispute Resolution
Commission Regulation (EC) No 874/2004
1. An ADR procedure may be initiated by any party where:
(a) the registration is speculative or abusive within the meaning of Article 21;
Thereafter adopts the same cadre of principles as for UDRP
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.eu ADR
.eu Alternative Dispute Resolution Rules
Administered by Arbitration Court attached to the Czech Chamber of Commerce
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ECJ Decisions
‘licensees of prior rights’ do not refer to a person who has been authorised by the proprietor of the trade mark concerned solely to register, in his own name but on behalf of that proprietor, the domain
bad faith can be established by circumstances other than those listed in Article 21(3)(a) to (e) of that regulation.
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Future
General trend is to liberalize availability
Sponsored and personalisation of names
What happens for Pages on Facebook, identities on Skype, profiles on LinkedIn?
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Joseph Dalby BL
Law Library, Four Courts, Dublin 7
01 817 7700
4-5 Gray's Inn Sq, Gray's Inn, London
020 7404 5252
www.4-5.co.uk