Second International conference for ccTLD registries and registrars of CIS, Central and Eastern Europe Update on WIPO Domain Name Dispute Resolution and ccTLD Program, and Registry and Registrar Best Practices Francisco Rios WIPO Arbitration and Mediation Center

WIPO Arbitration and Mediation Center – September 8, WIPO Arbitration and Mediation Center Established 1994 To promote and provide services for resolution of commercial disputes between private parties involving intellectual property (IP) and technology, through procedures other than court litigation (ADR). Not-for-profit ADR services include:  Arbitration (‘classic’ and expedited)  Mediation  Expert Determination (since 2007)  Domain Name Dispute Resolution (DNDR) (e.g. UDRP)

WIPO Arbitration and Mediation Center – September 8, WIPO Center (non-DN) Cases – A Snapshot General Subject Matter Type of Procedure Over 70 mediations and 110 arbitrations administered

WIPO Arbitration and Mediation Center – September 8, WIPO - Domain Name Dispute Resolution (DNDR) Services Provider of DNDR services under the Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP introduced in 1999, on WIPO’s recommendation, to provide TM owners with a quick and cost-effective mechanism for addressing the abusive use of a trademark in a domain name (‘cybersquatting’) UDRP is applicable to generic top level domains (gTLDs) (e.g. “.com”, “.net”, “.org” etc). Different mechanisms applicable to individual country code TLDs (ccTLDs) (e.g. “.me”, “.au”, “.fr”, “.pl”). Many ccTLD Registries have adopted the UDRP mutatis mutandi, or a dispute policy based on it. WIPO a Provider for 58 ccTLDs and maintains a ccTLD Program to help ccTLD administrators in developing best practices intended to prevent and resolve disputes in their domains.

WIPO Arbitration and Mediation Center – September 8, Resources and Information Provides a range of publicly available UDRP information and resources on its website to assist filing parties and panels, including filing guidance, model pleadings, FAQs, trademark portal, applicable gTLD and ccTLD Policies and Rules. The WIPO Overview of Panel Decisions at promotes awareness of WIPO panel positions in order to:  facilitate decision process and enhance consistency  assist parties (considering) filing complaints or responses  inform all interested parties on the application of UDRP criteria Covers 26 principal issues, with consensus on most. The WIPO Legal Index also provides selected panel decisions on many well-settled (and also some of the more contentious) aspects of the UDRP.

WIPO Arbitration and Mediation Center – September 8, WIPO Domain Name Disputes – All Cases by Industry

WIPO Arbitration and Mediation Center – September 8, Current issues in domain name dispute resolution Growth of professional ‘domainer’ industry, and implications for assessment by panels of possible bad faith in cases involving automated or large-scale domain name registrations. Widespread use of privacy and proxy registration services (identity ‘shields’) DN monetization:  parking/landing pages - ‘generic’ v ‘trademark’ value  advertising revenue arrangements (e.g. Google Ad Sense) – responsibility for third-party content Domain Name Portfolios: Effect of investment vehicles amassing large portfolios of domain names, being in turn acquired by other domain name investors. Number of domain names may be in the thousands, even the hundreds of thousands, and some cases acquisitions occur under identify shielding.

WIPO Arbitration and Mediation Center – September 8, Current issues in domain name dispute resolution Total domain name registrations today approaching 180 million. A significant number of new gTLDs may be around the corner. Some commentators report an increase in cybersquatting incidence of 18% from 2007 to the end of 2008  For example, Markmoniter in its Brandjacking Index for 2008, reported almost 450,000 suspected cases of cybersquatting based on tracking of only 30 popular brands. Last year WIPO saw 2,329 complaints filed under the UDRP (the busiest year on record, up 8% over ’07).

WIPO Arbitration and Mediation Center – September 8, Total Domain Name Registrations Source: Verisign Domain Name Industry Brief – February : 177 million DNs registered, a total up 16% from 2007 Including 71.1 million ccTLDs, up 22% from 2007

WIPO Arbitration and Mediation Center – September 8, Reported Cybersquatting 2008 Source: Mark Monitor TM Brand Jacking Index – The Year in Review

WIPO Arbitration and Mediation Center – September 8, WIPO Domain Cases per Year (as at September 2009) WIPO Majority UDRP Provider 2008: 6-7 cases per calendar day

WIPO Arbitration and Mediation Center – September 8, WIPO Domain Name Case Outcome Overwhelming majority result in transfer – respondent default rate (approx. 75%) - cancellation rarely sought remedy due to risk of cancelled DN’s being ‘snapped up’

WIPO Arbitration and Mediation Center – September 8, Top 25 WIPO Complainant Country Filing

WIPO Arbitration and Mediation Center – September 8, Top 25 WIPO Respondent Country Filing

WIPO Arbitration and Mediation Center – September 8, WIPO Case Languages Used Language of Proceedings – Reg Ag’ment - Panel Discretion – Center Procedure

WIPO Arbitration and Mediation Center – September 8, gTLDs in WIPO Cases Overall to date, the vast majority of DN disputes have concerned “.com”

WIPO Arbitration and Mediation Center – September 8, Top 20 ccTLDs in WIPO Cases As a proportion of the total, the relative number of ccTLD domain name cases filed with WIPO has been increasing over the years. The number of ccTLD complaints filed with WIPO in 2000, was less than 1% of the total; 13% in 2008.

WIPO Arbitration and Mediation Center – September 8, Domain Name Scripts in WIPO Cases Non-ASCII characters, or Internationalized Domain Names, are available at the second level in some gTLDs (.com,.net,.org,.info,.biz) and many ccTLDs (e.g.,.ch,.de,.cn,.jp,.kr) (e.g. 三共.com )

WIPO Arbitration and Mediation Center – September 8, Key Features of (Existing) DN Dispute Mechanisms – the UDRP International, curative procedure Contract-based (RA – RAA - ICANN) Permits trademark owners to resolve clear cases of abusive domain name registration (‘cybersquatting’) Direct enforcement through registrars (‘10-b/day rule’) Without going to court but preserving court options (MJ derived from RA) Time and cost effective (approx 60 days, USD1,500 for single member) What is required?  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)).

WIPO Arbitration and Mediation Center – September 8, eUDRP Through limited, targeted amendments to the UDRP Rules, WIPO’s proposal to ICANN for an “eUDRP” provides a sound, fair basis on which to preserve reasonable, effective notice of the commencement of UDRP proceedings while removing paper pleadings from the UDRP process. Importantly, it does so without causing prejudice to either party, which in cases administered by the WIPO Center could exclusively use . WIPO communicated its eUDRP proposal to ICANN in late December After informal consultation, ICANN posted the proposal for a 30- day public comment period (July 13 to August 12, 2009). Comments submitted showed clear support overall. It is WIPO’s strong hope that ICANN will confirm its adoption of the proposal within a reasonable time

WIPO Arbitration and Mediation Center – September 8, ccTLD Registration Models “Open” vs. “Restricted” Types of Restrictions  Location requirement  Nationality/Address  Verification  Entity vs. individuals  (Numerical) Application limits  “Yellow pages”  Subdomains  Justification of application  Verification Trend towards open models (+ ADR)

WIPO Arbitration and Mediation Center – September 8, ccTLD Dispute Models No obligation to adopt the UDRP  But protection of IP rights?  National courts  Less suitable the more “open” a ccTLD is WIPO ccTLD Program: advice on request  WIPO ccTLD Best Practices  Avoiding conflicts through appropriate registration practices  e.g.: registration agreement, contact details, WHOIS, submission to administrative procedure  Protecting IP in ccTLDs through administrative procedures

WIPO Arbitration and Mediation Center – September 8, UDRP as a flexible model Key Features (1) Mandatory procedure - contractual basis  Part of domain name registration agreement Efficient (quick results at moderate costs)  Direct enforcement  Transfer or cancellation  Limited scope and streamlined procedure  Written (online) procedure  Single exchange of pleadings  Deadlines  Blocking dn transfers during procedure

WIPO Arbitration and Mediation Center – September 8, UDRP as a flexible model Key Features (2) Due process safeguards  Preserve recourse to national courts of justice  Facilitates acceptance (UDRP: <1% contested)  Neutrality  Independent of dn registration and administration  Impartial and independent decision-makers  Reasoned decisions, available to the public  Notice  All possible means (Whois)  Burden of proof on Complainant  Complainant pays fees

WIPO Arbitration and Mediation Center – September 8, UDRP as a flexible model Adjustable elements (1) Bad faith registration and/or use or any infringement of (IP) rights?  Infringement under national law:.ch,.fr Local rights only or also “foreign” rights?  ccTLD typically addresses a certain territory  Location requirement for dn registration? Trademarks only?  may also concern different types of intellectual property

WIPO Arbitration and Mediation Center – September 8, UDRP as a flexible model Adjustable elements (2) Procedure  Local language(s)  Nationality and qualification of Panelists  Factors:  Decisions to be made in accordance with local law rather than standard (bad faith) conditions  Local/regional and international dispute resolution providers  Mediation element .ch,.uk

WIPO Arbitration and Mediation Center – September 8, UDRP as a flexible model Balance:  Parties’ interest in predictability, and IP owners’ interest in uniformity and possibility of consolidating complaints against the same domain name holder vs  Desire to adapt to local environment

WIPO Arbitration and Mediation Center – September 8, WIPO ccTLD Experience 58 ccTLDs using WIPO dispute resolution services (September 2009)  Initial period:  smaller (.sh) or “de facto” gTLDs (.tv)  Then:  more established TLDs (.au,.ie,.mx,.nl,.ch,.fr)  Added in : .ao (Angola),.bo (Bolivia),.bm (Bermuda),.me (Montenegro),.mp (Mariana Islands).pe (Peru),.sl (Sierra Leone) ccTLD-involving WIPO cases:  December 1999 to September 2009: 1,188

WIPO Arbitration and Mediation Center – September 8, WIPO ccTLD Experience Types of Policies UDRP: 36 .ag,.am,.as,.bm,.bs,.bz,.cc,.cd,.co,.cy,.dj,.ec,.fj,.gt,.ki,.la,.lc,.md,.me,.mw,.na,.nr,.nu,.pa,.pk,.pn,.pr,.ro,.sc,.sl,.tk,.tt,.tv,.ug,.ve,.ws Variations of UDRP: 13 .ae,.ao,.au,.bo,.es,.ie,.ir,.nl,.mp,.mx,.pe,.ph,.tm Other (UDRP-inspired) administrative procedure: 5 .ch,.fr,.li,.re,.ma Arbitration: 4 .ac,.io,.pl,.sh

WIPO Arbitration and Mediation Center – September 8, WIPO ccTLD Database

WIPO Arbitration and Mediation Center – September 8, Registry and Registrar Best Practices ICANN is currently working with registrars on a draft Best Practices document intended to better protect registrants in UDRP proceedings Although non-binding as such it is expected to provide ICANN’s almost 1,000 accredited registrars with uniform guidance on such matters as (1) how and when to timely lock disputed domain names (2) how and when to provide relevant requested registrar verification information to Providers (which is required for notification and language determination purposes) (3) how to react to and give effect to settlement agreements reached between disputing parties in a UDRP proceeding. A revised draft of the guidelines is currently being prepared and is expected to be published within the next two weeks or so. Previous version of the draft is available at complaint-31oct08-en.pdf complaint-31oct08-en.pdf

WIPO Arbitration and Mediation Center – September 8, ICANN-Envisaged New gTLD Expansion: Trademark-related Concerns “.com” → “.tm”, “dictionary”, etc. Presents business opportunities as well as legal and practical challenges. 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.” Concerns broadly shared and expressed, including by governments (GAC Principles regarding New gTLDs, March 2007, and ensuing documents). Trademark abuse → consumer confusion → undermining of public trust in the DNS

WIPO Arbitration and Mediation Center – September 8, WIPO Recommendations 1. Trademark-based Pre-Delegation Dispute Resolution Procedure (published in DAG I & II) 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 for the Legal Rights Objections (LRO) procedure - taking into account the “WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet.” Accepted to administer disputes under LRO Procedure.

WIPO Arbitration and Mediation Center – September 8, WIPO Recommendations 2. Trademark-Based Post-Delegation Dispute Resolution Procedure In Jan 18, 2008 letter, WIPO called for a permanent administrative option to allow for filing of complaints, when the registry’s actual manner of operation or use is alleged to cause or materially contribute to trademark abuse. ICANN confirmed availability of trademark-based post-delegation mechanism in the New gTLD Program Explanatory Memorandum on “Protection of Rights of Others in New gTLDs” of Oct 8, 2008 WIPO Center communicated to ICANN on Feb 5, 2009, a substantive proposal for a trademark-based post-delegation dispute resolution procedure.

WIPO Arbitration and Mediation Center – September 8, WIPO Recommendations 2. Trademark-Based Post-Delegation Dispute Resolution 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. The criteria build on pre-delegation LRO criteria and consideration factors, existing UDRP jurisprudence, and accepted principles of law.

WIPO Arbitration and Mediation Center – September 8, WIPO Recommendations 2. Trademark-Based Post-Delegation Dispute Resolution Procedure (cont’d) Scenarios: E.g., Registry uses the TLD for a purpose unreasonably inconsistent with relevant representations made in the application phase, such that trademarks are infringed. E.g., TLD operator turns a blind eye to systemic cybersquatting in its domain, instead of adopting appropriate mechanisms to counter such abuse.

WIPO Arbitration and Mediation Center – September 8, Trademark-Based Post-Delegation Dispute Resolution Procedure (cont’d) Given the perceived convergence of registry, registrar, and registrant roles within the DNS, 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 observed conduct of one particular ICANN accredited registrar. Alleged conduct in lawsuits involving the registrar included “UDRP evasion services” and “contributory cybersquatting.” WIPO Recommendations

WIPO Arbitration and Mediation Center – September 8, WIPO Recommendations 3. Discussion Draft Expedited (Domain Name) Suspension Mechanism Communicated to ICANN on April 3, 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. Includes an important safety valve mechanism for defaulting respondents.

WIPO Arbitration and Mediation Center – September 8, WIPO Comments to IRT Reports WIPO Comments to Draft IRT Report (May 10, 2009). WIPO Comments to Final IRT Report (June 18, 2009). IRT Reports represent substantial 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 Center looks forward to continued dialogue.

WIPO Arbitration and Mediation Center – September 8, General Comments - IP Clearinghouse System design should minimize burdens on users and stakeholders. Implementation should take account of operational realities. Relationship between mechanisms should be further clarified. IP Clearinghouse Ubiquitous role envisaged for the Clearinghouse calls for adequate safeguards and ICANN oversight. Differentiation of roles may be appropriate for the Clearinghouse. Trademark owners should not shoulder the entire burden of financing a Clearinghouse.

WIPO Arbitration and Mediation Center – September 8, Uniform Rapid Suspension Mechanism Requiring panelist evaluation even in URS default cases would unnecessarily increase costs and burdens to trademark owners. The duration of the proposed remedy is of limited effectiveness. The URS must interoperate with the UDRP. The URS substantive criteria adaptations are not clear. Elements of the URS may be adjusted with a view to time and cost- efficiency. Looking at WIPO UDRP Cases - the vast majority default rate in WIPO cases around 75%

WIPO Arbitration and Mediation Center – September 8, Post-Delegation Dispute Resolution Mechanism at the Top Level Post-delegation system design must bear in mind its intended preventive effect. Trademark owners should be given the option to initiate a post- delegation sua sponte. WIPO Center recommends an analogous dispute resolution procedure for ICANN-accredited registrars.

WIPO Arbitration and Mediation Center – September 8, In tandem with the introduction of new gTLDs, the introduction of IDNs into top-level domains is also expected soon.  ICANN’s IDNC Working Group has recommended a mechanism to introduce a limited number of non-contentious IDN ccTLDs, based on an ISO list of two letter country codes, via an IDN ccTLD ‘Fast Track’ Process  ICANN’s Generic Names Supporting Organization (GNSO) has also recommended that some of the proposed new gTLDs be internationalized domains  Implications for substantive UDRP analysis? (identity and confusing similarity) Internationalized Domain Names (IDNs)

WIPO Arbitration and Mediation Center – September 8, Additional Information s and Website: WIPO activities related to new gTLDs Selected WIPO Correspondence with ICANN gTLD Reports Upcoming Events: