WIPO-SCIPS Training Program November 28, 2008 IP Disputes and Conflicts Management Sarah Theurich WIPO Arbitration and Mediation Center

Sarah Theurich, WIPO-SCIPS Training Program November 28, Overview WIPO Arbitration and Mediation Center Trends in IP Disputes - Litigation v. ADR WIPO Mediation WIPO Arbitration WIPO Expert Determination WIPO ECAF WIPO Case Experience Domain name dispute resolution

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Arbitration and Mediation Center Established in 1994 Provides alternative dispute resolution options for the resolution of intellectual property disputes between private parties Time and cost effective resolution of disputes between private parties outside court (ADR)  Arbitration  Mediation  Expert Determination  Domain Name Dispute Resolution

Sarah Theurich, WIPO-SCIPS Training Program November 28, Trends in IP Disputes Internationalization of use of IP rights & globalization of markets; need for cross-border solutions for disputes - Different languages, cultures, geographically limited laws  Need for neutrality (Avoid home-court advantage)  Need for global cross-border solutions Growth of complex long-term relationships; strategic alliances - Licensing, cross-licensing, patent pooling  Need for mechanisms that preserve long term business relations

Sarah Theurich, WIPO-SCIPS Training Program November 28, Trends in IP Disputes Increasingly technical and specialized nature of IP  Need for specific expertise of “neutral” Closely guarded relationships  Need for confidentiality Highly competitive areas; short product and market cycles  Need for time-efficient procedures

Sarah Theurich, WIPO-SCIPS Training Program November 28, Litigation While the exploitation of IP is global, IP rights are territorial Enforcement usually made on country-by-country basis Different legal systems - risk of contradictory results (e.g. Angiotech patent 2007) Costs Overview of Litigation in Different Jurisdictions - Patents as an Example (Source: Patent Litigation, European Lawyer, 2006):

Sarah Theurich, WIPO-SCIPS Training Program November 28,

8 Alternative mechanisms: Mediation, Arbitration, Expert Determination Mediation: a non-binding procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of a dispute. Mediator does NOT decide dispute. Arbitration: a procedure in which the dispute is submitted to one or more arbitrators who make(s) a final and binding decision (award) on the dispute. Expert determination: a procedure in which a specific matter (typically issues of technical, scientific or related business nature) is submitted to one or more expert(s) who make(s) a determination. An expert determination is binding, unless the parties agreed otherwise.

Sarah Theurich, WIPO-SCIPS Training Program November 28, Advantages of ADR Single Procedure  Multi-jurisdictional disputes in one proceeding  No jurisdictional problems Party control / autonomy / consensual Flexibility : “à la carte” Expertise  Party selection of neutrals; tailored appointment Neutral  Arbitrator/mediator/expert, language, law, venue Confidential  Existence, disclosures, result (Arbitration Rules: Art. 52, 73-76)  WIPO Mediation Rules: Art , Expert Determination Rules: Art. 15 Mediation: commercial solution, restore a working business relationship

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Center: Options

Sarah Theurich, WIPO-SCIPS Training Program November 28, Routes to ADR Court Annexed (in particular mediation) Voluntary decision of the parties  Submission Agreement  ADR Clause

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Mediation Clause Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be […]. The language to be used in the mediation shall be […].

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Mediation Process Commencement Appointment of Mediator Initial Conference Meetings Conclusion  Request for Mediation (Art 3-5); Fees Art 21)  Role of the mediator (Art 13); Appointment (Art 6-7)  Conduct of the mediation (Art 9-12)  Set up the first meeting; Agree on preliminary exchange of document, if any  Agree on ground rules of the process; Gather information and identify issues; Explore the interests of the parties; Develop options for settlement; Evaluate options  73% success; duration 1-7months

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO List of Neutrals WIPO List of Mediators, Arbitrators and Experts  Mediators, Arbitrators and Experts  Patents, trademarks, copyright, IT, Domain names  Industry expertise  Detailed profiles

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Mediation Case Example Consulting contract btw. European technology consulting company (patent owner) and Asian manufacturer Failure to negotiate patent license WIPO Mediation Request Appointment of mediator (patent, mediation and technology expertise) Two-day mediation session Result: license, agreement on future consulting contracts

Sarah Theurich, WIPO-SCIPS Training Program November 28, Mediation followed by Arbitration Try mediation before arbitration, at least until  lapse of time period  termination Combining the benefits  arbitration well- prepared "Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be […]. The language to be used in the mediation shall be […]” If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. Alternatively, if, before the expiration of the said period of [60][90] days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators] [a sole arbitrator]. The place of arbitration shall be […]. The language to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim referred to arbitration shall be decided in accordance with the law of […]."

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Arbitration Clause Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators] [a sole arbitrator]. The place of arbitration shall be […]. The language to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim shall be decided in accordance with the law of […].

Sarah Theurich, WIPO-SCIPS Training Program November 28, Problematic Arbitration Clauses “Arbitration in Geneva.” “WIPO Expedited Arbitration of infringement disputes, [other provider] arbitration of contractual disputes.” “Any disputes shall be solved by arbitration between the parties; failing that, arbitration in the English language shall be conducted in Houston, according to the Paris Convention, which shall be final and binding upon the parties.”

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO ARBITRATION Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Claim (30 days) Statement of Claim (30 days) Statement of Defense (30 days) Hearings Closure of Proceedings (9 months) Closure of Proceedings (9 months) Final Award (3 months) Further Written Statements and Witness Statements Rules on Confidentiality (Art. 52, 73-76) Rules on technical evidence (Art WIPO Arbitration Rules) Interim measures (Art. 46) Arbitration: finality / enforceability of awards - New York Convention with limited exceptions (e.g. denial of due process) - “automatic” enforcement of arbitral awards signatories

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO ARBITRATION Request for Arbitration Answer to Request for Arbitration (30 days) Appointment of Arbitrator(s) Statement of Claim (30 days) Statement of Claim (30 days) Statement of Defense (30 days) Statement of Defense (30 days) Hearings Closure of Proceedings (9 months) Closure of Proceedings (9 months) Final Award (3 months) Further Written Statements and Witness Statements Request for Arbitration and Statement of Claim WIPO EXPEDITED ARBITRATION Answer to Request for Arbitration and Statement of Defense (20 days) Appointment of Arbitrator Hearing (maximum 3 days) Hearing (maximum 3 days) Closure of Proceedings (3 months) Closure of Proceedings (3 months) Final Award (1 month) One exchange of pleadings Shorter time limits and hearings Sole arbitrator Fixed fees

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Arbitration Case Example US university registers TM for system in US, Canada, etc. Asian IT manufacturer registers TM for computer products in 16 countries Opposition proceedings & litigation for 6 years TM coexistence agreement; WIPO arbitration clause US university’s TM application refused in Asian country, requests Asian manufacturer’s collaboration Interim award (specific performance)

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Expert Determination Expert determination procedure intended to facilitate resolution of disputes requiring specialized expertise to determine specific issues of a technical, scientific or related business nature. More informal, flexible and expeditious than arbitration Determination binding (unless parties agree otherwise) Stand-alone procedure or may be combined with other procedures.

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Electronic Case Facility (ECAF) Available for arbitration, mediation, expert determination cases under WIPO Rules  Certain exceptions: America’s Cup Jury Procedure Main features  Web-based electronic docket  Facilitation of party / neutral case management  Easy, Instant, Location-independent  Secure (secure card, username, pin code, password…) Submission in most common formats All actors may view and search the Docket (by submitting actor, date, subject title) alerts communicated to all actors when new submission made User Information 

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Arbitration and Mediation Case Experience Over 70 mediations Over 100 arbitrations Parties from 18 countries (domestic & international)  Austria, Canada, China, Denmark, Finland, France, Germany, Ireland, Israel, Italy, Japan, the Netherlands, Panama, Romania, Spain, Switzerland, UK, USA. Place of Arbitration  France, Germany, the Netherlands, Switzerland, USA Procedures  English, French, German, Italian

Sarah Theurich, WIPO-SCIPS Training Program November 28, Types of Procedure

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Caseload: Subject matter

Sarah Theurich, WIPO-SCIPS Training Program November 28, Settlement in WIPO Mediation and Arbitration Cases Mediation Arbitration

Sarah Theurich, WIPO-SCIPS Training Program November 28, Uniform Domain Name Dispute Resolution Policy (UDRP) Background (WIPO advice to ICANN )  Need for a procedure permitting trademark owners to resolve clear cases of abusive domain name registration (cybersquatting) without going to court UDRP adopted by ICANN in 1999 Creation of an administrative procedure to settle disputes relating to domain names (all gTLDs and some ccTLDs)  Alternative to litigation Domain name registrants are bound to the UDRP through their registration agreement Remedies - transfer or cancellation only (no costs or damages)

Sarah Theurich, WIPO-SCIPS Training Program November 28, Why the UDRP? Global Mandatory procedure – contractual basis (part of domain name reg. agreement) Directly enforceable decisions Non-profit fees (USD 1,500 for 1-5 domain names) Fast – approximately 2 months Transparent – decisions publicly available

Sarah Theurich, WIPO-SCIPS Training Program November 28, What is Required Under the UDRP? Three Elements Trademark must be identical or confusingly similar to the domain name (UDRP Policy, s. 4.(a)(i)); and The registrant of the domain name must have no rights or legitimate interests in the domain name (UDRP Policy, s. 4.(a)(ii)); and The domain name must have been registered and used in bad faith (UDRP Policy, s. 4.(a)(iii)).

Sarah Theurich, WIPO-SCIPS Training Program November 28, First Element – Identical or confusingly similar to trademark Two requirements:  Complainant must prove its rights in a trademark  The domain name must be identical or confusingly similar to that trademark

Sarah Theurich, WIPO-SCIPS Training Program November 28, Second Element - Rights or Legitimate Interests Examples:  use of the domain name in connection with a bona fide offering of goods or services  registrant commonly known by the domain name  legitimate noncommercial or fair use of the domain name (e.g., free speech website)

Sarah Theurich, WIPO-SCIPS Training Program November 28, Third Element - Bad Faith Examples of bad faith:  registration for purpose of selling the domain name back to the trademark holder for profit  pattern of preventing trademark owners from registering domain names  using the domain name to sell goods through consumer confusion Totality of circumstances considered

Sarah Theurich, WIPO-SCIPS Training Program November 28, The Procedure at a glance Complaint Amend member Panel? Response Commencement Implement Appointment Decision “Appeal”?

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO Resources WIPO Overview of Selected UDRP Questions: view/index.html WIPO Legal Index of UDRP Decisions: Filing Guidelines Model Working Documents (Complaint, Response)

Sarah Theurich, WIPO-SCIPS Training Program November 28, Some Examples of Disputed Domain Names tomcruise.com telstra.org dior.org thewiggles.com sydneyoperahouse.net jpmorgan.org uefachampionsleague.com audi.net microsoft.org westfieldshopping.com juliaroberts.com madonna.com findharrypotter.com nicolekidmannude.com jimihendrix.com doctorswithoutborders.com waynerooney.com

Sarah Theurich, WIPO-SCIPS Training Program November 28, Some facts and figures Over 14,323 domain name cases filed since 1999 Parties have come from 147 countries  USA top filing country Cases have been administered in 15 different languages  Chinese, Danish, Dutch, English, French, German, Italian, Japanese, Korean, Norwegian, Romanian, Russian, Portuguese, Spanish, Swedish

Sarah Theurich, WIPO-SCIPS Training Program November 28, WIPO ccTLD Program ccTLDs – country code top level domains (e.g. “.ch”, “.fr”…) 56 ccTLDs using WIPO dispute resolution services Advice on request  WIPO ccTLD Best Practices  Avoiding conflicts through appropriate registration practices  Protecting IP in ccTLDs through administrative procedures

Sarah Theurich, WIPO-SCIPS Training Program November 28, Events and Information WIPO Academy Online Course on Mediation and Arbitration WIPO ADR Workshops : - WIPO Workshop for Mediators in Intellectual Property Disputes – May 28-29, WIPO Arbitration Workshop – October WIPO Domain Name Workshop – October 2009 Mailing list : Further information :