WIPO - CEDA REGIONAL ROVING SYMPOSIUM ON INTELLECTUAL PROPERTY FOR SMES Paramaribo, Suriname; Castries, St. Lucia; Kingston, Jamaica; and Santo Domingo, Dominican Republic July 2005 WIPO Domain Name Dispute Settlement: An Introduction Christopher. M. Kalanje, Consultant, SMEs Division, WIPO

Road Map The Domain Name System (DNS) Domain Names and Business Domain Name Dispute Resolution Conclusions Relevance of Intellectual Property

The Domain Name System (DNS) INTERNET Exponential increase of users Multi-jurisdictional Relative affordability Not specifically regulated Multi-functionality hence popular No central point of authority

The Domain Name System (DNS) contd. Domain name is an address of a computer –Human friendly –Easy to remember –Easy to identify Internet protocol is unique underlying numeric address

The Domain Name System (DNS) contd. Domain Name Internet Protocol (Universal Resource Locator) URL

The Domain Name System (DNS) contd. Internet Protocol Number Domain Name Domain Name System Ability to Navigate the Internet

The Domain Name System (DNS) contd. URL = Top level Domain Second Level Domain Internet Other examples are Hypertext Transfer Protocol

The Domain Name System (DNS) contd. Top Level Domains gTLDccTLD Restricted Open Specified Open

The Domain Name System (DNS) contd. gTLDs Restricted Open.com.net.org.biz.info.aero.coop.edu.mil.museum.name.pro.gov

The Domain Name System (DNS) contd. ccTLD.bz.ag.bb.jm.ht.do.dm.bs.vc.lc.sr.gd.tt.kn.gy May be either widely used or restricted

Domain Name and Business Global Nature of DN East North West South

Domain Name and Business contd. - User friendly (Coca-Cola, Cnn, Jamaica blue mountain coffee) - Visibility (TV and print advertising, Billboards, bumper stickers) - Potential value $ $,, £ £, ¥ ¥

Domain Name and Business contd. Worldwide DN registrations reached a record high of 76.9 m. in the first quarter of 2005* drugs.com sold for $823,456 In July 2000, the name our.com saw twenty-six bids on eBay.com * ibid.

Domain Name and Business contd. A Domain name can be a short-cut to branding Potential of reaching new markets increases Companies take extra efforts to acquire and promote their domain names The explosive growth of the Internet leaves fewer good names from which to choose.

Domain Name and Business contd. " The Internet is not really about technology--it is about marketing yourself and your products. iDomain.com E/is_11_4/ai_

Relevance of IP Internet Success Increased commercial activity on the Internet One address per user & FCFS Principle Cybersquatting Potentially Explosive Business Environment

Relevance of IP contd. Addresses on the internet (power of connotation and identification) Trademarks, personality rights, Geographical indication (rights of Identification) Tension between Domain Name System Intellectual Property System

Relevance of IP contd. TrademarkDomain Name - Territorial registration and application - Different classes - Examination and opposition - Goods and services in commerce - First come first served - One unique registration - Application across jurisdictions - In principle, no examination - Broad use

Domain Name Dispute Resolution Options Courts Administrative procedure

Domain Name Dispute Resolution contd. Filing a claim before a court –You need a lawyer –Lodge a complaint against the cybersquatter –Interim measure (injunction) –Process can be extremely long Wont be able to use your DN until the end of the process The cost of waiting can be extremely high in business term

Domain Name Dispute Resolution contd. WIPO Arbitration and Mediation Center –Established 1995 –To provide services for the resolution of commercial dispute between private parties involving IP, through procedure other than court litigation

Domain Name Dispute Resolution contd. Administrative procedure: The Uniform Domain Name Dispute Resolution Policy (UDRP) –Adopted by ICANN effective December 1999 –Applicable to gTLD –May be used by ccTLD through voluntary adoption –Both parties can go to court after UDRP –Remedies: Transfer or cancellation only; No monetary damages

Domain Name Dispute Resolution contd. UDRP procedure is designed for DN disputes that meet the following cumulative criteria Trademark identical or confusingly similar to domain name Registrant has no rights or legitimate interest in DN DN registered and used in bad faith

Domain Name Dispute Resolution contd. WIPO UDRP Implementation –Web site including model complaint and model response –Online case filing and communication ( and web forms) –Multilingual case administration –Non-profit fees (btw US $ ) –Impartial WIPO Panelists

Domain Name Dispute Resolution contd. WIPO UDRP Panelists –1 - 3 independent and impartial (appointed by WIPO) –Intellectual Property and Internet specialists –Posted detailed resumes –384members from 54 countries –Multilingual capacity (speaking 33 languages amongst them)

Domain Name Dispute Resolution contd. Procedure –Complainant files complaint with dispute resolution service provider e.g WIPO Center –Provider notifies DN registrant of opportunity to respond –Provider appoints independent panel from list –Panel decides based on common principles –Registrar implements panel decision

Domain Name Dispute Resolution contd File complaint review commencement response Panel decision Notification Implementation Visual Model of the Procedure

Domain Name Dispute Resolution contd. Advantages of UDRP process –Global scope –Time - and Cost Effective –Enforceable Decisions –Transparent –Without Prejudice to Court Adjudication

Domain Name Dispute Resolution contd. Business strategy can play a significant role in the choice of procedure i.e Court or UDRP Factors that may influence the choice of route may include, –Potential cost of a long process –Potential damages to be paid –The willingness of the complainant to let-go the underlying domain name

Domain Name Dispute Resolution contd. Cases administered by WIPO under UDRP procedures exceeded 7500 (As of June 2005) Involved parties from 122 countries and more than Internet domain names Resolved cases: 7189 (96%) –WIPO panel decisions: 5711 –transfer rate: 83% –party settlement: 20% Completion time per case: approx.. 2 months

Domain Name Dispute Resolution contd. Example, –Julia Roberts v Russell Boyd (juliaroberts.com) –Madonna Ciccone v Dan Parisi (madonna.com) –Morgan Freeman v Mighty LLC (morganfreeman.com) –Produits Berger v. Randal Law (lampeberger.bz) More information:

Domain Name Dispute Resolution contd. Antigua and Barbuda, The Bahamas, Belize, and Trinidad and Tobago are among 45 countries that have appointed the Center as service provider for their ccTLD domain name disputes.

Conclusion DN names have evolved into strong business identifiers The potential of trademark and other business identifiers being infringed have increased with the increase popularity of Internet Basically two options are available to settle DN/TM conflict –Litigation in court –Administrative procedure

Conclusion contd. The UDRP offers a less expensive option for parties involved in DN/TM dispute WIPOs Arbitration and Mediation Center provide services for DN dispute resolution More information,

Finally