1. Trade Marks and Domain Names: new developments UNSW: Cyberspace regulation Patrick Gunning 24 May 2001

2. Trade Marks and Domain Names new developments 2 Agenda › Overview of domain names and trade marks › Governance of Top Level Domains – ICANN and the UDRP › Introduction of 7 new Top Level Domains › Governance of.au domain names – name policy, competition and dispute resolution

3. Trade Marks and Domain Names new developments 3 Overview of domain names and trade marks › A domain name is a “people friendly” IP address (192.148.122.149  www.msj.com.au)www.msj.com.au › generic Top Level Domains (gTLDs) -.com,.net,.org,.edu... (7 more coming soon) › country code Top Level Domains (ccTLDs) -.au,.uk,.nz,.de... › Registrations by commercial entity ‘accredited’ by appropriate governing body

4. Trade Marks and Domain Names new developments 4 Overview of domain names and trade marks › A trade mark is a badge of origin › Indicates a connection in the course of trade between the goods/services to which it is applied and the owner of the mark › Trade mark register split into different classes of goods/services › Registration by government agency

5. Trade Marks and Domain Names new developments 5 Overview of domain names and trade marks › 1995: Approx 100,000 domain names › Jan 99: Approx 5 million › Mar 00: Approx 15 million › Today: More than 35.5 million, approx 2/3 are “.com” names › Approx 180,000 are “.au” names, of which approx 80% are “.com.au” names

6. Trade Marks and Domain Names new developments 6 Governance of gTLDs – ICANN and the UDRP › Internet Corporation for Assigned Names and Numbers (ICANN) oversees domain name system as a whole. › Management of ccTLDs largely left to each country › Competition introduced in registration of.com,.net,.org domain names in 1999, but only one registry operator for each TLD (NSI, now a subsidiary of Verisign)

7. Trade Marks and Domain Names new developments 7 Governance of gTLDs – ICANN and the UDRP › Registrars are accredited by ICANN. › Accreditation agreement requires registrars to ensure all persons registering domain names agree to abide by Uniform Dispute Resolution Policy › UDRP provides for arbitration by approved dispute resolution providers. Arbitrator can order transfer of domain name. › First UDRP decision in Jan 2000; Approx 2,800 today. Approx 75% of decisions ordered transfer

8. Trade Marks and Domain Names new developments 8 Governance of gTLDs – ICANN and the UDRP › Complainant must prove that the domain name: –is identical or confusingly similar to trade or service mark in which complainant has rights –registrant has no rights or legitimate interests in the name –has been registered and used in bad faith

9. Trade Marks and Domain Names new developments 9 Governance of gTLDs – ICANN and the UDRP › Legitimate interest factors: –Registrant used (or made demonstrable preparations to use) the domain name in connection with a bona fide offering of goods or services before notice of the dispute –Registrant has been commonly known by the domain name (even if no trade mark rights have been acquired) –Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark

10. Trade Marks and Domain Names new developments 10 Governance of gTLDs – ICANN and the UDRP › Bad faith factors: –registration primarily for purpose of selling/transferring to trade mark owner or competitor of same for a profit; –registration to block the trade mark owner, provided there is a pattern of such conduct; –registration for purpose of disrupting a competitor; –use of domain name to intentionally attract, for commercial gain, internet users to a web site by creating a likelihood of confusion

11. Trade Marks and Domain Names new developments 11 Governance of gTLDs – ICANN and the UDRP › Telstra v Nuclear Marshmallows (telstra.org) –no positive action by Nuclear Marshmallows re the domain name; –passive holding found to be “use” in bad faith: well-known mark; no evidence of contemplated good faith use; active steps to conceal true identity; false contact details (breach of registration agt) no plausible legitimate actual or contemplated use

12. Trade Marks and Domain Names new developments 12 Governance of gTLDs – ICANN and the UDRP › Major criticisms of UDRP: –inability to test alleged facts (suggestion: opportunity to answer matters of fact put in issue by other party) –no system of precedent (suggestion: appeal mechanism to 3 member panel; prefer decisions by 3 member panels on matters of principle) –no choice of law guidelines (most difficult issue: choice of law rule may be difficult to apply and adopting a uniform law could give one jurisdiction too much influence on the internet as a whole)

13. Trade Marks and Domain Names new developments 13 Introduction of 7 new TLDs › ICANN decided to introduce 7 new TLDs in Nov 2000 › Sponsored TLDs: –.aero (registry operator – SITA; for air travel industry) –.coop (registry operator – National Cooperative Business Assoc; for cooperative enterprises) –.museum (registry operator – Museum Domain Management Association; for museums recognised by Intnl Council of Museums)

14. Trade Marks and Domain Names new developments 14 Introduction of 7 new TLDs › Unsponsored TLDs: –.biz (registry operator - Neulevel; for bona fide business or commercial purposes) –.info (registry operator - Afilias; registration will be unrestricted) –.name (registry operator - The Global Registry Ltd; for individuals) –.pro (registry operator – Registry Pro Ltd; for professionals)

15. Trade Marks and Domain Names new developments 15 Introduction of 7 new TLDs ›.biz commenced “start up” operations 21 May 2001 › Registered trade mark owners can notify their marks (21 May to 9 July) › Persons seeking to register domain names identical to a notified trade mark will be informed of trade mark claim, and asked to confirm › TM owner will be notified of application to register corresponding domain name › Modified version of UDRP will apply before the domain name registration is accepted › No applications accepted until 9 July. ›.biz will “go live” 1 October

16. Trade Marks and Domain Names new developments 16 Introduction of 7 new TLDs ›.info will offer “sunrise” period from late June to late July › During sunrise period only owners of registered trade marks can apply to register corresponding domain names. › Afilias will implement a multi-round batch processing system, with random selections from each registrar’s batch. › WIPO will administer a “sunrise dispute resolution policy” (modified UDRP) › Within 15 days after sunrise period, applications will be accepted from general public › For initial 3 weeks, a multi-round batch processing system will be used. After then, first come, first served.

17. Trade Marks and Domain Names new developments 17 Governance of.au › auDA established late 1998 ›.com.au delegated to auDA by Robert Elz in Nov 99 (subject to Melbourne IT agreement). Robert Elz currently retains delegation for.au as a whole. › Dec 2000: –Telecommunications Legislation Amendment Act passed (gives powers to ACA and ACCC to direct and manage electronic addressing if industry self-regulation is not effective –Commonwealth endorsed auDA as appropriate entity to hold delegation for.au ccTLD

18. Trade Marks and Domain Names new developments 18 Governance of.au › auDA in process of 3 main reforms: –Name policy (panel recommendations accepted by auDA board on 8 May 2001) –Competition model (panel’s 2 nd consultation report issued 11 May 2001 – final report to board in June 2001) –Dispute resolution policy (1 st draft policy and rules issued by working group 11 May 2001)

19. Trade Marks and Domain Names new developments 19 Governance of.au: name allocation policy › New policy will be implemented at same time as competition model and dispute resolution policy (late 2001 ??) › Key elements: –No restriction on number of domain names a single entity can register –Eligibility criteria liberalised. Must be an “Australian entity”. Includes registered proprietor and applicant for an Australian trade mark –Declaration of good faith intention to use the domain name for the purpose envisaged by the relevant 2LD. Does not include licensing for purposes of sale or diverting trade, ‘warehousing’ or applying for misspellings of another’s mark

20. Trade Marks and Domain Names new developments 20 Governance of.au: name allocation policy › Key elements (cont): –Registrant must agree to be bound by auDRP –Must be a “substantial and close connection” between the domain name and the applicant, eg, exact match of company name/trade mark; acronym, alias or common name for applicant –“Reserved list” of unregistrable domain names. –Generic names will be allowed, but mechanism for release not decided. –Geographic names: approach undecided – more consultations.

21. Trade Marks and Domain Names new developments 21 Governance of.au: (proposed) competition model › auDA to issue tender for single registry operator for all open 2LDs. 3-5 year agreement. Registry operator to provide: – “whois” service –electronic interface to registrars to enable entry of new names and updates to existing names; –authoritative nameserver › Licence fee payable to auDA by registry operator

22. Trade Marks and Domain Names new developments 22 Governance of.au: (proposed) competition model › auDA to accredit registrars. Accredited registrars to have ability to register all.au domain names (but may choose to concentrate on some 2LDs only) › Licence fee payable to auDA by accredited registrars › All domain name registrants eligible to become members of auDA

23. Trade Marks and Domain Names new developments 23 Governance of.au: dispute resolution › Draft auDRP issued 11 May. Modified version of UDRP. › Modifications mostly designed to reflect new eligibility rules for.au names (similar to proposed DRP for.biz) › Novel proposal to extend policy to all other disputes involving domain names (eg, between registrars and registrants; between registrars and registry operator) › Submissions due 8 June.