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

Joseph@Dalby.ie

4-5 Gray's Inn Sq, Gray's Inn, London

020 7404 5252

www.4-5.co.uk