guide to wipo domain name dispute resolution · domain name system. since commencing its domain...

WIPO ARBITRATIONANDMEDIATION CENTER

Guide to WIPODomain NameDispute Resolution

WORLDINTELLECTUAL

PROPERTYORGANIZATION

http://arbiter.wipo.int

CONTENTSINTRODUCTION

WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)WIPO ARBITRATION AND MEDIATION CENTER

DOMAIN NAME DISPUTESDOMAIN NAMESCYBERSQUATTINGFIRST WIPO INTERNET DOMAIN NAME PROCESSPREVENTING DOMAIN NAME DISPUTES: WIPO TRADEMARK DATABASE PORTAL

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)APPLICABLE TO ALL GTLDS AND CERTAIN CCTLDSGLOBAL SCOPETIME- AND COST-EFFECTIVEENFORCEABLE DECISIONSTRANSPARENTWITHOUT PREJUDICE TO COURT ADJUDICATIONUDRP PROCEDURETHE THREE UDRP CRITERIA

STAGES OF A UDRP PROCEEDING

WHO’S WHO IN A UDRP PROCEEDINGCOMPLAINANTRESPONDENTGEOGRAPHICAL DISTRIBUTION OF PARTIESDISPUTE RESOLUTION SERVICE PROVIDER: THE WIPO CENTERPANELREGISTRAR

GUIDE TO PARTY FILINGCOMPLAINTRESPONSEFILING PREPARATIONLANGUAGE OF A UDRP PROCEEDINGFEES

DECISIONSONLINE INDEX OF WIPO UDRP PANEL DECISIONSWIPO CASE RESULTS

COUNTRY CODE TOP-LEVEL DOMAINS

FREQUENTLY ASKED QUESTIONSWIPO WEB RESOURCES

DOMAIN NAME DEVELOPMENTSDISPUTE RESOLUTION IN NEW GTLDS“INTERNATIONALIZED” DOMAIN NAMESSECOND WIPO INTERNET DOMAIN NAME PROCESS

GUIDE TO WIPO DOMAIN NAMEDISPUTE RESOLUTION

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INTRODUCTION

http://arbiter.wipo.int •

The WIPO Arbitrationand Mediation Centeris internationallyrecognized as theleading disputeresolution serviceprovider for challengesrelated to the abusiveregistration and use of Internet domainnames, a practicecommonly known as“cybersquatting.”

This brochure providesa practical guide to thedomain name disputeresolution service ofthe WIPO Center. It contains an overviewof the disputeresolution procedure,case-filing guidelines,and information onresources offered.Case statistics of theWIPO Center are alsoincluded.

More detailedinformation is availableat the WIPO Center’sweb site athttp://arbiter.wipo.intor may be sought byemail [email protected].

The World Intellectual Property Organization (WIPO) is an independent intergovernmental organizationheadquartered in Geneva, Switzerland, comprising 182 Member States.

WIPO’s principal objective is to promote, through international cooperation, the creation, use, dissemina-tion and protection of intellectual property. As part of its activity, WIPO administers more than 20 treaties,including the Paris Convention for the Protection of Industrial Property, the Berne Convention for theProtection of Literary and Artistic Works, the Madrid Agreement Concerning the International Registrationof Marks and the Protocol to that Agreement, and the Patent Cooperation Treaty.

WIPO Arbitration and Mediation Center

The WIPO Arbitration and Mediation Center, established in 1994 as a unit of WIPO’s International Bureau,offers alternatives to court litigation for the resolution of commercial disputes between private parties concerning intellectual property.

The WIPO Center has created – with the active involvement of many of the foremost alternative disputeresolution (ADR) and intellectual property experts – the WIPO Mediation, Arbitration, and ExpeditedArbitration Rules and Clauses. The WIPO Rules and Clauses, which exist in several languages, incorporatethe latest developments in the area of dispute resolution and can be used in any legal system in the world.The WIPO Center advises on, and administers, procedures conducted under these Rules. In addition, par-ties can draw upon a growing list of over 1,000 independent WIPO arbitrators and mediators from some70 countries. The candidates on the WIPO List of Neutrals range from seasoned dispute-resolution generaliststo highly specialized practitioners and experts covering the entire legal and technical spectrum of intellectualproperty.

The WIPO Center also plays a leading role in the design and implementation of tailor-made dispute reso-lution procedures. The most prominent example is the Uniform Domain Name Dispute Resolution Policy(UDRP) which is based on recommendations made by WIPO to address certain abusive practices in thedomain name system. Since commencing its domain name dispute resolution service in December 1999,the WIPO Center has processed well over 22,000 cases.

While the present brochure provides information on the WIPO Center’s domain name dispute resolutionservice, the WIPO Center also makes available the following publications that provide information on theWIPO Center’s further activities: Dispute Resolution for the 21st Century; The WIPO Arbitration andMediation Center; WIPO Arbitration and Mediation Rules; Guide to WIPO Arbitration; and Guide to WIPOMediation. All publications may be ordered free of charge from the Center’s web site.

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WORLD INTELLECTUAL PROPERTY ORGANIZATION(WIPO)

DOMAIN NAMES

A domain name is ahuman-friendly form of anInternet address that is botheasy to identify and toremember, such as<wipo.int> or <yahoo.com>.The domain name systemoperates on the basis of a hierarchy of names. The top-level domains aredivided into two categories:the generic top-leveldomains (gTLDs) and thecountry code top-leveldomains (ccTLDs). The gTLDs .com, .net, .organd the subsequentlyintroduced domains .aero,.biz, .coop, .info, .museum,.name, and .pro aremanaged by registryoperators acting under theauthority of the InternetCorporation for AssignedNames and Numbers (ICANN;http://www.icann.org). The ccTLDs are administeredby the competent nationalregistration authorities.There are some 243 ccTLDs,

each bearing a two-lettercountry code, for example.fr for France, .jp for Japanor .mx for Mexico.

As a result of the increasedpopularity and commercialuse of the Internet, domainnames have acquired therole of business identifiersand, in certain cases, eventrademarks themselves,such as AMAZON.COM. By registering their marksand names as domainnames, for instance<sony.com>, businessesattract customers to theirweb sites.

CYBERSQUATTING

Cybersquatting involves thepre-emptive, bad faithregistration of trademarksas domain names by thirdparties who do not possessrights in such names.Cybersquatters exploit thefirst-come, first-servednature of the domain nameregistration system to

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register as domain names,third parties’ trademarks orbusiness names or names offamous people, as well asvariations thereof. A common motive forcybersquatting is theintention to sell the domainname back to thetrademark owner or toattract web traffic tounrelated commercial offers.

This practice of cyber-squatting gives rise todisputes between trademarkowners and domain nameregistrants, which presentfeatures stretching thecapacity of the ordinaryjudicial system. The judicialsystem is territorially basedand thus cannot alwaysprovide a comprehensivesolution to a conflict ofglobal dimension.Furthermore, court litigationcan be slow and expensive,factors that can produce ade facto situation in which itmay be quicker and cheaperfor a trademark holder to


DOMAIN NAME DISPUTES

buy back its rights to adomain name from thecybersquatter, rather thanseek to retrieve those rights through litigation. What was needed was aneffective alternativemechanism to deal withwhat are frequently cross-border disputes.

FIRST WIPO INTERNETDOMAIN NAMEPROCESS

WIPO was requested,initially by the United StatesGovernment, to explore thepossibilities of filling thisneed, and in 1998conducted the first WIPOInternet Domain NameProcess, an openinternational process ofconsultations concerningpossible practices and

procedures for preventingand resolving domain namedisputes.

The resulting Report of theFirst WIPO Internet DomainName Process included aseries of recommendationsdealing with domain nameand trademark issues. One of the principalrecommendations was theinstitution of a policy to befollowed uniformly by allregistrars that wouldprovide an administrativeremedy for domain namedisputes in all gTLDs. The First WIPO Report alsorecommended that thescope of such administrativeprocedure be limited to cases of bad faith,abusive registration ofdomain names that violatetrademark rights.

Preventing Domain NameDisputes: WIPO TrademarkDatabase Portal

Prospective domain name regis-trants are encouraged to verifywhether the domain name theyseek to register might infringethe trademark rights of third par-ties. With a view to the preven-tion of domain name disputes,WIPO has made available theWIPO Trademark Database Portal( h t t p : / / a r b i t e r. w i p o . i n t /trademark/). This portal facili-tates access to online trademarkdatabases of a number ofnational and regional intellectualproperty offices, allowing anyperson wishing to register adomain name to perform atrademark search. Additionalsearches outside the availableonline trademark databases mayalso have to be carried out todraw more informed conclu-sions.

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Following WIPO’srecommendations, ICANNadopted the UniformDomain Name DisputeResolution Policy on August26, 1999. The UDRPprovides holders oftrademark rights with anadministrative mechanismfor the efficient resolutionof disputes arising out of bad faith registration and use by third parties of domain namescorresponding to thosetrademark rights.

Under the UDRP, trademarkowners may submit disputesarising from alleged abusiveregistration of domain namesto a mandatory expeditedadministrative proceeding,by filing a complaint withan approved disputeresolution service provider(provider). For gTLDs theseproviders are accredited byICANN, and for thoseccTLDs that have voluntarilyadopted the UDRP, the providers are accreditedby the registration authorityof the ccTLD in question.

APPLICABLE TO ALLGTLDS AND CERTAINCCTLDS

Pursuant to theiraccreditation agreementwith ICANN, all gTLDregistrars agree to abide byand implement the UDRP.Accordingly, the UDRP isapplicable to the gTLDs.com, .net, .org, and to allmore recently introducedgTLDs.

The UDRP is incorporatedinto the standard disputeresolution clause of all gTLDdomain name registrationagreements. On this basis,the registrant of a gTLDdomain name must submitto any proceeding that isbrought under the UDRP,regardless of whether thedomain name registrationwas effected before theentry into force of the UDRP.

Apart from the gTLDs,certain ccTLDs have alsoadopted the UDRP on avoluntary basis.

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GLOBAL SCOPE

The UDRP is international inscope, in that it provides asingle mechanism forresolving a domain namedispute regardless of wherethe registrar, the domainname registrant, or thecomplaining trademarkowner is located. Any person or company inthe world can file a requestfor the resolution of adomain name disputethrough the UDRPprocedure, asserting thateach of the UDRP criteria ismet in its case. UDRPproceedings administeredby the WIPO Center haveinvolved parties from over120 countries across theworld.

TIME- AND COST-EFFECTIVE

Compared to court litigation,the UDRP procedure ishighly time- and cost-effective, especially in aninternational context.


UNIFORM DOMAIN NAME DISPUTERESOLUTION POLICY (UDRP)

A domain name case filedwith the WIPO Center isnormally concluded withintwo months, involving oneround of limited pleadingsand using mostly onlineprocedures. WIPO fees arefixed and moderate.

ENFORCEABLEDECISIONS

A key advantage of theUDRP procedure is themandatory implementationof the resulting decisions.There are no internationalenforcement issues, as registrars are obliged to take the necessary stepsto enforce any UDRPtransfer decisions, subject to the losing party’s right tofile court proceedings andsuspend the implementationof the decision.

TRANSPARENT

The UDRP process istransparent. The WIPOCenter posts all disputeddomain names, case status,case statistics and full-textof decisions on its web site.In addition, the WIPOCenter’s online Index ofWIPO UDRP Panel Decisions,and its jurisprudentialoverview of key issues offerfree and easy access to thejurisprudence developedunder the UDRP.

WITHOUT PREJUDICE TOCOURT ADJUDICATION

Once a complainant initiatesa UDRP proceeding, the registrant of a domainname must submit to theprocess. However, in linewith its administrativecharacter, the UDRP doesnot preclude the domainname registrant or thetrademark holder from

submitting the dispute to acourt for independentresolution; either party maycommence a lawsuit incourt before, during, orafter a UDRP proceeding.Paragraph 4(k) of the UDRPalso allows a losing domainname registrant tochallenge the administrativepanel’s decision by filing alawsuit in a competentcourt and thereby suspendthe implementation of thepanel decision. Althoughparties retain this courtoption, in practice this is arare occurrence. The WIPOCenter maintains a selectionof court orders and decisionsin relation to the UDRP orspecific UDRP cases at itsweb site.

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UDRP PROCEDURE

The UDRP as a Policy isgiven effect by the Rules for Uniform Domain NameDispute Resolution Policy(UDRP Rules) and by thedispute resolution serviceprovider’s supplementalrules. The WIPO Center has developed the WIPOSupplemental Rules forUniform Domain NameDispute Resolution Policy(WIPO Supplemental Rules)which complement theUDRP and the UDRP Ruleson a number of proceduralissues.

The Three UDRP Criteria

The UDRP procedure is designedfor domain name disputes thatmeet the following cumulativecriteria (UDRP, paragraph 4(a)):

(i) the domain name registeredby the domain name regis-trant is identical or confus-ingly similar to a trademarkor service mark in which thecomplainant has rights; and

(ii) the domain name registranthas no rights or legitimateinterests in respect of thedomain name in question;and

(iii) the domain name has beenregistered and is being usedin bad faith.

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Paragraph 4(b) of the UDRP pro-vides non-exhaustive illustrations(e.g., the domain name has beenregistered primarily for the pur-pose of selling it to the trade-mark owner) which, if found tobe present, should be consideredas evidence of the registrationand use of a domain name inbad faith. Similarly, paragraph4(c) of the UDRP provides non-exhaustive illustrations of cir-cumstances (e.g., the domainname is used in connection witha bona fide offering of goods)which, if found to be present,should be considered as evi-dence of the respondent havingrights or legitimate interests inthe disputed domain name.

A search of the online Index ofWIPO UDRP Panel Decisionsallows parties and panelists tosearch decisions of previous panels to examine the facts andcircumstances of the case in lightof prior WIPO decisions. WIPOalso makes available a jurispru-dential overview of key issues.


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STAGES OF A UDRP PROCEEDING

COMPLAINANT

The complainant is anyperson or entity, claimingtrademark or service markrights, who initiates acomplaint concerning adomain name registration inaccordance with the UDRP.The WIPO Center processescomplaints from a widearray of complainants fromaround the world, rangingfrom large multinationalcorporations (e.g., BMW,Gucci, Tata, Microsoft,

and Sony) to small- andmedium-size enterprises andto individuals (e.g., IsabelleAdjani, Venus and SerenaWilliams, Isabel Preysler,Julia Roberts, and MichaelCrichton).

RESPONDENT

The respondent is the holderof the domain nameregistration against which acomplaint is initiated.Under the terms of thedomain name registration

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agreement, which therespondent entered intowith the registrar, therespondent must participatein the UDRP proceeding.The UDRP Rules provide atwenty-day period for therespondent to file aresponse to a complaintbrought against it under theUDRP. As with complainantsin cases filed with the WIPOCenter, respondents comefrom around the world.


WHO’S WHO IN A UDRP PROCEEDING

Geographical Distribution of Parties

At the end of 2004, the geographical distribution of parties involved in UDRP cases filed with the WIPOCenter spanned 120 countries. Statistics show that the following are the top five filing and top fiverespondent countries, in cases administered by the WIPO Center as of that date:

Domicile ofComplainantUnited States ofAmericaUnited KingdomFranceGermanySpainOthersTOTAL

Number of Cases

3190 (46.2%)574 (8.3%)483 (7.0%)375 (5.4%)360 (5.2%)1916 (27.8%)6898

Domicile ofRespondentUnited States ofAmericaUnited KingdomSpainRepublic of KoreaChinaOthersTOTAL

Number of Cases

2881 (41.8%)594 (8.6%)374 (5.4%)359 (5.2%)319 (4.6%)2371 (34.4%)6898

DISPUTE RESOLUTIONSERVICE PROVIDER: THE WIPO CENTER

The WIPO Center was thefirst domain name disputeresolution service provider tobe accredited by ICANN andthe first to receive a caseunder the UDRP.

From such first filing inDecember 1999, the WIPOCenter has been the leadingprovider of domain namedispute resolution services.Through 2004 WIPO UDRPcases covered 12,637domain names. Most ofthese names related to the.com domain (75.1%),followed by .net (12.2%),.org (6.9%), .info (1.9%)and .biz (1.6%). Theremaining 2.2% of casesconcerned certain ccTLDs, aswell as .edu, .aero, and.name. Examples of domainnames disputed in UDRPproceedings filed with theWIPO Center include<marlboro.com>,<deutschetelecom.net>,<celinedion.com>, and

When disputes under non-UDRP, registry-specificpolicies are included, the total number of domainname cases administered bythe WIPO Center through2004 increases to 22,411.

The WIPO Center’s role as aprovider is to administer thecase, ensuring that theproceeding runs smoothly,fairly and expeditiously. To this end, the WIPO Centerverifies that the complaintsatisfies the formalrequirements of the UDRP,the UDRP Rules and theWIPO Supplemental Rules,coordinates with theconcerned registrar(s) to verify that the namedrespondent is the actualregistrant of the domainname(s) in issue, notifies thecomplaint to the respondent,sends out case-relatedcommunications, appointsthe panel and notifies thedecision to the relevantparties.

The WIPO Center isindependent and impartial.It does not itself decide thedispute between the parties.

As an administrative body, it can provide guidance onthe procedural aspects of the UDRP, but does notgive legal advice or viewsabout the strengths andweaknesses of a party’s case.

A key objective of the WIPOCenter is to provide anefficient and effectiveprocedure. To this end,the WIPO Center hasundertaken a range ofactivities and services thatinclude the following:

> Expert input into theUDRP and the UDRPRules

> Extensive onlineguidance about theUDRP system

> Model complaint andresponse

> Online complaint andresponse filing

> Online case status information

> Online Index of WIPOUDRP Panel Decisions

> Jurisprudential overviewof key issues

> Non-profit fees > Multilingual staff with a

broad legal background

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PANEL

The provider appoints one orthree independent andimpartial persons to decide acase. During the proceeding,each party has theopportunity, in the complaintor the response, to designatewhether it wishes the matterto be decided by a single-member or a three-memberpanel. The panel isindependent of the provider,ICANN, the concernedregistrar, and the parties tothe dispute.

WIPO domain name panelistsare selected on the basis oftheir well establishedreputations, impartiality,sound judgment andexperience as decisionmakers, as well as for theirsubstantive experience in theareas of intellectual propertylaw, electronic commerceand the Internet. This isreflected in the publishedprofessional profiles of eachof the WIPO Center’spanelists. As at the end of2004, the WIPO listcomprised 382 panelistsfrom 53 countries, speaking35 languages amongst them.

Prior to appointment in aUDRP proceeding, panelistsare required to confirm tothe WIPO Center theabsence of any potentialconflict of interest and todisclose any and all facts thatshould be considered priorto such appointment. The WIPO Center follows aconservative policy inappointing panelists thattakes into account not onlythe panelist’s professionalskills, linguistic ability,nationality, and geographiclocation, but also casecitations in pleadings andprior case involvement withparties.

To help ensure that decisionsare reasoned and consistent,the WIPO Center provides itspanelists with a standarddecision format, dailynotification of new decisions,jurisprudential overview ofkey issues, a searchableIndex of WIPO UDRP PanelDecisions, an onlinepanelist forum, regularpanelist meetings andworkshops, as well asprocedural support uponrequest.

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REGISTRAR

The registrar is the entitywith which the respondentregistered a domain namethat is the subject of acomplaint. Every gTLDregistrar must be accreditedby ICANN. A condition forICANN accreditation of agTLD registrar is theincorporation of the UDRPinto the registrar’s domainname registration agreement.

The registrar of the disputeddomain name does notparticipate in theadministration or conduct of a UDRP proceeding, and cannot be held liable as a result of any decisionrendered by a panel in sucha proceeding. The registrardoes, however, play thecrucial role of locking thedomain name registrationpending a UDRP proceedingand implementing anydecision rendered by a panelin a UDRP proceeding.


COMPLAINT

The WIPO Center makesavailable a Model Complaintwhich provides a frameworkfor drafting a complaint in accordance with the UDRP criteria and rules. Most complainantsdownload the WIPO ModelComplaint as a Worddocument, so that they maycomplete it for subsequentsubmission. However, somecomplainants choose tosubmit the ModelComplaint online throughthe form also madeavailable by the WIPOCenter. In either case, the complaint must besubmitted electronically andin hardcopy to the WIPOCenter, and a copy must besent to the respondent andthe registrar.

The Model Complainttogether with more detailedfiling guidelines is availableat the WIPO Center’s website.

RESPONSE

Similar to the ModelComplaint mentionedabove, the WIPO Center’sModel Response facilitatesthe task of a filingrespondent. The ModelResponse is mostlydownloaded and submittedas a completed Worddocument, although it mayalso be submitted online bycompleting the responsefiling form available at theWIPO Center’s web site.Either way, the responsemust be submitted to theWIPO Center electronicallyand in hardcopy, with acopy to the complainant.

The Model Responsetogether with more detailedinformation is available atthe WIPO Center’s web site.

FILING PREPARATION

In preparing their filings,parties may want to consultthe online Index of WIPOUDRP Panel Decisionswhich facilitates access tothe growing jurisprudenceunder the UDRP. Forinstance, a complainantmay wish to find outwhether a particular use ofa domain name has beenconsidered to be in badfaith. Likewise, arespondent may wish toinvestigate whether hissituation demonstrates alegitimate right or interest inthe domain name. Inaddition to the Index, theWIPO Center has posted ajurisprudential overview ofkey issues.

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GUIDE TO PARTY FILING

FEES

The WIPO Center operateson a not-for-profit basis. It maintains a UDRPSchedule of Fees at its website, which also containsinformation on methods ofpayment. The filing fee in aWIPO case depends on twofactors: the number ofdomain names included inthe dispute, and the numberof panelists (one or three)elected by the parties.

The large majority of WIPOcases concern 1-5 domainnames and a single-memberpanel. The applicable feefor such a case at the endof 2004 was USD 1,500.The WIPO Center retainssome of the fee as anadministration charge andforwards the largest part tothe panelist(s). In the caseof a single-member panel,the full fee is payable by the

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complainant. If a three-member panel is requestedby the complainant, the feeis also paid in full by thecomplainant. In the casewhere a three-memberpanel is requested by therespondent, the fee is splitequally between thecomplainant and therespondent.


Language of a UDRP Proceeding

The language in which a UDRP proceeding is conducted is dependent on the language of the disputeddomain name’s registration agreement. Under the UDRP Rules, unless the parties to the proceeding agreeotherwise or the panel determines otherwise, the language of the UDRP proceeding shall be the same lan-guage as that of the domain name registration agreement. The WIPO Center’s multilingual staff and facil-ities enable it to handle domain name cases in many different languages. Through December 2004, theWIPO Center has administered cases in 12 different languages, namely, Chinese, Dutch, English, French,German, Italian, Japanese, Korean, Norwegian, Portuguese, Russian and Spanish. Further languages maybe added as required.

Disputes under the UDRPare decided by independentpanels appointed by theWIPO Center. The remediesavailable to a complainantin a UDRP proceeding arelimited to the transfer of thedisputed domain nameregistration to thecomplainant, or the – rarelyrequested – option ofcancellation of the domainname registration. Neithermonetary nor injunctiverelief is available.

Panels decide on the basisof the submitted complaintand response, without oralhearing. If a panel decidesthat a disputed domainname registration should becancelled or transferred to the complainant, the concerned registrar willnormally implement thedecision after ten businessdays. If the complaint isdenied, the registrar willunlock the domain namefor the benefit of therespondent.

As required by the UDRPRules, the WIPO Centerposts all panel decisions infull on its web site, exceptwhen a panel determines inan exceptional case to redactportions of its decision.

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DECISIONS

Online Index of WIPO UDRP Panel Decisions

To assist the parties in formulating the complaint and response, the panelists in drafting well-reasoned andconsistent decisions, and the general public in attaining easier access to the growing jurisprudence under theUDRP, the WIPO Center provides an Index of WIPO UDRP Panel Decisions at its web site. This unique searchtool, which is available free of charge, offers structured access to the large quantity of legal and other datacontained in WIPO Panel decisions under the UDRP. The Index covers all WIPO UDRP decisions, including thelatest ones issued. In addition to the Index, users may access an informal WIPO overview of recurring sub-stantive and procedural issues. The overview also shows how WIPO Panelists have decided those issues byreference to key precedents.

The Index features two search functions: a “Searchby Domain Name Categories” (e.g., entertainment,luxury items, telecommunications) and a “LegalIndex” that allows an extensive search of decisionsby substantive and procedural legal issues (e.g.,deliberately misspelled trademarks in domainnames, domain name use by authorized distributor,burden of proof). The search functions and keywords may also be combined. Furthermore, it isalso possible to search WIPO UDRP decisions bycase number, domain name, and text of decision.

.AC.AE

.AG.AM

.AS.AU

.BS.BZ

.CC,CD

.CH

.CY.DJ

.EC.FJ

.FR

.GT

.JE

.JR.KI.LA

.LI

.MD.MW

.MX.NA

.NU.PA

.PH

.PN.RO

.SC.SH

.TT.TV

.UG.VE

.WS

.AC.AE

.AG.AS

.AU.BS.BZ

.CC.CY

.EC

.FJ.GT

.LA.MD.MW

.MX.NA

.NU.PA

.PH

.PN.RO

.SC.SH

.TT.TV

.UG.VE

.WSWIPO CASE RESULTS

The total number of UDRPcases filed with the WIPOCenter through December31, 2004 is 6,898. ByMarch 2005, over 99.5%of those cases had beenresolved, through 5,487decisions and through1,381 terminations primarilybased on transfers agreedbetween parties.

A ccTLD is a country codetop-level domain, forexample .au for Australia,.md for Moldova, .tv forTuvalu and .ve forVenezuela. These ccTLDsare administeredindependently by nationallydesignated registrationauthorities, also known asccTLD administrators.

The management ofintellectual property inccTLDs has emerged as oneof the key policy questionsfor ccTLD administrators.The WIPO ccTLD Programoffers ccTLD administratorsthe opportunity to seekadvice on intellectualproperty strategy andmanagement of theirdomains, including disputeresolution and prevention.

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To this end, WIPO haspublished the “WIPO ccTLDBest Practices for thePrevention and Resolutionof Intellectual PropertyDisputes.” This voluntaryguide focuses on areasrelevant to the protection ofintellectual property in thedomain name system, such as the maintenance ofaccurate information in thepublicly available Whoisregistration databases.

WIPO also makes availablethe WIPO ccTLD Database,which links to relevant webpages of all ccTLD registries,allowing the searcher todetermine the availability ofa registration agreement,the existence of a Whoisservice and the adoption ofalternative dispute resolutionprocedures.


COUNTRY CODETOP-LEVEL DOMAINS

47 Cancelled(1%)

909 Denied(16.5%)

4,531 Transferred(82.5%)

1,381 Terminated(20%)

30 Pending(0.5%)

5,487 Decided(79.5%)

Status of Cases

Outcome of Decisions

.AC.AE.AG

.AM

.AS.AU.BS.BZ

.CC.CD

.CH.CY

.DJ

.EC

.FJ.FR

.GT

.IE.IR

.KI.LA

.LI

.MD.MW.MX.NA

.NU.PA

.PH

.PN.RO.SC.SH

.TT.TV

.UG.VE

.WS

.AC (Ascension Island)

.AE (United Arab Emirates)

.AG (Antigua and Barbuda)

.AM (Armenia)

.AS (American Samoa)

.AU (Australia)

.BS (Bahamas)

.BZ (Belize)

.CC (Cocos Islands)

.CD (Democratic Republic of the Congo)

.CH (Switzerland)

.CY (Cyprus)

.DJ (Djibouti)

.EC (Ecuador)

.FJ (Fiji)

.FR (France)

.GT (Guatemala)

.IE (Ireland)

.IR (Islamic Republic of Iran)

.KI (Kiribati)

.LA (Lao People's Democratic Republic)

A growing number of ccTLDregistration authorities havedecided to adopt the UDRPor a ‘localized’ variationthereof and have retainedthe WIPO Center as adispute resolution serviceprovider.

By December 2004, the WIPO Center was actingas dispute resolution serviceprovider for the followingccTLDs:

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.LI (Liechtenstein)

.MD (Republic of Moldova)

.MW (Malawi)

.MX (Mexico)

.NA (Namibia)

.NL (Netherlands)

.NU (Niue)

.PA (Panama)

.PH (Philippines)

.PL (Poland)

.PN (Pitcairn Island)

.RE (Reunion Island)

.RO (Romania)

.SC (Seychelles)

.SH (St. Helena)

.TK (Tokelau)

.TM (Turkmenistan)

.TT (Trinidad and Tobago)

.TV (Tuvalu)

.UG (Uganda)

.VE (Venezuela)

.WS (Western Samoa)

1. Where can information about the registrant and/or the registrar of a domain name be found?

Registrar information can be obtained for domain names registered in .com, .net, .org, .biz, .info and.name by conducting a search at http://www.internic.net/whois.html. Once the registrar has beenidentified, the concerned registrar’s Whois service (accessed via the registrar’s web site) may be used toobtain information on the registrant of the domain name.

2. Can a complaint concern more than one domain name?

Under paragraph 3(c) of the UDRP Rules, the complaint may relate to more than one domain name, so long as the domain names are registered by the same person or entity.

3. How is the applicability of the UDRP to a specific domain name determined?

The UDRP is applicable to all gTLDs such as .com, .net, .org, .biz, and .info, regardless of the date of thedomain name registration. In addition, the WIPO ccTLD Database indicates which ccTLD administratorshave voluntarily adopted the UDRP.

4. Must the complaint or the response be prepared and submitted by a lawyer?

While the assistance of a lawyer may be helpful, there is no requirement that parties’ filings be preparedor submitted by a lawyer.

5. How must a complaint be submitted?

The complaint must be submitted both in hardcopy and by email to the WIPO Center. The hardcopies(one signed original and four copies) including all annexes should be sent to the WIPO Center by postalor courier service. The complaint must also be sent to the respondent and the registrar with whom thedomain name is registered. More detailed filing guidelines are available at the web site of the WIPO Center.

6. Can the prevailing party recover incurred filing or legal fees from the losing party?

The administrative panel cannot render any monetary judgments. Decisions that can be made by theadministrative panel are limited to ordering transfer of the domain name to the complainant, orderingcancellation of the domain name registration, or denying the complaint. Parties seeking any otherremedies would have to seek redress through other means.

7. Can a party file supplemental information, pleadings or documents after filing the complaintor the response?

The UDRP Rules only provide for the submission of the complaint by the complainant, and the responseby the respondent. No provision is made for supplemental filings by either party, except in response to adeficiency notification or if requested by the panel. The admissibility of any unsolicited supplementalfilings is subject to the discretion of the panel.

17http://arbiter.wipo.int •

FREQUENTLY ASKED QUESTIONS

8. How is a UDRP decision implemented? Is it possible to challenge a decision?

Paragraph 4(k) of the UDRP requires the registrar to implement the panel’s decision ten business daysafter it receives notification of the decision from the provider, save where the registrar receivesinformation from the respondent within such ten-day period that it has commenced a lawsuitchallenging the decision, in a jurisdiction to which the complainant has submitted under paragraph3(b)(xiii) of the UDRP Rules.

There is no appeal procedure provided for within the UDRP system. However, as an administrativemechanism, the UDRP leaves open the option by a party to seek recourse through a court proceeding.

9. How long does the UDRP procedure take?

The procedure normally should be completed within two months of the date the WIPO Center receivesthe complaint.

10. How can a party assess the merits of its case?

The searchable Index of WIPO UDRP Panel Decisions, as well as the WIPO Center’s jurisprudentialoverview of key issues, both available at the WIPO Center’s web site, may guide parties to prior decisionson comparable facts and arguments.

11. Who decides the case?

The case is decided by an independent and impartial panel consisting of one or three membersappointed by the WIPO Center.

12. How do I communicate with the WIPO Center on case-related matters?

Communications in hardcopy should be forwarded to:

WIPO Arbitration and Mediation Center34, chemin des ColombettesP.O. Box 18 CH-1211 Geneva 20 Switzerland

Telephone: +41 22 338 8247 or 0800 888 549Fax: +41 22 740 3700 or 0800 888 550

Communications by email should be directed to [email protected] (see below for the WIPOCenter’s email contact details for general queries).

13. Where can I get additional information about domain name dispute resolution?

Extensive information about domain name dispute resolution is available at the Domain NamesResources area of the WIPO Center’s web site http://arbiter.wipo.int. In addition, general queries may beemailed to [email protected].

18


WIPO Web Resources

The WIPO Center’s web site receives thousands of visits each day. The site is available in English, Frenchand Spanish, and domain name related information is also available in Japanese, Korean andPortuguese. The site presents constantly updated information on the WIPO Center’s domain name dis-pute resolution service under the UDRP and other policies, including:

> Dispute resolution policies, rules and related WIPO supplemental rules

> Guide to the UDRP and other domain name dispute resolution policies

> Model Complaint, Model Response, and online filing forms

> List of WIPO domain name panelists and their professional profiles

> Listing of all WIPO domain name cases with full text of decisions

> Online Index of WIPO UDRP Panel Decisions

> Jurisprudential overview of key issues

> Bibliography of selected articles on domain name dispute resolution

> WIPO case statistics

> WIPO Trademark Database Portal

> WIPO ccTLD Database

DISPUTE RESOLUTION INNEW GTLDS

Following ICANN’s decisionof November 2000 tointroduce seven furthergTLDs (.aero, .biz, .coop,.info, .museum, .name,.pro), WIPO has assisted inthe implementation ofdispute resolutionmechanisms developed bythe operators of thesedomains. The UDRP appliesto .com, .net, .org, and toeach of these subsequentlyintroduced gTLDs. Inaddition to the UDRP, mostnew gTLD registryoperators adopted specificdispute resolution policiesapplicable during a start-upor “sunrise” phase.Furthermore, registries thatare restricted to certainpurposes (e.g., .biz forcommerce) provide specialproceedings to resolvedisputes concerningcompliance with suchregistration conditions.The Start-up TrademarkOpposition Policy (STOP) isthe introductory disputeresolution policy that wasadopted by the .biz registry

operator. Under this policy,the WIPO Center hasadministered 338 casesinvolving 355 domainnames.

In addition, the WIPO Centerin 2002 completed 15,172cases received under theAfilias Sunrise RegistrationChallenge Policy for .infoestablished by the registryoperator for .info.

Up-to-date informationabout each of thesubsequently introducedgTLDs is made available atthe WIPO Center’s web site.This includes reports on theWIPO Center’s experience inthe administration ofdisputes under introductorymechanisms such as .bizSTOP and the .info SunrisePolicy.

In 2004, ICANN invitedapplications for newsponsored top-leveldomains (also known assTLDs) and entered intocommercial and technicalnegotiations with severalapplicants, including .jobs,.mobi, .post and .travel.Information on the status

of new sTLDs is availableon ICANN's web site(http://www.icann.org).

“INTERNATIONALIZED”DOMAIN NAMES

“Internationalized” domainnames refer to domainnames in non-Roman(“non-ASCII”) scripts, such as Arabic or Chinese.The UDRP applies to alldomain name registrationsin the gTLDs, including“internationalized” domainnames, and the WIPOCenter’s dispute resolutionservices include suchdomain names. At the endof December 2004, theWIPO Center had received49 complaints in relation to“internationalized” domainnames in Chinese, Danish,French, German, Japanese,Korean, Norwegian, Spanish and Swedishscripts. Examples of“internationalized”domain names disputedbefore the WIPO Centerinclude

<kværner.net> and<åhlens.com>.

20

DOMAIN NAME DEVELOPMENTS


SECOND WIPOINTERNET DOMAINNAME PROCESS

After the First WIPO Reportmade recommendations forthe protection of trademarkrights in the domain namesystem, the Second WIPOInternet Domain NameProcess considered therelationship between thedomain name system andother types of identifiers,namely:

> Internationalnonproprietary namesfor pharmaceuticalsubstances (INNs)

> Names and acronyms ofinternationalintergovernmentalorganizations

> Personal names > Geographical identifiers> Trade names

Based on WIPO’s Report onthis Second Process, WIPOMember States decided torecommend that names andacronyms of internationalintergovernmentalorganizations and countrynames should be protectedagainst abusive registration as domain names. These recommendations havebeen transmitted to ICANN inFebruary 2003 and are, at thetime of publication, beingconsidered by ICANN (forfurther information, seehttp://arbiter.wipo.int/processes/process2/).

WIPO Publication No. 892(E)ISBN: 92-805-1426-1

For more information contact the:World Intellectual Property Organization (WIPO)Arbitration and Mediation CenterAddress:34, chemin des Colombettes P.O. Box 18CH-1211 Geneva 20Switzerland

Telephone:+41 22 338 8247

Fax:+41 22 740 37 00

e-mail:

[email protected]

or its New York Coordination Office at:

Address:2, United Nations Plaza Suite 2525New York, N.Y. 10017United States of America

Telephone:+1 212 963 6813

Fax:+1 212 963 4801

e-mail:[email protected]

Visit the WIPO Arbitration and Mediation Center website at:http://arbiter.wipo.int

and order from the WIPO Electronic Bookshop at:http://www.wipo.int/ebookshop

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