The WIPO Domain Name Dispute Resolution System

Author:Anthony Connerty
Profession:Barrister and member of WIPO arbitration panel
Pages:315-329
SUMMARY

1) Introduction. -2) The Policy and Rules: i) The ICANN UDRP Policy. ii) The ICANN Rules. iii) The WIPO Supplemental Rules [level 3]. -3) WIPO Decisions.

 
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The World Intellectual Property Organization (WIPO) has already been considered in relation to arbitration and mediation in earlier chapters of the Manual. Here, a closer look is taken at WIPO and its specialist system relating to domain names.

1) Introduction

WIPO is an international organisation "dedicated to promoting the use and protection of works of the human spirit. These works - intellectual property - are expanding the bounds of science and technology and enriching the world of the arts. Through its work, WIPO plays an important role in enhancing the quality and enjoyment of life, as well as creating real wealth for nations."

WIPO, which has its headquarters in Geneva, Switzerland, is one of the 16 specialised agencies of the United Nations. It administers 23 international treaties dealing with different aspects of intellectual property protection and has 180 nations - over 90 per cent of the world's countries - as member States.

There are more than 900 WIPO staff, who are drawn from around the world. The tasks carried out by WIPO in relation to the protection of intellectual property rights include "administering international treaties, assisting governments, organizations and the private sector, monitoring developments in the field and harmonizing and simplifying relevant rules and practices. In all that it does, the key words are relevance, efficiency, communication and international cooperation."

In the view of WIPO, there is a vital need for

"... quick and inexpensive ways of settling commercial disputes involving intellectual property rights, and providing private parties with an alternative to often lengthy and costly court proceedings. This need has increased in recent years with the growing importance of international trade. WIPO's Arbitration and Mediation Center helps to meet those needs for companies and individuals anywhere in the world. The Center maintains an extensive list of specialized mediators or arbitrators from over 100 countries, who conduct dispute resolution procedures according to rules made available by WIPO. The procedures may take place in any country, in any language, and under any law, allowing a great deal of flexibility. Indeed, because they are cost-effective, the WIPO procedures are particularly interesting for companies that are unable or unwilling to enter into expensive or protracted litigation, especially at the international level. The subject matter of disputes resolved by means of WIPO procedures has included both contractual (e.g. patent and software licenses, trademark coexistence agreements, distribution agreements for pharmaceutical products and research and development agreements) and non-contractual disputes (e.g. patent infringement)."

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Turning to the specific problem of 'cybersquatting', WIPO states that the Center "is the leading dispute resolution service provider for challenges related to abusive registration and use of Internet domain names, commonly known as 'cybersquatting'. In 2003, the Center received 5,722 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) and similar procedures, involving parties from 116 countries. In addition, some 15,510 domain name cases were decided under special procedures. The Center provides this service both for the generic top-level domains, such as .com, .net, .org, .info, and for certain country-code domains. Trademark owners can file complaints using model documents made available on the Center's website. The entire procedure is conducted online, resulting in enforceable decisions within two months."

The Center's IT case facilities allow the parties involved "to communicate via the Internet without being physically present in the same place, greatly reducing the time and cost of reaching a settlement. Using such expertise, the Center also assists in the design of tailor-made dispute avoidance and resolution procedures upon demand, for example in the area of information technology."

In addition to dealing with the abusive use of trademark rights in domain names, WIPO also deals with other types of cybersquatting, including the use of personal names, international non-proprietary names for pharmaceutical substances and the names of intergovernmental organisations.

Full details of WIPO's services are available on its website.116

2) The Policy and Rules

There are three matters to be considered when looking at the Domain Name Dispute Resolution system operated by WIPO:

i) the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP): the ICANN Policy;

ii) the ICANN Rules for UDRP; and

iii) the WIPO Supplemental Rules for UDRP.

Before looking at the Policy and the two sets of Rules, however, it may be useful to describe briefly how the WIPO system works.

The process is aimed at the problem of 'cybersquatting': the registration of a domain name similar to an established corporation's well-known trademark, often with the intention of either selling the domain name to the corporation at an excessive price or of disrupting that corporation's business. One of the great benefits of the scheme is that the system of registering domain names incorporates within itself a dispute resolution procedure.

Under that procedure a Complainant must show:

1 that the domain name registered is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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2 that the Respondent who registered the domain name has no rights or legitimate interest in that name; and

3 that the name was registered and is being used in bad faith.

Where a complaint made under the WIPO system is upheld, the WIPO Panel may either order the cancellation of the domain name or order the transfer of that domain name to the Complainant.

i) The ICANN UDRP Policy

The UDRP Policy sets out the legal framework for the resolution of disputes between a domain name registrant and a third party in relation to the abusive registration and use of an Internet domain name. At its meetings in August 1999 in Santiago, Chile, the ICANN Board of Directors adopted the UDRP Policy, based largely on the recommendations of a WIPO Report. All ICANN-accredited registrars who are authorised to register names in the .com, .net, .org, .biz, .info and .name generic top level domains (gTLDs) have adopted the UDRP Policy and have agreed to abide by it. Any person or entity wishing to register a domain name in the gTLDs and country code top level domains (ccTLDs) is required to consent to the terms and conditions of the UDRP Policy, which contains a dispute resolution procedure and the machinery to enforce its decisions.

The Notes to the Policy state that it is between the registrar and its customer (the domain-name holder or registrant) and therefore the policy uses 'we' and 'our' to refer to the registrar and 'you' and 'your' to refer to the domain-name holder.

Paragraph 1

Paragraph 1 of the Policy states that the Policy is incorporated by reference:

"into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you. Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the 'Rules of Procedure')... and the selected administrative-dispute-resolution service provider's supplemental rules."

Paragraph 2

Paragraph 2 deals with representations. By applying to register a domain name, the applicant represents 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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Paragraph 3

The circumstances in which cancellations, transfers and changes will be made are set out in Paragraph 3 and include:

"b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or

c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN."

Paragraph 4

Paragraph 4 is at the heart of the Domain Name Dispute Resolution process. It deals with the three elements mentioned above that are essential in a cybersquatting case and contains the remedies.

Paragraph 4 (a) sets out the type of disputes in relation to which the domain name holder is required to submit to a "mandatory administrative proceeding" before one of the...

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