NEW GENERIC TOP-LEVEL DOMAIN NAMES DISPUTE RESOLUTION

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NEW GENERIC TOP-LEVEL DOMAIN NAMES DISPUTE RESOLUTION

JWP

Warsaw - March 21, 2016 Pierfrancesco C. Fasano

Ivett Paulovics

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Agenda

ABOUT US NEW GTLDS

ABOUT THE URS URS VS. UDRP

URS PROCEDURE

MFSD’S ONLINE DISPUTE MANAGEMENT

PLATFORM

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About us

Milan-based, private, independent, international Dispute Resolution Center with focus on Intellectual Property (IP) disputes

Founded in 2000 Accreditations:

2001 – “.it” Domain Name Dispute Resolution Service Provider – accredited by Registry “.it” (CNR IIT – National Council of Researches – IT Institute)

2012 – IP Mediation Center – authorized by the Italian Ministry of Justice

2013 – IP Mediation Training Center – authorized by the Italian Ministry of Justice

2015 – Uniform Rapid Suspension System (URS) Domain Dispute Resolution Service Provider – approved by ICANN

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About us

Providing cutting edge, cost-effective and expedited alternative dispute resolution (ADR) services in IP matters in an orderly and fair manner in an international context

Training and education of professionals, entrepreneurs, companies and other entities on IP ADR issues

Promotion of ADR culture, techniques and methods

Exchange of knowledge by participation as partners in international, EU projects

Active participation in Italian and international consultations/

debates around the development of IP ADR

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About us

“.it” Domain Name Dispute Resolution Service Provider

Since 2001 management and online track record of over 65 “.it” domain name disputes

eg. minutemaid.it, cocacola.it, coke.it, sprite.it, thebodyshop.it, legoland.it, iloveitalianshoes.it, societegenerale.it, rocca.it, uffizi.it, jpmorgan.it, etc.

Rules: variant of UDRP

Fees: € 800-1.000 one single Panelist

Duration: 45/60 days

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About us

IP Mediation Center

Voluntary mediation in IP

Since 2012 management of 7 mediation procedures concerning cross-border TM and domain name claims between Italian and international parties (4 disputes

settled, 3 not settled since other party has not appeared) Rules: based on the EU Mediation Directive 2008/52,

approved by the Italian Ministry of Justice, mediation agreement is enforceable within the EU

Fees: from € 290 to € 2.000

Duration: 14/35 days

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About us

IP Mediation Training Center

Under EU Mediation Directive 2008/52

Scientific Director approved by the Italian Ministry of Justice

5 trainers (2 theoretical + 3 practical)

Mediators: 50 hours course + 4 hours of evaluation Apprenticeship: 20 procedures in 2 years

CLE: 18 hours every 2 years

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About us

URS Domain Dispute Resolution Service Provider

Approved by ICANN on Dec 16, 2015

Online dispute management platform https://urs.mfsd.it As of March 2016 3 URS disputes decided

(determinations published on our website)

List of highly qualified and globally diversified professionals as Examiners with experience in handling UDRP or similar disputes

Training to neutrals (Examiners), IP professionals,

Registries/Registrars, right holders

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New Generic Top-Level Domains (New gTLDs)

Before 1998: .com, .edu, .gov, .int, .org, .net, .arpa and .mil

2000: .aero, .biz, .coop, .info, .museum, .name, .pro 2004: .asia, .cat, .jobs, .mobi, .post, .tel, .xxx

and .travel

2005: policy development process to introduce new gTLDs

2011: launch of New gTLD Program

2012: 1.930 applications for new gTLDs (Registries:

Google, Donuts, Amazon, etc.)

Since Oct 2013 – to date: delegation of the first new

gTLDs – game in Chinese, site in Russian, online in

Russian, web in Arabic, .guru, .bike, .social, .brand

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New Generic Top-Level Domains (New gTLDs)

In the forthcoming years approx. 1.300 new extensions

O v e r 6 0 0 s t r i n g s a l r e a d y d e l e g a t e d : https://newgtlds.icann.org/en/program-status/delegated-strings December 2015: 11,2 milions of new gTLDs registered (top

5: .xyz, .top, .wang, .win, .club)

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About the Uniform Rapid Suspension System (URS)

Right protection mechanism (RPM) implemented to supplement the existing Uniform Domain-Name Dispute Resolution Policy (UDRP)

Goal: provide trademark owners with a quick and low- cost process to take down websites in case of clear-cut infringement of their IP rights caused by domain name registrations and to fight against cybersquatting

Remedy: suspension of the abusive domain name for the

balance of the registration period (extendible for an

additional year)

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About the Uniform Rapid Suspension System (URS)

Suspension

This web site is SUSPENDED.

The domain name you have entered is not available. It has been taken down as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension System (URS)

Procedure, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on March 1, 2013, and the

Rules, approved by ICANN on June 28, 2013.

For more information relating to the URS, please visit:

http://newgtlds.icann.org/en/applicants/urs

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About the Uniform Rapid Suspension System (URS)

Applies to:

New gTLDs:

eg. .shop, .online, .law, .clothing, .bike, .guru, .club, .builders, .jewelry, .axa, .ferrero, .london, etc.

Some national TLDs (ccTLDs): eg. pw Not applies to:

Legacy domain names: .com, .net, .biz, .info, etc.

ccTLDs: .co.uk, .us, .nl, etc.

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About the Uniform Rapid Suspension System (URS)

The use of the URS does not preclude any other remedies as may be available in a court of competent jurisdiction

Right holders might utilize either (URS / UDRP) or

both procedures. No requirement to use one

procedure before the other

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URS vs. UDRP

Elements of claim

1. The registered domain name is identical or confusingly similar to a word mark: a) for which the Complainant holds a valid national or regional registration and that is in current use or b) that has been v a l i d a t e d t h r o u g h a c o u r t proceeding, or c) that is specifically protected by a statute or treaty in e ff e c t a t t h e t i m e t h e U R S Complaint is filed.

1. The domain name(s) is/are

identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Also unregistered or common law marks and other names.)

2. The Registrant has no legitimate right or interest to the domain

name.

2. The Respondent (domain-name holder) has no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the Complaint.

3. The domain name was

registered and is being used in bad faith.

3. The domain name(s) was/were registered and being used in bad faith.

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URS vs. UDRP

Legitimate right and interest – Defenses of Registrant

2

nd

requirement:

Before any notice to Registrant of the dispute, Registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services

Registrant (as an individual, business or other organization) has been commonly known by the domain name, even if Registrant has acquired no trademark or service mark rights

Registrant is making a legitimate or fair use of the

domain name, without intent for commercial gain to

misleadingly divert consumers or to tarnish the

trademark or service mark at issue

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URS vs. UDRP

Legitimate rights and interest – Defenses of Registrant

2

nd

requirement:

The domain name is generic or descriptive and the Registrant is making a fair use of it

The domain name sites are operated solely in tribute to or in criticism of a person or business that is found by the Examiner to be fair use

Registrant’s holding of the domain name is consistent with an express term of a written agreement entered into by the disputing Parties and that is still in effect The domain name is not part of a wider pattern or

series of abusive registrations because the domain

name is of a significantly different type or character to

other domain names registered by the Registrant

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URS vs. UDRP

Bad faith

3

rd

requirement:

Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name

Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct

Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor

By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to the Registrant’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location

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URS vs. UDRP

Bad faith

3

rd

requirement:

Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves NOT indicia of bad faith under the URS. Such conduct, however, may be, abusive in a given case depending on the circumstances of the dispute

Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) does NOT in and of itself constitute bad faith under the URS. Such conduct, however, may be abusive in a given case depending on the circumstances of the dispute

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URS vs. UDRP

Standard of proof: clear and convincing evidence that no genuine issue of material fact exists as to any of the elements of the claim

The Complainant must prove that each of the three elements of the claim is present. The Complaint is to be decided on the basis of the statements and documents submitted and in accordance with the UDRP Policy, Rules and principles of laws deemed applicable.

Remedy: suspension of the domain name

Transfer of the domain name or cancellation

Duration: 21 days (+21 days in case of appeal)

60 days (10 business days of implementation)

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URS vs. UDRP

Language: Complaint in

English; Notice of Complaint in English and in the predominant language of the country or

territory of the Registrant;

Response in English or in one of the languages used for the

Notice of Complaint; Examiner determines in which language to issue the Determination; In case of default, language is English

Language of the registration agreement

Panel: one single member One single member or 3 members

Deficiencies: no possibillity to amend the Complaint

5 calendar days for amendment

Length: 500 words (Complaint);

2.500 (Response)

No express limit (5.000 words Complaint and Response)

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URS vs. UDRP

Appeal: re-examination in case of filing late response within 6 months of the

determination (+ 6

months); appeal within 14 days of the determination (new admissible evidence)

None (court proceedings in the competent jurisdiction)

Fees: € 200-€ 250 (appeal: € 200(600) - 250(750))

$ 1.300/$ 1.500/€ 500+800

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URS PROCEDURE

Introduction of the procedure

Notice of Complaint to

Respondent the (e-mail, courier, fax) Online

submission of Complaint and payment

of the administrativ

e fees

Receipt and administrativ e review of

Complaint the Online

submission of the Response

If no Response

filed, Complaint proceeds to

default

Lock of the domain name by the

Registry 22 business

days 224 hours

2Immediately

214 calendar

days

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Procedure and outcome

URS

Issuance of the Determination

Receipt and administrative

review of the Response and

Notice to the parties / Notice

of Default to the parties

Appointment of the Examiner and review on

merits of the claim

Notice of the Determination to

the parties and implementation of the Determination

by the Registry (suspension or unlock of the domain name)

On the same day of receipt / Upon expiry

of the due date

Immediately

3 business days of the appointment and

5 days of submission of the

Response

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MFSD’S ONLINE DISPUTE MANAGEMENT PLATFORM FOR URS

urs.mfsd.it

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MFSD’S ONLINE DISPUTE MANAGEMENT PLATFORM

urs.mfsd.it

My disputes

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MFSD’S ONLINE DISPUTE MANAGEMENT PLATFORM

urs.mfsd.it

Fees

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MFSD S.r.l.

URS Domain Dispute Resolution Service Provider

https.//urs.mfsd.it

@: urs@mfsd.it : 02.45506624

:Viale Beatrice D'Este, 20 20122 Milan

Italy

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