NEW GENERIC TOP-LEVEL DOMAIN NAMES DISPUTE RESOLUTION
JWP
Warsaw - March 21, 2016 Pierfrancesco C. Fasano
Ivett Paulovics
Agenda
ABOUT US NEW GTLDS
ABOUT THE URS URS VS. UDRP
URS PROCEDURE
MFSD’S ONLINE DISPUTE MANAGEMENT
PLATFORM
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
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
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
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
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
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
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
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)
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)
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
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.
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
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.
URS vs. UDRP
Legitimate right and interest – Defenses of Registrant
2
ndrequirement:
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
URS vs. UDRP
Legitimate rights and interest – Defenses of Registrant
2
ndrequirement:
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
URS vs. UDRP
Bad faith
3
rdrequirement:
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
URS vs. UDRP
Bad faith
3
rdrequirement:
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
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)
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)
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
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
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
