Chartered Institute of Arbitration                Irish Branch             Monthly Round Table              Arbitration Fo...
Chartered Institute of Arbitration                Irish Branch             Monthly Round Table              Arbitration Fo...
Dispute Resolutions Procedures for .ie, .com and .eu domains         Joseph Dalby BL            Law Library, Dublin       ...
Scope of TopicParticipants and policiesICANNs Uniform Dispute Resolution Policy.ie Dispute Resolution Policy.ie DRP decisi...
The NamespaceGeneric Top Level Domains  - .com, .org., ..info  - sponsored domains, e.g. .aero,    .Brand/city/cause/TBACo...
Electronic Commerce Act 2000Power to authorise, prohibit or regulate the  registration and use of the ie domain name in th...
Comregs Powers(a) specify .ie registry(b) prescribe registration policies, including revocation(c) appeal procedures for r...
Dispute Resolution ModelICANN / Registry PolicyCompulsory contractual submission to “administrative procedure” by registra...
.ie Dispute Resolution Policy1.1 The Registrant agrees to submit to a mandatory  administrative proceeding… before an inde...
.ie DRP     1.1.1 a domain name is identical or    misleadingly similar to a Protected Identifier    in which the Complain...
Reasons for Adaptations.ie is managed registryRestrictions on registration     –   Authentication and documentary proof   ...
Limitations on adaptations1.1.3 registration or use in bad faith1.2 Registration is not evidence of rights in law1.3 Prote...
Decisions36 in 10 years arising from   facebook.ie  180,000+ registrations      whatcar.ie  including                     ...
Cross-border issuesConsistent with UDRP, the complainant must establish aprima facie case of factors within the the knowle...
ICANN UDRP(i) domain name is identical or confusingly   similar to a trademark or service mark in   which the complainant ...
UDRP, Para 2By applying to register a domain name, or by asking us to  maintain or renew a domain name registration, you h...
Registration or UseEx ante registration systemDrawing away hits (assumed advertising revenueOffers to sell / privilegeInco...
ProcedureWIPO Dispute Resolution Rules of Procedure for .ie Domain Name RegistrationsNo material differencesAny person or ...
FeaturesWritten – hearings possibleOne or three panelsPanel regulates procedureSubject to equitable treatment (“equity”?) ...
Judicial ControlWIPO Rules:Panel has discretion to suspend or terminate or to  proceed to a decisionParty not precluded fr...
.eu Dispute ResolutionCommission Regulation (EC) No 874/20041. An ADR procedure may be initiated by any  party where:(a) t...
.eu ADR.eu Alternative Dispute Resolution RulesAdministered by Arbitration Court attached to the Czech Chamber of Commerce...
ECJ Decisions    ‘licensees of prior rights’ do not refer to a    person who has been authorised by the    proprietor of ...
FutureGeneral trend is to liberalize availabilitySponsored and personalisation of namesWhat happens for Pages on Facebook,...
Joseph Dalby BL Law Library, Four Courts, Dublin 7            01 817 7700          Joseph@Dalby.ie4-5 Grays Inn Sq, Grays ...
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WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes

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These are the slides of the presentation that my colleague, Joseph Dalby of the IP and Tech Law Group of 4-5 Gray's Inn Square, gave to the monthly arbitration forum of the Irish branch of the Chartered Institute of Arbitrators. Joseph had helped to set up the Irish domain name dispute resolution policy and he discussed it in some detail highlighting some of the differences between the Irish policy, the ICANN Universal Domain Name Dispute Resolution Policy ("UDRP"), the Nominet Dispute Resolution Service Policy and the Czech Court of Arbitration Rules for the resolution of disputes in the ".eu" top level domain name space. Joseph also discussed the legal issues likely to arise from the new generic top level domain names.

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WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes

  1. 1. Chartered Institute of Arbitration Irish Branch Monthly Round Table Arbitration Forum“WIPO Arbitration: current trends with intellectual & domain name disputes” Domain Name Disputes By Joseph Dalby BL Monday 15 April 2013 1
  2. 2. Chartered Institute of Arbitration Irish Branch Monthly Round Table Arbitration Forum“WIPO Arbitration: current trends with intellectual & domain name disputes” Domain Name Disputes By Joseph Dalby BL Monday 15 April 2013 2
  3. 3. Dispute Resolutions Procedures for .ie, .com and .eu domains Joseph Dalby BL Law Library, Dublin 4-5 Grays Inn Sq, London 3
  4. 4. Scope of TopicParticipants and policiesICANNs Uniform Dispute Resolution Policy.ie Dispute Resolution Policy.ie DRP decisions.eu Dispute Resolution Policy 4
  5. 5. The NamespaceGeneric Top Level Domains - .com, .org., ..info - sponsored domains, e.g. .aero, .Brand/city/cause/TBACountry-code Top Level Domains - .ie, etc.Left and right of the dot www.joseph.dalby.ie/about 6
  6. 6. Electronic Commerce Act 2000Power 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? 7
  7. 7. Comregs 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?) 8
  8. 8. Dispute Resolution ModelICANN / Registry PolicyCompulsory contractual submission to “administrative procedure” by registrantRegistrar re-selling policyAccredited dispute resolution providersNeutrals 9
  9. 9. .ie Dispute Resolution Policy1.1 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: 10
  10. 10. .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. 11.
  11. 11. Reasons for Adaptations.ie is managed registryRestrictions on registration – Authentication and documentary proof – Real and substantial connection with IrelandCross-border reach (32 counties) 12Non-commercial and fair use - ?
  12. 12. Limitations on adaptations1.1.3 registration or use in bad faith1.2 Registration is not evidence of rights in law1.3 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 13
  13. 13. Decisions36 in 10 years arising from facebook.ie 180,000+ registrations whatcar.ie including kelkoo.iecartridgeworld.ie adidas.iegroupon.ie Buy-sell.iemonsterfinance.ie ikea.ietodayfm.ie three.ietaxassist.ie ebay.iefatboy.ie champagne.ie 14
  14. 14. Cross-border issuesConsistent with UDRP, the complainant must establish aprima facie case of factors within the the knowledge andcontrol of the respondent.Evidence of trade with Ireland suffices.UK Trademarks is proof of protected identifier becauseenforceable in N. Ireland, but not third countries (cfNominet). .cf. If no trademark, businesses outside 32 counties mustdemonstrate real and substantial connection. (e.gshopelectric.ie)Amount of turnover irrelevant / need for breakdown 15(asos.ie)
  15. 15. 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?” 16
  16. 16. UDRP, Para 2By 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 elses rights. 17
  17. 17. Registration or UseEx ante registration systemDrawing away hits (assumed advertising revenueOffers to sell / privilegeIncorporation for purposes of registration(daftmotors.ie, monterfinance.ie 18
  18. 18. ProcedureWIPO Dispute Resolution Rules of Procedure for .ie Domain Name RegistrationsNo material differencesAny person or entityCopy of the complaint to the Registrant and IEDRRegistry locks down domain name. 19
  19. 19. FeaturesWritten – hearings possibleOne or three panelsPanel regulates procedureSubject to equitable treatment (“equity”?) 20Reasoned decision, which Registry accepts.
  20. 20. Judicial ControlWIPO Rules:Panel has discretion to suspend or terminate or to proceed to a decisionParty not precluded from initiating litigationIEDR – a judicially reviewable body? – body exercising statutory powers? – Cyberbritain JR in UKDoes Arbitration Act 2010 apply? – Is Ireland place of arbitration? 21
  21. 21. .eu Dispute ResolutionCommission Regulation (EC) No 874/20041. 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 22
  22. 22. .eu ADR.eu Alternative Dispute Resolution RulesAdministered by Arbitration Court attached to the Czech Chamber of Commerce 23
  23. 23. 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. 24
  24. 24. FutureGeneral trend is to liberalize availabilitySponsored and personalisation of namesWhat happens for Pages on Facebook, identities on Skype, profiles on LinkedIn? 25
  25. 25. Joseph Dalby BL Law Library, Four Courts, Dublin 7 01 817 7700 Joseph@Dalby.ie4-5 Grays Inn Sq, Grays Inn, London 020 7404 5252 www.4-5.co.uk 26

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