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January13domaindisputes

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January 13 am class

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January13domaindisputes

  1. 1. Global Information Law and Practice Domain Names January 13, 2018 professor michael geist university of ottawa, faculty of law
  2. 2. Domain Names Case Study Dot-stinks is a new TLD that recently received approvals from ICANN to enter into the root. Speakout Inc. is the owner of the registry and it has big plans for its new domain. Marketing the domain as the Internet’s loudest forum to speak out, the company has brought several innovations to the market. 1. Domain names can be registered by trade mark holders or famous persons during the “sunrise” period, however, those domains retail at US$1,500 per year per domain. 2. Domain names registered after the sunrise period fall into two categories. A list of “premium domains” feature variable pricing that can range as high as US$10,000 per domain per year. Non-premium domains cost US$250 per domain per year. These domains can be registered by anyone. 3. Dot-stinks has a small reserve list of names that cannot be registered by anyone. 4. Speakout Inc. is based in a Caribbean island. It says it will only respond to takedown orders from a local court. It does not believe it is liable for any content on sites registered under dot-stinks. INTA has filed a complaint with the U.S. government over the dot-stinks plans.
  3. 3. Domain Names Case Study Please consider the fact pattern and be prepared to discuss: 1. How should the U.S. government respond to the INTA complaint? 2. Is Speakout Inc. liable for content on dot-stinks sites? Should they be? 3. Is there anything wrong with its pricing plans? 4. What jurisdiction should govern dot-stinks disputes?
  4. 4. New TLDs • Limited gTLDs + ccTLDs (though some ccTLDs function like gTLDs) • History of desire for expansion of namespace • Postel’s plan for 150 new TLDs • ICANN to consider new TLDs as part of mandate • Since 1998 • Limited expansion of TLDs • Emphasis on “sponsored” TLDs with more limited commercial appeal • The Issues • Why expand? • Who decides? • What conditions?
  5. 5. Why Expand? • Choice as a “good thing” - more “inventory” • Portability for individual users • Shorter names • Identity functions (ie. valued of sponsored domains) • Greater control • Greater marketplace competition • Avoid split root • Decline of artificial scarcity • Reduce value of individual domain
  6. 6. Why Not To Expand • Technical limitations in the root? • Intellectual property considerations? • Security concerns? • Accountability concerns? • Consumer confusion?
  7. 7. ICANN’s First Expansion • ICANN seeks detailed proposals • $50,000 application fee • Detailed info on business, financial, and technical qualifications • 47 applications (2 returned for no fee) • Board report indicates favoured proposals • Board gives three minutes to each applicant • Dot-web controversy • ICANN selects seven proposals; 11 proposals file reconsideration requests (all denied) • New domains include: • .biz, .info, .name, .coop, .aero, .travel, .pro • “Sunrise” registrations
  8. 8. ICANN’s First Expansion • Report on first expansion finds: • Abuses of sunrise registrations (43% of .info cancelled) • Sunrise may be unnecessary - only 2-3% of registrations involve trademarks • Limited impact on namespace • ICANN contracts unnecessarily long and complex
  9. 9. ICANN’s First Expansion • History of expansion in ccTLDs - no mandate of how to run TLD - simply looking for competence of domain manager • May 1999 - ICANN board calls for policy on TLD expansion • Some call for massive expansion, TM lobby wants limited or no expansion • Compromise - up to ten new TLDs followed by evaluation
  10. 10. ICANN’s Second Expansion • ICANN opens in 2003 to sponsored TLDs • Ten applications • Adds .cat, .mobi, .travel, .asia • .xxx controversy – US Government meddling
  11. 11. New gTLDs
  12. 12. New gTLDs
  13. 13. Where To From Here? • Unlimited number? • Gaming issues? • Who decides? • Allocation rounds or continues addition? • Is this necessary?
  14. 14. Domain Name Disputes • Who owns a dot-ca, a dot-com or dot-hk? • First come, first served • Issue - only one domain per name & limited restrictions on registration (CPR in Canada; none for dot-coms) • United Airlines, United Van Lines, United Telephone, United Bank
  15. 15. Challenging Dot-coms • Early days -- NSI dispute policies • Freezing domains • Competing global trademarks • Transfer from NSI to ICANN • ICANN Uniform Dispute Resolution Process (UDRP) follows WIPO-led process • The Courts/Anticybersquatting Act (U.S.)
  16. 16. ICANN’s Uniform Dispute Resolution Policy (UDRP) • Domain name disputes are frequently cross-border • Need for speed, accessibility, global scope • ICANN UDRP – External providers - WIPO, NAF, ADNDRC, etc. – Bad Faith Domain Name Registrations – 3 Months and $1 - 3,000
  17. 17. ICANN’s Uniform Dispute Resolution Policy (UDRP) Complainant must prove… • domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights • no rights or legitimate interests in respect of the domain name • domain name has been registered and is being used in bad faith
  18. 18. ICANN’s Uniform Dispute Resolution Policy (UDRP) Bad Faith includes… • Attempt to sell, lease, etc. the domain • Prevent registration if there is a pattern of such behaviour • Disrupt competitor’s business • Attract, for commercial gain, visitors to your site via confusion
  19. 19. ICANN’s Uniform Dispute Resolution Policy (UDRP) Legitimate interest includes… • Bona fide offering of goods or services • Commonly known as domain • Legitimate non-commercial use provided no attempt to obtain commercial gain via confusion
  20. 20. ICANN’s Uniform Dispute Resolution Policy (UDRP) • Step-by-step process • Complainant launches claim with arb. provider • Registrant opportunity to respond and decide whether one or three member panel • Arbitration provider assigns panelist(s) • Panelist(s) render decision based on evidence submitted
  21. 21. The Development of the CDRP Influences • ICANN UDRP • Canadian court experience • Desire for a Canadian-specific approach (language, CPR) • ccTLD considerations
  22. 22. Key CDRP Provisions Launching a Claim • Complainant (who meets CIRA Canadian Presence Requirements) required to prove: – Registrant’s .ca domain name is Confusingly Similar to a Mark in which the Complainant has Rights – Registrant has no legitimate interest in the domain – Registrant has registered the domain name in bad faith
  23. 23. Key CDRP Provisions Confusing Similarity Prong • Confusingly similar if resembles mark in appearance, sound, or ideas such that likely to be mistaken for mark • Mark based largely on Trademark Act definition – Can be registered or unregistered • Rights requires use in Canada
  24. 24. Key CDRP Provisions Bad Faith Prong • Bad faith indicia: – Registered or acquired domain primarily for purpose of resale, lease, etc. to Complainant or Complainant’s competitor – Registered or acquired domain primarily to prevent Complainant from registering and engaged in pattern of such activity – Registered or acquired domain primarily to disrupt Complainant’s business and Registrant & Complainant are competitors – Registered to intentionally attempted to attract, for commercial gain, Internet users to the Registrant’s website 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 the Registrant’s website or location or of a product or service on the Registrant’s website or location
  25. 25. Key CDRP Provisions Legitimate Interest Prong Complainant must also affirmatively show that the registrant has no legitimate interest
  26. 26. Key CDRP Provisions Legitimate Interest Prong If Confusion, Bad Faith and No Legitimate Interest are proven, onus falls to Registrant to prove legitimate interest : • Registrant has rights in the Mark • Good faith commercial use - domain descriptive or generic • Good faith non-commercial use including news reporting and criticism • Legal name of registrant • Geographical location of Registrant’s non-commercial activity or place of business
  27. 27. Key CDRP Provisions Canadian Issues • CDRP only open to those who meet Canadian Presence Requirements • Canadian law governs all disputes • Actions brought in either English or French
  28. 28. Key CDRP Provisions Of Note… • Reverse Hijacking clause -- up to $5000 in damages • Domains can be transferred or cancelled – Typically transferred, rarely cancelled • 60 days to implement • Three member panels for all contested cases • Two dispute resolution providers - BCIAC and Resolution Canada
  29. 29. DNDRP (Dot-HK) Claims for: • the Registrant’s Domain Name is identical or confusingly similar to a trademark or service mark in Hong Kong in which the Complainant has rights; and • the Registrant has no rights or legitimate interests in respect of the Domain Name; and • the Registrant’s Domain Name has been registered and is being used in bad faith, and • if the Domain Name is registered by an individual person, the Registrant does not meet the registration requirements for that individual category of Domain Name.
  30. 30. DNDRP (Dot-HK) Evidence of bad faith use & registration: • circumstances indicating that the Registrant has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrant’s documented out-of-pocket costs directly related to the Domain Name; or • the Registrant has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Registrant has engaged in a pattern of such conduct; or • the Registrant has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or • by using the Domain Name, the 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 the Registrant’s web site or location or of a product or service on the Registrant’s web site or location.
  31. 31. DNDRP (Dot-HK) Legitimate Interest: • before any notice to the Registrant of the dispute, the Registrant’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services in Hong Kong; or • the Registrant (as an individual, business, or other organisation) has been commonly known by the Domain Name, even if the Registrant has acquired no trade mark or service mark rights in Hong Kong; or • the Registrant has trademark or service mark rights that the mark is identical to the Domain Name the Registrant is holding; or • the Registrant is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue; or • If the Domain Name is registered in one of the Individual Domain Name Categories, the Domain Name registered must be the Registrant’s own “individual name”, which can be either (1) the Registrant’s legal name, or (2) a name by which the Registrant is commonly known and can include, for example, a pseudonym the Registrant uses if the Registrant is an author or a painter, or a stage name if the Registrant is a singer or actor, or the name of a fictional character if the Registrant has created or can otherwise show it has rights in such fictional character.
  32. 32. The Problem with Domain Name Dispute Resolution
  33. 33. Bodacious-Tatas.com • Complainant - Tata & Sons (India) • Respondent - D &V Enterprises (USA) • ADR Provider - WIPO (Switzerland) • Arbitrator - Michael Ophir (Israel) • Precedent - Nokiagirls.com case (Japan with a Belgian arbitrator)
  34. 34. The Good • Fast - Complaint launched May 23, 2000; decision August 18, 2000 • Inexpensive - one panelist • Co-exists with local legal systems - injunction obtained in India but tough to enforce • Global - international composition of the case • Law Accessible - decision freely available; relies on precedent
  35. 35. The Bad • Substantive Questions -- Are we getting “good” decisions? • Inconsistent Decisions – Geographic Names (Barcelona.com vs. StMoritz.com) – Generic Names (Crew.com vs. Jobpostings.com) – Definition of Bad Faith Use (buyguerlain.com vs. buyvuarnetsunglasses.com)
  36. 36. The Ugly Forum Shopping • Complainant win percentages: • WIPO - 82% • NAF - 83% • eResolution - 63% • 93% of the cases to the two complainant-friendly providers (WIPO & NAF) • eResolution -- 3 cases in February 2001 (183 WIPO, 96 NAF); Folds December 2001
  37. 37. The Ugly • Case Allocation Bias • One Panelist (83%) vs. Three-Member Panels (60%) • Case Allocation -- • NAF -- 53% of cases to six panelists (complainant win percentage in those cases -- 94%) • WIPO - 104 of 105 panelists (with five or more cases) rule in favour of complaints over 50% of the time

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