28 November 2015

Defending your Domain Name in the UDRP

Partial View of the Internet
Author The Opte Project
Source Wikipedia
Creative Commons Licence



























Whenever you apply to register, or to renew the registration of, a generic top level domain name such as one ending in ".com", ".org" or ".biz" you represent and warrant to the registrar that:
(a) the statements that you make in your agreement with the registrar are complete and accurate;
(b) the registration of the domain name will not to your knowledge, 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 and not the registrar's to determine whether your domain name registration infringes or violates someone else's rights.

What Rights might be violated or infringed?

These are usually registered trade marks and the rights to bring an action for passing off or equivalent cause of action in other legal systems. 

Trade marks do not exist in a vacuum but are registered with a national or intergovernmental trade marks registry for specified goods or services. The trade marks registry for the United Kingdom is the Intellectual Property Office in Newport. It is also possible to register a trade mark for the whole of the European Union at OHIM (the Office for Harmonization in the Internal Market) in Alicante. The US Patent and Trademark Office ("USPTO") is the trade marks registry for the United States of America. You can find the websites or other contact details of almost every trade marks registry in the world from the member states page of the World Intellectual Property Organization ("WIPO") the UN specialist agency for intellectual property.

In most countries of the world a trade mark is infringed if you use a sign that is the same or similar to a registered trade mark in respect of goods or services that are the same or similar to those for which the mark is registered. However, there are some marks that are so well known that their use in respect of any type of goods or services could amount to an infringement. Examples that spring to mind include Rolls Royce and Microsoft.

"Passing off" is misrepresenting one supplier's business or its goods or services as those of another by the use of the same or similar trade name, trade mark or other get-up. In some other countries it is called "unfair competition" or "concurrence déloyale" but it amounts to very much the same thing.  A complainant has to prove that he or she has goodwill or a reputation in the market place in relation to goods or services by reference to a trade mark, trade name or other other get-up, that someone has used or threatens to use a similar name, mark or get-up that has induced or is likely to induce the complainant's customers to do business with the other party in the mistaken belief that they are dealing with the complainant.

How to you find out whether you are infringing or violating the Rights of a Third Party

Most trade mark registries have searchable databases  that can be searched by members of the public. In addition, the WIPO keeps a database of trade marks that are registered or sought to be registered for more than one country. There is probably a duty to make a search of your own and perhaps other leading trade mark registries' databases. In respect of well-known marks or marks with a reputation you will probably know of them from everyday experience. 

It is important to stress that the registration of a domain name that is the same or similar to a registered trade mark is not necessarily an infringement or violation of a third party's rights. Some trade marks can be registered quite legitimately by different entities for different goods and services. Lloyds, for example, is the name of a clearing bank, a corporation of insurers and a chain of pharmacies in then UK. Each of those businesses is entitled to register a domain name that includes the name Lloyd.

What happens if you infringe or violate the Rights of a Third Party?

Clause 3 of your registration agreement reserves the right for the registrar to cancel, transfer or make changes to your domain name registration in certain circumstances. These include an order of a court or arbitrator or a decision of an administrative panel in an administrative proceeding under the UDRP (Uniform Domain-Name Dispute-Resolution Policy)

The UDRP

Paragraph 4 (a) of your registration agreement provides:
"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure,
that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
A "mandatory administrative proceeding" is a form of alternative dispute resolution ("ADR") provided by one of five dispute resolution service providers. One of those service providers is the WIPO.  It is a documents only adjudication before one or three panellists who must decide whether the three elements listed above are present. If they find that they are they must order the cancellation of your domain name or its transfer to the complainant. Most of the panellists are intellectual property lawyers or patent and trade mark attorneys. You can find out more about the process from my Introduction to Domain Name Dispute Resolution 21 Nov 2015.

How will you know if you have to respond?

Some complainants or their lawyers or other representatives send letters before claim to intended respondents but for many the first inkling of a complaint will be a COMPLAINT TRANSMITTAL COVERSHEET similar to the one that can be downloaded here.  If you get one of these forms you must move very quickly for you have only 20 days in which to respond.

Essential Reading

If you are not familiar with the UDRP you should read the following documents carefully:
As I explained above there are five domain name dispute resolution service providers to which you can take your dispute and they all have their own rules of procedure which supplement the UDRP and the Rules. It is the complainant who chooses the service provider. Whichever service provider is chosen, you should also read the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), its Domain Name Dispute Resolution Resources and in particular its Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

Two or three Member Panel

Unless the complainant has asked for the complaint to be decided by a 3 member panel you must consider whether you want the case to go before a single panellist or a 3 member panel.  If you choose a 3 member panel you are entitled to suggest 3 names on the dispute resolution service provider's list from which one will be chosen. On the other hand, you must bear one half the costs of the proceeding.  You do not have to pay anything if you are content for the case to go before a single panellist.

Completing your Response

Your response should be on the model form prescribed by the dispute resolution service provider. For example you can download WIPO's model response from the WIPO's UDRP Model Response and Filing Guidelines page or complete it on-line.

Your best chance of defeating a claim for the transfer or cancellation of your domain name lies in your showing that you have rights or legitimate interests in the domain name.  The best evidence of rights or legitimate interests is a trade mark registration anywhere in the world that is the same as, or similar to. the domain name. If you have a registration certificate you should produce a facsimile or at least a printout of the particulars of registration from the relevant trade marks registry. A corporate name that is the same or similar to the domain name is almost as good provided that you did not adopt the name after the dispute arose. The best evidence is your certificate of incorporation.

Paragraph 4 (c) of the UDRP lists a number of circumstances which if found to be present may show that you have rights or legitimate interests in the disputed domain name:
"(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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."
If any of those  circumstances or if any similar circumstance applies, it is up to you to produce evidence of it. The complainant does not have to prove a negative. All he or she needs to do is to assert that the complainant never licensed or authorized you to register the domain name and that none of the circumstances in paragraph 4 (c) applies.

Complainants are assisted by paragraph 4 (b) which provides that the following circumstances shall be evidence of registration and use in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
Such evidence is not conclusive and if you can rebut the evidence or explain the circumstances then you should do so.

You should be careful to avoid unnecessary citation and prolixity. Noting irritates a panellist more than having his or her time wasted and repetition and case references on obvious points are very annoying.

Challenging a Decision

If the decision goes against you then you may be able to suspend its implementation by launching proceedings in the courts of the jurisdiction to which the complainant has submitted. However, you have ti be quick because the registrar will wait only 10 business days before implementing the panel's decision. For advice on how to challenge a UDRP decision see my article How to challenge a UDRP Decision 25 Oct 2015.4-5 IP.

Conclusion

Should you wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours or message me through my contact form.

Patents - Infringement and Revocation: Glass and others v Freysinnet Ltd.




In Glass and Others v  Freyssinet Ltd [2015] EWHC 2972 (IPEC) the inventors of a treatment process for concrete sued Freysinnet Ltd. ("Freysinnet") for infringement of their patent in the Intellectual Property Enterprise Court. Freysinnet counterclaimed for revocation of the patent on grounds of anticipation and obviousness. The action and counterclaim came on before His Honour Judge Hacon.

The Invention

The technical problem that the patented invention addressed was summarized by Judge Hacon at paragraph [3] of his judgment:
"Reinforced concrete is concrete containing bars made from another material, usually steel, which confer added strength (known as 'rebars'). The strength in compression of the concrete is complemented by the higher tensile strength and ductility of steel. Calcium hydroxide and alkaline salts within the concrete combine to create an iron oxide film on the surface of the steel which protects it from corrosion. That film may be broken down, typically by atmospheric carbon dioxide or carbon dioxide dissolving in rain water, creating carbonic acid, which enters the pores of the concrete and reacts with the iron oxide layer. Alternatively chloride ions from de-icing salts or seawater may destabilise the layer. Corrosion of the steel is then liable to occur. Rust created by corrosion occupies a volume greater than the steel it replaces, creating an expansive force which leads to cracking and spalling (surface failure leading to flaking) of the concrete. The structural capacity of the concrete accordingly suffers. In addition the cracks allow further ingress of water, accelerating the deterioration."
A number of solutions were known at the time of the application for the patent, one of which was cathodic protection whereby an electrochemical cell is created within the concrete in which the rebar acts as a cathode and thereby inhibits corrosion.  Two types of electrochemical cells were known. In one a direct current is used to create an impressed current. An anode is located in the concrete and connected to the positive terminal of the current supply. The rebars are connected to the negative terminal so that they become cathodes. The concrete serves as the electrolyte. This is known as an impressed current cathodicrprotection system. The other relies on the difference in electrode potential between metals. Where, for instance, zinc and steel are electrically connected and both contained in an electrolyte, an electrochemical potential is created between them so that current will flow. The zinc will form the anode and the steel the cathode. The zinc anode will then corrode preferentially. The zinc forms what is known as a sacrificial or galvanic anode. The metal to be protected must be less electrochemically active than the metal which is to be sacrificed. Using the traditional language of chemists, it must be a more 'noble' metal than that of the sacrificial anode. That arrangement is known as a sacrificial or galvanic cathodic protection system.

The patented invention was a hybrid system for protecting steel rebars in reinforced concrete, combining the impressed current and sacrificial anode techniques. There is an initial impressed current phase in which an external source of direct current is used with the steel serving as the cathode and another less noble metal as the anode. This is followed by a longer sacrificial phase in which the external current potential is no longer applied but the difference in electrode potential between the metals sets up a flow of a current and, thus, a sacrificial system to protect the steel.

The Disputed Claims

The claims  alleged to have been infringed were as follows:
"Claim 1: A method of protecting steel in concrete comprising an initial temporary high impressed current electrochemical treatment using a source of DC power to improve the environment at the steel followed by a long term low current preventative treatment to inhibit steel corrosion initiation where the same anode is used in both treatments and the anode at least in part consists of a sacrificial metal that undergoes sacrificial metal dissolution as its main anodic reaction and the anode is embedded in a porous material in contact with the concrete."
and 
"Claim 12: A method as claimed in claim 11 where the sacrificial metal is formed around an inert impressed current anode."
Freysinnet alleged that claim 12 lacked novelty but not claim 1. However, it contended that both claims were obvious having regard to the prior art.

Prior Art

Freyssinet  cited UK Patent Application No. 2 239 591 ("Fosroc 1"), PCT Application, publication no. WO 00/26439 ("Fosroc 2"), PCT Application, publication no. WO 01/71063 A1 ("Enser") and common general knowledge in support of its counterclaim.

Anticipation

The judge said at paragraph [40] that
"The prior art must both (a) disclose subject-matter which, if performed, would necessarily result in an infringement of the patent and (b) enable the invention in the sense that the skilled person would have been able to perform the invention, see Smithkline Beecham plc's (Paroxetine Methanesulfonate) Patent  [2005] UKHL 59, [2006] 1 All ER 685, [2006] RPC 10."
It is not enough to show that the patented invention was anticipated in a mosaic of previous inventions although that may be relevant to a claim that the invention lacked an inventive step.  An issue in this case was whether any of the previous inventions actually disclosed the patented invention.  As His Honour put it at [41]:
"A point of law which arises in the present case concerns what one of the cited items of the prior art discloses. Specifically, to what extent are alternative disclosures listed in, or otherwise derivable from, a single item of prior art each separately disclosed for the purposes of the law on novelty?"
After referring to Mr Justice Pumfrey's decision in Ranbaxy UK Ltd and another v Warner-Lambert Company [2005] EWHC 2142 (Pat), (2006) 29(1) IPD 29005, [2005] EWHC 2142 (Patents), [2006] FSR 14 which I noted in IP Case Law Update - Patents: Ranbaxy UK Ltd and another v Warner-Lambert Co. [2005] EWHC 2142 (Patents) (12 Oct 2005) 13 Oct 2005 Judge Hacon said at paragraph [49]:
"I think that an important criterion in determining whether a combination from within a single item of prior art deprives a subsequent claim to that combination of novelty is whether there is clear and unambiguous teaching, taking the prior art as a whole, that the relevant combination can be made. Absent such a clear and unambiguous indication, the prior art will not disclose subject-matter which, if (comprehensively) performed, would necessarily result in an infringement of the patent in suit (see Smithkline Beecham's Patent at [22])."
 The closest item of prior art to the patent in suit was Fosroc 1. One of the essential features of claim 12 was a sacrificial metal element as referred to in the previous claims. The specification of Fosroc 1 suggested that the invention could work without such an element:
"The anode may be provided with a non sacrificial conductor to maintain electrical continuity through the anode. When the anode is an impressed current anode such as a mixed metal oxide coated titanium, the non sacrificial conductor may be a titanium wire. When the anode is a sacrificial anode, such as zinc, the non sacrificial conducted may be a steel wire."
For that reason alone Fosroc 1 could not have anticipated claim 12.

Obviousness

The judge directed himself to Lord Justice Oliver's test in Windsurfing  as restated by Lord Justice Jacob in Pozzoli Spa v BDMO SA and Another  [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37 at paragraph [23]:
"(1) (a) Identify the notional "person skilled in the art"
      (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
He also considered Lord Justice Kitchin's guidance in  Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Others [2013] RPC 27, [2012] EWCA Civ 1234 1234 (10 Oct 2012) on step 4 between paragraphs [89] and [93]:
"[89] It is step (4) which is key and requires the court to consider whether the claimed invention was obvious to the skilled but unimaginative addressee at the priority date. He is equipped with the common general knowledge; he is deemed to have read or listened to the prior disclosure properly and in that sense with interest; he has the prejudices, preferences and attitudes of those in the field; and he has no knowledge of the invention.
[90]  One of the matters which it may be appropriate to take into account is whether it was obvious to try a particular route to an improved product or process. There may be no certainty of success but the skilled person might nevertheless assess the prospects of success as being sufficient to warrant a trial. In some circumstances this may be sufficient to render an invention obvious. On the other hand, there are areas of technology such as pharmaceuticals and biotechnology which are heavily dependent on research, and where workers are faced with many possible avenues to explore but have little idea if any one of them will prove fruitful. Nevertheless they do pursue them in the hope that they will find new and useful products. They plainly would not carry out this work if the prospects of success were so low as not to make them worthwhile. But denial of patent protection in all such cases would act as a significant deterrent to research.
[91] For these reasons, the judgments of the courts in England and Wales and of the Boards of Appeal of the EPO often reveal an enquiry by the tribunal into whether it was obvious to pursue a particular approach with a reasonable or fair expectation of success as opposed to a hope to succeed. Whether a route has a reasonable or fair prospect of success will depend upon all the circumstances including an ability rationally to predict a successful outcome, how long the project may take, the extent to which the field is unexplored, the complexity or otherwise of any necessary experiments, whether such experiments can be performed by routine means and whether the skilled person will have to make a series of correct decisions along the way. Lord Hoffmann summarised the position in this way in Conor at [42]:
"In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. He correctly summarised the authorities, starting with the judgment of Diplock LJ in Johns-Manville Corporation's Patent [1967] RPC 479, by saying that the notion of something being obvious to try was useful only in a case where there was a fair expectation of success. How much of an expectation would be needed depended on the particular facts of the case.'
[92] Moreover, whether a route is obvious to try is only one of many considerations which it may be appropriate for the court to take into account. In Generics (UK) Ltd v H Lundbeck, [2008] EWCA Civ 311, [2008] RPC 19, at [24] and in Conor [2008] UKHL 49, [2008] RPC 28 at [42], Lord Hoffmann approved this statement of principle which I made at first instance in Lundbeck:
'The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.'
[93] Ultimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim. As Aldous LJ said inNorton Healthcare v Beecham Group Plc (unreported, 19 June 1997):
'Each case depends upon the invention and the surrounding facts. No formula can be substituted for the words of the statute. In every case the Court has to weigh up the evidence and decide whether the invention was obvious. This is the statutory task.'"
The difference between claim 12 and Fosroc 1 is that the latter does not disclose an anode of a metal less noble than steel with a connector made either of titanium or carbon fibre. The dispute came down to whether it was obvious to the skilled person at the priority date to use a zinc anode in a Fosroc 1 assembly with a titanium connector.  Both sides' experts agreed that it would have been obvious to use a titanium connector with a zinc anode because unlike steel it did not corrode and titanium crimped connections were known to be convenient to use. In the light of that evidence Judge Hacon concluded that the invention claimed in claim 12  lacked an inventive step relative to Fosroc 1. He made a similar finding on more or less the same grounds in respect of Fosroc 2 but not in respect of Enser or common general knowledge.

The case for obviousness in respect of claim 1 in the light of Fosroc 1 and 2 depended on a construction of the claim that the judge had rejected. The case in respect of Enser was not pleaded to the judge's satisfaction and he disregarded it.

Infringement

An unusual feature of this case was that there was no evidence of any disposal by Freyssinet of an infringing anode in the United Kingdom. At trial the issues were whether
  1. there has been an offer to dispose of an anode falling with claim 12 of the patent in this country and 
  2. Freyssinet offered the method of claim 1 for use in the UK when Freyssinet knew, or it was obvious to a reasonable person in the circumstances, that the use of the method in the UK without the claimants' consent would be an infringement of their patent.
Freysinet did issue a data sheet that had been prepared in the course of negotiations with the claimants for the right to distribute the patented system but those negotiations came to nought.  The judge held that neither claim 1 nor claim 12 had been infringed by those data sheets. Freyssinet did admit that another of its data sheets would have infringed claim 12 had it been valid but the judge had held that it was not.

Conclusion

Judge Hacon held that claim 1 was valid but had not been infringed and that claim 12 would have been infringed had it been valid.

This is quite a meaty case for IPEC. If anyone wants to discuss it with me or patent law in general he or she should call me on 020 7404 5252 during office hours or contact me through this form.

25 November 2015

Parallel Imports - Flynn Pharma Ltd v Drugsrus Ltd



















One of the fundamental principles of the European Union is that it "shall comprise a customs union which shall cover all trade in goods and which shall involve the prohibition between Member States of customs duties on imports and exports and of all charges having equivalent effect, and the adoption of a common customs tariff in their relations with third countries" (art 28 (1) of the Treaty on the Functioning of the European Union ("TFEU"). Art 34 of the TFEU further provides:
"Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States."
However, this is subject to the following exception provided by art 36:
"The provisions of Articles 34 and 35 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of national treasures possessing artistic, historic or archaeological value; or the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States."
These articles have been considered by the Court of Justice of the European Union and its predecessor the European Court of Justice in numerous cases.

In conjoined Cases C-427-93, C-429/93 and C-436/93 Bristol-Myers Squibb v Paranova A/S [1996] ETMR 1, [1997] 1 CMLR 1151, [1996] ECR I-3457, [1996] EUECJ C-427/93, [2003] Ch 75, [1997] FSR 102, [2002] 3 WLR 1746, (1997) 34 BMLR 59, [1996] CEC 716, the Court held:
"it is established that reliance on trade mark rights by the owner in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States; such is the case, in particular, where the owner has put an identical pharmaceutical product on the market in several Member States in various forms of packaging, and the repackaging carried out by the importer is necessary in order to market the product in the Member State of importation, and is carried out in such conditions that the original condition of the product cannot be affected by it; that condition does not, however, imply that it must be established that the trade mark owner deliberately sought to partition the markets between Member States; "
So far so good. But what happens when the Medicines and Healthcare Products Regulatory Agency ('MHRA'), the medicines licensing authority for the United Kingdom, insists on the use of a brand name as a condition the sale of a generic pharmaceutical product in the UK even though the product is sold in the rest of the European Union under a different name? That was the issue that Mrs Justice Rose had to decide in Flynn Pharma Ltd v Drugsrus Ltd and another [2015] EWHC 2759 (Ch) (6 Oct 2015).

In that action the claimant Flynn Pharma Ltd. ("Flynn") sought an injunction to restrain Drugsrus Ltd. ("Drugsrus") and Tenolol Ltd. ("Tenelol") from importing from Ireland a drug used in the treatment of epilepsy and other disorders that had previously been marketed by Pfizer in the UK under the mark Epanutin and was still marketed in the rest of the EU under that sign and selling it in the UK under the mark 'Phenytoin Sodium Flynn' which was the sign that the MHRA required Flynn to use as a condition of its licence to sell Epanutin in the UK. Flynn's cause of action was infringement of the trade mark FLYNN which that company applied to register for pharmaceutical and medical preparations and substances etc. on 3 Aug 2012 - approximately the time that Flynn was concluding negotiations with Pfizer and the MHRA for the right to sell Epanutin in the UK.

To understand this case it is necessary to know that Flynn is a speciality pharmaceutical company trading in both generic medicines and speciality brands that has never operated as a research-based pharmaceutical company but works at the 'mature end' of the market, selling branded products once the patent on the product has expired. It acquires the rights to branded products from research-based pharmaceutical companies and promotes and sells them under the Flynn brand. One of its directors described its business as follows:
"Flynn has traditionally looked to 'rescue' such product lines. They are the tail end products that the major pharmaceutical companies no longer have in their focus; they are not core to their business. There is still a role for these products though and doctors and patients will still be relying on them. They do not want that product to disappear from the market, so that is really our role. We look for products that we can acquire the rights to, or enter into some kind of commercial deal, to ensure continuity of supply into the market. Obviously as part of that we make a margin."
One of these tail end products was Epanutin (also known as phenytoin sodium). It was described by one of the claimant's witnesses as
"never the drug of choice for all epilepsies but it was a preferred agent for some epilepsies in the past. However, as newer agents have come to the market with improved efficacy, fewer contra-indications (side effects) and/or better safety profiles, the place for Phenytoin Sodium in therapy has declined such that it is no longer the drug of first choice for any seizure type - it is not even the drug of second choice. It is considered as a tertiary or an adjunctive agent in some patients in whom perhaps the initial first approach and backup approach do not provide adequate control. One can look at the sales data by volume over the last five or ten years and generally you will see a decline in the sales of phenytoin sodium of approximately 5% per year."
Because of an agreement between The Association of the British Pharmaceutical Industry and the Department of Health there are limits to the price at which branded products can be sold in the UK. However, there are no controls on the price of generic products.  Because of that agreement Pfizer could not make much money out of selling Epanutin in the UK. One of the bizarre consequences of the expiry of the patent was that the price of the drug rocketed from £3 per bottle of 84 100 mg capsules to £66.50. After a lot of complaints and adverse comment Flynn eventually agreed to reduce the price of the bottle to £54.

In 2012 Flynn obtained a licence from Pfizer to sell such capsules in 2012 and applied to the MHRA for the right to sell them as phenytoin sodium. The MHRA refused to allow Flynn to use that description but offered to let that company sell the product as Phenytoin Sodium Flynn. The reason for the MHRA's insistence on the insertion of the word FLYNN was that phenytoin sodium is available in several forms. The addition of that word was intended to ensure precision in the writing of prescriptions by doctors and the supply of the right version  of the medicine by pharmacists.

The defendants were established in about 1997 by one Naresh Shah and his wife to trade in parallel imported pharmaceutical products. Tenelol applies for, holds and maintains product licences for parallel imports. Drugsrus is as a wholesaler of pharmaceutical products which imports and sells parallel imported drugs using licences held by Tenolol. Drugsrus has a wholesale dealer's licence and has satisfied the stringent criteria applicable in relation to the storage, distribution, tracking and management of pharmaceutical products. The defendants employ about 80 people including four pharmacists and three regulatory staff responsible for parallel import licence applications and for maintaining the product licences. Tenelol holds about 900 licences making it one of the bigger parallel import licence holders in the UK market. Parallel imports account about 80 per cent of the defendants' turnover.

Drugsrus and Tenelol found a supply of Epautin that had been manufactured by Pfizer in Ireland but the decision of the MHRA to require Flynn to market phenytoin sodium capsules as Phenytoin Sodium Flynn presented them with two problems which the judge acknowledged at paragraph [32] of her judgment:
"The first was that pharmacists would not be able to use that product to fulfil prescriptions written for 'Phenytoin Sodium Flynn' but only where prescriptions were written for 'Epanutin' or for the INN 'phenytoin sodium'. The second problem was that the Defendants could not, as parallel importers, guarantee the continued supply of Epanutin capsules. If customers were to source Epanutin from them (or Epanutin described by some other brand name of their choosing) there would be a danger that on any given day they would not have any available. Apart from other parallel importers (who may also have no supply on any particular day), there is no source of Epanutin capsules in the UK. That is why they want to be able to label their product Phenytoin Sodium Flynn when they import it into the UK."
Flynn responded by bringing these proceedings.

Flynn sued Drugsrus and Tenelol for trade mark infringement under s.10 (1) of the Trade Marks Act 1994. The defendants relied on s.11 (2) (b) and art 34 of the TFEU citing Bristol-Myers-Squibb in support. Her Ladyship held that neither defence availed the defendants and found for the claimants.

In her view, the problem with the s.11 (2) (b) defence was that:
"The use of the word 'FLYNN' is not a description of the goods. It is not a word associated with medicines or ingredients or otherwise denoting the qualities or characteristics of the medicine. It will be perceived by consumers as a mark of origin because there is no evidence that consumers will interpret the sign in the way the Defendants suggest, namely as an indication of the source of the API or the site of the manufacture of the product. They will interpret it as being an indication of the holder of the marketing authorisation of the product and therefore as indicating that the product originates with Flynn Pharma as being the entity responsible for the quality of the goods. That is clearly a trade mark use of the sign."
She continued that the difficulty could not be cured by a disclaimer partly because the disclaimer was not strictly accurate but also because the European Court had rejected that defence in  Case 206/01 Arsenal Football Club v Matthew Reed [2002] ECR I-10099.

As for the art 34 point the judge analysed Bristol-Myers-Squibb and subsequent cases on parallel imports in considerable detail and concluded that the exhaustion of rights defence is available only when the same or a connected entity markets the same goods under the same or similar trade mark in different member states of the EU. She said at paragraph [78]:
"Having considered the agreements between Pfizer and Flynn Pharma, it would not be right to say that the owner of the right in the importing State is, directly or indirectly, able to determine the products to which the trade mark may be affixed in the exporting State and to control their quality. I therefore hold that Flynn Pharma's trade mark rights in the name Phenytoin Sodium Flynn are not exhausted in respect of packages of Epanutin placed on the market in other Member States. Flynn Pharma is therefore entitled to prevent the relabelling of the parallel imported product by the Defendants."
The upshot of Mrs Justice Rose's decision is that a distributor of generic medicines now enjoys  a tighter monopoly in perpetuity of the supply of a "tertiary or an adjunctive agent" than was ever enjoyed by the patentee which developed the drug in the first place. Moreover, because the drug is treated as a generic rather than a branded product Flynn can now sell that product at 18 times the price that Pfizer could have sold it. The decision may well be right but intellectual property and competition law were never intended to work like that. Perhaps there will be an appeal. Perhaps not. But whatever the happens there needs to be a change in the law whether brought about by the courts or legislature.

Should anyone wish to discuss this fascinating case with me or trade mark law, competition law or parallel imports in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

24 November 2015

"No Woman No Cry" BSI and another v Blue Mountain Music Appeal

Bob Marley
Author Eddie Marlin
Source Wikipedia
Creative Commons Licence




























Between 1973 and 1976 Bob Marley wrote the words and composed the music for 13 songs of which the most famous was No Woman No Cry. At that time Marley was under contract to a New York company called Cayman Music Inc. ("CMI") which should have acquired the copyrights in those songs and the resulting royalties. To get round that contract Marley pretended that those works had been written by other individuals who collected those revenues and may possibly have shared them with him. Marley died in 1981.

After his death CMI sued Marley's estate in the New York courts for the moneys that it should have received under the contract and Marley's personal representative counterclaimed for rescission of Marley's contract with CMI. CMI's claim was found to be statute barred in New York but no decision was ever made on the counterclaim.

On 20 March 1992 Island Logic Ltd., one of the subsidiaries of Island Records, agreed to buy certain copyrights from CMI. The agreement did not make clear which works were included in the sale but Island Records believed that they included No Woman No Cry and the other songs. For over 20 years one of its other subsidiaries, Blue Mountain Music Ltd. ("Blue Mountain"), collected revenues from collecting societies in respect of those sums.

In 2008  BSI Enterprises Ltd. ("BSI") agreed to but whatever copyrights in Marley's works CMI still owned and granted an exclusive licence to Cayman Music Inc. ("Cayman"), a company that had no connection with CMI.  BSI and Cayman sued Blue Mountain for a declaration that Cayman was entitled to the copyrights in No Woman No Cry and Marley's other wrongly attributed works and for an account of the moneys that it had received in respect of those works from collecting societies.

The action came on before Richard Meade QC sitting as a judge of the High Court in BSI Enterprises Ltd and another v Blue Mountain Music Ltd [2014] EWHC 1690 (Ch). The parties agreed that CMI owned the copyrights in the works in question despite Marley's ploy and that the case turned on whether those copyrights passed to Island Logic Ltd. in 1992. It was common ground that the 1992 agreement had to be interpreted in accordance with Lord Hoffmann's speech in Investors Compensation Scheme v. West Bromwich Building Society [1997] UKHL 28; [1998] 1 All ER 98; [1998] 1 WLR 896 (19 June, 1997):
'(1) Interpretation is the ascertainment of the meaning which the document would convey to a reasonable person having all the background knowledge which would reasonably have been available to the parties in the situation in which they were at the time of the contract.
(2) The background was famously referred to by Lord Wilberforce as the "matrix of fact," but this phrase is, if anything, an understated description of what the background may include. Subject to the requirement that it should have been reasonably available to the parties and to the exception to be mentioned next, it includes absolutely anything which would have affected the way in which the language of the document would have been understood by a reasonable man.
(3) The law excludes from the admissible background the previous negotiations of the parties and their declarations of subjective intent. They are admissible only in an action for rectification. The law makes this distinction for reasons of practical policy and, in this respect only, legal interpretation differs from the way we would interpret utterances in ordinary life. The boundaries of this exception are in some respects unclear. But this is not the occasion on which to explore them.
(4) The meaning which a document (or any other utterance) would convey to a reasonable man is not the same thing as the meaning of its words. The meaning of words is a matter of dictionaries and grammars; the meaning of the document is what the parties using those words against the relevant background would reasonably have been understood to mean. The background may not merely enable the reasonable man to choose between the possible meanings of words which are ambiguous but even (as occasionally happens in ordinary life) to conclude that the parties must, for whatever reason, have used the wrong words or syntax: see Mannai Investments Co Ltd v Eagle Star Life Assurance Co Ltd [1997] 2 WLR 945
(5) The "rule" that words should be given their "natural and ordinary meaning" reflects the common sense proposition that we do not easily accept that people have made linguistic mistakes, particularly in formal documents. On the other hand, if one would nevertheless conclude from the background that something must have gone wrong with the language, the law does not require judges to attribute to the parties an intention which they plainly could not have had. Lord Diplock made this point more vigorously when he said in The Antaios Compania Neviera SA v Salen Rederierna AB [1985] 1 AC 191, 201:
"... if detailed semantic and syntactical analysis of words in a commercial contract is going to lead to a conclusion that flouts business commonsense, it must be made to yield to business commonsense."'
In interpreting that agreement Mr Meade referred to the following agreed chronology.
    DateEvent/DocumentBundle Ref
    14 June 1968Publishing Agreement between Johnny Nash Music Inc and Bob Marley4.1/3/121
    11 Oct 1973Publishing Agreement between CMI and Bob Marley1/2/13
    11 Oct 1973 to 11 Oct 1976Works in issue composed by Bob Marley
    11 May 1981Bob Marley dies intestate
    15 October 1984Complaint in New York Action issued by CMI v Rita Marley (as administratrix of the Estate of Bob Marley), BMML and Island Records Inc & Ors4.1/1/95
    14 January 1988Judgment dismissing New York Action on limitation grounds4.1/2A/120.1
    27 April 1988Conditional Agreement between Mutual Security Merchant Bank and Trust Co Ltd (as administrator of the Estate of Bob Marley) and Island Logic Inc4.1/4/131
    20 March 1992Asset Purchase Agreement between Island Logic Ltd and Cayman Music Inc & Ors4.1/5/185
    Ancillary Agreement between Vanguard Films and Cayman Music Inc4.1/5/431
    10 September 1992Sale agreement between Mutual Security Merchant Bank and Trust Co Ltd (as administrator of the Estate of Bob Marley) and Island Logic Ltd & Ors4.2/6/484
    15 May 2006Judgment in the matter of Aston Barrett and Universal-Island Records Ltd & Ors6/19/1420
    20 May 2008Agreement between BSI Enterprises Ltd and Cayman Music Inc & Ors4.2/12/676
    1 October 2011Licence between BSI Enterprises Ltd and Cayman Music Ltd4.3/16/844
    13 April 2012Claim Form Issued1/1/1
    20 July 2012Amended Claim Form Issued1/1/1

Applying Lord Hoffmann's principles Mr Meade held that the copyrights did indeed pass to Island Logic Ltd under the 1992 agreement and dismissed the claim for a declaration and account. He added that if he was wrong Blue Mountain was entitled to a gratuitous licence to exploit those works by reason of the claimants' delay in asserting their rights.

BSI and Cayman appealed against Mr Meade's decision with the permission of the deputy judge which came on before Lady Justice Arden and Lord Justices Kitchin and Lloyd Jones (see BSI Enterprises Ltd and another v Blue Mountain Music Ltd. [2015] EWCA Civ 1151). On appeal the appellants abandoned the case that they had run at trial and argued that the 1992 agreement could not have conveyed the copyrights in No Woman No Cry because the ownership of those copyrights was uncertain because the claim and counterlaim in the New York litigation had never been resolved. In their submission the copyrights remained with CMI until it sold them to the appellants in 2008.

The Court of Appeal rejected those submissions and in particular the appellants' contention that Mr Meade fell into error in that he sought to identify and ascertain the parties' intentions and the scope of their agreement from the surrounding circumstances and then made the language of the 1992 agreement yield to them, and that he ought rather to have discerned the scope of the agreement and the intentions of the parties from the language of the agreement itself. Delivering the judgment of the Court, Lord Justice Kitchin said that the deputy judge's reasoning was unimpeachable and entirely in accordance with established principles for the construction of contracts. He said at paragraph [69] that Mr Meade 
"properly had regard to the fact that Island wanted to buy everything it could and that CMI's best opportunity to maximise its potential claim over the Misattribution Ploy was with Island. Indeed I am not surprised that the deputy judge said that for the parties to leave out the Works without saying so in terms and so maximise future uncertainty seemed little short of ridiculous."
    His Lordship concluded that No Woman No Cry and the copyrights in the other works passed to Island Logic and dismissed the appeal. Lady Justice Arden and Lord Justice Lloyd Jones agreed with him.

    The most important authority cited in this appeal is Investors Compensation Scheme v West Bromwich Building Society and it is a useful example of the application of Lord Hoffmann's principles to a copyright assignment. I have had to refer to Lord Hoffmann's principles twice in the last few weeks, once in a skeleton argument and the other time in an advice in respect of a trade mark assignment from an administrator. I think I shall add this appeal in future because Lord Justice Kitchin summarized the proper approach in one short proposition at paragraph [38]:
    "The object is to determine what the parties meant by the language they used in the contract. This involves ascertaining the meaning which the language would convey to a reasonable person having all the background knowledge which would reasonably have been available to the parties in the situation in which they were at the time of the contract, that is to say the matrix of fact. The admissible background includes everything which would have affected the way in which the language of the contract would have been understood by a reasonable person but it excludes the previous negotiations of the parties and their declarations of subjective intent."
    Should anyone wish to discuss this case he or she should call me on 020 7404 5252 during office hours or send me a message on my contact form.

    23 November 2015

    How to complete a Complaint form for the UDRP

    Partial View of the Internet
    Author The Opte Project
    Source Wikipedia
    Creative Commons Licence



























    I have been a member of the World Intellectual Property Organization's domain name dispute resolution panel since 2003 and I have seen a fair number of complaints in domain name disputes in that time. I have also settled a few of my own as counsel to trade mark proprietors or business owners who object to the registration of a domain name that is the same or similar to their trade mark or business name. The complaint is an important document as it is usually the only source of evidence and argument that a panellist can rely upon, yet it is rarely prepared well. More often and not I receive screeds of irrelevant matter, bad points, repetition of the same point and disjointed argument all presented in a tone of exaggerated indignation backed up by lengthy annexes all of which have to be read and most of which are next to useless. This short article is intended to be a guide for those contemplating a complaint under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP").

    Is your Case suitable for the UDRP?

    As I said in my Introduction to Domain Name Dispute Resolution 21 Nov 2015 not every domain name dispute is suitable for the UDRP or similar alternative dispute resolution scheme. The UDRP and similar schemes were intended to tackle cyber-squatting, a practice prevalent in the early days of the internet whereby speculators registered domain names similar to the trade marks or corporate names of well known businesses or institutions and ransomed them to the business owner for a substantial sum of money that was nevertheless lower than the costs of recovering the domain name by a trade mark infringement or passing off action in the civil courts. Such schemes were never intended to outlaw domaining, a practice whereby businesses register domain names that are not the same as or similar to trade marks or corporate names in the expectation that their value will appreciate or to disputes where more than one business has a legitimate interest in the domain name as in Prince Plc v Prince Sports Group Inc [1998] FSR 21. The UDRP and similar schemes are suitable for clear cases where there is no real defence to a request for the transfer or cancellation of the disputed domain name.

    The second point to consider is that the UDRP is only one of several ADR schemes.  It is used for most generic top level and some country code top level domain disputes but by no means all. Claims for the transfer of domain names ending in ".uk", for example, should be made under Nominet's Dispute Resolution Service ("DRS") and claims for the transfer of domain names ending in "eu" should be addressed to the Czech Court of Arbitration's Arbitration Center for .EU Disputes. The World Intellectual Property Organization publishes very useful guidance to the sort of disputes that are suitable for the UDRP on its Domain Name Dispute Resolution Service for Generic Top-Level Domains page. Incidentally, if you are unsure what is meant by the terms "generic top level domain", "country code top level domain", the abbreviations "gTLD" and "ccTLD" or any other term of art then you should read my article of 21 Nov 2015.

    Reading List

    If you have never filed a complaint under the UDRP before then you should read the following documents carefully:
    As I explained in my article there are five domain name dispute resolution service providers to which you can take your dispute and they all have their own rules of procedure which supplement the UDRP and the Rules. Those supplemental rules may well be a factor in choosing a service provider so it is a good idea to download them all and read them first. Whichever service provider you choose, you should also read the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), its Domain Name Dispute Resolution Resources and in particular its Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

    The Jurisdiction

    The right to apply for the transfer or cancellation of a disputed domain name derives from the following provision of the UDRP which is transposed into every agreement to register a domain name:
    "You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
    (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
    (ii) you have no rights or legitimate interests in respect of the domain name; and
    (iii) your domain name has been registered and is being used in bad faith.
    In the administrative proceeding, the complainant must prove that each of these three elements are present."
    Note the last line of the provision. The onus is on the complainant to prove his or her case and he or she must prove all the elements in sub-paragraphs (i) to (iii).

    The Complaint

    The document in which you must prove your case is called the complaint and its form and content are prescribed by the UDRP and the Rules. Each service provider has its own form which can be completed on-line or downloaded from its website. For instance, you will find the WIPO on-line form here. Each form is accompanied by copious notes on how to complete it most of which are self-explanatory. The section that gives most difficulty is the factual and legal grounds upon which a complaint is made (Section VI of the WIPO form). This is where my article is intended to help.

    The Domain Name is identical or confusingly similar to a Trade Mark or Service Mark in which the Complainant has Rights

    All that is necessary for this element is something like this:
    "The Complainant has registered the word ............ as a trade mark in [the United Kingdom] under registration number ...................... for [specified goods and services] in classes ................... which mark is identical to the disputed domain name if the suffix ".com" is disregarded.  A copy of the particulars of registration that have been downloaded from the British Intellectual Property Office website is attached as annexe ...."
    More often than not panellists are confronted with vast tables and bundles of trade mark registrations from every corner of the globe most of which are very far removed from the domain name in suit.  The panellist has to read all that verbiage and it is a complete waste of his or her time. Panellists are not salaried judges but busy intellectual property lawyers and patent and trade mark attorneys who are paid about US$1,000 (£659.59 at current rates of exchange) for each case however long it takes to decide. That is not a lot of money after all overheads and expenses are deducted. Nothing riles a panellist more than a complaint that wastes his or her time.

    Sub-paragraph (i) above requires a complainant to prove only one trade mark or service mark in which he or she has rights.  He or she can do that quite satisfactorily by referring to the registered trade mark in any jurisdiction that is closest to the disputed domain name.  Proving that the complainant owns other trade marks in other jurisdictions adds absolutely nothing to the case. Complainants and their lawyers must resist the temptation to throw in the kitchen sink.

    Sub-paragraph (i) does not require the trade mark to be registered. It is enough to be able to bring an action for passing off or some other cause of action.  Of course the complainant has to prove all the ingredients of an action for passing off, that is to say reputation, misrepresentation and damage. As the complaint has to be made on paper and all the facts and matters on which the complainant relies has to be set out in the complaint some guidance may be derived from Mr Geoffrey Hobbs QC's judgment in Re Wild Child [1998]  RPC 455.

    Another thing that exasperates panellists is unnecessary citation of authority. Whether a trade mark is the same or confusingly similar to a domain name is a matter of impression and previous cases where another domain name was held to be similar or indeed dissimilar to a trade mark are rarely of any assistance to the panel whatsoever. Nor are cases that decide obvious points such as the suffix "com" does not distinguish an otherwise identical domain name.

    The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

    It is impossible to prove a negative and complainants are not required to do so.  On the other hand they do have a duty to assist the panel to reach a just decision which probably connotes an obligation to disclose any facts or matters that might disclose a right or legitimate interest in the domain name and then address it.  The reason I say that is that the panel has power under rule 15 (e) of the Rules to declare that a complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Deliberate or even negligent non-disclosure would certainly constitute bad faith in my book.

    Paragraph 4 (c) of the UDRP lists a number of circumstances which if found to be present may demonstrate that the respondent has rights or legitimate interests in the disputed domain name:
    "(i) before any notice to you of the dispute, your 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; or
    (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
    (iii) you are 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 trademark or service mark at issue."
    It should be noted that these are examples and the list is not exhaustive.

    Probably the best way to deal with the second element is to say that the Complainant has never licensed or consented to the registration or use of the disputed domain name and to the best of its knowledge and belief none of the circumstances listed in paragraph 4 (c) of the UDRP applies and that there are no other circumstances that justify the respondent's registration or use of the disputed domain name.

    The Domain Name has been registered and is being used in Bad Faith

    This is the most difficult element because the complainant must prove both registration and use in bad faith. Happily paragraph 4 (b) of the UDRP provides the following assistance:
    "Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
    (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
    (ii) you have 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 you have engaged in a pattern of such conduct; or
    (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
    (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
    It should be noted that these circumstances are only evidence and not conclusive proof of registration and use in bad faith but if the complainant can prove that one of them applies it will be the only evidence available to the panel and he or she will be bound to accept it unless the respondent can rebut it or explain it away. It is nowadays rare to find an example of classic cyber-squatting that would fall within sub-paragraph (i). In most of the cases that come before me the respondent parks the disputed domain on a holding page with plenty of pay-by-click links and sponsored searches and that is usually enough to invoke sub-paragraph (iv) as the panel will already have found the domain name to be identical or confusingly similar and pay-by-click revenue is commercial gain.

    It should be noted that the circumstances in paragraph 4 (b) are not exhaustive and that other circumstances of the same nature will suffice.  Some panels have held that the mere act of registering a name that is similar to the complainant's trade mark or corporate name, failing to respond to a letter before claim or even using a privacy service suffice as evidence of registration and use in bad faith but I am more sceptical. To take an obvious example, Lloyds is the name of a large London clearing bank, a corporation of insurers and a well-known pharmacy chain in the UK and each of them is entitled to register a generic top level domain name that includes the word "Lloyds". There are very good reasons why domain name holders use privacy services and there can be all sorts of reasons why a respondent in country A might not even receive let alone take seriously a letter before claim from some law firm in country B. As a rule of thumb most cases that are suitable for the UDRP fall within one or more of the circumstances in paragraph 4 (b) and if a case does not fit it is probably not suitable for this summary procedure.

    It should be remembered that the word "registration" in 4 (a) (iii) applies to renewals and transfers as well as original registrations so it is possible that a domain name which was originally registered in good faith may not be renewed in good faith because of changing circumstances.

    Conclusion

    Should anyone wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours or message me through my contact form.

    21 November 2015

    Introduction to Domain Name Dispute Resolution

    World Intellectual Property Organization
    Author Melaatron
    Creative Commons licence



























    This is the first of  series of articles on domain name disputes. Schemes for the rapid resolution of domain name disputes such as ICANN's UDRP (Uniform Domain Name Dispute Resolution Policy), Nominet's Dispute Resolution Service ("DRS") and the Czech Court of Arbitration's ".euADR" are probably the most successful use of alternative dispute resolution ("ADR") on the planet and the topic is important for that reason alone. It is also important because such schemes are probably indispensable for the rapid development of the Internet.  It is inconceivable that businesses would have invested anything that the that they have on the development of on-line platforms for the delivery of many sorts of services without a quick and cheap method of domain name dispute resolution.

    My Qualifications and Experience

    I have been interested in this topic for nearly 20 years.  My interest was sparked by instructions that I received in the early days of the Internet to advise what if anything could be done when someone registered a domain name that was the same as or similar to a trade mark or the name of a company. I followed the cases in this country and abroad and noticed that they were not always decided in favour of the trade mark owner. I also followed the negotiations between the US government and the Internet community to privatize the domain name system and wrote about them at the time. I was in one of the first barristers to settle a complaint under the UDRP. I was invited by the WIPO (World Intellectual Property Organization) to become a domain name panellist in 2003 and have decided a large number of domain name disputes either as a sole panellist or as a member of a panel of three. As counsel I have advised on and challenged a number of domain name decisions in the English courts.

    What is a Domain Name?

    At the risk of over-simplification, a domain name is a mnemonic for a string of numbers that identify a website or other resource on the Internet. Domain names typically split into three parts:
    • a top level domain ("TLD") such as ".com" or ".uk" which appears at the far right;
    • a second level domain ("SLD") such as "4-5" or "nipclaw" in the middle; and 
    • the server designator such as "www" for a web server at the far left.
     TLDs fall into two groups:
    • generic top level domains ("gTLD") such as ".com", ",org" or ",net" which are not associated with any particular country or group of countries, and 
    • country code top level domains ("ccTLD") such as ".uk", ".fr", ".de", ".cn" and so on.
    ICANN

    By a memorandum of understanding dated 25 Nov 1998 the management of the domain name system has been delegated to a California company known as ICANN (Internet Corporation for Assigned Names and Numbers). ICANN supervises the gTLD space directly and collaborates with national domain name authorities such as Nominet in the management of the ccTLD spaces. The terms upon which ICANN collaborates with Nominet are set out in an exchange of letters dated 2 May 2006 between Paul Twomey of ICANN and Lesley Cowley of Nominet.  ICANN has exchanged similar correspondence with other national domain name authorities.

    Registrars

    Neither ICANN nor Nominet registers domain names directly. That task is undertaken by businesses called "registrars".  Each registrar that wishes to register domain names in the gTLD space must obtain accreditation from ICANN and each registrar which wishes to register domain names in the ".uk" ccTLD space must obtain accreditation from Nominet. Other ccTLD authorities have established their own registration policies.

    Registrar Accreditation Agreements

    ICANN accredits registrars under its standard registrar accreditation agreement ("RAA"). Clause 3.8 of RAA provides:
    "Domain-Name Dispute Resolution. During the Term of this Agreement, Registrar shall have in place a policy and procedures for resolution of disputes concerning Registered Names. Until ICANNadopts an alternative Consensus Policy or other Specification or Policy with respect to the resolution of disputes concerning Registered Names, Registrar shall comply with the Uniform Domain NameDispute Resolution Policy ("UDRP") identified on ICANN's website (www.icann.org/general/consensus-policies.htm), as may be modified from time to time. Registrar shall also comply with the Uniform Rapid Suspension ("URS") procedure or its replacement, as well as with any other applicable dispute resolution procedure as required by a Registry Operator for which Registrar is providing Registrar Services."
    That provision requires every accredited registrar to incorporate the UDRP into its domain name registration agreements. Thus every agreement to register a domain name requires the person seeking registration ("the registrant") to submit any dispute with a trade mark owner over whether he or she is entitled to the domain name to a type of ADR known as a "mandatory administrative proceeding." If a registrar fails to incorporate the UDRP into its registration agreements or to comply with an order made in a mandatory administrative proceeding for the transfer or cancellation of a domain name, ICANN can suspend or revoke the registrar's accreditation.

    It is those RAA that make the UDRP and similar country code domain name dispute resolution schemes so effective.  They enable a dispute between a trade mark owner and a registrant to be resolved at least as effectively but in a fraction of the time and cost of the resolution of the same dispute in the courts.

    Nominet has a similar accreditation agreement with its registrars (see "the Registrar Agreement" page).  So do the domain name authorities of several other countries.  Many of those authorities incorporate the UDRP into their registrar accreditation agreements.  Nominet, however, has its own Dispute Resolution Service Policy which resembles the UDRP in essentials but differs from it in a number of important respects.

    Relationship with the Courts

    Neither the UDRP nor the DRS seeks to oust the jurisdiction of the civil courts.

    Paragraph 4 (k) of the UDRP provides:
    "The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded."
    The vast majority of domain name disputes are decided without recourse to the courts.  Very few decisions are challenged.  However, ICANN accredited registrars are bound to wait for 10 business days to allow a challenge to be mounted before they can transfer or cancel a domain name registration.

    Paragraph 4 (k) continues:
    "If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name."
    I discussed the procedure for challenging UDRP decisions in the English courts in How to challenge a UDRP Decision 25 Oct 2015 4-5 IP.

    Paragraphs 10 (d) and 13 (a) (ii) of the DRS Policy make similar provision in respect of disputes in the ".uk" domain name space.

    It would not be wrong to characterize UDRP and DRS proceedings as analogous to interim injunction proceedings in civil litigation as their purpose is also to preserve the status quo.   As I noted elsewhere, the UDRP has been described aptly as an interim custody arrangement for domain names.

    What sort of Domain Names Disputes are suitable for this Procedure? 

    It is important to note that not all domain name disputes are suitable for resolution under the UDRP, DRS or similar scheme.

    Paragraph 4 (a) of the UDRP provides:
    "You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
    (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
    (ii) you have no rights or legitimate interests in respect of the domain name; and
    (iii) your domain name has been registered and is being used in bad faith.
    In the administrative proceeding, the complainant must prove that each of these three elements are present."
    For the purposes of the UDRP  a "trade mark" or "service mark" includes a registered trade mark in any jurisdiction or an action for passing off in any country.

    It is worth emphasizing that the complainant must prove that all three elements are present and that the third is proved only if the domain name was registered and is used in bad faith. Moreover,  paragraph 15 (e) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") enables a panellist to  declare that a complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Incidentally, the equivalent provision in paragraph 16 (d) of the DRS Procedure actually carries a sanction of exclusion from the DRS for up to 2 years if there are three or more such declarations within 2 years.

    The jurisdiction to bring a complaint under the DRS is slightly wider than the UDRP as paragraph 2 (a) (i) requires a complainant to prove that he or she has Rights.  "Rights" is defined as
    "rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning."
    A complainant must also prove that the domain name in the hands of the respondent was an "Abusive Registration", that is to say one that
    "i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
    ii. has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant’s Rights;"
    It follows that the UDRP, DRS and similar schemes should be invoked only in clear cases.   If a complainant is in any doubt as to whether a case is suitable for the UDRP, DRS or an equivalent scheme he or she should seek specialist legal advice first.

    Dispute Resolution Service Providers

    Applications for the transfer or cancellation of a generic top level domain name can be made to any one of the following dispute resolution service providers:
    Nominet has its own panel of experts for the resolution of disputes in the ".uk" ccTLD space. The Czech Court of Arbitration Center for Internet Disputes resolves disputes in the ".eu" domain. Other countries have their own schemes many of which incorporate the UDRP.  The WIPO keeps a database of national domain name authorities, registration agreements and dispute resolution policies.

    How Domain Name Dispute Resolution Works

    Although there are many variations between different TLDs and different dispute resolution service providers most schemes work as follows:

    1. A trade mark owner files a complaint either on-line or by email on  a form downloaded from the service provider's website and pays a prescribed non-refundable and irrecoverable fee of around US$1,500.
    2. The service provider checks whether the complaint is in order. If it is, it sends it to the person who registered the disputed domain name ("the respondent") and invites him or her to respond within a specified time.
    3. The respondent may respond on-line or on a prescribed form.  If he or she wants the case to be determined by a three member panel, he or she will pay a non-refundable and irrecoverable fee of around US$1,500.
    4. Once the time for responding expires, the service provider appoints a panel.
    5. The panel considers the complaint and response (if any) and delivers his or her (or in the case of a three person panel their) decision within a few days.
    6. The service provider waits a number of days for a court challenge to be mounted.   If there is none, it orders the registrar to implement the panel's decision.
    Conclusion

    Should anyone wish to discuss this article or domain name disputes in general, he or she should call me on 020 7404 5252 during office hours or email me through my contact form.