What's in a Name? WIPO Domain Name Dispute Resolution Panellists' Meeting 28 Oct 2013

Every year at the end of October the World Intellectual Property Organization ("WIPO"), the UN agency for intellectual property holds a one day conference at its head office in Geneva for its domain name dispute resolution panellists. I have been a member of that panel for the last 10 years and I have attended every panellists' meeting since 2005. I have got to know quite a few of my fellow panellists over the years and several of them have become good friends. This year the conference took place on the 28 Oct.

In previous years the focus had been on practical issues arising under the Uniform Domain Name Dispute Resolution Policy ("UDRP") such as how to deal with privacy services and what constitutes evidence of registration and use in bad faith. There was some of that this year.  Andrew Lothian of Demys Ltd presented an analysis of the decisions where the domain name comprised the trade marks of more than one entity such as Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions WIPO Case No. D2003-0725 where the disputed domain name <911hyundai.com> was composed of trade marks belonging to Porsche and Hyundai. Richard Lyon and Adam Samuel spoke about drafting decisions and Scott Blackmer discussed "passive holding", that is to say parking a domain name on a holding page.

I must say that I found Scott's discussion particularly useful for such use is often the only evidence of registration and use in bad faith. The leading case on that point is Andrew Christie's decision in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 where the panel said:

“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”

As I noted in "Dr. Martens" International Trading GmbH, “Dr. Maertens" Marketing GmbH v. Argo Blue LLC/ Domains By Proxy, LLC WIPO Case No. D2012-0209:

"Even though this passage has been quoted many times and endorsed by many distinguished panelists, this Panel has never been comfortable with it. It appears to substitute the concept of acting in bad faith for the very clear words of paragraph 4(a)(iii) of the Policy that require registration in bad faith and use in bad faith. The notion that “use” can somehow connote “inaction” on occasions has led to oxymorons such as “passive use” that could well have emanated from George Orwell’s Ministry of Truth."

The guidance that I draw from Nuclear Marshmallows is as follows:

"It is clear, however, from a careful reading of the Telstra case that the panel did not ignore the double probanda. On the contrary, in paragraphs 7.3 to 7.6 the panel restated the need to prove both registration in bad faith and use in bad faith. The real lesson from Telstra however is that though registration in bad faith and use in bad faith are separate probanda the same evidence can be used for both. In most cases, the evidential burden is discharged by proving one or more of the circumstances in paragraph 4(b) of the Policy. Where that is not possible the complainant has to satisfy the panel that the circumstances of the case are eiusdem generis those in that paragraph.

In the last sentence of paragraph 7.10 of Telstra the panel noted that the circumstances identified in paragraph 4(b) of the Policy are "without limitation" - that is, paragraph 4(b) of the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith. In the next paragraph the panel asked what those circumstances could be and concluded that the question could not be answered in the abstract but only in respect of the particular facts of a specific case."

And of course each case turns on its own facts.

Finally, David Bernstein discussed the relevance of the UDRP in other forums.  Having a personal and professional interest in bilateral investment treaties (see "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection"  27 July 2013) I was interested to learn that the US government had negotiated compliance the UDRP in several of its agreements.

Discussion on the UDRP ended at 11:20 and the rest of the day was devoted to dispute resolution in relation to the new generic top level domain names ("gTLD").  This was particularly timely in view of ICANN's announcement on the 23 Oct 2013 of the delegation of the first new gTLDs (see the ICANN press release "Internet Domain Name Expansion Now Underway"). For those who have not been following the story, ICANN (Internet Corporation for Assigned Names and Numbers the California not for profit corporation that oversees the Internet domain name system pursuant to a memorandum of understanding with the US government) has made elaborate arrangements for increasing the generic top level domain space from those ending in one of 22 suffixes (".com", ".org", ".net" ".biz", ".info" etc) to more or less any number. 

There has been a lot of hype about this expansion and I remember similar kerfuffles when ".biz", ".info" and ".pro" were announced in 2000 (see David Cohen "Magnificent Seven?" 17 Nov 2000 New Scientist) and later when the ".eu" TLD was trumpeted (Chris Morris "EU to launch its own web domain" 21 Apr 2005 BBC website). Whether we shall actually need all those new domain names in view of the new generation of apps that retrieve exactly the information we need which Andrew Christie pointed out on Monday remains to be seen.  This could be the biggest development in the internet since the launch of the worldwide web or it could be the dampest or damp squibs since the Thames jubilee pageant. 

For those who want to know more about this TLD expansion the bible is the "Applicants' Guidebook" which you can download in several languages from ICANN's new gTLD website.  ICANN intends to launch new gTLDs in phases and applications for the first phase opened on the 12 Jan 2012 and closed on 29 March 2012.  There have been quite a few applications - some 1,409 according to Blackknight's dotWhat.co website including 40 from the UK.  Although there have been applications from banks such as Barclays and HSBC, the luxury car makers Bentley, Jaguar and Landrover, fashion outlets Next and Lipsy as well as the BBC, ITV and The Guardian the opportunity to register a corporate name or trade mark as a TLD does not seem to have taken British industry by storm. Even the Cayman Islands, BVI and Gibraltar mustered more applications than the mother country (see "Number of applications per Country" dotWhat.co).

The most interesting statistic is the number of applications by company. Top of the list is the US start-up company Donuts Inc which has made 307 applications.  Next comes Charlston Road Registry on behalf of Goodgle with 101 and Amazon EU Sarl with 78. Donuts claims over US$100 million in VC and private equity funding and an experienced management team.  It will be instructive to analyse their business model once they are operating their domain spaces.

From a legal point of view the most interesting part of this expansion has been the resolution of disputes with existing trade mark proprietors and the rest of the speakers addressed that topic.  Andrew Christie and Ty Gray discussed the Legal Rights Objections filed with the WIPO Arbitration and Mediation Centre nearly all of which had been dismissed. Tony Willoughby outlined the other grounds of objection, namely string similarity and limited public interest and community objections.  Joanne Teng discussed the Trademark Clearinghouse which is supposed to make it easier for trade mark proprietors to register domain names during a "sunrise" or priority period, monitor adverse domain name registrations and launch Uniform Rapid Suspension ("URS") proceedings.  Nicholas Smith considered the URS which allows for the suspension but not transfer or cancellation of a domain name very quickly and at very low cost.  Joanne outlined the Post-Delegation Dispute Resolution Procedure ("PDDRP") which seems to be a very complex and expensive procedure.   Finally, Fred Abbott talked about the impact of the new gTLDs on the UDRP and Karen Fong and Matthew Harris suggested some trade mark strategies for the expanded domain name system.

Although the first phase of TLD expansion is over the Applicants' Guidebook promises more shortly.  It will be interesting to see whether there are any more and on what scale.   Also interesting will be how Donuts, Google and Amazon resolve any disputes that may arise in their domain spaces and what use, if any, is made of the URS, PDDRP and Trademark Clearinghouse.  If you are interested in any of those matters these chambers have more expertise than most when it comes to domain name dispute resolution with three members upon WIPO's arbitration, mediation and dispute resolution panels and our own domain name dispute resolution advisory and representation service. Call me on 020 7404 5252 during office hours or use my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

Further Reading

New Generic Top Level Domains
Jane Lamber "London Pride: a Domain Name for Name for London" 4 Nov 2013 IP London
Mark Schweizer "New generic Top Level Domains – who registers them and why?" 13 Sep 2013 IPKat

Panellists Meetings
Jane Lambert "Needled in Geneva" 18 Oct 2005
Jane Lambert "Domain Names: 10 Years of UDRP" 10 Jan 2010