New generic top level domains and new alternative dispute resolutions (Part I)
By Jonathan Agmon, Soroker - Agmon Advocates
As various new generic top level domains (gTLD) come into play new alternative dispute resolution mechanisms come into effect to deal with new dispute resolution load and the changing domain name space. At present some 20 gTLD comprise the entire gTLD space. These have been operating for many years, the most known among them are the .com, .net and .org domain name spaces.
In the next few months the first out of some expected 700 new gTLDs will come into existence. These will include .bargains, .beer, .clothing, .company, .computer, .experts, .sexy and many others. You can see the full list here: http://www.icann.org/en/about/agreements/ registries Since so many new gTLDs will be launching, the international body in charge of the domain name space – ICANN - expects to see many more domain name disputes and some new types of domain name disputes coming into play.
Domain name disputes are currently handled by a number of alternative dispute resolutions (ADR), primarily through the World Intellectual Property Organization (WIPO)and National Arbitration Forum (NAF), both handling disputes under the Uniform Dispute Resolution Policy (UDRP). The coming into being of so many new gTLD created major obstacles to rights holders. As a result several measures relating to ADR were put into place, primarily through creating new ADR mechanisms.
First, disputes over the actual gTLD allocations are determined through a new ADR mechanism called Legal Rights Objections (LRO) leading to expert determination. These included disputesover the actual applications for the new gTLDs in a number of areas: string confusion (.sports and .sport), existing legal rights objections (.yellowpages, .merck), limited public interest objections (.health) and community objections(.architect, .hotel). These disputes are decided on the documents, by single member panelist and is handled by three organizations – WIPO, NAF and the ICC. The procedures for filing such objections vary from one type to another though it includes filing form, fees (which range from $1200 - $20,000 in average), arguments and evidence (limited to 5,000 words or 20 pages) all at once. Most cases were heard and decided very quickly – in a manner of 6 months or so. Presently until a new round of gTLD will be open this procedure is not used on a regular basis.
Since so many new gTLDs have been applied for, ICANN decided there was a need for an additional ADR mechanism, even post-gTLD allocation. Therefore ICANN created another new ADR mechanism for domain name disputes called the Post-Delegation Dispute Resolution Procedure (PDDRP) which is designed to adjudicate domain name disputes which focus on the registry operator affirmative conduct. For example, when the registry itself permits to induce abusive domain name practices. As with the Objections ADR mechanism, the PDDRP also requires the filing of forms, fees, arguments and evidence, similar to the LRO.
Once the new gTLD registries begin operation, ICANN expected that there will be many new domain name disputes since the number of domain name registrations will increase dramatically. At present WIPO alone is handling over 1,500 UDRP cases per year. The expected cases load led ICANN to adopt new ADR mechanisms. The most expected common new ADR mechanism which was adopted for the new gTLD disputes is the Uniform Rapid Suspension system (URS).
The URS is a rights protection mechanism that complements the UDRP ADR mechanisms. It is a new form of ADR mechanism because it offers a low cost, faster path to relief than most other mechanisms. It is designed to be used in the most clear-cut cases of alleged infringement of trademark rights. URSs can be filed online cheaply and quickly through NAF. NAF provides an online auto-generated complaint to ensure uniformity, ease of review, speeding of cases and reducing of costs.
Under the URS the registered domain name must be identical or confusingly similar to a word mark for which the complainant holds a valid national or regional registration and that it is in current use; that the registrant has no legitimate right or interest in the domain name and that the domain was registered and is being used in bad faith. To make the case short, a limit of 500 words of explanatory free text is allowed together with an attestation that the complaint is not being filed for an improper basis. Having paid the US$375 fee the URS will be launched. Currently only .pw (Palau) adopted the URS, but as the new gTLDs come into effect the URS will be widely used.
As can be seen above, these are only some of the new ADR mechanisms which the changing domain name space provides. The changing landscape of such ADR mechanisms impose a high duty on practitioners to understand the various new mechanisms, their cons and pros and their likely outcomes so they are better equipped to advise clients.
(Will be continued)
Soroker - Agmon Advocates & Patent Attorneys, Herzliya, Israel
T: +972 9 950 70 00
Jonathan Agmon is a founding Partner at Soroker – Agmon, Advocates & Patent Attorneys and specialized in litigation and in Intellectual Property Law. Soroker- Agmon is one of Israel’s ten largest IP practices. The firm combines technical specialization and legal expertise. Jonathan practices in the Patents area, as well as Trademarks, Designs, Copyrights, Plant Varieties, Domain Names, Intellectual Property Rights Registration, Litigation, Oppositions, Opinions, Arbitration and consulting on IP matters. Jonathan is one of WIPO’s domain name panellists for UDRP, LRO, PDDRP and also a URS Panellist for NAF. He authored over 150 decisions relating to domain name disputes over the past 5 years, of which two were authored by him in Chinese. He was born in 1968 in the UK, and holds a LLM in Intellectual Property from George Washington University Law School, USA (1996), and a LLB (with Honors) from the University of East London, UK (1993). Jonathan is fluent in English, Hebrew and his Chinese is getting better every day.
published: September 2015