Michael Morris, Senior Associate
The World Intellectual Property Organisation advocates new dispute resolution procedures for alleged infringement of trade marks under the new Generic Top-Level Domain Names to be released in 2010.
As recent media has reported, the organisation who administers the Internet's system of unique identifiers, ICANN, (Internet Corporation for Assigned Names and Numbers) is proposing to expand the Internet's addressing system to a large number of new Generic Top-level Domain Names (gTLDs), which are expected to become available for registration in 2010. This means there will be much greater scope for the creation of domain names outside those with the more common domain names ending in identifiers such as .com, .gov, .org and .net.
In this context, the World Intellectual Property Organisation has been providing advice to ICANN on the protection of legitimate interests of trade mark right holders which will be adversely affected in both the "pre-delegation" (when the application for the gTLD is filed) and "post-delegation" phases (when the new gTLDs are delegated to domain name registrars and offered to the public).
The World Intellectual Property Organisation already administers disputes arising out of current gTLD applications which infringe third parties' trade mark rights, through its Uniform Domain Name Dispute Resolution Policy (the UDRP).
The UDRP is currently available for disputes concerning an alleged abusive registration of a domain name, and provides an alternative to court proceedings and a quicker and more cost effective way to enforce trade mark rights in the Internet environment.
Importantly, the UDRP's decisions can be enforced regardless of where the registrar, the domain name holder, or the complainant are located and the choice to use the UDRP does not prevent a party from going to court before or after filing a claim under the UDRP system.
In light of the potential for a significant increase in cases of alleged infringement of trade marks with the introduction of the gTLD program, the World Intellectual Property Organisation is now advocating new pre-delegation and post-delegation dispute resolution procedures.
The pre-delegation dispute resolution procedure
This new independent dispute resolution process is still being developed by WIPO. It is proposed to be a preventive measure through a system of formal objections which can be made during the evaluation of new gTLD applications.
One of the four grounds to file objections will be the Legal Rights Objection, which will allow for parties with existing legal rights (such as trade mark rights) that can be potentially infringed by a new gTLD application to object to the infringing application.
The Legal Rights Objection will be administered by the Arbitration and Mediation Centre of the World Intellectual Property Organisation. The findings of the panel deciding a dispute will bind ICANN and if the panel finds that a new gTLD infringes an objector's trade mark, the gTLD application will be withdrawn.
The post-delegation dispute resolution procedures
In addition to the pre-delegation DRP, the World Intellectual Property Organisation has strongly advocated a separate dispute resolution procedure of a "curative nature" to administer disputes arising after the delegation of a new gTLD has been granted and to help ensure the ongoing protection of trade mark rights within the new gTLD program framework.
The post-delegation DRP will focus on conduct of domain name registries which "cause or materially contribute to trade mark abuse" and will be built on existing pre-delegation Legal Rights Objection proposed criteria, the World Intellectual Property Organisation's UDRP jurisprudence and "accepted rules or principles of law".
The new gTLD registry agreements will bind gTLD registrars to the proposed post-delegation dispute resolution procedure, which will oversee compliance and ensure the security and stability of the Domain Name System.
Proposed remedies under the post-delegation DRP include transfer or cancellation of domain name registrations and termination of contracts with selected registrars which repeatedly abuse third parties' trade mark rights.
The latest input from the World Intellectual Property Organisation was provided on 13 March 2009 and discussions are ongoing with a view to have a consistent dispute resolution framework running by the time the new gTLD program is operational.
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