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Flashcards in DL Arbitration and Mediation Deck (152)
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1

What is the UDRP?

The Uniform Domain Name Dispute Resolution Process was adopted by ICANN in 1999 on
the basis of recommendations made by WIPO in the First WIPO Internet Domain Name
Process.


Usually cases of:
- bad-faith
- abusive registration
- use of domain names
- cybersquatting

2

How many cases have been processed?

35000 UDRP cases have been processed

3

APPLICABILITY OF THE UDRP

The UDRP applies to registrations in generic top-level domains (gTLDs), such as .com, .net
and .org

4

RIGHTS ACTIONABLE UNDER THE UDRP

The UDRP requires a complainant to have rights in a trade or service mark

5

-

Personal names, descriptive terms
and geographical identifiers (though not actionable as such) may be actionable to the extent
that they have acquired secondary meaning (through appropriately evidenced use) as a
mark.

6

How it works?

1. the rights-holding complainant submits its electronic complaint to the provider, (which has 5 days to conclude an administrative compliance review of the complaint.)


Typically, this will
include registrar verification of relevant registrant name and contact information, along with a request for confirmation that the
disputed domain name has been locked pending resolution of the dispute. In the event that any
administrative deficiencies are identified in the complaint, the Complainant has five days within which to correct these. On
successful conclusion of the
administrative compliance check, the provider proceeds to formally
commence the proceedings by forwarding a copy of the Complaint (including any Annexes) to the Respondent by email. The provider
also sends written notice of the dispute to the Respondent to any
available postal address and/or fax number.

The respondent has 20 days to file a response from the date the Provider notifies the respondent of a filed complaint. The Provider then appoints an independent
single- or three-member panel to decide the case.

A reasoned decision is taken within two weeks by the panel. If the panel orders the transfer or cancellation of the domain name (these are the sole remedies available, with monetary damages, in particular, being excluded), the registrar is obliged to implement the decision, except if the losing domain name registrant files a case concerning the disputed domain name in a competent court against the complainant within 10 business days of notification of the panel decision. The UDRP Provider posts notice of the filing of a case and the full text of decisions on its website.

7

UDRP SUBSTANTIVE ELEMENTS

the complainant must establish that the following three
cumulative criteria are met:
(i) the domain name is identical or confusingly similar to a trademark or service mark in
which the complainant has rights; and
(ii) the registrant of the domain name has no rights or legitimate interests in respect of
the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

8

Identity or Confusing Similarity under the UDRP

this element is a standing requirement. he threshold test for confusing similarity under the UDRP to
involve a direct comparison between the trademark and the alphanumeric string of the
domain name at issue to assess likelihood of Internet-user confusion. The test is usually
applied without regard to website content, or to the relevant gTLD

to satisfy the UDRP test:
- the addition of common
- dictionary
- descriptive
- negative terms

9

What is pejorative term in a domain name ?

{trademark}sucks.com and will be considered confusingly similar to the complainant's trademark.

10

the lack of Rights and Legitimate Interests when there are no: ?

- the domain name in connection with a bona fide offering of goods or services,
- legitimate non-commercial use
- fair use

11

On who falls burden of proof under UDRP ?

on the Complainant,
where a Complainant makes an initial prima facie case that
the Respondent lacks rights or legitimate interests in a disputed domain name, the burden of
production on this element generally passes to the Respondent.

12

How to defined the rights and legitimate interests ?

in order to find rights or legitimate interests in a domain name
based on the generic or dictionary meaning of a word or phrase contained therein, the
domain name would need to be genuinely used or at least demonstrably intended for such
use in connection with the relied-upon meaning (and not, for example, to trade off third-party
rights in such word or phrase). (e.g. a respondent may well have a right to a domain name
"apple" if it uses it for a genuine site for apples, but not if the site is aimed at selling
computers or MP3 players, for example, or an inappropriate other purpose).

13

Bad faith for UDRP is ?

The requirement under the UDRP for registration and use in bad faith has, for the most part,
been interpreted by Panels as imposing a cumulative (or conjunctive) requirement.

14

Examples of the bad faith?

indications that the
domain name has been registered for the purpose of selling it to the complaining trademark
owner or their competitor, or used for attracting visitors to the registrant’s site for commercial
gain by creating a likelihood of confusion with complainant’s trademark.

15

Precedent?

The UDRP does not use a doctrine of precedent, but still consider decisions with similar fact situations.

16

Appeals and Refilings

The UDRP does not include an appeals process as such - parties who wish to do so may pursue a matter de novo in court.

17

What is objectives and the main areas of activity of WIPO?

WIPO’s principal objective is to promote the protection of intellectual property throughout
the world through cooperation among States, and, where appropriate, in collaboration
with other international organizations.

18

What kind of ADR procedures offered by the WIPO AnM center?

§

19

What is the advantages of ADR procedures ?

§

20

What kind of disputes may be submitted to ADR by WIPO AnM Center?

§

21

What is WIPO?

is an independent, intergovernmental organization established by a Convention signed in Stockholm on 14 July, 1967 and entered into force in 1970. it forms part of the
United Nations system of organizations and has its headquarters in Geneva,
Switzerland. WIPO comprises 188 Member States. The executive head of WIPO is the Director
General, who is elected by WIPO’s Member States. The secretariat of WIPO is the
International Bureau comprising over 1,000 staff members.

22

What WIPO promotes ?

- innovation and creativity throughout protection IP rights. protection is means to encourage creative activity, industrialization, investment and honest trade. They support and encourages technological innovation and artistic creativity.

23

What is the main areas of activity of WIPO?

- promote the protection of IPR
- encourages the conclusion of new international treaties and the modernization of national statutes.
- provides technical assistance to developing countries, assembles and disseminates information, and maintains services that facilitate the obtaining of protection for inventions, trademarks and industrial designs.
- promotes other administrative cooperation among Member States

24

How much WIPO administrate of treaties ?

more than 20 treaties and conventions, e.g Paris, Bern, Madrid, PCT treaties.

25

What is WIPOs cooperation for development ?

- promoting the protection of creative intellectual activity
- facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate their economic, social and cultural development, and organizing easier access to the scientific and technological information contained in millions of patent documents around the word

26

Who funds WIPO?

- WIPO provides its services to its Members States and to individuals and enterprises who are constituents of those States

27

What are the main objectives and areas of activity of WIPO?

- providing protection to IPR worldwide through cooperation among States and with other International organization.
- administering more than 20 international treaties
- provides technical assistance to developing countries
-assembles and disseminates IP information
- maintains services that facilitate the obtaining of protection for inventions, trademarks and industrial designs
-provides alternative dispute resolution services AnM Center

28

What kind of procedure WIPO Center offers?

- Meditation
- Arbitration
- Expedited Arbitration
- Mediation followed by arbitration
- Expert Determination ??

29

what is Mediation?

is a consensual process in which a neutral person facilitates discussion and negotiation between the parties so that the parties themselves can solve their problem. The
parties design both the process and the terms and conditions of their solution to their
problem. In contrast to adversarial procedures, such as litigation or arbitration, a mediator
cannot impose a settlement on the parties. Also, any party can abandon the mediation at
virtually any time before signing a settlement agreement.

30

What is Arbitration ?

Arbitration is a consensual procedure in which a neutral person or persons impose a
binding decision on the parties. Whereas the parties may design the procedure, the
arbitrator designs the terms and conditions of the decision. Also, after a party has agreed to
arbitrate, the party cannot unilaterally withdraw from the arbitration process without risking
an adverse decision on substantive issues.