UDRP CASE-LAW JUDR. PAVEL LOUTOCKÝ, PH.D., BA (HONS) MAIN PRINCIPLE §First comes – first served §The domain name is immediately registered §What if the holder of domain name is not the one who should own it? §Cybersquatting, typosquatting, etc. § § SQAUTTERS ALLOWED? \\flsrv\profiles\210290\Desktop\maxresdefault.jpg #WWYD ? EXAMPLE §Someone registered the domain skoda.com §He does not use this domain and offers it for sale for €200.000 § §Can the trademark owner claim violation of his rights? §Can the trademark owner claim transfer of the domain name? §What if the owner is based in CZ (GER), administrator is US and squatter Russian? ICANN & UNIFORM DOMAIN-NAME DISPUTE RESOUTION POLICY - UDRP (BASIC PRINCIPLE) • •In the beginning, when the party registers the domain name, it agrees to undergo an online dispute settlement if someone files a complaint about his registered domain name in the future •ICANN as the organization securing generic top – level domain names is the only one responsible for enforcing the rules in this area using UDRP (Uniform Domain-Name Dispute-Resolution Policy) • •THE ENFORCEMENT •If the complainant loses, the holder of the domain name remains the owner •If the complainant wins, the domain name is transferred by ICANN to the complainant (or is cancelled) •The court proceeding are possible, but rarely used. The court however follows previous decision made by UDRP arbitration process. C:\Users\Loutocký\Desktop\icann.jpg ICANN & UDRP §Internet Corporation for Assigned Names and Numbers §Nonprofit organization responsible for the coordination of maintenance and methodology of databases of unique identifiers (domain names) and ensuring the network's stable and secure operation §Management of domain names and IP addresses §ICANN registers top - level generic domain names C:\Users\Loutocký\Desktop\icann.jpg Top - level domains (examples): •country-code TLD: .cz, .us, .gb, .fr, .de, .at, etc. •generic TLD: .com, .org, .net, .gov, .int, .edu, .mil, • .biz, .ceo, .info, .museum, .tel, .travel, etc. •List of all generic domain names (1532): •http://data.iana.org/TLD/tlds-alpha-by-domain.txt C:\Users\Loutocký\Desktop\icann.jpg ICANN & UDRP The future of ICANN? •ICANN was transferred in September 2016 to the global multi-stakeholder community (international character) •„No one, no government and no organization should control the internet“ •The “control” of the internet by states (which is related with the transfer of ICANN) could change the basic open character of the internet, to change „old customs“ and to make it less hospitable C:\Users\Loutocký\Desktop\icann.jpg ICANN & UDRP UDRP What is it? What it serves for? Why is it binding (or is it)? UDRP ? §Uniform domain name Dispute Resolution Policy (UDRP) §It is the resolution of the disputes regarding the registration of internet domain names (trademark disputes) §It applies to: §all generic TLD (.aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel) §some ccTLDs (Australia, Ireland, etc.) - +- 70 states C:\Users\Loutocký\Desktop\icann.jpg „Non – binding“ dispute resolution 2.1 Automated software negotiation 2.2 Online mediation 2.3 Non - binding arbitration 2.4 Binding arbitration 2.1.1 Assisted negotiation 2.1.2 Blind - bidding negotiation „Binding“ dispute resolution UDRP PROCESS §It was launched at 1999 to deal with „The Trademark Dilemma“ (cybersquatting) - disputes arise from abusive registrations of domain names The rules were drafted in close cooperation with WIPO All registrars have to follow UDRP (contract) Disputes are resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name The process is initiated by the holder of trademark - filing a complaint within an approved dispute-resolution service provider C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Disputes are frequently cross – border Need for speed, accessibility •Disputes are however not based on trademarks solely – it is the process disengaged from national laws (almost) –bare it in midn and also do not use natinal legislation while filing UDRP complaint ¨ C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Step - by - step process •Complainant launches the claim at dispute resolution provider •Registrant has the opportunity to respond and to decide whether there will be one or three panel members at the process •Dispute resolution provider assigns panelist(s) •Panelist(s) render decision based on evidence submitted C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS C:\Users\Loutocký\Desktop\icann.jpg 0 +3 +1 +20 +5 +14 +3 +10 56 days UDRP AUTHORIZED PROVIDERS OF UDRP • • •[ADNDRC] Asian Domain Name Dispute Resolution Centre •[NAF] The National Arbitration Forum •[WIPO] World Intellectual Property Organization •[CAC] The Czech Arbitration Court •[ACDR] Arab Center for Domain Name Dispute Resolution • •https://www.icann.org/resources/pages/providers-6d-2012-02-25-en • SPECIFIC RULES FOR EACH PROVIDER Advantages: •Fast – the case can be decided within 2 months •Inexpensive •Co - existing with local legal systems •Global solution •Accessible – decisions are freely available •Price: http://www.wipo.int/amc/en/domains/fees/ C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Disadvantages: •Hard to control (are we getting good decisions?) •Transparency of panellists •Inconsistent decisions •Only transfer (cancellation) of the domain name is decided (not damages) C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Problems: Forum shopping: •Complainant win percentages: •WIPO – 82% •NAF – 83% •eResolution – 63% (not working any more) 2011 •WIPO – 19.123 cases •NAF – 16.134 cases •eResolution – 277 cases • • C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Problems Case allocation bias: •One panelist (83% probability to transfer domain name) •vs •Three member – panels (60% probability to transfer domain name) !! 3 member panel is more expansive and there is lower probablity to win the case !! (however it can be part of the tactics !!) C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Storey v. Cello Holdings LLC (american court decision) §The agreement with UDRP is implemented by chains of contracts and it is involuntary §ICANN as the only regulator does not offer any other solution §The decision is contractually binding just between the parties (no rei iudicata) §The parties cannot be prevented from submitting their dispute to the court C:\Users\Loutocký\Desktop\icann.jpg UDRP SHIELDED BY COURT Classmates Online, Inc. v. John Zuccarini §Possibility to file additional information (an exception) §No predcedent, but the decisions are following previous ones § §„To avoid any misunderstanding that the decision establishes a precedent, we call for caution and recommend to submit complete documentation of the case when filing a complaint.“ C:\Users\Loutocký\Desktop\icann.jpg UDRP CASE STUDY IN GENERAL Donald J. Trump v. Mediaking LLC The complaint (and the answer) is limited to 5000 words The panel said, that it has accepted longer complaint, however it only considered the main arguments (not the best argumentation) X Giga Pty Limited v. Elena Sadkovaya The complaint had to be shortened and filed again C:\Users\Loutocký\Desktop\icann.jpg UDRP CASE STUDY Two Way NV/SA v. Moniker Privacy Services, LLC •Usual case (registered trademark X cybersquatting) •however: •The complainant tried to disqualify the panelists (he partly succeeded) because he wanted to have higher probability to win the case •Obvious decision - Panel denied the complaint and made no finding of reverse domain name hijacking – first comes, first served C:\Users\Loutocký\Desktop\icann.jpg UDRP CASE STUDY C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS Cumulative condition Complainant has to prove (all of it): •Domain name is identical or confusingly similar to a trademark in which complainant has rights •No rights or legitimate interests in respect of current domain name •Domain name has been registered and is being used in bad faith C:\Users\Loutocký\Desktop\icann.jpg UDRP PROCESS The test: •comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. •the relevant trademark would generally need to be recognizable as such within the domain name •the content of website is irrelevant •E.g. guiness.com C:\Users\Loutocký\Desktop\icann.jpg 1) IDENTICAL OR CONFUSINGLY SIMILAR •guiness.com = Typosqatting! • C:\Users\Loutocký\Desktop\icann.jpg 1) IDENTICAL OR CONFUSINGLY SIMILAR COMBINATION OF TRADEMARK AND GENERIC NAME AT&T CORP. V. JOHN ZUCCARINI D/B/A RAVECLUB BERLIN CASE NO. D2002-0666 • •A review of the second-level domains •"atttbroadband“ •"attbraodband“ •"attboradband“ •"attbroadban“ •"attbrodband“ •each domain comprises of the Complainant’s mark AT&T or a slight variation thereof as a prefix and the word "broadband" or a misspelling thereof •that corresponds to a term implying communication and that the public would accordingly associate with the Complainant. DOMAIN NAMES CONSISTING OF A TRADEMARK AND A NEGATIVE TERM SUCKS, BLOWS, STINKS CONFUSING SIMILARITY Wallmartsucks.com, bridgestonesucks.com Majority view: •a trademark and a negative term is confusingly similar, because the domain name contains a trademark and a dictionary word •For non-commercial use it should be OK Minority view •not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term Electrolux CONFUSING SIMILARITY It always has to be decided CASE BY CASE TRADEMARK REGISTERED BEFORE THE REGISTRATION OF DOMAIN Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. • REGISTRATION AFTER THE DOMAIN NAME The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. REGISTRATION AFTER THE DOMAIN NAME •Generally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith •BUT!!!! When the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion, bad faith can be found •garancedore.fr/com (Mariline Fiori p/k/a Garance Doré v. Private Registrations Aktien Gesellschaft Case No. D2012-1620) However, in such circumstances it may be difficult to prove bad faith •Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denial (it was not registered in bad faith) •AB Svenska Spel v. Andrey Zacharov D2003-0527,Transfer • REGISTRATION AFTER THE DOMAIN NAME Conclusion: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. GEOGRAPHICAL INDICATION = TRADEMARK? • •Brno.com •Czechrepublic.com •Czech-babes.com •Bayern Munchen • GEOGRAPHICAL INDICATION = TRADEMARK? No specific protection to geographical terms under the UDRP. Can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark. •FC Bayern München AG v. Peoples Net Services Ltd. D2003-0464, Transfer () GEOGRAPHICAL INDICATION = TRADEMARK? It has generally proven difficult for the legal authority of a geographical area (which has not otherwise obtained a relevant trademark registration) to show unregistered trademark rights in that geographical term on the basis of secondary meaning. Cases where local authorities failed •Porthelsinki.net D2001-0002, •brisbane.com D2001-0069 • • TYPOSQATTING MISPELLED IS CONFUSINGLY SIMMILAR •Wachovia Corporation v. Peter Carrington, WIPO Case No.D2002-0775, , Tansfer •Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No.D2004-0971, , Transfer •Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No.D2008-1302, , Transfer What is legitimate interest? •Bona fide offering of goods or services •Commonly known as domain •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. • •Article 4(c) of the rules C:\Users\Loutocký\Desktop\icann.jpg 2) LEGITIMATE INTEREST WHO HAS TO PROVE LEGITIMATE INTEREST? Complainant bears the "general burden of proof" ….. burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. •Neusiedler Aktiengesellschaft v. Kulkarni, WIPO Case No. D2000-1769; •Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704. LEGITIMATE INTERESTS OF RESELLER/DISTRIBUTOR CAR PARTS MERCEDESSHOP.COM •discussion forum where mechanics and owners of Complainant's products discuss •also offers genuine Mercedes parts and accessories for sale, •were obtained through fully authorized channels of distribution. Respondent also offers clearly identified quality, re-built, and used parts. •disclaimer at Respondent's web site of no affiliation between Complainant and Respondent. • MERCEDESSHOP.COM • • •It is exceedingly unlikely that any user seeking to find Complainant would enter . •Moreover, there is a clear disclaimer at Respondent's web site of any affiliation between Complainant and Respondent. DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No.D2001-0160, Not transferred DISCOUNT-MARLBORO-CIGARETTES.COM Discount cigarettes •Respondent’s website is likely to mislead users of internet into believing the site is operated or endorsed by or affiliated with Complainant. •Create a strong impression that the site is an official site of Complainant •-> Transfer GENERIC WORDS IN GENERIC DOMAINS •Apple.net •Puma.com •Jaguar.com •Husky.com LACK OF LEGITIMATE INTERESTS IN GENERIC WORDS • • •What has to be considered?: •The respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, •The respondent may lack a legitimate interest in the domain name LACK OF LEGITIMATE INTERESTS IN GENERIC WORDS GENERIC WORDS AND LEGITIMATE INTERESTS ▫ ▫ ▫ ▫Back to the case of APPLE: ▫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 (or other similar goods compairing to the products of Apple) 3) BAD FAITH What is bad faith? Article 4 (b) of the rules C:\Users\Loutocký\Desktop\icann.jpg 3) BAD FAITH BAD FAITH WITHOUT ANY ACTIVE USE •The lack of active use of the domain name does not as such prevent a finding of bad faith. •The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith •Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. PRESENCE OF DISCLAIMER •Eg. domain bmw.com •Wesite states ▫this domain is not associated to BMW ▫this domain is for sale ▫ ▫ ▫What do you think? Is it OK? PRESENCE OF DISCLAIMER •The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. •A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. • DOMAIN NAME DECISION STRUCTURED SEARCH http://www.wipo.int/amc/en/domains/search/legalindex.jsp#15050 MUST READ ! WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) http://www.wipo.int/amc/en/domains/search/overview3.0/ Obrázek1.jpg QUESTIONS? THANK YOU FOR YOUR ATTENTION!