Post-delegation dispute resolution procedures to be up and running soon
The post-delegation dispute resolution procedures (PDDRPs) that may be used in the event of a dispute with a registry of a new generic top-level domain (gTLD) will all soon be up and running following the recent publication of various new documents.
The PDDRPs have been developed to provide those harmed by a new gTLD registry's conduct with an alternative avenue to complain about that conduct, as opposed to expensive litigation. All will be handled by external providers to ICANN and require that complainants take specific steps to address their issues before filing a formal complaint. An expert panel appointed by the provider in question will determine whether the registry is at fault and recommend remedies to ICANN. Currently, there are three proposed PDDRPs covering different situations, as follows:
- Trademark PDDRP - this will generally address a registry's complicity in trademark infringement. At least 30 days prior to filing a formal complaint, a rights holder must notify the registry of the alleged infringing conduct and express a willingness to meet to resolve the issue. ICANN has selected the World Intellectual Property Organisation, the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre to provide dispute resolution services. However, at the time of writing, only NAF had published its Supplemental Rules, to be read in conjunction with the ICANN Rules and Procedure.
- Registration Restriction Dispute Resolution Procedure (RRDRP) - this will address circumstances in which a community-based new gTLD registry deviates from the registration restrictions outlined in its Registry Agreement. An RRDRP complaint may be filed only by an established institution. Prior to filing a formal RRDRP proceeding, a complainant will be required to use an online complaint system which is currently in development.
- Public Interest Commitments Dispute Resolution Procedure (PICDRP) - this is currently still under discussion and is intended to address complaints that a registry may not be complying with the public interest commitment(s) in Specification 11 of its Registry Agreement. Prior to filing a formal PICDRP proceeding, a complainant will most likely be required to use an online complaint system, also currently in development.
Clearly, the trademark PDDRP will be of most interest to brand owners. It was developed by ICANN further to the recommendations of the Implementation Recommendation Team, which was appointed by ICANN to propose solutions to the issue of trademark protection in connection with the introduction of new gTLDs. In this regard, ICANN was heavily lobbied by the trademark community, as it anticipated a high level of trademark infringement upon the launch of new gTLDs, especially given the existing magnitude of cybersquatting.
Previously, no such alternative dispute resolution procedure against registries existed, which was no doubt because the limited number of gTLDs meant that the potential for complaint was quite rare, and thus the only option for brand owners harmed by a registry's conduct was to make a complaint to ICANN or to bring court proceedings. However, as a result of the expansion of new gTLDs, the number of registries will increase dramatically, from just a handful to potentially thousands, and thus there will be far greater potential for trademark abuse.
Brand owners may bring a complaint against a registry for its conduct either in relation to the top-level domain itself (to the right of the dot) or in relation to domain names registered at the second level (to the left of the dot) under a registry's gTLD. Top-level claims are intended to relate to situations where the gTLD string itself is identical to a trademark and the registry starts to hold itself out as that trademark owner. Such claims will probably be quite rare. However, second-level claims may be more common as they are intended to relate to situations where the registry actively encourages cybersquatting by registrants or participates in cybersquatting itself.
It is important to note that the trademark PDDRP is aimed at bad actor registries actively encouraging systematic cybersquatting by domain name registrants under their gTLD, or even participating in it clandestinely themselves. It is not simply intended to be used against registries who merely have infringing domain names under their gTLD and have not taken any active part in encouraging the situation nor made any profit from it. In such cases trademark holders should pursue the registrants of those infringing domain names by way of a suitable alternative dispute resolution procedure, such as the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Uniform Rapid Suspension System, or even court proceedings. The trademark PDDRP is altogether a more powerful mechanism with longer timelines and higher fees, set to reflect the fact that, if a registry is found liable, this may result in the ultimate sanction - termination of its Registry Agreement with ICANN.
The burden of proof imposed on a complainant to establish its case on the merits (whether in relation to a top-level or a second-level claim) is "clear and convincing evidence", an intermediate standard of proof that is higher than "on balance of probabilities" (or "preponderance of the evidence"), but lower than "beyond reasonable doubt". Thus the trademark PDDRP requires a higher standard of proof than many other dispute resolution procedures such as the UDRP, where it is generally accepted that the complainant must prove its case on balance of probabilities. Given the need to prove the registry's "affirmative conduct", successful claims under the trademark PDDRP may be difficult, although it will be necessary to wait until the procedure is up and running to find out.
The final trademark PDDRP may be accessed here.
David Taylor and Jane Seager, Hogan Lovells LLP, Paris
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