Trade Marks and Domain Names: new developments

1
Trade Marks and Domain Names new developments

• UNSW Cyberspace regulation

Patrick Gunning 24 May 2001
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Agenda

• Overview of domain names and trade marks
• Governance of Top Level Domains ICANN and the
  UDRP
• Introduction of 7 new Top Level Domains
• Governance of .au domain names name policy,
  competition and dispute resolution

3
Overview of domain names and trade marks

• A domain name is a people friendly IP address
  (192.148.122.149 ? www.msj.com.au)
• generic Top Level Domains (gTLDs) - .com, .net,
  .org, .edu ... (7 more coming soon)
• country code Top Level Domains (ccTLDs) - .au,
  .uk, .nz, .de ...
• Registrations by commercial entity accredited
  by appropriate governing body

4
Overview of domain names and trade marks

• A trade mark is a badge of origin
• Indicates a connection in the course of trade
  between the goods/services to which it is applied
  and the owner of the mark
• Trade mark register split into different classes
  of goods/services
• Registration by government agency

5
Overview of domain names and trade marks

• 1995 Approx 100,000 domain names
• Jan 99 Approx 5 million
• Mar 00 Approx 15 million
• Today More than 35.5 million, approx 2/3 are
  .com names
• Approx 180,000 are .au names, of which approx
  80 are .com.au names

6
Governance of gTLDs ICANN and the UDRP

• Internet Corporation for Assigned Names and
  Numbers (ICANN) oversees domain name system as a
  whole.
• Management of ccTLDs largely left to each country
• Competition introduced in registration of .com,
  .net, .org domain names in 1999, but only one
  registry operator for each TLD (NSI, now a
  subsidiary of Verisign)

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Governance of gTLDs ICANN and the UDRP

• Registrars are accredited by ICANN.
• Accreditation agreement requires registrars to
  ensure all persons registering domain names agree
  to abide by Uniform Dispute Resolution Policy
• UDRP provides for arbitration by approved dispute
  resolution providers. Arbitrator can order
  transfer of domain name.
• First UDRP decision in Jan 2000 Approx 2,800
  today. Approx 75 of decisions ordered transfer

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Governance of gTLDs ICANN and the UDRP

• Complainant must prove that the domain name
• is identical or confusingly similar to trade or
  service mark in which complainant has rights
• registrant has no rights or legitimate interests
  in the name
• has been registered and used in bad faith

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Governance of gTLDs ICANN and the UDRP

• Legitimate interest factors
• Registrant used (or made demonstrable
  preparations to use) the domain name in
  connection with a bona fide offering of goods or
  services before notice of the dispute
• Registrant has been commonly known by the domain
  name (even if no trade mark rights have been
  acquired)
• Registrant is making a legitimate non-commercial
  or fair use of the domain name, without intent
  for commercial gain to misleadingly divert
  consumers or to tarnish the mark

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Governance of gTLDs ICANN and the UDRP

• Bad faith factors
• registration primarily for purpose of
  selling/transferring to trade mark owner or
  competitor of same for a profit
• registration to block the trade mark owner,
  provided there is a pattern of such conduct
• registration for purpose of disrupting a
  competitor
• use of domain name to intentionally attract, for
  commercial gain, internet users to a web site by
  creating a likelihood of confusion

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Governance of gTLDs ICANN and the UDRP

• Telstra v Nuclear Marshmallows (telstra.org)
• no positive action by Nuclear Marshmallows re the
  domain name
• passive holding found to be use in bad faith
• well-known mark
• no evidence of contemplated good faith use
• active steps to conceal true identity
• false contact details (breach of registration
  agt)
• no plausible legitimate actual or contemplated
  use

12
Governance of gTLDs ICANN and the UDRP

• Major criticisms of UDRP
• inability to test alleged facts (suggestion
  opportunity to answer matters of fact put in
  issue by other party)
• no system of precedent (suggestion appeal
  mechanism to 3 member panel prefer decisions by
  3 member panels on matters of principle)
• no choice of law guidelines (most difficult
  issue choice of law rule may be difficult to
  apply and adopting a uniform law could give one
  jurisdiction too much influence on the internet
  as a whole)

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Introduction of 7 new TLDs

• ICANN decided to introduce 7 new TLDs in Nov 2000
• Sponsored TLDs
• .aero (registry operator SITA for air travel
  industry)
• .coop (registry operator National Cooperative
  Business Assoc for cooperative enterprises)
• .museum (registry operator Museum Domain
  Management Association for museums recognised by
  Intnl Council of Museums)

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Introduction of 7 new TLDs

• Unsponsored TLDs
• .biz (registry operator - Neulevel for bona fide
  business or commercial purposes)
• .info (registry operator - Afilias registration
  will be unrestricted)
• .name (registry operator - The Global Registry
  Ltd for individuals)
• .pro (registry operator Registry Pro Ltd for
  professionals)

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Introduction of 7 new TLDs

• .biz commenced start up operations 21 May 2001
• Registered trade mark owners can notify their
  marks (21 May to 9 July)
• Persons seeking to register domain names
  identical to a notified trade mark will be
  informed of trade mark claim, and asked to
  confirm
• TM owner will be notified of application to
  register corresponding domain name
• Modified version of UDRP will apply before the
  domain name registration is accepted
• No applications accepted until 9 July.
• .biz will go live 1 October

16
Introduction of 7 new TLDs

• .info will offer sunrise period from late June
  to late July
• During sunrise period only owners of registered
  trade marks can apply to register corresponding
  domain names.
• Afilias will implement a multi-round batch
  processing system, with random selections from
  each registrars batch.
• WIPO will administer a sunrise dispute
  resolution policy (modified UDRP)
• Within 15 days after sunrise period, applications
  will be accepted from general public
• For initial 3 weeks, a multi-round batch
  processing system will be used. After then,
  first come, first served.

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Governance of .au

• auDA established late 1998
• .com.au delegated to auDA by Robert Elz in Nov 99
  (subject to Melbourne IT agreement). Robert Elz
  currently retains delegation for .au as a whole.
• Dec 2000
• Telecommunications Legislation Amendment Act
  passed (gives powers to ACA and ACCC to direct
  and manage electronic addressing if industry
  self-regulation is not effective
• Commonwealth endorsed auDA as appropriate entity
  to hold delegation for .au ccTLD

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Governance of .au

• auDA in process of 3 main reforms
• Name policy (panel recommendations accepted by
  auDA board on 8 May 2001)
• Competition model (panels 2nd consultation
  report issued 11 May 2001 final report to board
  in June 2001)
• Dispute resolution policy (1st draft policy and
  rules issued by working group 11 May 2001)

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Governance of .au name allocation policy

• New policy will be implemented at same time as
  competition model and dispute resolution policy
  (late 2001 ??)
• Key elements
• No restriction on number of domain names a single
  entity can register
• Eligibility criteria liberalised. Must be an
  Australian entity. Includes registered
  proprietor and applicant for an Australian trade
  mark
• Declaration of good faith intention to use the
  domain name for the purpose envisaged by the
  relevant 2LD. Does not include licensing for
  purposes of sale or diverting trade,
  warehousing or applying for misspellings of
  anothers mark

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Governance of .au name allocation policy

• Key elements (cont)
• Registrant must agree to be bound by auDRP
• Must be a substantial and close connection
  between the domain name and the applicant, eg,
  exact match of company name/trade mark acronym,
  alias or common name for applicant
• Reserved list of unregistrable domain names.
• Generic names will be allowed, but mechanism for
  release not decided.
• Geographic names approach undecided more
  consultations.

21
Governance of .au (proposed) competition model

• auDA to issue tender for single registry operator
  for all open 2LDs. 3-5 year agreement. Registry
  operator to provide
• whois service
• electronic interface to registrars to enable
  entry of new names and updates to existing names
• authoritative nameserver
• Licence fee payable to auDA by registry operator

22
Governance of .au (proposed) competition model

• auDA to accredit registrars. Accredited
  registrars to have ability to register all .au
  domain names (but may choose to concentrate on
  some 2LDs only)
• Licence fee payable to auDA by accredited
  registrars
• All domain name registrants eligible to become
  members of auDA

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Governance of .au dispute resolution

• Draft auDRP issued 11 May. Modified version of
  UDRP.
• Modifications mostly designed to reflect new
  eligibility rules for .au names (similar to
  proposed DRP for .biz)
• Novel proposal to extend policy to all other
  disputes involving domain names (eg, between
  registrars and registrants between registrars
  and registry operator)
• Submissions due 8 June.