The Uniform Domain Name Dispute Resolution Policy, commonly known as the UDRP, was first introduced on October 24, 1999, by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP is incorporated by reference into Registration Agreements for all generic top-level domain names (gTLDs) and some country-code top-level domain names (ccTLDs).
The Policy sets out the legal framework for resolving disputes between a domain name registrant and a third party over the registration and use of a specific domain name. Over the last twenty years, the number of registered domain names has dramatically increased, reaching over 354 million registrations this year. The UDRP has become the primary route to resolve domain name disputes.
The World Intellectual Property Organisation (WIPO) is one of the main providers for domain disputes and has processed over 45,000 cases to date. Besides gTLDs, which all fall under the UDRP, WIPO provides domain dispute resolution services for 76 ccTLDs. In total, six accredited providers administer UDRP complaints, the Forum being the second largest provider.
The Evolution of the UDRP
The purpose of the UDRP is to combat cybersquatting, which, according to the US Anticybersquatting Consumer Protection Act (ACPA) is defined as "registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else”.
Since the very first case under the UDRP, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001, which was decided by Panelist M. Scott Donahey, the UDRP has dealt with many complex issues involving a significant number of domain names. Indeed, WIPO has administered over 45,000 cases involving over 83,000 domain names since the UDRP's creation. The top 2 industry sectors in terms of Complainant activity are retail, and the banking and finance industry, which respectively amounts to 10.36% and 10.05%.
The UDRP has also seen Complainants and Respondents coming from countries all around the world. Complainants in the United States account for almost 35% of cases filed, followed by France (12.48%) and the United Kingdom (8.10%). However, while domain registrants primarily reside in the United States with over 30% of cases filed, People's Republic of China is the second-ranked country where registrants are based, amounting to 11.22% of cases filed since 1999.
When filing UDRP cases, Complainants need to rely on UDRP jurisprudence to build their cases. Although Panelists are under no obligation to follow past decisions, case precedents form a significant part of the UDRP, which has helped the Policy to develop over the years. With the high number of decisions decided each year, the growing need to identify consensus in UDRP jurisprudence became even more vital.
WIPO Overviews and the UDRP Jurisprudence
Since the creation of the UDRP, law practitioners have always expressed the need for a document summarising consensus views among the UDRP Panelists. Based on this request, WIPO introduced Version 1.0 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions in 2005. In 2011, WIPO Overview 2.0 launched, which examined 46 issues in UDRP decisions. WIPO Overview 2.0 was in use for six years, and it was only on May 23rd, 2017 that WIPO launched the third version (WIPO Overview 3.0). This version discussed 64 issues with more than 1,000 decisions cited.
Key changes took place between the two versions. Between 2011 and 2017, the emergence of new gTLDs impacted the importance of the domain suffix. TLDs such as ".clothing" or ".tech" for example, now have more weight when assessing bad faith. One of the pioneer cases which discussed this issue is Canyon Bicycles GmbH v. Domains By Proxy, LLC/ Rob van Eck, WIPO Case No. D2014-0206, where the Panel held that "given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed, there is nothing in the wording of the Policy that would preclude such an approach”.
As a result, the use of new gTLDs, which imply a link to the trademark owner can add to Internet user confusion, and for this reason, is considered under the first element, as well as the third element when assessing bad faith. Internationalised domain names (IDN) are also becoming more popular in recent years, with Internet users registering non-Latin or symbolic domain names. UDRP Panelists have adapted to this change and now consider translations or transliterations of domain names in their deliberations.
Through the years, the UDRP has tackled various issues, but some decisions are cited more than others. The case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 remains the most cited case, with a frequency of 8,088 times. This decision, the fourth case ever decided by a UDRP Panel, tackled the issue of inactive domain names. The decision set out conditions by which the passive holding of a domain name still amounted to bad faith use. Since the decision in Telstra, trademark owners continue to rely on the principles outlined in this case when addressing a domain name that fails to resolve to active content. Though passive holding of a domain name can amount to bad faith use, trademark owners must not forget that they still have the burden to prove registration in bad faith.
The second most popular UDRP decision is, without a doubt, the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D20001-0903. Here, the Panelist David H. Bernstein raised the difficult question of whether an authorized sales or service agent of trademarked goods could use the trademark at issue in its domain name. In his decision, the Panel held that specific conditions must be met by the reseller to justify a legitimate interest in using a domain name containing the trademark's owner brand. Though this decision was published in the early stages of the UDRP in 2001, reseller cases still apply the Oki Data decision when assessing if a reseller can justify a legitimate interest in its domain name. Following this decision, uncertainty arose over whether this case also applied to unauthorized resellers. The decision, Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 clarified this, finding that the Oki Data decision could apply to both authorized and unauthorized resellers.
The two decisions cited above are among the most popular cases used in UDRP disputes, but several more Panel decisions have helped shape UDRP jurisprudence. This includes, among others, the issue of proving common law or unregistered trademark rights, which led to several well-known decisions, such as Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 (discussing this for the first time), and the case of Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, which clarified that rights in a personal name are recognized under the UDRP if the name has been used in a commercial manner, which the complaining party, a Canadian businessman and lawyer, had failed to establish.
For trademark owners and legal practitioners, WIPO Overview 3.0 remains the ultimate resource when filing domain disputes. With more than 1,000 cases listed, Panelists always advise trademark owners to use the cases cited in the Overview.
Following the guidelines provided can also help to prevent trademark owners from being found guilty of Reverse Domain Name Hijacking ("RDNH").
RDNH is when a trademark owner attempts to use the UDRP to deprive a registered domain name holder of a domain name. 2016 saw a record number of RDNH in UDRP cases, with 37 complainants found to have abused the UDRP Policy. This surpassed the previous record with 31 RDNH decisions issued in 2015. Complainants are found guilty of RDNH for various reasons. One reason often found is that the Complainant knew or clearly should have known at the time that it filed the complaint that it could not prove one the essential elements required by the UDRP, perhaps because the domain name was registered many years before it acquired rights in a mark. This has led many Respondent to claim that such cases be barred based on the doctrine of laches.
Doctrine of Laches – Time to Reconsider?
Traditionally, the question of timing was a factor to consider when assessing whether a complaining party had a legitimate right to bring a claim against another entity on the grounds of trademark infringement. Under the US doctrine of laches, a trademark claim is barred if a defendant can show that a prolonged period has passed between the registration of the plaintiff's trademark and the alleged infringement. That said, when it comes to domain names, the doctrine does not apply. WIPO Overview 3.0, Guideline 4.17 states that:
"Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits."
Panels noted that the UDRP remedy is injunctive, and the principal concern is to avoid future abuse/damage, and not provide equitable relief. Panels have also recognized that trademark owners cannot reasonably be expected to monitor every instance of potential trademark abuse or to enforce each instance as they arise. For these reasons, Panels have declined to adopt the doctrine of laches or its equivalent in UDRP cases.
Even so, some Panels have taken account of the delay of a Complainant to bring a complaint under the UDRP when making their decision. In the case of Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139, the doctrine of laches was discussed at great length. Though the decision rejected the use of laches, the Panel held that "the delay and lack of explanation for it strengthen Respondent's cases for a right or legitimate interest in the Domain Name and negate Complainant's case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant, by inactivity, encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used”.
Still, finding for the Respondent based on laches alone is not possible under the UDRP, and Panels would only deny complaints if Complainants have failed to establish the substantive grounds required under the Policy. For example, in the recent case of The Pennsylvania State University v. Mark Lauer/ Keystone Alternatives, NAF Claim FA1847529, July 29, 2019, the Panel denied the complaint as the trademark owner failed to prove that the registrant had no legitimate interest in the domain name, and consequently, did not act in bad faith. The Respondent, in this case, relied on the doctrine of laches and asked for the complaint to be denied on those grounds, but the Panel held that it was unnecessary to decide whether the proceeding would or should have been denied on the ground of laches alone.
Twenty years after the creation of the UDRP, Panels will see more and more cases brought with domain names registered 15 to 20 years ago, and the delay in bringing a complaint by a trademark holder may have more significance to a Respondent than ever before.
Another significant event already having a tremendous effect on the UDRP is the implementation of the new European data protection law in 2018.
GDPR and its effect on the UDRP
Since the new European data protection law (General Data Protection Regulation 2016/679) came into force on May 25th, 2018, the number of UDRP disputes has increased. Indeed, with GDPR coming into effect last year, law practitioners have seen changes in the disclosure of WHOIS details. Before GDPR, the WHOIS Registry was publically accessible, and trademark owners and their representatives could identify a domain name owner before filing a dispute. Now, however, GDPR has made it more difficult to engage with domain registrants. With most information unavailable, it seems that more practitioners now file cases in an attempt to disclose registrant information. Once revealed, Complainants have the opportunity to amend the dispute to reflect the Respondent's correct details.
Furthermore, GDPR has made UDRP consolidations even more challenging. The UDRP allows trademark owners to include multiple domain names in a single complaint. The limitations placed on WHOIS information prevent trademark owners from identifying additional domain names owned by the same cybersquatter. This is likely to lead to trademark owners needing to file more single complaints, which is more expensive and time-consuming.
The UDRP element most affected by the GDPR is the third circumstance that deals with bad faith. Showing an abusive pattern of conduct has become more complex, and trademark owners have more of a difficult task of finding past cybersquatting activity. The tools previously available to investigators to analyze a registrants' previous dispute record or portfolio have become less effective with the arrival of GDPR. While an investigator's job has become more challenging, the UDRP remains one of the most effective tools to combat cybersquatting in the Internet world.
What is next for the UDRP?
A lot has changed since the creation of the UDRP, and with new issues arising, the Policy has evolved to be in line with the fast-pacing change of the Internet. The new generation of TLDs contributed to the rise of UDRP filings, but ".com" domain names still amount to 79% of cases filed. The ccTLD ".co" assigned to Colombia is the most popular ccTLD using the UDRP, with 56 cases filed this year.
Nevertheless, despite the increase in filings, after two decades, some practitioners/groups believe that some essential elements of the UDRP are due for reform. In 2015, ICANN issued a Preliminary Issue Report to review all Rights Protection Mechanisms (RPMs) in all gTLDs followed up by a working group which was established to review and possibly reform RPMs, including the UDRP, which is yet to be reviewed.
In the meantime, the UDRP continues — 20 years after its creation — to be the most effective tool to combat cybersquatting, saving time and money to trademark owners.
* * *
On October 21, 2019, WIPO organizes a conference to commemorate this milestone. This event, where over 100 UDRP Panelists will attend, will look back at the UDRP jurisprudence, and look ahead on the future of the UDRP, Internet developments, and other topical items. As one of the top-ranking filers of domain name disputes with WIPO, Safenames' Legal Department will be attending this event, which will be held at WIPO's headquarters in Geneva, Switzerland.
Written by Caroline Valle, Senior Legal Adviser at Safenames
www.circleid.com | 10/14/19
Students at the American Film Institute lead the way for the Academy of Motion Picture Arts and Science’s annual Student Academy Awards.
The Academy named 16 students as winners on Thursday, including three in the narrative category from AFI. The competition received 1,615 entrants from 255 domestic and 105 international colleges and universities, the Academy said.
AFI was the only school to take more than one award. AFI students Asher Jelinsky (“Miller & Son”), Hao Zheng (“The Chef”) and Omer Ben-Shachar (“Tree #3,”) took home awards in the narrative category. Last year, the University of Southern California was the only school to take home more than one award, with four.
Winners of the Student Academy Awards are eligible to compete for Oscars in the Animated Short Film, Live Action Short Film or Documentary Short Subject category. Past winners have gone on to nab 62 Oscar nominations and have won or shared 12 awards.
The 2019 winners join the ranks of such past Student Academy Award winners as Patricia Cardoso, Pete Docter, Cary Fukunaga, Spike Lee, Trey Parker, Patricia Riggen and Robert Zemeckis.
Here’s the full list of winners:
Alternative/Experimental (Domestic and International Film Schools)
Animation (Domestic Film Schools)
Animation (International Film Schools)
Documentary (Domestic Film Schools)
Documentary (International Film Schools)
Narrative (Domestic Film Schools)
Narrative (International Film Schools)
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www.thewrap.com | 9/12/19
What's the worst thing that can happen to an astronaut? Depressurization? Space debris? Slowly drift away forever? Alien encounter? How about a bee in your helmet? This fun short film plays with that idea of a bee (or wasp?) showing up at the wrong time. Commissioned by Kino REX Bern and the University of Bern to celebrate the 50th anniversary of the Apollo 11 moon landing this past weekend, YK Animation (based in Bern, Switzerland) put together this hand-drawn animated short. The full title is Michaela Tereshkova's Extremely Obscure Discovery and it's about an astronaut who "discovers an unwanted fellow traveler." I love how trippy and weird this gets at the end. It's just an amusing little short to watch whenever you can. Thanks to Stash Magazine for the tip on this. Original description from Vimeo: "When astronaut Tereshkova discovers an unwanted fellow traveller, her journey on the moon gets darker than expected." Michaela Tereshkova's Extremely Obscure Discovery is directed by ...
www.firstshowing.net | 7/23/19
There are no zombies on the red carpet of the Croisette, a reporter told Bill Murray after the world premiere of his latest film “The Dead Don’t Die,” which opened the Cannes Film Festival Tuesday.
“Says you,” Murray (un)dead-pans in response.
During the press conference following Jim Jarmusch’s zombie comedy, Murray said he finds Cannes “frightening,” and it’s hard not to come away with that assessment when “The Dead Don’t Die” managed to bring together an unusual assemblage of art-house darlings and global pop stars for the occasion.
Jarmusch donned his trademark sunglasses on the red carpet and received a (expected) standing ovation as the screening was began, and he was joined by the film’s diverse crop of stars, including Adam Driver, Tilda Swinton, Chloe Sevigny and even Selena Gomez, who were all in attendance.
And the film itself is a nonchalant, hipster commentary on people sleepwalking through the modern age as well as the Trump era. A red hat worn by Steve Buscemi’s character in the film that read “Make America White Again” was a popular talking point among critics after the first screenings in the Grand Theatre Lumiere and the Sally Debussy theater next door. And it’s not unusual for this generally tough Cannes crowd to be fairly mixed on the splashy opening night film, even for someone as respected as Jarmsuch.
“It’s the self-awareness that really hurts it,” TheWrap’s critic Ben Croll wrote in his review. “Jarmusch knows that his audience wants to see Murray and Driver riff in deadpan and that the image of Swinton strutting down the street wielding a katana will set the internet ablaze, so he offers them as much, without ever feeling the imperative to go a step beyond.”
Cannes Jury Press Conference Touches on Diversity, Netflix and the Border Wall
Photo by Pascal Le Segretain/Getty Images
Elle Fanning, filmmakers Kelly Reichardt and Alice Rohrwacher, and Senegalese actress Maimouna N’Diaye are among the women serving on this year’s Cannes main competition jury led by Alejandro González Iñárritu. The group represents one of the most diverse juries the festival has ever had, with 21-year-old Fanning the youngest jury member the festival has ever had.
And while the festival has been committed to striving toward 50/50 gender parity, the women on the jury would very much like to move past the same questions about being a “woman” filmmaker.
“I look forward to a time that will come when we don’t have to say ‘women directors’ or ‘as a woman,'” Reichardt said at the press conference Tuesday.
“But it’s odd when we’re asked this question,” Rohrwacher added. “It’s sort of like asking someone who survived a shipwreck why he’s still alive. Everyone is on the beach — ‘Why are you still alive?’ Why are you asking us? Well, ask the person who built the boat, who sold the tickets, the schools. People have said there haven’t been enough women, but it’s not enough to talk about at the end [of the chain]. We have to look at the beginning of the chain.”
Splashy International Deals
The Cannes marketplace is also just kicking off at the festival, but select international deals are already in place for some of the competition films.
Sony Pictures Worldwide Acquisitions nabbed select territories to Sally Hawkins’s “Eternal Beauty,” according to The Hollywood Reporter, excluding the U.S., Canada, France, Germany, Austria, Switzerland, the U.K., China, Japan, South Korea and the Middle East. And Focus Features acquired the international rights to Robert Eggers’s film “The Lighthouse,” which A24 already has domestic rights to distribute.
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www.thewrap.com | 5/15/19
A radioactive isotope one billion times older than the Universe! An international team of researchers, including six scientists from the Faculty of Science and Technology of the University of Coimbra (FCTUC), was able to measure for the first time the longest average lifetime of a radioactive isotope recorded by a device of measurement. This extraordinary fact is published (April 25), as the main piece on the cover, in Nature, the most prestigious of all scientific journals. The isotope in question is Xe 124 and its average lifetime is approximately one billion times older than the Universe. The Universe is about 14 billion years old, a period of time inconceivable when compared to the scale of human life. As if that alone did not cause enough amazement, there are radioactive isotopes (unstable elements that change over time emitting radiation) whose average life happens on scales much greater than the existence of the Universe itself. "The fact that we can directly measure such a rare process as this demonstrates the extraordinary scope of our measurement system, even when it was not made to measure these events, but rather dark matter," stresses José Matias, coordinator of the Portuguese team in this effort international and researcher of the Laboratory of Instrumentation, Biomedical Engineering and Radiation Physics (LIBPhys) of FCTUC. In fact, this measurement was only possible thanks to the XENON1T system, the most sensitive instrument ever produced by mankind for the detection of dark matter. It is installed in the National Laboratory of Gran Sasso (Italy), the largest underground laboratory in the world, under 1300 meters of rock to shield the system from cosmic rays existing on the surface. The study published by Nature shows that, after all, "XENON1T was also able to measure other rare physical phenomena, such as double electronic capture. In this case, the nucleus captures two of the electrons that orbit it in the atom, transforming two of the protons that constituted it into neutrons and emitting radiation in the form of two neutrinos. The energy released in this process forms the signal that the system registers, despite the extreme difficulty in being detected by its rarity, and can be generally masked by the omnipresent "normal" radiation ", affirms the also vice president of the Higher Institute of Engineering of Coimbra (ISEC). The average life span of Xe 124 Only with the detailed knowledge of the sources of radiation recorded by the detector was it possible to observe 126 events of double electron capture of the isotope Xe 124 and thus to determine for the first time its average life time of 2.5 x 1022 years (25 thousand millions of billions of years). This is the longest physical process ever measured directly by mankind. In fact, there is a register of phenomena with a longer average life (isotope Te 128) in the Universe, but that was inferred indirectly from another process. For the time being, it is not possible to predict the implications of this discovery that opens new horizons in human knowledge. The XENON consortium consists of 160 scientists from 27 research groups from the US, Germany, Portugal, Switzerland, France, the Netherlands, Sweden, Japan, Israel and Abu Dhabi. Portugal has been a partner in this collaboration since its inception in 2005 through the LIBPhys team. Cristina Pinto University of Coimbra • Faculty of Science and Technology Translated from the Portuguese version Ekaterina Santos
www.pravdareport.com | 4/25/19
The education system in Switzerland is very diverse, because the constitution of Switzerland delegates the authority for the school system mainly to the cantons. The Swiss constitution sets the foundations, namely that primary school is obligatory for every child and is free in public schools and that the confederation can run or support universities. The minimum age for primary school is about six years in all cantons but Obwalden, where it is five years and three months. After primary schools, the pupils split up according their abilities and intentions of career paths. Roughly 20% of all students attend secondary schools leading, normally after 12 school years in total to the federal recognized matura which grants access to all universities. The other students split in two or more school-types (depends on the canton) differing in the balance of theoretical and practical education. It is obligatory for all children to visit school for at least 9 years. The first university in Switzerland was founded in 1460 in Basel, with a faculty of medicine. This place has a long tradition of chemical and medical research in Switzerland. In total, there are 12 Universities in Switzerland; ten of them are managed by the cantons, while two federal institutes of technology, ETHZ in Zurich and EPFL in Lausanne, are under the responsibility of the federal state. In addition, there are seven regional associations of Higher Education Institutions for Applied Sciences (Fachhochschulen) which require vocational education and a special "Berufsmatura" to study. Switzerland has the second highest rate of foreign students in tertiary education, after Australia. Many Nobel prizes were awarded to Swiss scientists. More recently Vladimir Prelog, Heinrich Rohrer, Richard Ernst, Edmond Fischer, Rolf Zinkernagel and Kurt Wüthrich received nobel prizes in the sciences. In total, 113 Nobel Prize winners stand in relation to Switzerland and the Nobel Peace Price was awarded 9 times to organizations residing in Switzerland. Geneva hosts the world's largest particle physics laboratory, the CERN. Other important research centers are the Empa and Paul Scherrer Institute which belong to the ETH domain.