The World Intellectual Property Organisation advocates new
dispute resolution procedures for alleged infringement of trade
marks under the new Generic Top-Level Domain Names to be released
As recent media has reported, the organisation who administers
the Internet's system of unique identifiers, ICANN, (Internet
Corporation for Assigned Names and Numbers) is proposing to expand
the Internet's addressing system to a large number of new
Generic Top-level Domain Names (gTLDs), which are expected to
become available for registration in 2010. This means there will be
much greater scope for the creation of domain names outside those
with the more common domain names ending in identifiers such as
.com, .gov, .org and .net.
In this context, the World Intellectual Property Organisation
has been providing advice to ICANN on the protection of legitimate
interests of trade mark right holders which will be adversely
affected in both the "pre-delegation" (when the
application for the gTLD is filed) and "post-delegation"
phases (when the new gTLDs are delegated to domain name registrars
and offered to the public).
The World Intellectual Property Organisation already administers
disputes arising out of current gTLD applications which infringe
third parties' trade mark rights, through its Uniform Domain
Name Dispute Resolution Policy (the UDRP).
The UDRP is currently available for disputes concerning an
alleged abusive registration of a domain name, and provides an
alternative to court proceedings and a quicker and more cost
effective way to enforce trade mark rights in the Internet
Importantly, the UDRP's decisions can be enforced regardless
of where the registrar, the domain name holder, or the complainant
are located and the choice to use the UDRP does not prevent a party
from going to court before or after filing a claim under the UDRP
In light of the potential for a significant increase in cases of
alleged infringement of trade marks with the introduction of the
gTLD program, the World Intellectual Property Organisation is now
advocating new pre-delegation and post-delegation dispute
The pre-delegation dispute resolution procedure
This new independent dispute resolution process is still being
developed by WIPO. It is proposed to be a preventive measure
through a system of formal objections which can be made during the
evaluation of new gTLD applications.
One of the four grounds to file objections will be the Legal
Rights Objection, which will allow for parties with existing legal
rights (such as trade mark rights) that can be potentially
infringed by a new gTLD application to object to the infringing
The Legal Rights Objection will be administered by the
Arbitration and Mediation Centre of the World Intellectual Property
Organisation. The findings of the panel deciding a dispute will
bind ICANN and if the panel finds that a new gTLD infringes an
objector's trade mark, the gTLD application will be
The post-delegation dispute resolution procedures
In addition to the pre-delegation DRP, the World Intellectual
Property Organisation has strongly advocated a separate dispute
resolution procedure of a "curative nature" to administer
disputes arising after the delegation of a new gTLD has been
granted and to help ensure the ongoing protection of trade mark
rights within the new gTLD program framework.
The post-delegation DRP will focus on conduct of domain name
registries which "cause or materially contribute to trade mark
abuse" and will be built on existing pre-delegation Legal
Rights Objection proposed criteria, the World Intellectual Property
Organisation's UDRP jurisprudence and "accepted rules or
principles of law".
The new gTLD registry agreements will bind gTLD registrars to
the proposed post-delegation dispute resolution procedure, which
will oversee compliance and ensure the security and stability of
the Domain Name System.
Proposed remedies under the post-delegation DRP include transfer
or cancellation of domain name registrations and termination of
contracts with selected registrars which repeatedly abuse third
parties' trade mark rights.
The latest input from the World Intellectual Property
Organisation was provided on 13 March 2009 and discussions are
ongoing with a view to have a consistent dispute resolution
framework running by the time the new gTLD program is
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).