Part 1 of this post provided an overview of the Canadian
Internet Registration Authority's domain name dispute
resolution process. Part 2 outlines a similar process available
through the World Intellectual Property Organization's
("WIPO") Arbitration and Mediation
What is WIPO?
WIPO is a United Nations agency that provides a global forum for
intellectual property services, information, and cooperation. The
organization's stated objective is to promote the protection of
intellectual property throughout the world through cooperation, as
well as collaboration with other international organizations.
Pursuant to paragraph 4 of UDRP, domain name dispute resolution
is only available for disputes concerning an alleged abusive
registration of a domain name.
Who can file a complaint under the UDRP?
Any individual or company can file a domain name dispute
concerning a generic top level domain (a
"gTLD"). The most common gTLDs are .COM,
.INFO, .NET, and .ORG.
For a country-code top level domain
("ccTLD"), the UDRP only applies if it
has been voluntarily adopted. A list of ccTLDs for which WIPO
provides domain name dispute resolution services is available here.
The administrative procedure for a domain name dispute begins
when the party bringing the complaint (the
"Complainant") files the complaint (the
"Complaint") with an approved dispute
resolution service provider. The registered domain name holder (the
"Registrant") is then entitled to file a
Similar to domain name disputes under CIRA, only in exceptional
circumstances will there be an in-person hearing.
Each provider follows the Rules as well as their own
supplemental rules for domain name dispute resolution.
What must a Complainant establish?
In order to obtain a remedy, a Complainant must establish the
The domain name registered by Registrant is identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights;
The Registrant has no rights or legitimate interests in respect
of the domain name; and
The domain name was registered and is being used in bad
What constitutes a "legitimate interest" in a domain
Paragraph 4 of the UDRP provides a list of circumstances that
will demonstrate rights or a "legitimate interest" to the
dispute domain name:
Before any notice of the dispute, the domain name was used by
the Registrant in connection with a bona fide offering of goods or
The Registrant is commonly known by the domain name.
The 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 trademark or
service mark at issue.
What is considered "bad faith"?
Paragraph 4 of the UDRP also provides a non-exhaustive list of
some examples of a "bad faith" registration of a domain
The domain name was acquired primarily for the purpose of
selling, renting, or otherwise transferring it to the
The domain name was registered to prevent the owner of the
trademark or service mark from reflecting the mark in a
corresponding domain name.
The domain name was registered in order to disrupt the business
of a competitor.
The domain name is being used to intentionally as an attempt to
attract, for commercial gain, internet users to a website by
creating a likelihood of confusion with the Complainant's
What kinds of relief are available?
If the Panel decides in favour of the Complainant, the disputed
domain name will either be cancelled or transferred to the
Complainant. If a decision is rendered in favour of the Registrant,
the Complaint will be dismissed. No monetary penalties or costs are
Similar to CIRA, if the parties to the dispute are involved in
other legal proceedings involving the same domain name, the Panel
has discretion to suspend or terminate the Complaint.
Are previous decisions released?
Previous decisions of WIPO Panels are available here. WIPO has also produced a guide with
selected decisions and commentary that will assist parties in
domain name disputes, available here.
(This is Part 2 of a two-part post;
Part 1 can be found here.)
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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