NEW GENERIC TOP-LEVEL DOMAIN NAMES DISPUTE RESOLUTION

Comitê Brasileiro de Arbitragem (CBAr)

28 April 2016

Pierfrancesco C. Fasano

Stefano Monguzzi

Ivett Paulovics

Agenda

! ABOUT US ! NEW GTLDS ! THE UNIFORM RAPID SUSPENSION SYSTEM

(URS) ! TOP 7 THINGS TO KNOW ABOUT THE URS ! URS PROCEDURE ! MFSD’S ONLINE DISPUTE MANAGEMENT

PLATFORM

About us ! Milan-based, private, independent, international Dispute

Resolution Center with focus on Intellectual Property (IP) disputes

! Founded in 2000 ! Accreditations:

! 2001 – “.it” Domain Name Dispute Resolution Service Provider – accredited by Registry “.it” (CNR IIT – National Council of Researches – IT Institute)

! 2012 – IP Mediation Center – authorized by the Italian Ministry of Justice

! 2013 – IP Mediation Training Center – authorized by the Italian Ministry of Justice

! 2015 – Uniform Rapid Suspension System (URS) Domain Dispute Resolution Service Provider – approved by ICANN

About us

! Providing cutting edge, cost-effective and expedited alternative

dispute resolution (ADR) services in IP matters in an orderly and fair manner in an international context

! Training and education of professionals, entrepreneurs,

companies and other entities on IP ADR issues ! Promotion of ADR culture, techniques and methods ! Exchange of knowledge by participation as partners in

international, EU projects ! Active participation in Italian and international consultations/

debates around the development of IP ADR

About us “.it” Domain Name Dispute Resolution Service Provider

! Since 2001 management and online track record of

over 65 “.it” domain name disputes eg. minutemaid.it, cocacola.it, coke.it, sprite.it, thebodyshop.it, legoland.it, iloveitalianshoes.it, societegenerale.it, rocca.it, uffizi.it, jpmorgan.it, etc.

! Rules: variant of UDRP

! Fees: € 800-1.000 one single Panelist ! Duration: 45/60 days

About us IP Mediation Center

! Voluntary mediation in IP

! Since 2012 management of 7 mediation procedures concerning cross-border TM and domain name claims between Italian and international parties (4 disputes settled, 3 not settled since other party has not appeared)

! Rules: based on the EU Mediation Directive 2008/52, approved by the Italian Ministry of Justice, mediation agreement is enforceable within 27 Member States of the EU

! Fees: from € 290 to € 2.000

! Duration: 14/35 days

About us IP Mediation Training Center

! Under EU Mediation Directive 2008/52

! Scientific Director approved by the Italian Ministry of Justice

! 5 trainers (2 theoretical + 3 practical)

! Mediators: 50 hours course + 4 hours of evaluation

! Apprenticeship: 20 procedures in 2 years

! CLE: 18 hours every 2 years

About us URS Domain Dispute Resolution Service Provider

! Approved by ICANN on Dec 16, 2015 ! Online dispute management platform https://urs.mfsd.it

! As of March 31, 2016 3 URS disputes decided (determinations published on our website)

! List of highly qualified and globally diversified

professionals as neutrals (Examiners) with experience in handling UDRP or similar domain name disputes

! Training to Examiners, IP professionals, Registries/Registrars, right holders

New Generic Top-Level Domains (New gTLDs)

! Before 1998: .com, .edu, .gov, .int, .org, .net, .arpa

and .mil ! 2000: .aero, .biz, .coop, .info, .museum, .name, .pro ! 2004: .asia, .cat, .jobs, .mobi, .post, .tel, .xxx

and .travel ! 2005: policy development process to introduce new

gTLDs ! 2011: launch of New gTLD Program ! 2012: 1.930 applications for new gTLDs (Registries:

Google, Donuts, Amazon, etc.) ! Since Oct 2013 – to date: delegation of the first new

gTLDs – game in Chinese, online in Russian, web in Arabic, .shop, .online, .law, .axa, .dubai

New Generic Top-Level Domains (New gTLDs)

! In the forthcoming years approx. 1.300 new extensions ! O v e r 9 0 0 s t r i n g s a l r e a d y d e l e g a t e d :

https://newgtlds.icann.org/en/program-status/delegated-strings ! December 2015: 11,2 milions of new gTLDs registered (top

5: .xyz, .top, .wang, .win, .club)

The Uniform Rapid Suspension System (URS)

! Right protection mechanism (RPM) implemented to

supplement the existing Uniform Domain-Name Dispute Resolution Policy (UDRP)

! Scope: provide trademark owners with a quick and low-

cost process to take down websites in case of clear-cut infringement of their IP rights caused by domain name registrations and to fight against cybersquatting

Top 7 things to know about the URS 1. APPLICABILITY OF THE URS PROCEDURE

! The URS applies to: ! new generic TLDs introduced in the root after 1 January

2013 (.club, .shop, .dubai, .brand and also IDN extensions)

.itau, .fashion þ .com, .net

! certain country code TLDs

.pw þ .com.br, .co.uk

Top 7 things to know about the URS

2. REMEDY AVAILABLE IN THE URS

! Only remedy available is the suspension of the domain name for the remaining registration period (extendable for an additional year)

necessity of quick solution: take down þ necessity of ownership of the domain name: transfer

! Suspension: domain name will not resolve to the original

website, but will redirect to an informational website of the dispute resolution provider (substitution of the nameservers)

Top 7 things to know about the URS

Suspension

Top 7 things to know about the URS 3. ELEMENTS OF CLAIM – RIGHTS OF THE COMPLAINANT

! The complainant shall hold a valid nationally or regionally registered or court validated or statute/treaty protected word trademark which is in current use and with which the registrant’s domain name is identical or confusingly similar

registered Brasilian word trademark þ Court validated word mark þ trademark application "figurative trademark "unregistered trademark trade name, geographical indication

Top 7 things to know about the URS

3. ELEMENTS OF CLAIM – RIGHTS OR INTERESTS OF THE REGISTRANT

! The complainant shall prove that the Registrant has no legitimate right or interest to the domain name

Top 7 things to know about the URS

3. ELEMENTS OF CLAIM – BAD FAITH

! The complainant shall prove that the domain name was registered and is being used in bad faith

Top 7 things to know about the URS

4. STRICT BURDEN OF PROOF IS TO BE MET

! Examination standards: ! all disputes are reviewed on the merits of the claim ! clear and convincing evidence on the 3 elements of claim ! no genuine issue of material fact exists

clear case of trademark abuse þ open questions of fact "fair use of a descriptive or generic domain name "fair use of a domain name in tribute or criticism written agreement in force between the parties

Top 7 things to know about the URS

5. EVIDENCE AND BRIEF EXPLANATORY STATEMENT (500 WORDS)

! No amendment is possible – all documentary evidence is to be filed with the complaint:

! proof of complainant’s trademark rights

certificate of TM registration þ

Top 7 things to know about the URS

5. EVIDENCE AND BRIEF EXPLANATORY STATEMENT (500 WORDS)

! proof of complainant’s use of trademark declaration of TM use þ"brochure, catalogue, product manuals of complainant þ"screenshot of complainant’s website þ Trademark Clearinghouse validated SMD file þ

Top 7 things to know about the URS

5. EVIDENCE AND BRIEF EXPLANATORY STATEMENT (500 WORDS)

! proof of registrant’s infringing use of the domain name Whois record of disputed domain name þ screenshot of the domain name’s website þ

Top 7 things to know about the URS

6. LANGUAGE OF THE PROCEEDING

! Complaint is to be filed in English always, independently form the language of the registration agreement

! Response might be filed in English or in the predominant language spoken in the registrant’s country determined by country(ies) listed in the Whois record

! Examiner shall be fluent in English and in the language of the Response and determine, in its sole discretion, the appropriate language for the issuance of the Determination

! No Response filed – English is the language of the Determination

Top 7 things to know about the URS

7. OTHER PROCEEDINGS RELATED TO THE DOMAIN NAME

! URS is to be initiated if no other proceeding is pending concerning the disputed domain name

pending UDRP "pending court proceeding "

URS procedure Introduction of the procedure

Notice of Complaint to

the Respondent

(e-mail, courier, fax)

Online submission of Complaint and payment

of the administrativ

e fees

Receipt and administrative review of Complaint

Online submission

of Response

If no Response

filed, Complaint

proceeds to default

Lock of the domain

name by the Registry 22 business

days 224 hours

2Immediately

214 calendar

days

URS procedure Procedure and outcome

Issuance of the Determination

(Default or Final)

Receipt and administrative

review of Response and Notice to the

parties / Notice of Default to the parties

Appointment of the Examiner and review on merits of the

claim

Notice of the Determination to the parties and

implementation of the Determination

by the Registry (suspension or unlock of the

domain name)

On the same day of receipt / Upon expiry

of the due date

Immediately

3 business days of the appointment and

5 days of submission of the

Response

MFSD’S ONLINE DISPUTE MANAGEMENT PLATFORM FOR URS

urs.mfsd.it

MFSD’S ONLINE DISPUTE MANAGEMENT PLATFORM urs.mfsd.it

My disputes

MFSD’S ONLINE DISPUTE MANAGEMENT PLATFORM urs.mfsd.it

Fees

MFSD S.r.l. URS Domain Dispute Resolution Service Provider

https.//urs.mfsd.it @: urs@mfsd.it : 02.45506624

:Viale Beatrice D'Este, 20 20122 Milan

Italy