Hello and welcome to this webinar entitled Domain Names and Dispute Resolution Procedures. My name is Keith Markham. I am a war, my solicitor with many years experience dealing with these matters. These days I dedicate myself to providing training and consulting services, and I'm going to be taking you through this particular topic today. Is it looking our agenda in the usual way? We'll begin with a brief overview. It's got on the nuts and bolts of domain names and how they work Well, then go on to talk about specific dispute resolution procedure when problems arise in off the sort that going to be discussing today. How do we resolve that? How do we get through that? Hopefully without going anywhere near a court would be pleased to hear, perhaps on We'll see there are various examples of this, So there's something out there called the Uniforms Rapid suspension system, which in some cases on some occasions will be available to you and then all signed that we've got the uniformed dispute resolution procedure, which is more widely available on got slightly more accessible and finally in respect. Our own beloved dot UK, our own organization or a registry is it's properly called Nominate has his own particular procedure that goes with that as well. So in the circumstances, these are the issues we're gonna be talking about. Let's begin by looking at a brief overview of some of the nuts and bolts relating to domain names. In the circumstances. Let's begin by an excellent domain name. Keeps market dot com Now it's true that I still have since your website between websites at the moment, but that is an example off a particular domain name. And it's a bit at the end of this particularly significant. That's what we call the top level domain, the T L D. If you like, and then take that slightly further, having started with the idea. Adopt commas. Being a top level domain, we need to divide those top level domains. It's to families, and that will then have a profound impact in terms of our dispute resolution ability. I don't see a little late to Rome, so the one hand we have a family which we call generic top level domains, or GTL D's things like dot com dot biz dot or nothing to do with a particular coal country And then we have country top level domains, often known as C CTL. These where is dot UK dot fr dot yes dot de, And so and so and so now. So big toe. One or two exceptions that do exist the general rule is the main names were allocated on a first come first serve basis. There are exceptions. I will mention a couple later on, but ultimately subjects of those exceptions, I can go out tomorrow A registered pretty much anything. I like the fact that I have done so. There's not give me any automatic entitlement to intellectual property rights. However, it is quite possible that I may well infringe someone else's intellectual property rights in terms of the usual discussion about trade mask on indeed, passing off, we're gonna be seeing what we can do in respect of those particular times of dispute. As of Sunday, with the emphasis in this session on avoiding going anywhere near a court because there are other, more effective mechanisms that can be deplored now a little bit more about review, then what organizations are we talking about here? We just get some of the terminology sort of nuts and bolts sort announced at this particular point floor. First of all, we need to note the name of this organization at the top of the slide now, which is ICANN, which actually stands for the Internet Corporation of Assigned Names and Numbers. And in fact, that's because behind any domain name keys market dot com is a series of numbers and letters. The Alfa Numeric code, which wakes up the Internet protocol address that sits behind there. So that's that particular name and they all the ultimate oversight body. If you like under them, then sit three other organizations. You need to be clear who they are and what they do. First of all, registries. Now these all has to be approved by ICANN, and they have to made vultures each registry in respect of at least one top level domain. Sometimes Mawr is responsible for two things that say, providing it, making sure the mechanics of it work but also dealing with issues doing registration. So, for example, dot com, the registry for that is an organization called very sign dot UK, as we'll see a little bit later on, spent some time talking about that in more detail is an organization called Nominate. So that's just two examples. There are hundreds of these organizations out there now. Let's Reggie Street. So the technical prevision on registration underneath that you can see Registrar. Now these also have to be. I can approve. They're gonna intermediary bodies who spend their lives buying and selling domain names, possibly for some profit. Since I legitimately and often what acts on behalf of the final party see at the bottom, which is Reggie strapped now, if you're ever looking to acquire a domain name, or look who has acquired a domain name that you want or you wish to complain about and also need to look at who the registrant is, and I mentioned how you can do that in one particular way in a minute. Ultimately, bear in mind that domain name registration last for approximately one year or two years, depending on the particular top level domain, it happens to be on alternate. If you failed to renew pretty much anybody else can come along on register that particular domain and at least a particular problem called cybersquatting, which in all to talk about in just a moment now, what about generic top level domains that let's just drill down. It's a little bit more detail on these for now. So you see there that originally there only 20 to give you some examples there dot com dot biz dot or dot tv doctor plex. Now they kind of directed in certain sectors, as some of those particular generic top level domains might suggest. However, the reality is there is no specific requirement to prove that you've got a business where you've got a charity for dull or you've got something else. Adult triplex. The reality. You don't need to do any of that. It pretty much is wide open. Anybody can register anything. So it's one of two things I mentioned a minute now. They were out for years. Now, of course, that built a huge amount of pressure on conflict as the various people wanting different domain names that was similar that lead to all manner of issues. So the viewers to expand this, that now over 1000 and the key thing to notice as well that the newer domain names you might call them the new generic top level domains, of which there are over 1000 first of all, have the possibility of what Michael Non Latin script. So you see examples in Chinese and Cyrillic in Hebrew and Arabic in various Indian subcontinent, languages and etcetera, etcetera. And the other thing to note is that these non is new generic top level domains often have geographical connotations like DOT London or dot Melbourne have not New York or sense of things they might be referenced to. A problem dot Volvo is one that springs to mind. A particular sporting activity dot rugby dot football very sort of things of that sort. Now they have gone through a process of examination and delegation effective an organization comes to or did come to. I can't say we want to be the registered four dot exe of which, when they had to examine on, decide that the particular bid was acceptable on. Then they would delegate it either would make it like, If you want to see examples of all of this, you could look at the two. You are else that you got the bottom of the screen. I'm not gonna read through all those today. Two things that come out of that. First of all, there is now greater flexibility in terms of registering, but ultimately that also gives greater opportunity for cybersquatters when there's so many more things that they could potentially register and make mischief with on. We'll look at the effect of that in a little while now, before we get onto the dispute resolution side of. This is one of the thing you ought to bear in mind with regard to DOT UK and issue is very, very current on you want to be thinking about for your own organization and indeed, decline organizations as well. So you see there at the top of the screen traditionally for dot UK. We always have some sort of prefix dot co dot UK. Don't meet you came There are all dot UK dot co dot UK was supposed to. Businesses don't meet up UK for personal sort of blogging and things like this. Not all dot UK for charities, that was the idea. But again, there was no great rigid structure around that in practice. Now, since the 10th of June 2014 which sounds like an awful long time ago, now, doesn't it? You can register a two main in this particular jurisdiction with just dot UK. So let's say I wanted to register Keith Markham as a domain name. Historically, I would have had to go down that keith markham dot co dot UK fronts. But in fact, the reality is I can now just register keeps market dot UK. Now you can imagine that might laid to some confusion. You might have an organization that's registered data log dot co dot UK and somebody else thing comes along and tries to register Data Lord, that UK that for the time being is not possible because we are in the middle off kind of extended boys off to refer to sunrise, period. So in Taylor's, we're going to see in a minute the 25th of June 2019 organizations that had prior to, as you could see, the 28th of October 2013 a registration keith markham dot co dot UK, for example. Then they have a priority access period to register the equivalent with dust just dot UK, and that comes to an end on the 25th of June 2090 and then from the first of July 2019 it'll be open season, so ultimately you may have an existing dot co dot UK that's not affected by this. It remains valid. But the key thing to notice what you don't want is for you to have dot co dot UK. There's some little bright sparks will see in a minute to come on the register the equivalent with dot UK. So what to do about it, where you just need to register? You have various information there at the bottom of the screen. It's not difficult you have that priority now is one of the things you might ask. We're hanging a minute. What if I've got dot co dot UK and somebody else has got the dot Me And so we have Scott the door all the way it works. Is this for hours? He goes to dot co dot UK and then it just don't all don't UK Then it must adopt me. Don't you case this. Be aware. If you've got the top co dot UK, you are in pole position in this particular context, right? So don't overlook that because it's very, very soon to come into play and there's a significant danger of what we then see on the next slide where we start to talk about dispute resolution is the first word you see on here, and it's cybersquatting now. Cybersquatting is deeply uncomfortable optically for the person doing it for those who are on the end of it. So what happens is this. Somebody comes along and registers a domain name that is using your particular word. Mark or trademark is will go on to talk about later on and then decides to try and sell it to you for catch that I wanted to of the things that might do as well as the irritating you they might trade under your name and therefore trance steal your customers and various other things. The new generic top level domains has provided an enormous opportunity of respect to this, and frankly, that dot UK point I just made also provides an enormous opportunity in respect that this as well to be absolutely frank with you. So what can you do to these characters? Well, in theory, we've got action for trademark infringement of the Section 10 of the trademark at 1994 that's very rarely used. Similarly, you could bring an action in the high court of passing off. But the reality is there are much better ways of dealing with this than dealing with it in that particular fashion. On depending on whether it's a generic top level domain or is dot UK, there are various dispute resolution procedures that are far more commonly used. When l get and we want to talk about how they might be used in a bit more detail, we'll begin with a discussion of the generic top level domains. As you see, we immediately have to draw a distinction between the new generic top level domains. The more than 1000 you've got two possibilities there, which I'm going to discuss the old ones, the 20 to the dot coms that they're off the dock business. The doc triplex is you can only use the so called you DRP. Now, don't worry about these particular acronyms. I'm going to explain them in some detail on surprisingly very soon. So first thing to notice is, we're going to begin to talk about the U. R s. And I'll come onto how that words in a minute. But before you get to that, if you have the benefit off wishing to protect yourself In respect of these new generic top level domains, you should think about whether you want to register with what you see on the next slide, that trademark clearing house. Now this is a global database, which is maintained by Deloitte's on its global database for authentication off registered trademarks. So you go along and say, I got a registered trademark. Here it is. Here's the paperwork, and they give you an authentication key that authentication key then opens the door if you like to to other areas of protection. One sunrise period, which is largely gone by the by. But I will discuss it on the next slide, but the other one is to do with trademark claims. Notification locks the door further towards this uniform rapid suspension system, which I will we talking about. So let's just talk summarize periods for a moment. But be aware most of these, in respect of the new generic top level domains, have completely gone because the time has gone for it. Sunrise, period. As I mentioned, priority access to write sold this. If you have a registered trademark, you had a period of time to request domain name or domain names associated with your trademark at the time period, for that was tipping me between 30 and 90 days post delegation, which we talked about earlier. That's largely gone, so frankly, you may have to put that to one side. However, your remaining error protection via the trademark clearing house is what you see on the next line. And that is something called the trademark Claims Service, mandated by ICANN only in respect of the new GTL, these, as I've already said it works as follows someone comes along. A cyber squatter wants to register a domain name that matches the trademark you've got in the trademark clearing house. The trademark clearing house sends a warning notice to that character selling them. That's what's about to happen now. If the registrant then continues regardless, the trademark clearing house then contact you and says you might want to do something about this. At which point you may well prefer to use the uniforms Rapid suspension system, which received on the next slot, Now go through the detail of it in just a moment. But be clear. First of all, who provides it. There are a number of providers, but one that sees the most commonly used is the National Arbitration Forum. You could see a link there to their particular main website with regard to these issues, and it's very easy to follow. Remember new GTL these early? What happens is this. When you are contacted by the T. M. C H, you go to the National Arbitration Forum and you inform of the complaints. They then contact the registry that sits behind the particular domain name. That domain name is then locked on. There just be a little sign that appears that says this is locked pending resolution of a dispute. Which one? There is then a hearing or being that's done remotely. It's done electronically. You send the paperwork in and it's dealt with by an individual by a panel of experts on the remedy that you get is very limited. It is simply suspension of the domain name for the life of the existing registration. Remember, registrations last for a year or two years, and therefore it would just simply be suspended for that time could be used, after which it would either lapse or it will be open for us. The complainant to obtain it cost of this is you can see somewhere between 375 and $500 at around about 21 days in terms of term rounds. What have you got to show that she would you go to show something? What do you do? First of all, is it rather puzzling phrase the complainant's has to show using clear and convincing evidence that was that. Meanwhile, the general consensus is about the same as the burden of the balance of probabilities. But that was in time, sure, what must be shown? Well, all three of these things that you see on the next on this slide the domain names selected is identical or confusingly similar to a word mark held by the complainant and bear in mind. Here we are talking about some form of registered trademark. Secondly, the registered has no legitimate right or interest to the domain name. So often we like to talk about the phrase which is concurrent rights. I e. There are more than 40 classes and trademark in this jurisdiction alone. It's possible that somebody else got there legitimately first, So if they have a legitimate right, that's the end of this particular matter. and finally, that the main name was registered and is being used in bad faith. Examples of Bob Faith. Let's have a look on the next life. It's a festival. Speculation either registered this domain name trying to flog it to you for a significant profit. A second possibility. They've registered it just to prevent you using it to disrupt your business. Or finally, I love this race to cause confusion on the Internet. Sure, that could never happen. But, of course, confusion on the Internet in the sense that they then start to trade of the your day. Using a website is using your particular brand. Everybody thinks that it's genuine. They start to buy things from them and not from you. That can also quite a detrimental effect on the character of your trademark. So that's the particular system. This is limited, as we've seen. I will do a comparison between this and the one that follows at the end of the short discussion, but it's quite quick, and it's quite cheap, and it's quite effective if you say you want to stop somebody using it. If you wanna go slightly further than that, or indeed you are dealing with a situation where you have one of the old detail. These and he also might like to make a note of this particular policy that I'm about to tell you about. This particular procedure applies to a significant number off country, top level domains as well, albeit not the UK. Now, if you want the background information to the uniformed dispute resolution procedure, you will see there you've got a reference to where you could find the policy again. There are several providers, one of which is the national arbitration for But I'm gonna folks on the other made won the World Intellectual Property Office on. You can see lots more with regard to this. That's the particular U R L. Now again, as you can see the remedy, see, it are slightly broader straight away cancellation transfer change. So you will get mawr, albeit bearing by that. In none of these dispute resolution procedures, will you typically get your costs by in what circumstances? Then come the uniformed dispute resolution procedure used. That's a look remember, this is in respect of all detailed these on a considerable number of country top level domains as well. So the respondents domain name I was been registered by this character is identical or confusingly similar to a trademark or service mark in which the complainant house writes notes straight away. You don't need to have a registered trademark to take advantage of this. Furthermore, the respondent has no rights, a legitimate interest. We weren't seen that particular point and again that the main name has been registered as being used in bad faith examples of bad faith. Look on the next night, they're exactly the same as they are for the Urs. I'm not going to go over those and read those again. Now. If you're writing for a respondent or you are the respondent, what arguments can you bring forward to show that you've got rights? L legitimate interests kind of alluded to this, but let me be a little bit clearer now, the respondent potential as three ways off, coming back and saying, we've got a right to use this. So, first of all, they had a bonified, the offering of goods or services note before the disputes. There's not enough that they changed and behaved themselves after they were notified, and again they may have been trading under that particular name, and selling goods will handle services for some years. Secondly, they may be commonly known by the domain name if they have not acquired a trademark. So remember, this is about you don't need to have a registered trademark. You would produce evidence to show you on. Known by this, you've got seven goodwill that's built up on so and finally, again, it may be the alternatively. Rather, having a business is legitimate is for a non commercial fair usage. So it's actually as long as it doesn't tarnish the trademark of the complainants or misleadingly divert customers. You using it for your own purposes. But your own name is similar where you got your own small organization of, ah nonprofit, something like that again. Generally, that will be evidence of rights and biologists in the interest, and therefore you could defend this action fairly successfully. Now it's looking a little bit more of the details about how WIPO deal with this. So to date, you may be interested to hear they process 42,000 cases in respect of domain name disputes. I'll show you some stats in a minute. You will see there on the slide. Various You RL's again. There is a model complaint and filing guidelines you can access at an overview of the procedures you can access there. Let's have a look that at their statistics, I said 42,000 in total. Have a look here from 2014 to 2018 just to give you some examples of this your scenes a steady increments. And in 2018 just of the 3500 cases were heard by WIPO in respect to this from all around the world. Now let's look at the timing and fees to see whether you want to do this as opposed to the Urs. Assuming that you can use the you ours. So typically, 60 days in the days of receipt is the so I'm trying to resolve. This says that the cost you will see it depends on the number of domain names. The member of Panelists have warmer or three Panelists to decide it, and you see that it ranges from 1500 U. S. Dollars to 5000 U. S. Dollars. It is up to 10 domain names that may be disputed, right? Let's compare these two particular systems then never got to talk about the dot UK equivalent. Let's do a comparison then off the U. S. And the U T piece. It doesn't click ability, new generic top level domains only for the Urs and certainly a registered trademark under the U D R P. Again, it's both new and old generic top level domains and also a number of countries top level domains. But here it could be a registered trademarks or service marks that somewhat broader doesn't timing. We've got 21 days Urs on its 60 days for the u D R P. There's a cost again. You will see 375 to $500 plays 1500 to $5000. Remedies. The remedy under the U. S. Is very, very limited and its suspension only. But under you, TRP cancellation, transfer or change Now also, it's a question of tactics. Timing, cost spends all the usual consideration. But note you DLP is easier to use and his broader insurgents applique ability. But frankly, if you can access, Urs only wants to stop them using it. You may find it more cost effective option, right? So I'm gonna say on those two generic type systems, they got very broad appeal. Generally, let's come in finally and hone our attention on the dot UK equivalent. And they were gonna wrap this session up. So nominate, which is the registry which deals with dispute resolution as well as the technical provisions on registration. You can see there a link to their particular procedures. There are five stages to this. There's a procedure complaint on response. There is the possibility of mediation, and by the way, parties are automatically opting into mediation start. But they do not have to go through with it. Expert decision is where the vast majority of cases tend to be decided. There is the possibility the possibility often appeal, but it's very rare, and ultimately we then gets the closure stage where we talk about the remedies on so on. Now let's talk about timing, trees and remedies just in similar language to what we've seen before. It's a timing 8 to 12 weeks fees. Well, if it's a mediation is free. It was an expert decision. If the complaint is uncontested, £200 plus V a. T. If it's contested £750 plus V a. T. It is an appeal. £3000 must be 80 it says of remedies very similar to the U. D R P. We see examples of transfer, cancellation and suspension now Norman, that have actually produced some very good online resources. And if you look on the next slide, you'll see that if you want to avail yourself of all of this, they haven't online portal that you log in to to make your complaint and so on. There is no physical hearing you refer it, and it angers onto the various experts. There's an example complaint for on an example responsible. So the payoff you act for you can see good examples of that. It's actually very, very useful now. Another problem that can emerge on these occasions is the issue off data release. Historically, I mentioned that who is website and if actually you could log onto here is and you could see quite clearly quite quickly who the registrant waas Now, unfortunately, the GDP are what's happened is in if the registrants and individual all of their details are now blocked out. However, there is a way to obtain that in respect of DOT UK and ultimately that is to make an application to nominate to reveal that particular person's identity. There is a procedure moments data release, where they will provide information to third party complainants. It was a check who the registrant is to them pursue one of these particular complaints on the enforcement of legal rights on the use of DRS are good reasons. So if you go to the reason you can't find out, you can make application to nominate as part of this process. And if you want to see their particular policy, it's there for you at the bottom off the screen. Now what is the complainants? Got to show what the first, all the complaints got to show. As you can see here, they have rights in respect of a name or mark, which is identical or similar to the domain name at the time the complaint is made. Okay, how do we do that? Well, thinking about registered trademark passing off or number of the other things we've already talked about for, the more they have to show that the registration was abusive registration of the domain. There was abusive. I either in that it took unfair advantage off or was unfairly detrimental to the rights of the complainant at the time off registration acquisition or has been used in a manner which took unfair advantage off, was unfairly detrimental to the complainants, right at any time from registration onwards on note, you do not need to prove that both the registration and usage were unfair. So is one or the other. Typically, elements of usage will be particularly conclusive on examples off abusive registration fairly familiar to what we've already seen. Let's have a look at those on the next slide. The domain name was registered with the primary purpose of any of those four things that you see there selling or renting the domain names, the complainant or a competitive, preventing the complainant from using it, disrupting the complaints business and also confusing other Internet users. So how come the respondent respond one Nothing particularly remarkable there. So again they need to show that they have made preparations to use it for a legitimate purpose of the sort that we talked about previously. The domain name is generic or descriptive, being used fairly and finally, domain is being used surely attribute or fair criticism. So happy complaints of this sort do we get? Let's have a look at some stats here in respect off nominate over the last couple of years again, you see that although in 2012 there were just over eight 100 without fairly level that around about 700 of these being dealt with it. Yeah, a significant number if they are resolved in favour off the complainant on the vast majority are lead to a transfer. Let's usually what is required. And in fact, if you think about the dot UK aspect of this at the minute, the vast majority of these disputes air about something. Dot co dot UK. Let's have a look, minutes and final statistics as we begin to wrap this session up. So you see there again years that we have the statistics for and you see how the dispute was result Well Interestingly, a number of these disputes were resolved by the parties themselves. Some will result by mediation majority by summary decision. That's one expert full decision. Three experts on a very short, small number go on appeal. Others, by the way that I referred to nominate may be problematic in terms of technicalities, or there may be withdrawn on various things. But in terms of what actually happens, you can see the awful lot of dealt with via summary and full decision on Remember if it's uncontested. Typically 200 pails. If it's contested 17 £50 almost be 80. If you don't see more examples of that, you can look at the DRS Infographic Interesting recent cases there involving. As you can see govern, treat all dot UK Victoria's Secret Beauty dot co dot UK and sip fix dot co dot UK. You can go and find the detail of that you want to. In each case, those particular domain names were transferred to the complainant, successfully wrapping up then some practical suggestions is always before you registered the domain name because the sake check that you're not infringing somebody else's trade bar. It's not hard to do a Google search, is it? Although what I find is often, you get to the stage when this is done very late in the day, something that some for re Bradley exercise or some bright idea about something. I don't get the end having gone through a great deal of time and effort that they search for a particular domain name and they find somebody else has got it. So watch out for that. I don't think so. Watch out for is that some organizations are known by particular derivatives on. Also, they may sometimes have names that are commonly misspelled. When people type those names into Google, the search engines it's worth thinking about derivatives on misspellings. Now I've given the example of MNS there for Marks and Spencer across a bigger issue from our suspense is how we actually spell it around the country. When I go on trade, everyone's got a different way of saying Marks and Spencer very, very easy to have a typo there. If they're not careful to protect that, that could lead to an example of what we call typo squatting. I'm aware of one or two quite bad examples of this over the years, with some what's registered. The domain name is one letter different but is commonly misspelled in that way and then tried to hold the particular organization to ransom. So think about whether there are common misspellings and derivatives and think about registering those Of course, if you do have a dispute, the best way to result this is dispute resolution by far. It is cheaper and his quicker obviously received that some of the schemes are slightly faster and cheaper than others. One of the things I just drop in there is this. If somebody has registered the domain name and you really want it, whether they've done it inadvertently or they don't deliberately just occasionally, it may turn out to be more cost effective on a swath occasion to actually buy the name rather than getting too caught up in all of these particular procedures. Right? Summarizing then and then we'll come to a close. Obviously, we have seen the issues with the guards of the new generic top level domains, which provides a self extent a side discourses paradise. No, that dot UK point. Make sure you take action. Oblige applies to take actions have not done so. It says that the dispute resolution procedures there's not a lot between them, really, whether they're the U. R s and the U DRP and Nam Inet, similar concepts are available. The key things to make sure which one I'm entitled to use and in particular, look at the distinction between Urs, which is cheaper and quicker. And you drp which it gives you a greater variety off rights. Right? Well, as always. Thank you very much for your kind attention. That's all I got to say. I don't speak again in the near future. Thank you. And good day to you.
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