Wednesday, January 14, 2009

WIPO 2008 DOMAIN NAME PANELLISTS' MEETING IN GENEVA

WIPO

WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA


WIPO ARBITRATION AND MEDIATION CENTER
Domain Name Panelists Meeting


Geneva
October 20, 2008
PROGRAM

08.15 – 09.00 Registration and coffee


09.00 – 09.15 Overview and developments

Erik Wilbers
Acting Director, WIPO Arbitration and Mediation Center
Head, Domain Name Dispute Resolution Section


09.15 – 9.35 Registrars and the UDRP – registrars as registrants, and other conundrums
The GE (D2007-1834), Ricard (D2008-0789), Canwest (D2008-0687)
and Eva Padberg (D2007-1886) cases

Matthew Harris


09.35 – 10.05 Privacy and proxy registration services – the settling dust?
Identifying the proper respondent; mutual jurisdiction; assessing chain of ownership in privacy cases
The BME (D2008-0882) and HSBC (D2007-0062) cases, and others

William Towns and Richard Lyon






10.05 – 10.25 Bulk registrations and shielded acquisition of domain name portfolios
The iFranchise (D2007-1438) and Ticketmaster (D2007-1921) cases

M. Scott Donahey


10.25 – 10.45 Coffee Break


10.45 – 11.05 Assessing claims of common law rights in UDRP cases
The BS case (D2008-1010)

Tony Willoughby and Frederick Abbott


11.05 – 11.30 The evolution of ‘willful blindness’ under the UDRP
The Grundfos case (D2007-1448) and others

Warwick Smith


11.30 – 11.45 Domain name registration in contemplation of possible third party rights
The Shelbox case (D2008-0404)

Brigitte Joppich


11.45 – 12.10 Two procedural determinations: 1. mutual jurisdiction and ambiguous registration agreements; 2. supplemental filing tactics

Richard Lyon


12.10 – 12.30 PPC pages and descriptive domain names – generic v. trademark value
mVisible Technologies (D2007-1141) and Asian World of Martial Arts
(D2007-1415)

David Bernstein


12.30 – 14.00 Lunch


14.00 – 14.20 Universal v. local – applying national law in UDRP cases
Chelsea (D2007-1379) and Calvin Ayre (D2007-1947)

Jonathan Turner


14.20 – 15.20 Criticism sites and other free speech – bridging the divide?
Sermo (D2008-0647), 1066 (D2007-1461),
Calvin Ayre (D2007-1947), Covance (D2004-0206), and others

Panel: David Bernstein
Matthew Harris
Harini Narayanswamy
Miguel O’Farrell
Alistair Payne
Jonathan Turner

Moderator: Warwick Smith


15.20 – 15.40 Updates on Center procedure – language, registrar verification, privacy, mutual jurisdiction

David Roache-Turner
WIPO Arbitration and Mediation Center


15.40 – 16.00 Coffee Break


16.00 – 16.20 Dealing with respondent consent to transfer; informal consents

Linda Chang and Tony Willoughby


16.20 – 16.50 New gTLDs and rights protection mechanisms

Eun-Joo Min
WIPO Arbitration and Mediation Center


16.50 – 17.30 Open Floor: Issues raised by participants


17.30 – 18.00 Update on the World Intellectual Property Organization

Francis Gurry
Director General-Elect


18.00 CLOSING FOLLOWED BY COCKTAIL RECEPTION

WIPO 2008 DOMAIN NAME PANELLISTS' MEETING IN gENEVA

WIPO

WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA


WIPO ARBITRATION AND MEDIATION CENTER
Domain Name Panelists Meeting


Geneva
October 20, 2008
PROGRAM

08.15 – 09.00 Registration and coffee


09.00 – 09.15 Overview and developments

Erik Wilbers
Acting Director, WIPO Arbitration and Mediation Center
Head, Domain Name Dispute Resolution Section


09.15 – 9.35 Registrars and the UDRP – registrars as registrants, and other conundrums
The GE (D2007-1834), Ricard (D2008-0789), Canwest (D2008-0687)
and Eva Padberg (D2007-1886) cases

Matthew Harris


09.35 – 10.05 Privacy and proxy registration services – the settling dust?
Identifying the proper respondent; mutual jurisdiction; assessing chain of ownership in privacy cases
The BME (D2008-0882) and HSBC (D2007-0062) cases, and others

William Towns and Richard Lyon






10.05 – 10.25 Bulk registrations and shielded acquisition of domain name portfolios
The iFranchise (D2007-1438) and Ticketmaster (D2007-1921) cases

M. Scott Donahey


10.25 – 10.45 Coffee Break


10.45 – 11.05 Assessing claims of common law rights in UDRP cases
The BS case (D2008-1010)

Tony Willoughby and Frederick Abbott


11.05 – 11.30 The evolution of ‘willful blindness’ under the UDRP
The Grundfos case (D2007-1448) and others

Warwick Smith


11.30 – 11.45 Domain name registration in contemplation of possible third party rights
The Shelbox case (D2008-0404)

Brigitte Joppich


11.45 – 12.10 Two procedural determinations: 1. mutual jurisdiction and ambiguous registration agreements; 2. supplemental filing tactics

Richard Lyon


12.10 – 12.30 PPC pages and descriptive domain names – generic v. trademark value
mVisible Technologies (D2007-1141) and Asian World of Martial Arts
(D2007-1415)

David Bernstein


12.30 – 14.00 Lunch


14.00 – 14.20 Universal v. local – applying national law in UDRP cases
Chelsea (D2007-1379) and Calvin Ayre (D2007-1947)

Jonathan Turner


14.20 – 15.20 Criticism sites and other free speech – bridging the divide?
Sermo (D2008-0647), 1066 (D2007-1461),
Calvin Ayre (D2007-1947), Covance (D2004-0206), and others

Panel: David Bernstein
Matthew Harris
Harini Narayanswamy
Miguel O’Farrell
Alistair Payne
Jonathan Turner

Moderator: Warwick Smith


15.20 – 15.40 Updates on Center procedure – language, registrar verification, privacy, mutual jurisdiction

David Roache-Turner
WIPO Arbitration and Mediation Center


15.40 – 16.00 Coffee Break


16.00 – 16.20 Dealing with respondent consent to transfer; informal consents

Linda Chang and Tony Willoughby


16.20 – 16.50 New gTLDs and rights protection mechanisms

Eun-Joo Min
WIPO Arbitration and Mediation Center


16.50 – 17.30 Open Floor: Issues raised by participants


17.30 – 18.00 Update on the World Intellectual Property Organization

Francis Gurry
Director General-Elect


18.00 CLOSING FOLLOWED BY COCKTAIL RECEPTION

NEIL BROWN APPOINTED TO CZECH ARBITRATION COURT DOMAIN NAME PANEL

PRESS RELEASE 19 November 2008

MELBOURNE ARBITRATOR ON NEW PANEL FOR DOMAIN NAME DISPUTES

Arbitrator and former Federal Minister, The Hon Neil Brown QC has been appointed to a new international panel for the arbitration of disputes on internet domain names.

The panel has been set up by the Czech Arbitration Court in Prague which was appointed this year by ICANN as a new provider of arbitration services.

The other providers are WIPO (the World Intellectual Property Organisation) in Geneva) and the NAF (the National Arbitration Forum) in the US.

Mr. Brown is a member of both panels as well as panels in Australia, Kuala Lumpur, Hong Kong and Beijing and has arbitrated on dozens of disputes.

The Czech Arbitration Court (CAC) already provides arbitration services for European .eu domain names and will now handle all domain name disputes like .com, .biz, .org and .info.

Disputes can be handled in English.

What are the disputes about?

The disputes are:


(a) complaints about cybersquatters who use companies’ trademarks and names and concoct a domain name, pretending it is the real thing and then link it to a website selling competing products or pornography etc;



2.
(b) disputes between rival business interests who both claim to be entitled to the domain name;

(c) disputes between companies and others who claim they are using the domain name for a legitimate criticism site or a celebrity fan site;

(d) any other dispute where a domain name is the same as a trademark or confusingly similar to it, the person registering the domain name has no right to it and registered the domain name in bad faith

What is new about the Czech arbitration service?

Mr. Brown said that the new Czech service prides itself on the fact that its process for handling the arbitration s will be 100% online; there will be no papers sent to the arbitrators, and they will just log in, read the submissions from both sides and their evidence, then write a decision and press the ‘submit’ button.

What orders can be made?

The arbitrator can order that the domain name be transferred to a successful complainant or be cancelled, or the arbitrator can dismiss the complaint if it has not been proved.

How many panelists are there?

“The CAC has appointed only 30 arbitrators worldwide for the new service. It is good for Australian businesses to know that they have a direct link with the international domain name process”, Mr. Brown said.

The CAC will start to receive cases on 1 January 2009.


The Hon Neil Brown QC practices as a mediator and arbitrator.

For further information call (03) 9534 5436 or 0400 123 254.

COMPANIES SHOULD CONDUCT AUDITS OF DOMAIN NAMES

PRESS RELEASE

CALL FOR COMPANIES TO CONDUCT AN AUDIT OF THEIR DOMAIN NAME STABLES TO AVOID FRAUD AND DAMAGE TO THEIR GOOD NAMES


A leading international domain name arbitrator has called on Australian companies to conduct an audit of the domain names they have.

The arbitrator, The Hon Neil Brown QC, a former Federal Government Minister, said that it was important to do this:

*to ensure that companies have all possible domain names registered; and

* to reduce fraud and other improper uses of domain names that can damage a company’s good name.

Mr Brown was speaking just after decisions had been handed down by arbitrators at WIPO (the World Intellectual Property Organisation) in two domain name cases where separate cybersquatters had tried to capture the name of the ANZ Bank in the domain names anzcard.com and anzcards.com.

THE FIRST CASE - anzcard.com

“ The first domain name that someone registered was anzcard.com, an obvious one to register”, Mr Brown said, “as it is well known that all banks issue credit cards.

In fact, it is such an obvious one to register that you would think the ANZ Bank would have registered the name itself.

“But in the actual case of anzcard.com, it was registered by someone in Vietnam, but had not yet been linked to a website, so the ANZ Bank saved the domain name by the skin of its teeth and retrieved the domain name before it had been used.

The arbitrator who decided the first ANZ Bank case on 17 August 2007, found that the domain name anzcard.com was likely to confuse people with the real ANZ name, that the person who registered it in Vietnam had no legitimate interest in the name and that he had registered and used it in bad faith. On the bad faith aspect the arbitrator said:

“In the circumstances of this case, (the cybersquatter’s) lack of active use of the domain name is likely to disrupt the business of (the Bank) since it could give those Internet users that will look for information on (the Bank) … the impression that (it) is not present on the Internet. By registering the domain name (the cybersquatter) further prevents (the Bank) from being present (on the internet) under a domain name that seems to be a natural domain name to use for (the Bank). … there appears to be no conceivable good faith use that could be made by (the cybersquatter) of the disputed domain name. “

So the ANZ Bank won and the domain name was transferred to it.

Other companies have not been so lucky. By the time some companies get hold of domain names, they have been linked to dodgy financial or pornography sites or, worse, the websites of their competitors. Indeed, this has happened to the ANZ Bank as will now be seen from the second case.


THE SECOND CASE –anzcards.com

In the second ANZ Bank case, decided at WIPO on 25 September 2007, someone in Mumbai in India had registered the domain name in the plural form, anzcards.com.

The arbitrator found in this case that the ANZ name and trademark must have been adopted to create the impression of an association with the ANZ Bank, its products and services.

Secondly, the arbitrator found there was bad faith because the domain name had been linked to financial services websites of a whole series of doubtful providers, giving rise to confusion with the ANZ and trading on that confusion to divert consumers away from the bank and into the arms of those rival sites.

Indeed, that is how the domain name has been used and apparently is still being used, even although the case has been decided. If you go to www.anzcards.com , you go into a new world of credit cards and other financial products, some of which are apparently links to rivals of the ANZ Bank.

If you put the word ‘adult’ in the search engine on the site, an even more exotic array of offerings is presented.

The danger, of course, is that some internet users will think that whatever is offered on a website with the name www.anzcards.com, comes with the approval or endorsement of the ANZ Bank.

The ANZ Bank succeeded in the second case as well as in the first and had the domain name transferred to it. But in the meantime, who knows what damage had been done or how many internet users had bought financial or other products through the site, believing they were using an official ANZ site.

THE LESSONS

So the lessons are: companies should try to prevent these problems from arising by making sure they have as many of their company names and services covered by domain names as possible - the registration fees will turn out to be a good investment.

But if the company’s name has been improperly used as a domain name, it should take legal advice quickly on how you can get it back where it belongs – with its rightful owner.

Companies should therefore conduct a regular audit of

* what domain names they have;

* what ones they could have;

* whether any possible names with misspellings, like ‘yarhoo’ or ‘cokacola’ have been registered, as is often the case.

Companies now just have to recognise that the costs of registering multiple domain names, even names that they will never use, is just one of the costs of doing business.

Mr Brown sits on panels in Geneva, the USA, Prague, Hong Kong and Kuala Lumpur to arbitrate on domain name disputes.


The Hon Neil Brown QC
(03) 9534 5436
0400 123 254
nabrownqc@yahoo.com

Wednesday, January 7, 2009

WIPO DOMAIN NAME CASES

Here are references to the domain name cases I have decided through the WORLD INTELLECTUAL PROPERTY ORGANISATION ( WIPO).

If you go to the WIPO website, which is www.wipo.int and follow the links to domain name cases you will find that you can type in the case number of the case. This will bring up the complete decision.

You will notice that some of the cases were 1-member decisions, meaning that I was a sole arbitrator on those cases and some of them are 3-member decisions, meaning that I was one of the three panellists who decided the case.


D2008-1401
D2008-0872
D2008-0686
D2008-0664
D2008-0653
D2008-0617
D2008-0323
D2007-1941
D2007-1940
D2007-1259
D2007-1204
D2007-0915
D2007-0898
D2007-0775
D2007-0769
D2007-0674
D2007-0629
D2007-0523
D2007-0465
D2007-0293
D2007-0166
D2006-1648
D2006-1619
D2006-1583
D2006-1432
D2006-1333
D2006-1280
D2006-1060
D2006-1052
D2006-0879
D2006-0877
D2006-0863
D2006-0830
D2006-0793
D2006-0680
D2006-0631
D2006-0418
D2006-0046
D2005-1212
D2005-1068
D2005-0989
D2005-0960
D2005-0703
D2005-0655
D2004-1072
D2004-1046
D2004-0980
D2004-0939
D2004-0909
D2004-0762
DAU2008-0009
DAU2007-0004
DAU2007-0003
DAU2004-0006
DWS2008-0006 D2008-1149
D2008-1133
D2007-1598
D2007-1293
D2007-1033
D2007-0856
D2007-0726
D2007-0292
D2006-0300
D2006-0001
DAU2008-0008
DAU2007-0009
DAU2006-0007

NATIONAL ARBITRATION FORUM CASES

Here are references to the domain name cases I have decided through the National Arbitration Forum ( NAF) .

If you go to the NAF website and follow the links to domain name cases you will find that you can type in the case number. The instructions will tell you how much of the full case number you must type in. This will bring up the complete decision.

FA Case Name

FA0507000520670 AAA Employment, Inc. v Ahearn and Associates
FA0508000545000 ACE Limited v Compel Corporation
FA0509000568488 Toyota Motor Sales, U.S.A., Inc. v Fleetrates.com aka company, fleetrates aka dealer.com
FA0510000583774 1451 International Ltd. and Second Renaissance, LLC v Steven Levine c/o DomainSystems, Inc.
FA0601000635276 Seagate Technology LLC v Wang Zhanfeng
FA0603000670051 Norgren, Inc. v Norgren, Inc. c/o Domain Administrator
FA0605000720824 Diners Club International Ltd. v Nokta Internet Technologies
FA0607000760086 Kohler Co. v Wesley Atkins aka Default Profile aka N/A:2c67phrv
FA0608000785586 Amazon.com, Inc. v .. c/o Jason Banks
FA0609000808341 International E-Z UP, Inc. v PNH Enterprises, Inc.
FA0611000836770 Digg Inc. v Damien Overeem
FA0611000852588 Food Express, Inc. v Nashville Boot Co.
FA0612000874264 First Look Studios, Inc. v New.net Incorporated
FA0702000921807 Genzyme Corporation v Texas International Property Associates
FA0702000925448 Tomsten Inc. v Registrant [7281] aka Star Access Inc. (SAI) Domains
FA0703000944807 Telecom Italia S.p.A. v NetGears LLC c/o Domain Admin
FA0705000977479 Borla Performance Industries, Inc. v Faster Than Them Corp
FA0706001008192 Windigo Systems v ChengLong Tang
FA0708001072907 Costas Spiliadis v Nicholas Androulidakis
FA0710001089020 Barnesandnoble.com LLC v John Frank Frank Rosenblum
FA0710001095192 Voip Review LLC v Nokta Internet Technologies
FA0712001116919 Cengage Learning Inc. v Steve Myers
FA0801001126736 Advanta Corp. v Michail Zournas
FA0802001143448 ACE Limited v WebMagic Ventures, LLC
FAO806001211342 Ginn Real Estate v. Hilton Weiner

CELEBRITIES AND THEIR DOMAIN NAMES



I thought I might mention that if you like you may have quite a long article I have written on the arbitration of domain name disputes concerning celebrities. The article deals with:

* the particular problems faced by celebrities in obtaining domain names in their own names

* how they can retrieve a domain name

* what they have to prove to have any prospect of success

* the importance of evidence, whether you are acting for a Complainant or a Respondent.

Simply send me an email at arbitrator.brown@gmail.com , say that you would like a copy of the article and I will send it to you.