World Intellectual Property Organization

WIPO Arbitration and Mediation Center - Domain Name Disputes (New gTLDs)

WIPO Guide to the Afilias Sunrise Registration Challenge Policy for .info


 

This Guide is merely provided as a matter of historical record. This Guide forms part of the Annex 9 to the WIPO End Report on Case Administration under the Affilias Sunrise Registration Challenge Policy for .info. The Sunrise challenges have been completed.


A. General Information

1) What is the Afilias Sunrise Registration Challenge Policy for .info?
1a) What are the most important new features of the revised Policy and Rules (effective December 5, 2001)?
2) Who can file Sunrise Challenges?
3) When can Sunrise Challenges be filed?
4) Where can Challenges be filed?
5) What types of disputes are covered by the Policy?
6) What qualifies as a trademark or service mark registration "of national effect"?
7) When is a domain name identical to the textual or word elements of a trademark or service mark?
8) Who decides a Challenge?
9) What remedies are available to a Sunrise Challenger?
10) What happens if more than one Sunrise Challenge is filed regarding the same domain name?
11) What happens to sunrise registrations that are obviously not in compliance with the sunrise registration conditions, but that are not challenged by anyone?
12) Is it possible to initiate a dispute under the UDRP against a domain name registered during the Sunrise Registration Period?
13) Can the domain name registrant transfer the domain name to someone else during the proceeding?


B. Overview of the Procedure

1) What are the various stages in the Sunrise Challenge Procedure?
2) How long does the Sunrise Challenge Procedure take?
3) How much does a Sunrise Challenge cost?
4) In what language is the Challenge procedure conducted?
5) Does the Sunrise Challenge Procedure provide for in-person hearings?
6) Will Challenges be posted on the Center’s web site?


C. Preparing and Filing a Challenge

1) To which dispute resolution service provider can Challenges be submitted?
2) How should a Challenge be submitted?

2a) Model Challenge Form
3) What is the coversheet referred to in Paragraph 3(x) of the Rules?
4) In what language should a Challenge be submitted?
5) Does the Challenge have to be prepared and submitted by a lawyer?
6) What information should be included in the Challenge?
6a) How does a Challenger requesting transfer of the domain name demonstrate compliance with the sunrise registration conditions?
6b) What are the correct contact details for submitting the trademark certificate?
7) Can a Challenge relate to more than one domain name?
8) Do any payments have to be made when filing the Sunrise Challenge?
9) How to determine the identity of the registrant of a domain name?
10) Can I submit further statements after having submitted the Challenge?
11) How will a Challenger know whether it is the Priority Challenger?
12) After the submission of a Challenge, how can the Challenger communicate with the Center?


D. Preparing and Filing a Response

1) Does the Respondent have to submit to the Challenge procedure?
2) How many days does a Respondent have to file a Response?
3) What happens if a Response is not filed or not filed on time?
4) How should a Response be submitted?
4a) Model Response Form
5) In what language should the Response be submitted?
6) Does the Response have to be prepared and submitted by a lawyer?
7) What information should be included in the Response?
8) How to demonstrate compliance with the sunrise registration conditions?
9) Does the Response have to be certified or notarized?
10) Do any fees have to be paid when submitting the Response?
11) What are the correct contact details for submitting the Response?
12) Is it possible to submit further statements after having submitted the Response?
13) After the submission of a Response, how can the Respondent communicate with the Center?

E. Preparing and Filing a CLR Response (Challenges of Last Resort)

1) CLR Response Filing Guidelines
2)
CLR Response Form

F. The Decision

1) Who decides a Sunrise Challenge?
2) What decisions can the Center take?
3) Can the Center award any monetary amounts?
4) How long does it take to get a decision?
5) How will a decision in favor of the Challenger be implemented?
6) Is it possible to settle a pending Sunrise Challenge?


G. Fees

What are the fees for a Sunrise Challenge?

 


 

A. General Information

1) What is the Afilias Sunrise Registration Challenge Policy for .info?

The Afilias Sunrise Registration Challenge Policy for .info (the "Policy") has been adopted by Afilias, the operator of the .info registry. The Policy is incorporated by reference into all .info sunrise registration agreements. Thus, registrants who have registered a domain name during the sunrise registration period (i.e. between July 25 and August 27, 2001) must submit to Challenge proceedings initiated against them by a third party asserting that the registration does not comply with the sunrise registration conditions set forth in the Registration Agreement and in Paragraph 4(a) of the Policy.

Such Challenge proceedings are governed by the Afilias Rules for Sunrise Registration Policy for .info (the "Rules"), and administered exclusively by the WIPO Arbitration and Mediation Center (the "Center").

On November 20, 2001 Afilias has posted a revised version of the Policy and Rules. These revisions have been approved by ICANN and, pursuant to Paragraph 7 of the Policy, become effective fifteen (15) days after that posting. The revised Policy and Rules apply to all Sunrise Challenges filed on or December 5, 2001 (12 noon, Geneva time).

Upon expiry of the Sunrise Challenge Period, domain names registered during the Sunrise Registration Period will be subject to the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP also applies to all domain names registered in the .info registry after the Sunrise Registration Period (i.e. as of September 12, 2001).

1a) What are the most important new features of the revised Policy and Rules (effective December 5, 2001)?

Under the revised Policy, Challengers requesting transfer are, in addition to submitting the Challenge, also required to prove their compliance with the sunrise registration conditions (Paragraph 4(b) and (c) of the Policy) by submitting an original or a certified copy of a trademark certificate. The certificate must demonstrate that

(i) at the time of the original registration of the domain name, a current (non-expired) trademark or service mark registration was issued in the name of the Challenger; and

(ii) the textual or word elements of the Challenger’s trademark or service mark registration are identical to the domain name; and

(iii) the Challenger's trademark or service mark registration is of national effect; and

(iv) the Challenger's trademark or service mark registration was issued prior to October 2, 2000.

Such certificate must, pursuant to Paragraph 3(e) of the Rules, be submitted no later than 60 days of the commencement of the administrative proceeding (i.e. the date when the Challenge is notified to the Respondent with copy to the Challenger, Paragraph 4(c) of the Rules). If the Challenger was not the Priority Challenger, but is notified of its opportunity to register the domain name in accordance with Paragraph 4(e)(iii) of the Policy, the certificate must be submitted no later than 60 days of that notification (Paragraph 3(e) of the Rules).

As to the decisions that the Center can take under the revised Policy and Rules, please refer to section E2 of this Guide.

2) Who can file Sunrise Challenges?

Any person or legal entity, such as a company, can initiate a Sunrise Challenge procedure concerning a .info domain name registered during the Sunrise Registration Period. Challengers seeking transfer of such a domain name must, in the course of the proceeding, provide a trademark certificate proving their compliance with the sunrise registration conditions (Paragraph 4(b) and (c) of the Policy).

3) When can Sunrise Challenges be filed?

Sunrise challenges can only be submitted between August 28, 2001 and December 26, 2001. This sunrise challenge period started on August 28, 2001, 12 noon, Geneva time and ends on December 26, 2001.

4) Where can Challenges be filed?

Sunrise Challenges can only be filed with WIPO. Challenges have to be submitted in electronic form via the Internet using the challenge form provided by WIPO. Trademark certificates required to be filed by Challengers seeking transfer of the disputed domain name, shall be submitted in accordance with the Filing Guidelines (see section C6b).

5) What types of disputes are covered by the Policy?

The Policy covers disputes over the entitlement to register a domain name during the Sunrise Registration Period. To qualify for a sunrise registration, the applicant for a domain name must have a registered trademark of national effect that issued before 2 October 2000, and the trademarked word(s) must exactly match the domain name (see Paragraph 4(a) of the Policy). Compliance with these requirements is not examined at the time of the domain name registration, but non-compliance can be asserted by any third party in a Sunrise Challenge. Thus, Paragraph 4(a) of the Policy states that Sunrise Challenges have to be based on at least one of the following grounds:

(i) at the time of the registration of the domain name, no current (non-expired) trademark or service mark registration was issued in the name of the registrant; or

(ii) the domain name is not identical to the textual or word elements of the trademark or service mark registration on which the registration of the domain name is based; or

(iii) the trademark or service mark registration on which the registration of the domain name is based is not of national effect; or

(iv) the trademark or service mark registration on which the registration of the domain name was based did not issue prior to October 2, 2000.

6) What qualifies as a trademark or service mark registration "of national effect"?

The Center will consider trademark registration certificates issued by national trademark authorities. European Community Trademarks also meet the condition of national effect. United States state trademarks or service marks do not meet the condition of national effect, nor does a registration in the supplemental register of the United States Patent and Trademark Office.

7) When is a domain name identical to the textual or word elements of a trademark or service mark?

The domain name must exactly match the word elements of the mark as registered. There is only one exception to that rule: identity will also be deemed to exist where there is a space between the textual or word elements of the mark (e.g., service mark) and a hyphen is used or the elements are combined in the domain name (e.g., service-mark.info, servicemark.info).

8) Who decides a Challenge?

The Challenge will be decided by the Center. There will be no external panelists. The Center's decision is of an administrative nature and will be based solely on a prima facie examination of any trademark or service mark certificates submitted by the Respondent or by a Challenger seeking transfer of the domain name (Paragraph 4(e) of the Policy). The Center may, in its sole discretion, decide to consult relevant intellectual property offices.

9) What remedies are available to a Sunrise Challenger?

The remedies available to a Challenger are limited to requiring the cancellation of the domain name registration or the transfer of the domain name registration to the Challenger.

In the event the Respondent has failed to establish its compliance with the sunrise registration conditions, a Challenger who has requested transfer of the domain name, and has established compliance with the sunrise registration conditions, will be given an opportunity to register the domain name in its name within 10 days of the notification of the authorization code (see E5, and Paragraph 11(b) of the Rules).

If the Challenger has successfully requested a cancellation, the Center will proceed to the next Challenger in the queue, if any, requesting transfer. Such Challenger will be given the opportunity to register the domain name, provided

  • it has submitted a Challenge which is in formal compliance with the Policy and the Rules;
  • it has paid the non-refundable Challenger's fee of USD 75; and
  • the Center has determined, on the basis of the original or a certified copy of a trademark certificate submitted by the Challenger no later than 60 days after the notification by the Center, that the Challenger complies with the sunrise registration conditions.

If, upon the expiry of the Sunrise Challenge Period on December 26, 2001, there are no such Challengers in the queue, the domain name will be returned to Afilias which will develop procedures for making such domain names available to the general public at a later date (Paragraph 4(e)(iv) of the Policy).

10) What happens if more than one Sunrise Challenge is filed regarding the same domain name?

The Center will queue the Sunrise Challenges in accordance with the date and time they were received. The first Challenge received will be taken up as the Priority Challenge (Paragraph 4(d) of the Policy). The fate of the subsequent Challenges depends on the outcome of the Priority Challenge (Paragraph 4(e) of the Policy):

(i) If the Priority Challenge is withdrawn or terminated for any other reason, the next Challenge in the queue will be taken up as the new Priority Challenge;

(ii) If the Respondent can prove that the disputed domain name was registered in compliance with the sunrise registration conditions, the Priority Challenge and all subsequent Challenges will be dismissed and no further Sunrise Challenges will be accepted;

(iii) If the Respondent fails to pay the required fee, does not submit a Response, or cannot prove compliance with the sunrise registration conditions, the Priority Challenge is granted. However, if the Priority Challenger has requested transfer, such transfer will only be granted if the Center has determined, on the basis of a trademark certificate submitted by the Challenger, that the Challenger complies with the sunrise registration conditions set forth in Paragraph 4(c) of the Policy;

(iv) If the prevailing Challenger sought a cancellation or if neither party established its compliance with the sunrise registration conditions, the Center will proceed to the next Challenger in the queue, if any, requesting transfer. Such Challenger will be given the opportunity to register the domain name, provided

  • it has submitted a Challenge which is in formal compliance with the Policy and the Rules;
  • it has paid the non-refundable Challenger’s fee of USD 75; and
  • the Center has determined, on the basis of the original or a certified copy of a trademark certificate submitted by the Challenger no later than 60 days after the notification by the Center, that the Challenger complies with the sunrise registration conditions.

11) What happens to sunrise registrations that are based on inadequate trademark information after the end of the Sunrise Challenge Period?

Afilias has announced its intention to challenge, after the end of the Sunrise Challenge Period (which ends on December 26, 2001), Sunrise registrations that appear to have been made on the basis of inadequate trademark information. On November 20, 2001, Afilias has posted a revised Sunrise Challenge Policy and Rules in which these challenges are referred to as "Challenges of Last Resort" (see in particular Policy, para.1 and Rules para.1). Such Challenges may include domain names that were transferred as a result of successful Sunrise Challenges under the previous version of the Policy (which did not require Challengers to prove compliance with the sunrise registration conditions in the administrative proceeding). Domain names that are cancelled as a result of those Challenges of Last Resort will be returned to the pool of available domain names by Afilias at a later time.

12) Is it possible to initiate a dispute under the UDRP against a domain name registered during the Sunrise Registration Period?

Afilias has indicated that, during the Sunrise Challenge Period (i.e. between August 28 and December 26, 2001), dispute resolution providers should not accept UDRP claims regarding domain names registered during the Sunrise Registration Period.

13) Can the domain name registrant transfer the domain name to someone else during the proceeding?

According to Paragraph 6(a) of the Policy, a domain name that was registered during the Sunrise Registration Period cannot be transferred to a new holder until all Challenges brought against that domain name have been resolved. The domain name registrant may, however, transfer the domain name to the Priority Challenger in a pending Challenge procedure in the event of a settlement of the dispute, provided that the Center has determined, on the basis of a trademark certificate submitted by the Priority Challenger, that the Priority Challenger complies with the sunrise registration conditions.

 

B. Overview of the Procedure

1) What are the various stages in the Sunrise Challenge Procedure?

(i) Filing of a Challenge with WIPO including payment by credit card of the fixed Challenge fee of USD 75 and the refundable Challenge fee of USD 220; the refundable fee will be debited from the Priority Challenger only.

(ii) Notification of the Challenge to the Respondent requesting it to pay the Respondent’s fee of USD 295 within 10 days, and to file a Response within 60 days. If the Respondent does not pay or does not file a Response, it is in default. Challengers seeking transfer are required to submit the original or a certified copy of a trademark certificate proving their compliance with the sunrise registration conditions no later than 60 days after the notification of the Challenge.

(iii) Decision by the Center, which will use reasonable efforts to decide upon a Challenge within 20 days of the receipt of the Response.

(iv) Implementation of the Decision, with possible follow-up in terms of subsequent Challengers.

2) How long does the Sunrise Challenge Procedure take?

Depending on the date of submission of a Response a Challenge procedure relating to one Challenge should normally be completed within 100 days. The final disposition of a domain name will, however, depend on whether any other Challenges are filed in relation to the same name. No Sunrise Challenges will be accepted and taken up after December 26, 2001.

3) How much does a Sunrise Challenge cost?

The Challenger must pay USD 295 at the time of filing the Challenge by providing credit card information on the Challenge form. This amount consists of a non-refundable fee of USD 75 and a refundable fee of USD 220. The fee must be paid by credit card at the time the Challenge is submitted. If there is more than one Challenger, the non-refundable fee of USD 75 must be paid by every Challenger, whereas the refundable fee of USD 220 will only debited to the credit card of the Priority Challenger. If the Center is not satisfied that the fee has been paid within 15 days of the filing of the Challenge, the Challenge will be dismissed. If the Challenger obtains a requested cancellation or transfer, the Challenger will receive a refund of USD 220, provided that the Respondent has paid the Respondent’s fee.

The Respondent must also pay USD 295 by credit card within 10 days after the notification of Challenge has been sent. For this purpose, the Respondent must provide credit card information using the specific Respondent payment form made available by the Center. If the Respondent fails to provide the required credit card information within that period, the Center will send a reminder requiring payment within 10 further days. If the Center is not satisfied that the fee has been paid within that period, the Challenge will be granted. However, if the prevailing Priority Challenger has requested transfer, such transfer will only be granted if the Center has determined, on the basis of a trademark certificate submitted by the Challenger, that the Challenger complies with the sunrise registration conditions set forth in Paragraph 4(c) of the Policy.

If the Respondent has paid the fee and has established that it has registered the disputed domain name in compliance with the sunrise registration conditions, the Respondent’s fee will be refunded.

All payments to be made in connection with Sunrise Challenges must be effected online by credit card. The Center is under no obligation to consider payment effected by any other means. The fees described above do not include any payments that might have to be made to a lawyer representing a party in an administrative procedure initiated by a Challenge.

For further details, please consult Paragraph 13 of the Rules and the Schedule of Fees.

4) In what language is the Challenge procedure conducted?

Unless otherwise agreed by the Center in exceptional circumstances, the language of an administrative procedure initiated by a Challenge shall be English. Any trademark or service mark certificates submitted by a Party in a language other than English must be accompanied by a certified translation into English.

5) Does the Sunrise Challenge Procedure provide for in-person hearings?

There shall be no in-person hearings, including hearings by teleconference, video conference and web conference (Paragraph 8 of the Rules).

6) Will Challenges be posted on the Center’s web site?

Every Challenge will be assigned a number that will be posted together with the challenged domain name. For Priority Challenges, the Center will also post: the names of the Challenger and the Respondent as well as the result of the case.

 

C. Preparing and Filing a Challenge

1) To which dispute resolution service provider can Challenges be submitted?

Administrative procedures initiated by a Challenge are exclusively administered by WIPO. Hence, Challenges can only be submitted to the Center (Paragraph 4 of the Policy). Acknowledgement copies of the Challenge are automatically transmitted via the Internet to the e-mail addresses provided in the Challenge for the Respondent, the concerned Registrar and to Afilias, the Registry Operator (Paragraph 3(c)(x) of the Rules).

2) How should a Challenge be submitted?

Challenges have to be submitted in electronic form via the Internet using the Challenge form provided by WIPO (see Paragraph 3(b) of the Rules). When this form is submitted, copies of the Challenge are sent automatically to the e-mail addresses provided in the Challenge for the Respondent, the Registrar and the Registry. The Center is under no obligation to admit manifestly incomplete Challenges.

Challengers seeking transfer of the disputed domain name are required to submit, in addition to the Challenge, originals or certified copies of trademark certificates demonstrating their compliance with the sunrise registration conditions (Paragraph 4(b) and (c) of the Policy). Such certificates must be submitted no later than 60 days after the commencement of the administrative proceeding as notified to the Parties (Paragraph 3(e) of the Rules). One original and two copies of the certificate must be sent to the Center by postal or courier service (postage pre-paid and return receipt requested). The Challenger must also send one hardcopy of the certificate by postal or courier service (postage pre-paid and return receipt requested) to the Respondent. Please consult the Filing Guidelines for further details.

2a) Model Challenge Form

3) What is the coversheet referred to in Paragraph 3(c)(x) of the Rules?

The coversheet is provided as the introductory text within the Challenge form provided by the Center. By submitting the form, Challengers comply with Paragraph 3(c)(x) of the Rules.

4) In what language should a Challenge be submitted?

The Challenge may only be submitted in English. Any trademark or service mark certificates submitted by a Challenger in a language other than English must be accompanied by a certified translation into English (see Paragraph 6 of the Rules).

5) Does the Challenge have to be prepared and submitted by a lawyer?

While the assistance of a lawyer may be helpful, there is no requirement that the Challenge be prepared or submitted by a lawyer or any other representative. The Challenger must, in the Challenge form, provide the name and contact details for all communications in relation to the Challenge procedure.

6) What information should be included in the Challenge?

The information that must be included in the Challenge is described in Paragraph 3(c) of the Rules. The Challenge form contains specific fields for all elements to be included in the Challenge. Challengers seeking transfer of the disputed domain name are also required to submit the original or a certified copy of a trademark certificate proving their compliance with the sunrise registration conditions. Such certificate must be submitted no later than 60 days after the date on which the Center has notified the Challenge to the Respondent with a copy to the Challenger (Paragraph 3(e) of the Rules).

6a) How does a Challenger requesting transfer of the domain name demonstrate its compliance with the sunrise registration conditions?

According to Paragraph 4(b) of the Policy, a Challenger seeking transfer of the domain name must submit an original or a certified copy of a trademark or service mark certificate establishing that:

(i) at the time of the original registration of the domain name, a current (non-expired) trademark or service mark registration was issued in the name of the Challenger; and

(ii) the textual or word elements of the Challenger’s trademark or service mark registration are identical to the domain name; and

(iii) the Challenger’s trademark or service mark registration is of national effect; and

(iv) the Challenger’s trademark or service mark registration was issued prior to October 2, 2000.

Copies of trademark certificates must have been certified by the Trademark Office with which the mark is registered. If any of the submitted certificates is in a language other than English, it must be accompanied by a certified translation into English (Paragraph 6(b) of the Rules).

6b) What are the correct contact details for submitting the trademark certificate?

The hardcopies must be sent as follows:

  • One original or certified copy and two copies of the trademark certificate by postal or courier service (postage pre-paid and return receipt requested) to:

WIPO Arbitration and Mediation Center
34 chemin des Colombettes
1211 Geneva 20
Switzerland

  • One hard copy of the certificate by postal or courier service (postage pre-paid and return receipt requested) to the Respondent using the contact details provided in the Afilias WHOIS, or any other address provided by the Respondent.

There is no need to send the certificate to the Registrar or to the Registry. Please consult the Challenge Filing Guidelines for further details.

7) Can a Challenge relate to more than one domain name?

No, see Paragraph 3(d) of the Rules. Likewise, .info Challenges cannot be combined with complaints relating to other Top Level Domains (TLDs).

8) Do any payments have to be made when filing the Sunrise Challenge?

Yes. The Challenger must provide credit card information in Section IX of the Challenge form. The Center will debit USD 75 from every Challenger and an additional amount of USD 220 from the Priority Challenger (see Paragraph 13 of the Rules).

9) How to determine the identity of the registrant of a domain name?

Registration information can be obtained by conducting a Whois search.

10) Is it possible to submit further statements after having submitted the Challenge?

Unless otherwise requested or agreed by the Center in exceptional circumstances, no further statements or documents are to be submitted (Paragraph 7 Rules).

11) How will a Challenger know whether it is the Priority Challenger?

The Center will queue the Sunrise Challenges in accordance with the date and time they were received. The Center will notify each Challenger of its position in the queue.

12) After the submission of a Challenge, how can the Challenger communicate with the Center?

All further case-related communications must be made by e-mail through info.sunrise@wipo.int. In all such communications, the subject line of the e-mail must indicate the case number as well as the domain name in dispute.

 

D. Preparing and Filing a Response

1) Does the Respondent have to submit to the Challenge procedure?

The Respondent’s obligation to submit to the Challenge procedure follows from the agreement which the domain name registrant entered into when registering the domain name. If no Response is submitted, the Center will decide in favor of the Challenger (Paragraph 5(f) of the Rules). However, if the Challenger has requested transfer of the domain name, the transfer will only be granted if the Center has determined, on the basis of a trademark certificate submitted by the Challenger, that the Challenger complies with the sunrise registration conditions.

2) How many days does a Respondent have to file a Response?

According to Paragraphs 5(a) and 13 of the Rules, the Respondent must pay the Respondent’s fee within 10 days and, according to Paragraph 5(b) of the Rules, must file its Response within 60 days of the commencement of the Challenge proceeding. A Challenge proceeding is deemed to have formally commenced once the Center has notified the Challenge to the Respondent with a copy to the Challenger (Paragraph 4(c) of the Rules). In exceptional cases, the Center may, at the request of the Respondent, extend the period of time for the filing of the Response (Paragraph 5(e) of the Rules).

3) What happens if a Response is not filed or not filed on time?

If the Respondent does not pay the Respondent’s fee in accordance with Paragraph 13(b) of the Rules, or does not submit a Response, the Respondent will be considered in default and the Challenge will be granted (Paragraph 5(f) of the Rules). Likewise, if a Respondent does not submit the Response in time, the Center, unless it finds exceptional circumstances apply, shall proceed to a decision on the Challenge (Paragraph 9(a) of the Rules). If the Challenger has requested transfer of the domain name, such transfer will only be granted if the Center has determined, on the basis of a trademark certificate submitted by the Challenger, that the Challenger complies with the sunrise registration conditions.

4) How should a Response be submitted?

The Response shall be submitted to the Center in hard copy (with annexes) in three sets (Paragraph 2(j) of the Rules) by postal or courier service (postage pre-paid and return receipt requested), and in electronic form (without annexes) via the Internet using the Response form made available by the Center (Paragraph 5(c) of the Rules). Acknowledgement copies of the Response will be sent automatically via the Internet to the e-mail addresses provided in the Response for the Respondent and the Challenger.

The Respondent must also send a hard copy of the Response including annexes to the Challenger using the preferred contact details provided in the Challenge.

4a) Model Response Form

5) In what language should the Response be submitted?

The Response must be submitted in English. Any trademark or service mark certificates in a language other than English submitted by the Respondent must be accompanied by a certified translation into English (see Paragraph 6 of the Rules).

6) Does the Response have to be prepared and submitted by a lawyer?

While the assistance of a lawyer may be helpful, there is no requirement that the Response be prepared or submitted by a lawyer. The Respondent must, in the Response form, provide the name and contact details for all communications in relation to the Challenge procedure.

7) What information should be included in the Response?

The information to be included in the Response is described in Paragraph 5(d) of the Rules. The Response form contains specific fields for all elements to be included in the Response.

8) How to demonstrate compliance with the sunrise registration conditions?

According to Paragraph 4(c) of the Policy, the Respondent has to submit, as part of the Response, an original or a certified copy of a trademark or service mark certificate establishing that:

(i) at the time of the registration of the domain name, a trademark or service mark was registered in the Respondent’s name and was current (non-expired), as evidenced by the date(s) set forth in the certificate itself; and

(ii) the textual or word elements of the trademark or service mark registration are identical to the domain name; and

(iii) the trademark or service mark registration is of national effect; and

(iv) the trademark or service mark registration issued prior to October 2, 2000.

Copies of trademark certificates must have been certified by the Trademark Office with which the mark is registered. If any of the submitted certificates is in a language other than English, it must be accompanied by a certified translation into English (Paragraph 6(b) of the Rules).

The Response should also reply specifically to the statements and allegations contained in the Challenge.

The Center’s determination of whether the Respondent’s registration meets the sunrise registration conditions is independent of the Center’s determination of whether a Challenger seeking transfer complies with the sunrise registration conditions.

The Center’s decision will be based solely on a prima facie examination of the submitted trademark or service mark certificates (Paragraph 4(e) of the Policy, Paragraph 10(a) of the Rules). The Center may, however, decide to consult relevant intellectual property offices.

9) Does the Response have to be certified or notarized?

Only copies of trademark or service mark certificates submitted by the Respondent have to be certified by the Trademark Office with which the mark is registered (Paragraph 4(b) of the Policy). The hard copy of the Response must be signed by the Respondent or its authorized representative.

10) Do any fees have to be paid when submitting the Response?

According to Paragraphs 5(a) and 13(b) of the Rules, the Respondent must pay the Respondent’s fee within 10 days of the commencement of the Challenge proceeding whereas, whereas it has 60 days to file its Response under Paragraph 5(b) of the Rules. For this purpose, the Respondent must provide credit card information using the specific Respondent payment form made available by the Center. Please note the consequences of payment default as described in section D3.

11) What are the correct contact details for submitting the Response?

The hardcopies must be sent as follows:

  • One signed original and two copies of the Response and all attachments by postal or courier service (postage pre-paid and return receipt requested) to:

WIPO Arbitration and Mediation Center
34 chemin des Colombettes
1211 Geneva 20
Switzerland

  • One hard copy of the Response and all attachments by postal or courier service (postage pre-paid and return receipt requested) to the Challenger using the preferred contact details provided in the Challenge.

The electronic versions must be submitted without annexes via the Internet using the Response form made available by the Center. When the online Response form is submitted, a copy is sent automatically via the Internet to the e-mail address provided in the Response for the Challenger. There is no need to send the Response to the Registrar or to the Registry. Please consult the Response Filing Guidelines for further details.

12) Is it possible to submit further statements after having submitted the Response?

Unless otherwise requested or agreed by the Center in exceptional circumstances, no further statements or documents are to be submitted (Paragraph 7 of the Rules).

13) After the submission of a Response, how can the Respondent communicate with the Center?

All further case-related communications must be made by e-mail through info.sunrise@wipo.int. In all such communications, the subject line of the e-mail must indicate the case number as well as the domain name in dispute.

 

E. Preparing and Filing a CLR Response (Challenges of Last Resort

1) CLR Response Filing Guidelines

Challenges of Last Resort (CLR) refer to Challenges initiated by the Registry, Afilias Limited, after the conclusion of the Sunrise Challenge Period. Such Challenges are numbered "Dinfo2002-*****-0001". Respondents to Challenges of Last Resort must use the CLR Response Form and the CLR Respondent Payment Form.

A Response must be submitted in hardcopy (with annexes) by postal or courier service and in electronic form (without annexes) via the Internet using the CLR Response form provided by WIPO.

When the online CLR Response form is submitted, a copy is sent automatically via the Internet to the Challenger, Afilias Limited. Furthermore, the Respondent receives an automatic confirmation message both on-screen and per e-mail to the address it has provided in the form. The confirmation message contains the full text of the Response as received by the Center. This text can be printed and used as the hardcopy to be submitted, together with attached trademark certificates, to the Center and the Challenger, Afilias Limited.

2) CLR Response Form

F. The Decision

1) Who decides a Sunrise Challenge?

The Challenge is decided by the Center (Paragraph 4(e) of the Policy). There are no external panels. The Center's decision is of an administrative nature. The Center's decision of whether the sunrise registration conditions are met will be based solely on a prima facie examination of any trademark or service mark certificates submitted by either Party (Paragraph 4(e) of the Policy). The Center may, in its sole discretion, decide to consult relevant intellectual property offices. According to Paragraph 10 (c) of the Rules, the Center is not required to state reasons for its decision.

2) What decisions can the Center take?

(i) If the Center finds that the Respondent (i.e. the domain name registrant) has registered the domain name in compliance with the sunrise registration conditions, it will dismiss the Priority Challenge as well as all other Challenges in the queue, if any (Paragraph 4(e)(i) of the Policy);

(ii) If the Challenger had requested transfer of the disputed domain name and if the Center finds that the Challenger, but not the Respondent, has proven compliance with the sunrise registration conditions, the Center will order that the domain name be transferred (Paragraph 4(e)(ii) of the Policy) and terminate all other Challenges in the queue, if any;

(iii) If the Challenger had requested cancellation, or if neither Party established compliance with the sunrise registration conditions, or if a prevailing Challenger failed to implement a transfer ordered by the Center, the Center will proceed to the next Challenger in the queue requesting transfer of the domain name, if any. Such Challenger will be granted the opportunity to register the domain name in its name, provided

  • it has submitted a Challenge which is in formal compliance with the Policy and the Rules;
  • it has paid the non-refundable Challenger’s fee of USD 75; and
  • the Center has determined, on the basis of the original or a certified copy of a trademark certificate submitted by the Challenger no later than 60 days after the notification by the Center, that the Challenger complies with the sunrise registration conditions.

The above procedure will be continued until the domain name has been registered in the name of a Challenger in the queue, or until there are no further Challengers in the queue. If, upon the expiry of the Sunrise Challenge Period, there are no further Challengers in the queue, the domain name will be returned to Afilias which will develop procedures for making such domain names available to the general public at a later date (Paragraph 4(e)(iv) of the Policy).

3) Can the Center award any monetary amounts?

No. The Center cannot award money judgments nor lawyers’ costs.

4) How long does it take to get a decision?

According to Paragraph 10(b) of the Policy, the Center will use reasonable efforts to decide upon a Challenge within twenty (20) days (as observed at the Center’s place of business) of the receipt of all submissions to be made under the Policy and the Rules or of the expiry of the deadline for such submissions. The Center will also use reasonable efforts to decide any Challenge of Last Resort as soon as possible under the circumstances.

5) How will a decision in favor of the Challenger be implemented?

Once a decision is taken, the Center communicates this decision to the Parties, the Registrar and the Registry (Paragraph 11(a) of the Rules).

In the event that the Respondent failed to demonstrate its compliance with the sunrise registration conditions, and if the prevailing Challenger has requested transfer of the disputed domain name, and if the Center has determined the Challenger’s compliance with the sunrise registration conditions, the Center will provide that Challenger with an authorization code generated by the Registry (Paragraph 4(l) of the Policy, Paragraph 11(b) of the Rules). This code will allow the Challenger to register the domain name in its own name with a Registrar of its choice. A list of Registrars authorized to register .info domain names is provided by Afilias. The registration has to be effected within 10 days of the date on which the authorization code was sent to the Challenger. If the Challenger fails to register the domain name during that period, the Center will proceed to the next Challenger in the queue who has requested transfer and has demonstrated its compliance with the sunrise registration conditions (see E2 above). If, upon the expiry of the Sunrise Challenge Period, there are no such further Challengers in the queue, Afilias will determine how to release the domain name to the general public (Paragraph 4(e)(iv) of the Policy).

If the prevailing Challenger has requested cancellation of the disputed domain name, the Center will offer the domain name, together with an authorization code, to the next Challenger in the queue who has requested transfer and has demonstrated its compliance with the sunrise registration conditions (see E2 above). If, upon the expiry of the Sunrise Challenge Period, there are no such further Challengers in the queue, Afilias will determine how to release the domain name to the general public (Paragraph 4(e)(iv) of the Policy).

6) Is it possible to settle a pending Sunrise Challenge?

Parties who have settled a pending Challenge must notify the Center of the settlement. An agreement to transfer the domain name to the Challenger can only be implemented if the Center has determined, on the basis of a trademark certificate submitted by the Challenger, that the Challenger complies with the sunrise registration conditions. In that case, the Center will terminate all other Challenges in the queue, if any. The implementation of such an agreement is subject to the procedure for transfer decisions (see E5). The Center will provide an authorization code to the Challenger and will terminate the Challenge proceeding. Any fees paid by the Parties will be deemed forfeited (Paragraph 12 of the Rules).

 

G. Fees

What are the fees for a Sunrise Challenge?

The Challenger must pay USD 295 at the time of filing the Challenge. This amount consists of a non-refundable fee of USD 75, and a refundable fee of USD 220. The Challenger must provide credit card information in the Challenge form. If there is more than one Challenger, the non-refundable fee of USD 75 must be paid by every Challenger, whereas the refundable fee of USD 220 will only be debited to the credit card of the Priority Challenger. If the Center is not satisfied that the fee has been paid within 15 days of the filing of the Challenge, the Challenge will be dismissed. If the Challenger obtains a requested cancellation or transfer, the Challenger will receive a refund of USD 220, provided that the Respondent has paid the Respondent’s fee.

The Respondent must also pay USD 295 by credit card within 10 days after the notification of Challenge has been sent. For this purpose, the Respondent must provide credit card information using the specific Respondent payment form made available by the Center. If the Respondent fails to provide the credit card information within that period, the Center will send a reminder requiring payment within 10 further days. If the Center is not satisfied that the fee has been paid within that period, the Challenge will be granted. However, if the Priority Challenger has requested transfer, such transfer will only be granted if the Center has determined, on the basis of a trademark certificate submitted by the Challenger, that the Challenger complies with the sunrise registration conditions set forth in Paragraph 4(c) of the Policy.

If the Respondent has paid the Respondent’s fee and has established that it has registered the disputed domain name in compliance with the sunrise registration conditions, the Respondent’s fee will be refunded.

All payments to be made in connection with Sunrise Challenges have to be effected online by credit card. The Center is under no obligation to consider payment effected by any other means. For further details, please consult Paragraph 13 of the Rules and the Schedule of Fees.

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