WIPO Guide to the RegistryPro Intellectual Property Defensive Registration Challenge Policy for .pro
(valid as of June 1st, 2003)
Filing a Challenge
Filing a Response
The RegistryPro Intellectual Property Defensive Registration Challenge Policy for .pro (the "Policy") has been adopted by RegistryPro, the operator of the .pro registry in consultation with ICANN. Any questions relating to the adoption, publication or implementation of the Policy in its applicable form should be directed to RegistryPro. The Policy is incorporated by reference into all .pro IP Defensive Registration Agreements. Thus, registrants who have registered an IP Defensive Registration must submit to Challenge proceedings initiated against them by a third party, no later than six months after the date of the IP Defensive Registration, asserting that the registration does not comply with the IP Defensive Registration Conditions set forth in the Registration Agreement and in Paragraph 4(a) of the Policy.
If an IP Defensive Registration has been converted into a .pro domain name, such domain name can also be the subject of an IP Defensive Registration Challenge proceeding for a period of six months following the date of registration of the original IP Defensive Registration. As long as a domain name is, or can be, the subject of an IP Defensive Registration Challenge, it shall not be the subject of a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP), Policy, 4(a).
Challenge proceedings are governed by the RegistryPro Rules for IP Defensive Registration Challenge Policy for .pro (the "Rules"), and administered exclusively by the WIPO Arbitration and Mediation Center (the "Center").
The Policy covers disputes over the entitlement to register an IP Defensive Registration. To qualify for an IP Defensive Registration, the applicant must have a registered trademark of national effect, and the trademarked word(s) must exactly match the IP Defensive Registration. If the IP Defensive Registration was registered during the Sunrise Period, i.e. before the live date (to be anounced by RegistryPro), the trademark, in addition to the above requirements, must have been registered before September 30, 2003. (see Paragraph 4(a) of the Policy).
Compliance with these requirements is not examined at the time of the IP Defensive Registration, but non-compliance can be asserted by any third party in an IP Defensive Registration Challenge. Thus, Paragraph 4(a) of the Policy states that IP Defensive Registration Challenges have to be based on at least one of the following grounds:
(i) at the time of the registration of the IP Defensive Registration, no current (non-expired) trademark or service mark registration was issued in the name of the registrant; or
(ii) the IP Defensive Registration is not identical to the textual or word elements of the trademark or service mark registration on which the IP Defensive Registration is based; or
(iii) the trademark or service mark registration on which the IP Defensive Registration is based is not of national effect; or
(iv) the trademark or service mark registration on which the IP Defensive Registration was based did not issue prior to September 30, 2003. (Applicable only for IP Defensive Registrations submitted during the Sunrise Registration Period.)
Filing of a Challenge
Any person or legal entity (the "Challenger") can initiate a Challenge procedure concerning an IP Defensive Registration. Challenges can be filed as of June 1, 2003 and must be submitted no later than six months following the date on which the disputed IP Defensive Registration was first registered. The Challenge must be submitted via Internet using the online Challenge form. The Center is not obliged to accept challenges filed by any other means. The Challengers seeking transfer of an IP Defensive Registration must, in the course of the proceeding, provide a trademark certificate proving their compliance with the IP Defensive Registration Conditions (Paragraph 4(b) and (c) of the Policy).
Challenges are subject to the payment of a fixed fee of USD500. Payment must be made by credit card using the online payment form which forms part of the Online Challenge Form. The Center is not obliged to accept payment made by any other means.
In the event one or more Challenges are submitted to the Center regarding an IP Defensive Registration that is already the subject of a pending Challenge, all such Challenges will be queued in accordance with the date and time they were received by the Center. The first Challenge to be filed will be granted priority, provided the Center is satisfied that the Challenger concerned paid the Challenger's fee in accordance with the Rules. If a Challenge is terminated without a determination by the Center regarding the Respondents compliance with the IP Defensive Registration Conditions, the Center will proceed with the next Challenge it received regarding such IP Defensive Registration. If this next Challenger has requested transfer, the transfer will be granted provided that the Center has determined, on the basis of a trademark certificate submitted by this Challenger, that the Challenger complies with the IP Defensive Registration Conditions and has paid the corresponding Challenge fee of USD500.
Filing of a Response
The Registrant (Respondent) of an IP Defensive Registration is required to submit to a mandatory administrative proceeding in the event that a third party asserts to the Center, in compliance with the Rules, that the Respondents IP Defensive Registration did not comply with the IP Defensive Registration Conditions (Paragraph 4(b) and (c) of the Policy).
Within sixty (60) days after commencement of proceedings the Respondent shall submit a Response, in hard copy and via Internet using the online Response form. The Center is not obliged to accept Responses filed by any other means.
If the Respondent fails to submit a Response within the 60 days the Center will notify the Challenger, the Respondent, the Registrar and RegistryPro that the IP Defensive Registration should be cancelled. If the Challenger has requested transfer, the transfer will be subject to a decision by the Center that the Challenge complies with the IP Defensive Registration Conditions.
The Challenge will be decided by the Center. The Centers 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 IP Defensive Registration (Paragraph 4(e) of the Policy). The Center may decide to consult relevant intellectual property offices.