WIPO End Report on Case Administration under the Start-Up Trademark Opposition Policy for .biz
Table of contents
2. The .biz IP Claim Service
3. The Start-up Trademark Opposition Policy for .biz
4. Multiple IP Claims and STOP
5. NeuLevel STOP Database
6. Case Filings
7. Geographical Distribution of Parties
11. Processing Matters
Between December 2001 and September 2002 the WIPO Arbitration and Mediation Center ("Center") processed a total of 338 cases under the Start-Up Trademark Opposition Policy for .biz ("STOP"), which was adopted by NeuLevel, the Registry operator for .biz, and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN"). The present Report provides a resume of the Centers case administration activity under this policy, with two principal purposes.
The first purpose is to report on the functionality of one of the options for providing trademark protection during the introductory phase of a new generic Top-Level Domain ("gTLD"). It is recalled that one of ICANNs selection criteria for new gTLDs was their potential for providing "proof of concept" concerning possible additions to the domain name system and the options for implementing them, including appropriate intellectual property protection. The introduction of any further gTLDs will require careful examination of prior experience with the various options.
The second purpose of this Report is to provide a summary of decision trends under STOP that may be of comparative interest for decisions under the Uniform Domain Name Dispute Resolution Policy ("UDRP").
Reference is made, in particular, to sections 9 (Results) and 13 (Evaluation) of this Report.
The .biz domain is one of the seven new gTLDs approved by ICANN in November 2000. (The others are .aero, .coop, .info, .museum, .name and .pro.) All registrations in these new gTLDs are subject to the existing UDRP. In addition, there are two further types of dispute resolution policies. First, each "restricted" and "sponsored" gTLD provides a dispute resolution mechanism for violations of the registration conditions that are particular to that domain (e.g., the Restrictions Dispute Resolution Policy for .biz, which domain is restricted to "bona fide business or commercial purposes"). Second, registry operators of the new gTLDs have introduced specific dispute resolution policies designed to resolve disputes occurring during a start-up or "sunrise" phase. Such mechanisms aim to provide trademark owners with additional options for the protection of their rights during the introductory phase of these domains.
STOP falls into this second category. In combination with the .biz "IP Claim service," STOP established a complex system aimed at enabling trademark owners to claim rights in certain domain names and to remedy their bad faith registration or use by others.
A different introductory mechanism was adopted, for example, by Afilias, the registry operator of the .info gTLD. The experience of the Center under this mechanism is summarized in the separate WIPO End Report on Case Administration under the Afilias Sunrise Registration Challenge Policy for .info.
As stated above, STOP is linked to the IP Claim service. Unlike the Sunrise model adopted by .info, the IP Claim service did not provide for an early registration based on (asserted) trademark rights. Instead, all domain names were attributed on a randomized basis during the .biz start-up phase, which lasted from June 25 to September 21, 2001.
Under the IP Claim system, trademark owners could, against a fee, register an IP Claim between May 21 and August 6, 2001 in order to claim trademark rights in relation to an alphanumeric string that was identical to their trademark. Compliance with this condition was neither verified by NeuLevel nor by any registrar. Moreover, because the number of IP Claims that could be filed for a given alphanumeric string was not limited, there could be multiple IP Claims for any given domain name. Such multiple claims could be filed by different Claimants, or even by one and the same Claimant.
If, during the start-up phase, an application was filed for a domain name that was subject to an IP Claim, NeuLevel first contacted the domain name applicant, provided details of all IP Claims filed for this domain name (including contact details of the IP Claimants, as well as the trademark data provided) and requested the applicant to confirm its intention to register the domain name.
If the applicant proceeded to register the domain name in spite of the IP Claims, NeuLevel notified the concerned IP Claimants of the contact details of the domain name registrant. If more than one IP Claim had been filed with regard to the disputed domain name, NeuLevel established a priority order among these claims, again on a randomized basis (STOP, paragraph 4(l)(i)).
The priority Claimant was then given the opportunity to initiate a STOP proceeding. If the priority Claimant did not file its complaint within a period of 20 days, NeuLevel notified the next Claimant in the priority order of its right to file a STOP complaint.
Domain names that were subject to IP Claims did not resolve (i.e. could not be used) for a period of 30 days after the live date of .biz start-up domain names. Following the 30-day period, the domain name resolved but could not be transferred until all pending IP Claims had been dealt with.
In essence, the IP Claim service therefore provided what might be called an automated "watch service" for trademark owners who, in order to qualify for obtaining the corresponding domain name, still had to submit a domain name application against a separate fee.
Apart from being connected to the IP Claim system, the procedure and the substantive requirements under STOP also differed from the UDRP in the following important respects:
- Under STOP, the Complainant had to show that the disputed domain name(s) was (were) identical - not merely confusingly similar - to its trademark or service mark, STOP, paragraph 4(a)(I);
- Under STOP, it was sufficient to prove either registration or - not "and" - use in bad faith, STOP, paragraph 4(a)(iii);
- The only available remedy under STOP was transfer and not also cancellation, STOP, paragraph 4(I).
- Parties could not opt for three-member Panels; STOP disputes were exclusively decided by single-member Panels, STOP, paragraph 4(e).
(See Annex 1 STOP Policy and Rules.)
As noted, STOP complaints could only be filed by IP Claimants that had been notified by NeuLevel of their priority status. In order to ensure that STOP complaints were only initiated by priority IP Claimants, dispute resolution service providers were required to verify the standing of STOP Complainants. This was effected on the basis of "ticket numbers," i.e., a code, which NeuLevel assigned to priority Claimants and which had to be provided in the complaint. Thus, each time a complaint was received, dispute resolution service providers had to verify the ticket number. Complaints without a valid ticket number were not accepted.
Pursuant to its paragraph 5, STOP took precedence over the UDRP so that, as long as a .biz domain name was, or could be, subject to a STOP proceeding, no UDRP complaint could be filed by others against that domain name. When receiving UDRP complaints relating to .biz domain names, dispute resolution providers were therefore required to verify whether the domain name in question was subject to an IP Claim, in which case they could not accept any UDRP complaint.
Several other differences between STOP and the UDRP resulted from the fact that NeuLevel did not restrict the number of IP Claims that could be filed for a given alphanumeric string, and that non-priority Claimants might be invited to initiate STOP complaints if the prior proceeding was terminated or unsuccessful.
Whenever a disputed domain name was subject to multiple IP Claims, the Panelist deciding the case was required to determine whether subsequent IP Claimants could initiate STOP proceedings. This determination was to be made on the basis of the following criteria, which are listed in STOP, paragraph 4(l)(ii) and STOP Rules, paragraph 15(e):
- If the Complainant prevailed, no further challenges under STOP were permitted against the disputed domain name;
- If the Complainant did not prevail, and the Respondent could demonstrate a right or a legitimate interest in the disputed domain name, no further challenges under STOP were permitted against that domain name;
- If the Complainant did not prevail (because it did not own an identical trademark, or failed to prove bad faith), but the Respondent could not demonstrate a right or legitimate interest in the disputed domain name, the Panel permitted subsequent challenges to that domain name. In that case, NeuLevel, after being notified by the dispute resolution provider, notified the next Claimant in the priority order of its right to file a STOP complaint within 20 days.
In order to safeguard the potential right of subsequent IP Claimants to initiate a STOP proceeding, NeuLevel decided not to give effect to any transfers based on settlement between a STOP Complainant and a Respondent if the domain name in question was subject to multiple IP Claims (STOP, paragraph 8 and STOP Rules, paragraph 17(a)).
The Center received a total of 338 STOP complaints covering 355 domain names. Three hundred thirty-three complaints concerned one domain name only; one complaint each referred to two, three, four, five and eight domain names, respectively.
Due to court challenges to the .biz domain name allocation method during start-up, NeuLevel decided to postpone the live date of start-up domain names for which more than one domain name application had been filed and which had therefore been allocated on a randomized basis. As a result, STOP cases were brought in two rounds.
"Round one" started on November 19, 2001, when NeuLevel notified priority Claimants for domain names, with regard to which only one domain name application had been filed, and which were subject to at least one IP Claim. According to information received from NeuLevel, this concerned some 25,000 domain names. Priority Claimants could bring STOP complaints between November 24 and December 14, 2001. In the majority of such cases, IP Claimant and domain name registrant were identical so that very few IP Claims actually resulted in STOP complaints; through December 2001, the Center received 53 STOP complaints. Three further complaints were filed in January 2002 by non-priority Claimants notified at a later stage. The total number of WIPO STOP cases in round one thus was 56.
"Round two" started in April 2002, when NeuLevel notified priority Claimants for contested start-up domains, i.e . domain names for which more than one application had been filed. According to NeuLevel, this concerned some 58,000 domain names. The STOP complaint-filing window for such IP Claimants lasted from April 8 to April 28, 2002. In April 2002 alone, 225 STOP complaints were filed. A smaller number of complaints was filed later by non-priority IP Claimants that were invited to file after the priority Claimant had either not brought a complaint at all or had lost without the Respondent having been able to prove a right or a legitimate interest in the disputed domain name. The total number of WIPO STOP cases filed in round two was 282.
As noted, the majority of WIPO STOP complaints were filed by priority Claimants. Priority Claimants challenged 295 (83%) of all .biz domain names subject to STOP proceedings administered by the Center. IP Claimants with second priority initiated STOP complaints against 39 domain names (11%), 14 domain names (4%) were challenged by IP Claimants with third priority, with smaller numbers for the lower priorities.
The following table provides a full overview of the number of IP Claims filed with regard to individual domain names subject to proceedings administered by the Center.
|Priority 1||Priority 2||Priority 3||Priority 4||Priority 5||Priority 6||Priority 7||Total|
This ratio shows that most STOP proceedings resulted in a final attribution of the disputed domain name to either the priority Claimant (in case of a transfer decision) or the Respondent (if the Respondent was able to show a right or a legitimate interest in the domain name). Transfer decisions were issued in 107 cases. The following table shows the relative importance of the two types of dismissed cases.
|Complaint Decided Final||Complaint Decided Next|
This means that in 225 (107+118) out of 338 cases (66.57%), a STOP proceeding resulted in a final attribution of the domain name to either the Complainant or the Respondent without further challenges by non-priority Claimants being permitted.
The geographical spread of STOP cases covered Complainants from 28 countries and Respondents from 32 countries, with parties from 40 countries being involved overall.
The following table shows the countries that were involved most frequently on the Complainants side and on the Respondents side.
|Domicile of Complainant||Number of Cases||Percentage of All Complainant Countries||Domicile of Respondent||Number of Cases||Percentage of All Respondent Countries|
|United States of America||123||36.39%||United States of America||139||41.12%|
|Germany||57||16.86%||Republic of Korea||51||15.09%|
|United Kingdom||37||10.95%||United Kingdom||24||7.10%|
(Annex 2 shows the geographical distribution of parties to STOP proceedings in more detail.)
These statistics are not substantially different from the statistics under the UDRP, with two exceptions: while Germany ranks fifth as Complainants domicile under the UDRP, it ranks second under STOP; and regarding Respondents domicile, the Republic of Korea comes second while it holds the fourth rank under the UDRP.
As under the UDRP, STOP proceedings were to be conducted in the language of the registration agreement unless the parties agreed, or the Panel determined, otherwise, Paragraph 11(a) STOP Rules. In addition, this provision allowed dispute resolution providers to determine that a STOP proceeding be conducted in a language other than the language of the registration agreement "having regard to the circumstances of the administrative proceeding." This discretion was, however, subject to the subsequent authority of the Panel to determine otherwise.
Before the start of the operations, NeuLevel had indicated that all registration agreements would be in English. However, when the first STOP complaints were filed, it turned out that many domain names had been registered through forms in languages other than English so that a considerable number of STOP proceedings had to be conducted in such other languages. The distribution of the various languages is roughly the same as under the UDRP with the exception of Korean which, in line with its higher ranking on the above list of Respondents countries, was more strongly represented under STOP.
|Language of Proceeding||Number of Cases||Percentage|
*Cases where the language is "undetermined" were terminated before the appropriate language could be finally determined.
As under the UDRP, the Center sent out verification requests to registrars, which included a request to confirm the language of the registration agreement. If the registration agreement turned out to be in a language other than the language of the complaint, the Center notified the Complainant accordingly and requested either a translation or evidence of an agreement with the Respondent to proceed in the language of the complaint. Alternatively, the Complainant could provide reasons as to why the proceeding should be conducted in the language of the complaint. With regard to such reasons, the Center adopted a cautious approach. Mere convenience for the complainant was not accepted, which in some cases led the Complainant to withdraw its complaint. In other cases, where there was evidence that the Respondent had understood the complaint, the Center did not request a translation of the complaint, but allowed the Respondent to file a response in the different language of the registration agreement. This practice was accepted by the Panels deciding such cases.
Like procedures under the UDRP, STOP complaints were decided by external Panelists appointed by the Center. As stated earlier, the criteria were substantially the same as under the UDRP except that the trademark on which the complaint was based had to be identical, not merely confusingly similar, to the disputed domain name, and that it was sufficient to prove either registration or use in bad faith, not both. In addition, complainants could only request transfer, not cancellation.
The outcome of STOP proceedings administered by the Center differs from those of proceedings under the UDRP. Of the 338 STOP complaints, 107 (31.66%) were decided in favor of the Complainant, while 159 (47.04%) were denied and 71 (21.00%) cases were terminated. One case was suspended (0.30%) pending the outcome of a court action relating to the disputed domain name. In comparison, of the 990 UDRP complaints received within the same period (December 2001 to September 2002), 661 (66%) were decided in favor of the Complainant, 137 (14%) were denied, and 192 (20%) were withdrawn or terminated.
It should be noted that STOP cases administered by the Center were decided by WIPO Panelists who also decide WIPO UDRP cases. (The comparatively high rate of complaint denials may be taken as a confirmation that decisions rendered by WIPO Panelists are the result of a neutral and impartial application of each respective Policy to the facts of each individual case.) The following STOP-specific factors may have contributed to the comparatively high rate of STOP complaint denials:
(i) High Amount of Generic, Descriptive or Suggestive Terms. A significant proportion of the 355 domain names challenged under STOP consisted of terms that can be considered as generic, descriptive or at least suggestive, such as , , , , , , , , , , , , <4sale.biz>, or . A far smaller percentage of cases involved well-known marks, such as , , , , , , , , , or . Geographical terms, such as , , , , , or , were involved to an even lesser extent.
(Annex 3 provides a list of all domain names challenged under STOP.)
The significant share of generic domain names that were subject to STOP proceedings may have resulted from the proven value of such terms in other TLDs on the one hand, and from a fairly widespread misunderstanding on the other: a number of STOP Complainants seemed to have assumed that the mere fact that they owned a trademark corresponding to the domain name and had registered an IP Claim against an additional payment would suffice to obtain a decision in their favor.
If the domain name could be regarded as generic, descriptive, or suggestive, Panels typically were reluctant to find bad faith since there could be other plausible explanations for their registration than bad faith on the part of the Respondent (e.g., Network Associates Technology, Inc. v. Lenow International, Inc.,WIPO Case No. DBIZ2001-00043 ; New York Stock Exchange, Inc. v. Manuela Lemmel, WIPO Case No. DBIZ2001-00044 ; The Boots Company Plc v. Challenge Services, Inc. (CSI) WIPO Case No. DBIZ2002-00096 ; Rodale, Inc. v. Kelly Britt, WIPO Case No. DBIZ2002-00152 ; Prisma Presse v. Orlik Software, WIPO Case No. DBIZ2002-00177 ; Consignia Plc and Post Office Limited v. Aly Ramzan, WIPO Case No. DBIZ2002-00180 ; Admiral Insurance Services Limited v. Diamond Trust Consultancy (UK) Limited, WIPO Case No. DBIZ2002-00232 ; Mohawk Brands, Inc v. iSMER, WIPO Case No. DBIZ2002-00242 ; Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245 ; AB Electrolux v. International Newcastle, WIPO Case No. DBIZ2002-00260 ; Zentralverband deutscher Konsumgenossenschaften e.V. v. eDesign Japan, WIPO Case No.DBIZ2002-00261 ; target software solution GmbH v. NetVirtue, Inc. WIPO Case No. DBIZ2002-00277 ).
(ii) Difficulty of Proving Bad Faith. Domain names that were subject to an IP Claim did not resolve for 30 days after the live date. Priority Claimants nevertheless had to file their STOP complaints within 20 days following that live date. This means that in most cases, Complainants not only had to collect the necessary evidence within a very short period of time, but were also de facto prevented from relying on any evidence relating to the use of the domain name. "Use" in bad faith was therefore hardly relevant in any decision. The Telstra argument developed under the UDRP, according to which passive holding of a domain name may in certain circumstances be considered as an indication of bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), was advanced in some complaints but never accepted by Panelists since the non-use of .biz start-up domain names resulted from technical restrictions rather than from a conscious decision of the registrant. Most Complainants therefore claimed registration in bad faith, but were often not in a position to provide convincing evidence.
Complainants were regularly successful when their mark was not only highly distinctive but also well-known in the jurisdiction where the Respondent was based. In such cases, registration in bad faith could be proved without additional circumstantial evidence since the domain name could only be understood as referring to the owner of the mark and no other legitimate uses could be imagined (see e.g. AUDI AG v. vitty Inc, WIPO Case No. DBIZ2002-00027 ; Fiat Auto. v. Italienska, WIPO Case No. DBIZ2002-00030 ; Mastercard International Incorporated v. Mr. Greg Tieu, WIPO Case No. DBIZ2002-00124 ).
In some cases, Panelists took the fact that the Respondent had proceeded to register the domain name in spite of having been notified of an IP Claim as an indication of bad faith (Rodale, Inc. v. Cass Foster, WIPO Case No. DBIZ2002-00148, ). Subsequent decisions clarified, however, that the notification was of little relevance where the disputed domain name was a generic or descriptive word, and where there was no evidence that the Complainants mark was well-known or at least known to the Respondent (Mohawk Brands, Inc v. iSMER, WIPO Case No. DBIZ2002-00242 ; Zentralverband deutscher Konsumgenossenschaften e.V. v. eDesign Japan, WIPO Case No. DBIZ2002-00261 ).
(iii) Lack of Identity between Trademark and Domain Name. Unlike the UDRP, STOP required identity between the Complainants trademark and the disputed domain name. Generally, Panelists considered it sufficient if the trademark was identical with those textual elements of the disputed domain name that could be technically reproduced as a domain name. Divergence in elements that cannot be included in a domain name, such as an ampersand sign (AT&T Corp. v. Swarthmore Associates LLC, WIPO Case No. DBIZ2002-00077 ) or a space (e.g. Fiat Auto S.p.A v. Italienska bil, WIPO Case No. DBIZ2001-00030 ), was considered irrelevant. If, however, certain elements of the trademarks were not included in the domain name even though that would have been technically feasible, Panels refused to find identity (e.g. Hotel Lotte Co., Ltd., v Morris Communications Company, LLC, WIPO Case No. DBIZ2002-00024 as compared to the trademark THE CHARLOTTE SUITE; H&M Systems Software, Inc. v. dotPartners LLC, WIPO Case No. DBIZ2002-00063 as compared to ARGOS GAMEWEAR; Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245 as compared to SHOES.COM; Asociaciόn de Usuarios de Internet v. WorldWide Media Inc., WIPO Case No. DBIZ2002-00204 as compared to INTERNET99; Osborne Clarke v. Blacker Media, WIPO Case No. DBIZ2002-00262 as compared to GAMESBIZ).
A finding of identity was somewhat more problematic in cases involving device marks where the graphic or ornamental elements cannot be reproduced in a domain name. Some Panelists were reluctant to find identity in such cases, thus effectively excluding such device marks from protection under STOP (Qtech Business Systems Pty Ltd v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00004 ; The Boots Company Plc v. Challenge Services, Inc. (CSI), WIPO Case No. DBIZ2002-00096 ; Souza Cruz S.A. v. Null, WIPO Case No. DBIZ2002-00116 ). In no case, however, did the question have to be decided conclusively, since the complaints concerned were all dismissed on other grounds.
(iv) Disputes Between Competing Right Owners. It has been stated above that some Complainants seem to have assumed that trademark ownership together with an IP Claim would suffice to prevail in a STOP proceeding. This may have been the reason why a number of complaints were brought against Respondents who held their own rights in the registered term (e.g. Actebis Holding GmbH v. peacock.com Corporation, WIPO Case No. DBIZ2001-00005 ; Standard Knitting Ltd v. Toyota Motor Sales, USA, WIPO Case No. DBIZ2001-00011 ; BUSS GmbH & Co. KG Fertiggerichte v. Steven Buss, WIPO Case No. DBIZ2001-00034 ; Brose Fahrzeugteile GmbH & Co KG v. Brose Systeme GmbH, WIPO Case No. DBIZ2002-00143 ; Ricardo Plc v. QXL Ricardo Plc, WIPO Case No. DBIZ2002-00240 ; Hay & Robertson International Licensing AG v. Admiral Insurance Services Ltd, WIPO Case No. DBIZ2002-00254 ).
The Center charged the same fees under STOP as under the UDRP. The following table provides an overview of the applicable STOP Schedule of Fees:
|Number of Domain Names Included in the Complaint||Fee (United States Dollars)|
|1 to 5||1500 [Panelist: 1000; Center: 500]|
|6 to 10
|2000 [Panelist: 1300; Center: 700]|
|More than 10||To be decided in consultation with the WIPO Arbitration and Mediation Center|
A. Procedure The main stages in the administration of STOP cases were the following:
- Filing of STOP complaint in electronic form and hard copy with NeuLevel ticket number;
- Automated electronic acknowledgement of receipt by the Center;
- Verification by the Center of Complainants standing to initiate STOP complaint by checking ticket number in NeuLevels central STOP database;
- Data entry by the Center into the Centers STOP case management system, and assignment of WIPO case number;
- Data entry by the Center into NeuLevels central STOP Case Management System: WIPO case number, date complaint filed, NeuLevel ticket number. Update of NeuLevel case status to "pending;"
- Case assignment to STOP case managers (two case managers in round one, eight case managers in round two);
- Request for verification of certain registration data (such as language of registration agreement) to registrar;
- Formality compliance review by case managers (including payment of fees, language of proceeding);
- Notification of complaint to Respondent;
- Acknowledgement of receipt of response or default notification;
- Appointment of Sole Panelist (23 Panelists during round one, 60 Panelists in round two);
- Notification of Panel decision;
- Update, by the Center, of NeuLevels STOP Case Management System to reflect the outcome of proceeding: "Name Transfer," "Decided Next," "Decided Final."
B. Panelists The Center provided Panelists with information materials and detailed procedural instructions concerning STOP. During round one, the Center worked with 23 Panelists from 11 countries. This number was expanded during round two to 60 Panelists from 22 countries.
C. Interaction with NeuLevel Database The administration of STOP cases required the Center to interact with NeuLevels STOP database at each of the critical stages of a STOP case. In general, this interaction, while being the source of additional work, functioned reasonably well after initial problems had been resolved. In addition, NeuLevel had provided support staff ("STOP support") that provided assistance in case of problems. As far as the centralized verification of NeuLevel ticket numbers is concerned, the Center encountered 22 complaints where the ticket number was either missing or invalid. In all but one of these cases, the deficiency was cured within the 20-day STOP filing deadline.
D. WIPO STOP Case Management System WIPO designed and created a dedicated STOP case management system. Case-related information was entered which enabled Center staff to list cases by domain name, time of filing, case number and case manager; to track case status and case outcome for each case; and to provide, for internal and external purposes, a variety of case-related statistical reports, including filing rate, geographical distribution, and case outcome.
E. Duration The average duration of STOP cases was 83 days. Part of this time was taken up by the added complications, i.e. the need to interact with NeuLevels STOP database, the fact that most STOP complaints were filed during a fairly short period of time (53 in December 2001, 225 in April 2002, see above), the higher amount of inquiries (due to potential or actual parties unfamiliarity with the system) as well as the need, in accordance with the Rules, to require certain parties to provide translations of their submissions into the appropriate language of the procedure.
The Center developed model STOP complaint and response forms, as well as online filing facilities for both complaints and responses. In addition, the Centers web site provided information assisting parties in filing complaints and responses, as well as further details including a listing of all cases and decisions under STOP. All decisions rendered under STOP were also included in the Centers daily e-mail notification of decisions.
(Annex 4 provides the model STOP complaint and response forms, the general information page of the Centers web site for WIPOs .biz STOP dispute resolution service, and the STOP complaint and response filing guidelines.)
As noted, the present Report aims to contribute to the objective, on the part of ICANN and other interested parties, of obtaining "proof of concept" in the introduction of new gTLDs, including, in particular, the options for providing effective start-up trademark protection.
A. Policy Issues NeuLevel developed the IP Claim service and STOP in an effort to protect trademark owners against the abusive registration of their trademarks during the introduction of the .biz TLD. The system thus established was relatively complex and required IT-based interaction between dispute resolution providers, registry operator and IP Claimants at various stages of the process.
In addition, the system was relatively costly for trademark owners, who not only had to pay the fees for filing a STOP complaint, but had to incur the additional expenses of participating in the IP Claim service. By purchasing an IP Claim trademark owners did not necessarily acquire the right to initiate a STOP complaint, because in cases of multiple IP Claims the challenge priority was determined on a randomized basis; nor was success guaranteed in a STOP proceeding because of the difficulties of proving bad faith in a start-up setting. For the added expenses of participating in the IP Claim service, trademark owners
- were automatically notified when others registered the domain name in which they had claimed rights; and
- could initiate a STOP complaint before trademark owners who had not filed an IP Claim. However, where multiple IP Claims had been filed regarding a particular domain name, the challenge priority was determined on a randomized basis.
The high number of dismissed STOP complaints indicates that in a start-up scenario the three criteria listed in Paragraph 4(a) STOP were difficult to prove, even though STOP had lowered the threshold by requiring proof of bad faith with regard only to either registration or use of the domain name. In practice, however, Complainants could only attempt to prove bad faith registration, since in almost all cases the disputed domain name had, for technical reasons, not been used at all. Given the limited time frame for preparing and filing the complaint, Complainants could hardly rely on any circumstantial evidence of bad faith. As a result, the system was effective only in protecting well-known trademarks against clear cases of cybersquatting (see paragraph 9, above).
In fact, as stated earlier, a number of STOP Complainants may not have been aware of these limitations, but seem to have misunderstood the system as a means to enforce "better rights." A considerable amount of criticism was leveled against the system by trademark owners who became aware of the limitations only after having initiated a STOP complaint.
Considering the significant number of IP Claims sold, the number of STOP complaints actually filed proved limited. This may have been due to the following factors:
- Since the IP Claim system was independent of the attribution of domain names, a number of trademark owners who had filed both a domain name application and an IP Claim appear have obtained the domain name in which they had claimed rights;
- In a number of cases a single trademark owner had filed multiple IP Claims with regard to one and the same domain name;
- In the majority of cases where domain names were subject to multiple IP Claims, a STOP complaint initiated by the priority Claimant led to a final determination so that no further challenges by other IP Claimants were permitted;
- In several cases, the IP Claimant may have realized that the domain name registrant was likely to have its own rights in the disputed domain name and thus refrained from filing a STOP complaint;
- Domain name applicants, when notified of the IP Claim, may have decided not to pursue their application;
- The existence as such of the IP Claim system may have deterred bad faith registrations.
The above considerations must be weighed against the potential benefits of alternative mechanisms, which include a preregistration period for trademark owners on the basis of examination of certificates or trademark databases, or, by way of further example, a system allowing trademark owners to make rebuttable defensive registrations. The UDRP has generally proven to provide effective protection against clear cases of cybersquatting, and in fact, because it is not limited to identical names but includes confusingly similar names, offers a broader scope of trademark protection than STOP. In the context of introductory mechanisms, however, it must be borne in mind that the UDRP requires indications not only of registration but also of use in bad faith.
The present Report and the WIPO End Report on Case Administration under the Afilias Sunrise Registration Challenge Policy for .info summarize the various advantages and disadvantages of these respective protection mechanisms. In addition, the Center has followed the efforts made by other registry operators to introduce protection mechanisms appropriate to their new domains. This experience suggests various preliminary conclusions:
- Preferential rights for trademark owners should concern the actual domain name registration, rather than a mere option to initiate a complaint. This is true, in particular, where such rights require payment of a fee;
- Pre-registration should be granted on the basis of, at minimum, prima facie examination of trademark certificates or databases. Such examination is to be performed even in the absence of any third-party challenges and would normally take place prior to registration, but could also be performed at a later stage as a condition for releasing the name to the registrant;
- A system of defensive registrations may instead be appropriate for sponsored or restricted gTLDs, where trademark owners might not be eligible to obtain a domain name registration.
B. Processing Issues Most procedural differences between STOP and the UDRP resulted from the IP Claim system and the fact that the number of IP Claims that could be filed for a given domain name was not limited. As a result, it was necessary to establish a priority order among multiple IP Claimants, to monitor the complaint filing deadlines, to verify the standing of STOP Complainants, to track the development of individual STOP complaints and to send the corresponding notifications.
This centralized system could, however, only work on the basis of strict complaint filing deadlines. As stated, these deadlines started to run for priority Claimants when the concerned start-up domain names went live. Hence, the majority of STOP complaints could be expected to be filed within this 20-day period. Prior to the live date, NeuLevel had indicated that some 80,000 IP Claims had been filed, which, potentially, could result in STOP complaints up to that number. However, in the absence of information concerning the degree of overlap between IP Claimants and domain name applicants, the concerned dispute resolution providers were not in a position to anticipate the amount of STOP cases that would actually be initiated during the first 20 days. This was a source of considerable uncertainty and caused logistical difficulty, which could have worked to the detriment of all involved. The implementation of effective trademark protection mechanisms was further burdened by the practically simultaneous introduction of dispute resolution mechanisms by different ICANN-approved registry operators.