World Intellectual Property Organization

Trademark Post-Delegation Dispute Resolution Procedure Q&A

The WIPO Arbitration and Mediation Center has been appointed by ICANN as a provider of dispute resolution services for the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP). Designed by ICANN, the Trademark PDDRP forms part of ICANN’s available Trademark Rights Protection Mechanisms for New gTLDs. Background information on ICANN's development of the Trademark PDDRP may be found here.

The full text of the Trademark PDDRP may be found at http://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf. A summary of the Trademark PDDRP is set out below.

Overview

What is the Trademark Post-Delegation Dispute Resolution Procedure?

Involving several procedural layers, the Trademark PDDRP is a higher-level rights protection mechanism aimed at allowing trademark owners to address certain scenarios where a registry operator’s operation or use of a domain leads to or supports trademark infringement, either on the top level or on the second level.

Does ICANN have other types of post-delegation dispute resolution procedures?

In addition to the Trademark PDDRP there is also a Registration Restriction Dispute Resolution Procedure and a Public Interest Commitments Dispute Resolution Procedure. Further information on these other procedures (which are not administered by WIPO) may be found at http://newgtlds.icann.org/en/program-status/pddrp.

What criteria are used to determine the outcome of a Trademark PDDRP case?

The criteria used to determine the outcome of a proceeding are set out at Section 6 of the Trademark PDDRP. For infringement at the top level, a complainant must assert and prove, by clear and convincing evidence, that the registry operator’s affirmative conduct in its operation or use of its gTLD string (which is identical or confusingly similar to the complainant’s mark), causes or materially contributes to the gTLD infringing the complainant’s mark.

For infringement at the second level, a complainant is required to prove, by clear and convincing evidence, that through the registry operator’s affirmative conduct there is a substantive pattern or practice of specific bad faith intent by the registry operator to profit from the sale of domain names that infringe the complainant’s trademark.

The Trademark PDDRP makes specific mention that it is not sufficient that a registry operator is on notice of possible trademark infringement through registrations in its gTLD. In other words, the registry operator is not liable under the Trademark PDDRP solely because infringing names are in its registry, or the registry operator knows that infringing names are in its registry, or the registry operator did not monitor the registrations within its registry.

Language

What are the language requirements?

All submissions and proceedings will be in English. Parties may "submit supporting evidence in their original language, provided and subject to the authority of the Expert Panel to determine otherwise, that such evidence is accompanied by a certified or otherwise official English translation of all relevant text."

Filing a complaint

How does a party submit a complaint?

All complaints and other submissions must be filed electronically, by email to pddrp@wipo.int.

Are there word/page limits?

A complaint is limited to 5,000 words or 20 pages, excluding attachments, "unless the WIPO Center determines that additional material is necessary."

What happens after a complaint is submitted?

On receipt of a complaint the WIPO Center will process the case filing fee and conduct an administrative compliance review of the complaint. Any administrative deficiencies must be corrected within five (5) days of notification by the Center. Complaints deemed compliant by the Center will then be served on the registry operator, and the proceedings will proceed to the Threshold Review.

Threshold Review

What is the "Threshold Review"?

All complaints are reviewed by a Threshold Review Panel. The Threshold Review Panel consists of a single panelist appointed by the WIPO Center to determine whether the complaint satisfies certain criteria set out in Section 9 of the Trademark PDDRP, including criteria with regard to standing and assertions of harm.

If the Threshold Review Panel determines that the complaint does not satisfy the criteria, the WIPO Center "will dismiss the proceedings on the grounds that the Complainant lacks standing and declare that the registry operator is the prevailing party" (Section 9.7 of the Trademark PDDRP). If the Threshold Review Panel determines that the complaint satisfies the criteria, the WIPO Center will commence the proceedings on the merits and invite the registry operator to file a response to the complaint.

Can submissions be made to the Threshold Review Panel?

The registry operator may make a submission to the Threshold Review Panel within 10 business days of the Notice of Complaint being served. A filing fee will apply. If the registry operator does make a submission, the complainant has 10 business days to submit an opposition.

Filing a response

When must a response be filed?

The registry operator must file a response to the complaint within 45 days of the Threshold Determination. The response must be filed electronically, by email to pddrp@wipo.int.

Are there word/page limits?

A response is limited to 5,000 words or 20 pages, excluding attachments, "unless the WIPO Center determines that additional material is necessary."

Can a complainant make any reply to the response?

The complainant is permitted 10 days from the service of the response to submit a reply. The reply can only address statements made in the response and may not introduce new facts or evidence into the record.

What happens if no response is filed?

If the registry operator fails to respond to the complaint, it will be deemed to be in default. There are limited rights to set aside a finding of default. A default case will still proceed to the Expert Panel for a determination on the merits.

Expert Panel

How is the Expert Panel appointed?

The Expert Panel is a one-person panel appointed by the WIPO Center in its sole discretion, unless either party requests a three-member expert panel. The panelist on the Threshold Review Panel cannot serve on the Expert Panel for the same proceeding.

Where either party requests a three-member Panel, each party shall select an expert from the WIPO Center’s list of experts. The two selected experts will then select the third expert panel member from the WIPO Center’s list of experts.

The WIPO Center will establish the Expert Panel within 21 days after receiving the Complainant’s reply to the response, or if no reply is filed, 21 days after the due date of the reply.

Who are the experts available for appointment?

The full list can be found here. This list takes into account requirements of professional expertise and experience and may be subject to development by the WIPO Center. As part of the process of appointment to an actual case, experts are required to affirm their neutrality by signing the WIPO Center’s Statement of Acceptance and Declaration of Impartiality and Independence.

Remedies

What remedies are available under the Trademark PDDRP?

If the Expert Panel determines that the registry operator is liable, it may recommend a variety of "graduated enforcement tools" against the registry operator, including remedial measures against allowing future infringing registrations or suspension of accepting new domain name registrations for a set period of time. In extraordinary circumstances, the remedy may provide for the termination of the registry agreement.

Domain name registrants are not a party to a Trademark PDDRP action. A recommended remedy cannot include deleting, transferring or suspending domain name registrations unless the domain name registrants are persons or entities under control of the registry operator.

An Expert Panel may also determine whether a complaint was made "without merit" and if so, award appropriate sanctions against the Complainant including imposing costs of the registry operator or a ban on filing complaints. Imposition of remedies is at ICANN’s discretion but, absent extraordinary circumstances, should be in line with the remedies recommended by the Expert Panel.

Appeals

Can an Expert Panel determination be appealed?

Either party has a right to seek de novo appeal of the Expert Determination on either the liability or the recommended remedy. Any appeal must be filed with the WIPO Center and served on all parties within 20 days after the issuance of an Expert Determination, following which a response must be filed within 20 days.

Who hears the appeal?

If an appeal is filed, the WIPO Center will select a three-member Appeal Panel. The Appeal Panel cannot include any members of the Expert Panel which rendered the original determination.

Can further submissions be made to the Appeal Panel?

A limited right to "introduce new admissible evidence that is material to the original determination will be allowed" provided that "the evidence clearly pre-dates the filing of the Complaint." A filing fee will apply.

Trademark PDDRP Fees

The WIPO Center will shortly make available a Schedule of Fees for the Trademark PDDRP.

Under Section 14.2 of the Trademark PDDRP, the "Complainant shall be required to pay the filing fee … and shall be required to submit the full amount of the Provider estimated administrative fees, the Threshold Review Panel fees and the Expert Panel fees at the outset of the proceedings."

Under Section 14.3 of the Trademark PDDRP, in the event that the Expert Panel declares the complainant to be the prevailing party, the registry operator is required to reimburse the complainant for all panel and provider fees incurred.

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