Implementation Process and Paperless Filing at WIPO: What You Need To Know
On October 30, 2009, the Internet Corporation for Assigned Names and Numbers (ICANN) Board approved WIPO’s proposal to amend the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) to allow for electronic-only filing of pleadings under the Uniform Domain Name Dispute Resolution Policy (UDRP).
On December 7, 2009, ICANN announced a phased implementation procedure for the modified Rules.
The modified Rules are mandatory as of March 1, 2010, and prior to that, provision was made for the optional filing of UDRP pleadings in electronic-format by email and notification in accordance with the new Written Notice provisions in the modified Rules. The WIPO Center invited such filings and commenced use of the Written Notice provisions as of December 14, 2009.
The modified version of the Rules, along with the WIPO Center’s new WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules), and the leaner filing and notification facility offered by WIPO, includes procedural modification of benefit to both Parties to a WIPO UDRP proceeding. These are expected to include time and cost saving for both Parties in preparing and submitting pleadings, and continuing safeguards for fair notice of the dispute to Respondents (including WIPO’s obligation as a UDRP Provider to send the Respondent the full Complaint including all annexes by email on Notification of the proceedings, along with sending Written Notice of the dispute to the Respondent’s available postal information, and also by fax).
Below are answers to some frequently asked questions regarding these changes and what they may mean for Parties filing UDRP pleadings with the WIPO Center.
Should you need additional procedural information, please do not hesitate to write to or contact the WIPO Center directly at firstname.lastname@example.org or by phone at +41 22 338 8247.
Can I file my UDRP Complaint or Response including all annexes with WIPO solely in electronic format?
Yes. As of December 14, 2009, you will be able to file your Complaint or Response (including all applicable annexes) in electronic format only. This can be done by simply submitting to the WIPO Center at email@example.com. Relevant guidance on format modalities can be found in the modified WIPO Supplemental Rules at Annex E. As of March 1, 2010, you will be required to file all pleadings in electronic format only, in accordance with the modified Rules.
Can I still file a UDRP Complaint or Response with WIPO in hard copy?
No, as of March 1, 2010, all UDRP Complaints and Responses must be filed electronically, in accordance with the modified Rules.
Does filing my UDRP Complaint or Response in electronic format with WIPO mean that I no longer have to ship multiple sets of hard copies?
Yes. The modified Rules remove the requirement for paper pleadings, both Parties to a WIPO UDRP proceeding must file their Complaint or Response (as well as any other substantive documents which may be required in accordance with paragraph 12 of the Rules) in electronic-only format (e.g. – by email).
Will I have to file my WIPO UDRP Complaint or Response in electronic format from March 1, 2010?
Yes. From March 1, 2010, the modified Rules and modified WIPO Supplemental Rules become mandatory, and all WIPO UDRP proceedings will need to be filed and administered under the modified Rules from that date. This means that Complaints and Responses filed with WIPO on or after March 1, 2010 will need to be submitted electronically including all annexes. The relevant file format and size guidelines for the filing of electronic pleadings and annexes can be found in Annex E to the modified WIPO Supplemental Rules.
What is the (recommended) file size for one email communication according to the modified WIPO Supplemental Rules?
10 MB. Other than by prior arrangement with the WIPO Center, the size of any email communication (including attachments) transmitted to the WPO Center in connection with any UDRP proceeding shall be no larger than 10 MB (ten megabytes). When larger amounts of data need to be transmitted the files can be “split” across more than one email communication.
What is the size modality for individual files?
10 MB. Other than by prior arrangement with the WIPO Center, the size of any individual file (such as a document in Word, PDF or Excel format) transmitted to the WIPO Center in connection with any UDRP proceeding shall itself be no larger than 10 MB (ten megabytes). When larger amounts of data need to be transmitted, larger files can be “split” into a number of separate files or documents each no larger than 10 MB.
What is the total file size modality in UDRP cases for individual pleadings?
50 MB. The total size of one pleading (including any annexes) filed in relation to a UDRP dispute shall not exceed 50 MB (fifty megabytes), other than in exceptional circumstances (including in the case of pleadings concerning a large number of disputed domain names) where previously arranged with the WIPO Center.
I have been named as a Respondent in a WIPO UDRP proceeding being administered under the new facility – does that mean that I will receive full copies of the Complaint filed under the modified Rules more quickly?
Yes, it should. The WIPO Center will send electronic copies by email of Complaints along with complete sets of annexes to Respondents in all cases upon the formal Notification of Complaint and Commencement of Administrative Proceedings. This should enable Respondents to begin the preparation of their Response immediately, as they will have access to all of the relevant pleadings on the day of formal notification.
Will I, as a Respondent, receive notice of the WIPO UDRP proceeding to my physical address?
Yes . The WIPO Center will also send, in accordance with paragraph 2(a)(i) of the modified Rules, Written Notice of the Complaint filed with WIPO to available physical addresses for the Respondent, including those provided in the publicly-available WhoIs records, directly by the Respondent, and/or by Complainant in its Complaint.
Can I as a Respondent provide an additional email address to which I want the Complaint filed with WIPO and annexes to be sent?
Yes. The Written Notice document will provide the Respondent with procedural guidance on how to file its Response, and will invite the Respondent to provide the WIPO Center with any additional email addresses (if any) to which the Respondent would like a copy of the complete Complaint to be sent.
What should I do if I am concerned about the risk of cyberflight in my case?
Paragraph 8(a) of the UDRP states that a domain name registrant may not transfer a domain name to another domain name holder during a pending UDRP proceeding. Please note that the responsibility for any lock of the domain name pending a UDRP proceeding is with the concerned registrar and the WIPO Center does not have the technical capacity to ensure the lock of any domain name.
Once a Complaint is filed with the WIPO Center, the WIPO Center typically issues a request to the concerned registrar requesting confirmation that a domain name being disputed under the UDRP will not be transferred to another domain name holder during the filed UDRP proceeding. Such request is sent shortly after receipt of the filed UDRP Complaint which initiates that proceeding. Please note that the WIPO Center cannot issue such request merely in anticipation of a Complaint being filed – the Complaint must actually have been filed with and duly registered by the WIPO Center.
One very practical piece of advice we do give is to suggest filing your Complaint well within core WIPO Center filing hours (preferably between 9 and 5 pm, Geneva time, Monday to Friday), so that that the Complaint can be registered by the Center and the relevant lock request issued, on the day of filing. Complaints filed with the Center after 5pm Geneva time, other than by special arrangement, may not be processed by the Center until the next working day.
If you wish to explore possibilities for requesting the concerned registrar to prevent transfer of a domain name prior to the actual filing of a UDRP Complaint with WIPO, we can only suggest that you contact the concerned registrar directly in this regard.