WIPO Advanced Workshop on Domain Name Dispute Resolution: Overview of Precedent and Practice

WIPO, Geneva, Switzerland, Tuesday and Wednesday, October 11 and 12, 2011

Presentation Faculty

David H. BERNSTEIN a national of the United States, is a partner with Debevoise & Plimpton LLP and a member of the firm’s Litigation Department, its Intellectual Property Practice Group and its International Dispute Resolution Practice Group. Mr. Bernstein’s practice focuses on a wide range of intellectual property and unfair competition matters including Internet and domain name law, false advertising, trademark infringement and dilution, counterfeiting, copyright infringement, right of publicity law, misappropriation, trade secret law, and patent infringement.

Mr. Bernstein is past Counsel to the International Trademark Association (INTA), is an adjunct professor of law at George Washington University Law School, and was a former Co Chair of the Internet Law Subcommittee of the Litigation Section of the American Bar Association (ABA). Mr. Bernstein has been a WIPO Domain Name Panelist since 2000.

Mr. Bernstein has a J.D. from Yale Law School, an M.Sc. from the London School of Economics and Political Science, and an A.B. from Princeton University.

Contact: Debevoise & Plimpton LLP
919 Third Avenue
New York, NY 10022
United States of America
T +1 212 909 6696
F +1 212 521 7696
E dhbernstein@debevoise.com
bernstein

Tony WILLOUGHBY, a national of the United Kingdom, is Consultant at Rouse Legal (formerly Willoughby & Partners), specializing in contentious and non-contentious intellectual property.

Mr. Willoughby has had the conduct of some patent infringement actions, but most of his work has been in the field of trade marks, passing off, copyright and confidential information. He has acted in many leading reported intellectual property cases and has been a WIPO Domain Name Panelist since 2000. He is also Chairman of Experts for Nominet UK.

Mr. Willoughby was admitted to the Roll of Solicitors in England and Wales, United Kingdom in 1970 and has mediation accreditation with WIPO and ClArb.

Contact: Rouse Legal
Exchange Tower, 11th Floor
Harbour Exchange Square 1
London E14 9GE
United Kingdom
T +44 207 536 4102
F +44 207 536 4202
E tony@iprights.com
willoughby

 

Break-out Faculty

Luca BARBERO, a national of Italy, is a partner with Studio Barbero, a firm based in Turin, focusing on Domain Names issues and the protection of Intellectual Property on the Internet. He is also the Director of Barbero & Associates Ltd, a company based in London, specialized in the registration, management and monitoring of domain names worldwide.

Mr. Barbero is advising multinational corporations operating in various fields including F1 racing and luxury cars, nutrition, health and water products, fashion and luxury goods, milk and food products, alcoholic beverages, industrial glass, candies, telephone directories, coffee, pasta and oven products, furniture and also international law firms on domain names registration strategy worldwide and Intellectual Property protection on the web. He has negotiated and dealt with over 3000 cases of domain name abusive registration and assisted clients in litigation and arbitration in Italy and in other jurisdictions for Internet related matters since 1995.

Mr. Barbero is a WIPO Domain Name Panelist since 2000, panelist at the Czech Arbitration Court and serves in different panels as Arbitrator and Mediator including WIPO and the Chamber of Commerce of Milan and Turin. He has decided over one hundred and sixty domain name cases.

Mr. Barbero has a J.D. from Turin Law University and a Master in International Business from University of California at Los Angeles (UCLA). He is an Italian Trademark Attorney and European Trademark Attorney, admitted to practice before the Office for the Harmonization of the Internal Market. He is a Professor at the “Master of Laws (LL.M.) in Intellectual Property” organized by the WIPO Worldwide Academy and the Faculty of Law of the University of Turin, at the “Internet Law Master” organized by the University of Padova and Professor and Member of the Support Committee of the “LL.M in International Trade Law” organized by the University Institute of European Studies under the auspices of the University of Turin (Italy) and a regular speaker at other conferences and seminars on Domain Names and Mediation/Arbitration issues. He is a member of the ADR Committee of INTA, Cyberspace Team of MARQUES, IPC of ICANN and Internet Committee of ECTA.

 

Contact: Studio Barbero
Via Tripoli 104-106
10137 Torino
Italy
T +39 011 3810600
F +39 011 3810601
E luca.barbero@studiobarbero.com
Barbero

 

M. Scott DONAHEY, a national of the United States of America, based in Palo Alto, California, arbitrates and mediates disputes both nationally and internationally, having sat as an arbitrator and mediator in more than 300 cases. He has acted as arbitrator in arbitrations involving a genomic database joint development contract, a coronary stent patent, a software distribution agreement in China, a patent for a balloon catheter, a patent concerning the use of single molecule Raman spectroscopy for Direct DNA sequencing and of patents concerning the use of a “nanolens” to directly identify each individual sub-unit in a single strand of DNA as the sub-unit is encountered, a dispute involving a total knee replacement medical device, a research and development agreement for investment in the development of medical devices, a dispute concerning a license of patented genetic traits related to agricultural products, a distribution agreement concerning patented technology for a drug-eluting stent, dispute between manufacturer and distributor of DRAM components and modules, disputes between the Internet Corporation for Assigned Names and Numbers (ICANN) and domain name registries, and Japanese patents on pharmaceutical products, among others. He has also acted as sole appellate arbitrator in the appeal of a three person panel award concerning the licensing of a patented monoclonal antibody. Mr. Donahey has acted as counsel in arbitrations involving a license for a monoclonal antibody assay patent, a contact lens chemical composition patent, and an automated sera analyzer. He has acted as a mediator in cases involving Internet technology, pharmaceutical distribution agreements, and trademark cases in the apparel and entertainment industries. He has decided more than 350 domain name cases, applying principles of trademark law in the analyses. He is on the panels of Arbitrators and Mediators of the World Intellectual Property Organization (“WIPO”), the CPR Institute Technology Panel, Biotechnology Panel, Patent Panel, and Trademark Panel, the International Centre for Dispute Resolution, the American Arbitration Association Technology Panel, Trademark Panel, and Patent Panel, and many other national and regional panels around the world. He is on numerous domain name panels, including those of the WIPO, the Asian Domain Name Dispute Resolution Centre, and the China Internet Network Information Center.

In 1999, Mr. Donahey received the President's Award from the National Patent Board for Outstanding Service in the field of ADR. He was named as a SuperLawyer in the field of ADR seven consecutive years. Mr. Donahey is a mediator for the Northern District of California Federal District Court and for the First Appellate District of the State of California. He also serves as Adjunct Professor at the Santa Clara University School of Law, and the Golden Gate University School of Law, where he teaches courses in Law & Technology, and in International Dispute Resolution.

Mr. Donahey has a J.D. from Santa Clara University, summa cum laude, an M.A. from the Johns Hopkins University, and a B.A. from Stanford University, with distinction.

Contact: 3790 El Camino Real, Suite 171
Palo Alto, CA 94306
United States of America
T +1 650 823-0338 Voice
F +1 650 941-4262
E adr@scottdonahey.com
donahey

 

Matthew HARRIS, a national of the United Kingdom, is a partner at Waterfront Solicitors. Prior to joining this firm, he was a partner in the intellectual property and IT department of Herbert Smith in 2000 and joined Norton Rose in 2003 where he subsequently became the head of Intellectual Property and Information Technology dispute resolution.

Mr. Harris is experienced in all aspects of intellectual property, information technology, internet law, data privacy and freedom of information work. He initially trained as a general commercial and intellectual property litigator and although he also has extensive experience in non-contentious intellectual property and IT work, his practice retains a contentious focus.

Mr. Harris is a recognized expert in domain name law and practice, has been appointed by WIPO, Nominet and the Czech Arbitration Court to decide domain name disputes and he also sits on the Czech Arbitration Court domain name advisory board.

He is a visiting lecturer in Intellectual Property Law at the Eidgenössische Technische Hochschule Zürich in Switzerland and is the UK contributor to, and a general editor of, the International Trademark Association’s Annual International Review of Trademark Jurisprudence and Volume II of its annual Trademark Law Handbook. Matthew also sits on INTA’s International Amicus Committee.

Contact: Waterfront Solicitors LLP
5 The Leathermarket
Weston Street
London SE1 3ER
United Kingdom
T +44 207 378 4371
F +44 207 234 0600
E matthew.harris@waterfrontsolicitors.com
harris

 

Richard G. LYON, a national of the United States, is Counsel in the Dallas office of the international law firm Spencer Crain Cubbage Healy & McNamara pllc.  Prior to joining Spencer Crain, Mr. Lyon was for twenty years a member of corporate and litigation departments of two large law firms.  Mr. Lyon also served as Vice President and General Counsel of the United States subsidiary of an international telecommunications company with the principal responsibility for legal and governmental affairs for U.S. and Canadian operations.

Mr. Lyon concentrates his corporate practice in the areas of technology and technology-driven transactions: outsourcing, structure and financing of the acquisition and exploitation of intellectual capital, such as licensing, outsourcing, joint ventures, and strategic alliances. He also advises U.S. and foreign clients on general corporate and finance transactions and distribution matters. Mr. Lyon assists clients in litigation involving intellectual property issues. Mr. Lyon has been a WIPO Domain Name Panelist since 2000.

Mr. Lyon is an active member of the Dallas Bar Association, State Bar of Texas, and The Association of the Bar of the City of New York. Mr. Lyon received his law degree from Harvard in 1971 and a bachelor of arts from Haverford College in 1968.

Contact: Spencer Crain Cubbage Healy & McNamara pllc
1201 Elm Street, Suite 4100
Dallas, Texas 75270
United States of America 
T +1 214 290 0000
F +1 214 571 0099
E rlyon@spencercrain.com; richardglyon@att.net
Lyon

 

William R. TOWNS, a national of the United States, is a partner at Novak Druce + Quigg LLP, and also serves as the Firm’s General Counsel. Mr. Towns is a seasoned attorney and mediator. His litigation and dispute resolution practice concentrates principally on intellectual property, with an emphasis on trademarks, domain names, unfair competition, and copyrights, and encompasses commercial litigation and other international and transnational disputes.

Mr. Towns is a WIPO Arbitrator and Mediator, a Member of the Chartered Institute of Arbitrators, as well as other international, national and local dispute resolution organizations, including the Global Collaborative Law Council, the Association of Attorney-Mediators, and the Texas Association of Mediators. He has served as a WIPO Domain Name Dispute Resolution Panelist since 2003.

Mr. Towns received his J.D. degree from the University of Houston in 1980 and his undergraduate degree in Government from the University of Texas in 1977. He teaches courses in International Business Transactions and International Intellectual Property as an Adjunct Professor of Law at St. Mary’s University Law School in San Antonio, Texas.

Contact: Novak Druce + Quigg LLP
Wells Fargo Plaza
1000 Louisiana, Fifty Third Floor
Houston, TX 77002
United States of America
T +1 713 571 3400
F +1 713 571 3449
E bill.towns@novakdruce.com
towns

 

Wolter WEFERS BETTINK, a national of the Netherlands, is a partner with Houthoff Buruma and the Head of its Information Technology Law Practice Group. Mr. Wefers Bettink’s practice focuses on a wide range of intellectual property, information technology, e-commerce, copyright, privacy, domain name and other Internet related issues.

Mr. Wefers Bettink has chaired the Implementation Project for .NL Domain Name Arbitration in the Netherlands. He has been a WIPO Domain Name Panelist since 2000 and regularly lectures on topics related to domain names.

Mr. Wefers Bettink was admitted to the Amsterdam Bar in 1987.

Contact: Houthoff Buruma
Gustav Mahlerplein 50
1082 MA Amsterdam
The Netherlands
T +31 20 605 63 67
F +31 20 605 67 15
E w.bettink@houthoff.com
bettink

External Faculty

Aimee Gessner, a national of Canada, is Senior Trademark Counsel at BMW AG, the German automobile manufacturer based in Munich. She is responsible for trademark and other intellectual property matters of the BMW Group internationally, in particular for the North and South American markets. Her role as trademark counsel extends to various subsidiaries and divisions of the BMW Group, including Rolls-Royce Motor Cars Ltd, MINI, BMW Motorrad and Husqvarna Motorcycles . Her other areas of expertise include licensing, Community Trademark prosecution and opposition proceedings, as well as Internet and Domain Name issues. She has established and implemented the corporate policy and strategy with respect to BMW Group domain names and is experienced in drafting and filing UDRP complaints.

Ms. Gessner is a member of the Bar of the State of New York, USA and is also admitted to practice as a Solicitor of England and Wales. She is also a member of the Munich Chamber of Attorneys (Rechtsanwaltskammer).

Contact: BMW Group
Department of Trademarks, Designs, Intellectual Property Related Issues (AJ-35)
80788 Munich
Germany
T +49 89 382 30465
F +49 89 382 33050
E aimee.gessner@bmw.de
gessner