Trademark Post-Delegation Dispute Resolution Procedure

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The Trademark Post-Delegation Dispute Resolution Procedure (PDDRP) is a rights protection mechanism (RPM) designed to provide trademark holders (whether their marks are registered or not) to dispute the actions of a gTLD registry operator.[1] The mark holder can challenge the management of a gTLD, or a "bad faith" policy of registering second-level domains within a gTLD. PDDRP was recommended for use by various community participants, such as the World Intellectual Property Organization (WIPO) and Implementation Recommendation Team (IRT).[2] Under the Registry Agreement, a registry operator must participate in the procedure and is bound by decisions under the procedure.

Background

The PDDRP was first proposed by the IRT in its report to ICANN.[3] The IRT called for some sort of "Post-Delegation Dispute Mechanism" (PDDM), and proposed a structure and process that is materially similar to the PDDRP.[3]

Complaint Procedure & Standards

There are two available claims under the PDDRP:

  1. Top-level: claimant must show abuse of a gTLD string that is "identical or confusingly similar" to the trademark in order to take commercial advantage of the mark, dilute the distinctiveness of the mark, damage the reputation of the mark holder, or create a likelihood of confusion.[4]
  2. Second level: claimant must show "a substantial pattern or practice of specific bad faith intent" to profit from "systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark," with the same consequences as claims at the top level: commercial advantage, dilution, damage to reputation, or consumer confusion.[4]

Both claims carry a heavy burden of proof for the claimant. The evidentiary standard for both claims is "clear and convincing," which is considered a more rigorous standard, though not as rigorous as standards in criminal cases (beyond a reasonable doubt).[4][5] At the second level, the procedure document takes pains to exonerate the registry operator of the actions of unaffiliated registrants:

In other words, it is not sufficient to show that the registry operator is on notice of possible trademark infringement through registrations in the gTLD. The registry operator is not liable under the PDDRP solely because: (i) infringing names are in its registry; or (ii) the registry operator knows that infringing names are in its registry; or (iii) the registry operator did not monitor the registrations within its registry.
A registry operator is not liable under the PDDRP for any domain name registration that: (i) is registered by a person or entity that is unaffiliated with the registry operator; (ii) is registered without the direct or indirect encouragement, inducement, initiation or direction of any person or entity affiliated with the registry operator; and (iii) provides no direct or indirect benefit to the registry operator other than the typical registration fee (which may include other fees collected incidental to the registration process for value added services such enhanced registration security).[4]

After receiving the initial complaint, the dispute resolution service provider reviews the complaint for completeness and compliance with the procedural rules. Then, the provider appoints a one-panelist "Threshold Review Panel" to review the validity of the claim.[4] This process is somewhat comparable to a summary judgement proceeding[6] in civil court: the complaint is evaluated for sufficiency of evidence, proof of harm, and other proofs of fact. However, it is initiated automatically rather than on motion from one of the parties. It can also create additional costs for the complainant. In WIPO's supplemental procedural rules, for example, the respondent has the option to submit a $500 filing fee, which requires complainant to match the fee. If the complaint does not pass threshold review, respondent's fee is refunded.[7]

Adoption and Use

Perhaps because of the difficulty of proving a case, the PDDRP mechanism has not been utilized. ICANN has established agreements with three PDDRP service providers: WIPO, the National Arbitration Forum, and the Asian Domain Name Dispute Resolution Centre.[1] None of these service providers have reported decisions of cases under the PDDRP. The Final Report of GNSO's Phase 1 Review of all Rights Protection Mechanisms notes that there has never been a complaint.[8] The GNSO recommended that it be made more clear that proceedings could be initiated by a group of claimants against a specific registry operator.[8] The recommendation notes that this was always implied by the procedures, but that clarifying the right for a "class" of complainants to initiate a complaint provides clarity regarding the potential for a collective complaint against a registry operator.[8]

Criticsm

During preparation of the Applicant Guidebook, RySG argued that the PDDRP was unnecessary, and redundant to existing processes. [9]

References