Difference between revisions of "Trademark Post-Delegation Dispute Resolution Procedure"

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'''Post-Delegation Dispute Resolution Procedure''' ('''PDDRP'''), previously known as the '''Post-Delegation Dispute Mechanism''' ('''PDDM'''),<ref>[http://www.icann.org/en/topics/new-gtlds/summary-analysis-irt-final-report-04oct09-en.pdf icann.org]</ref> is a rights protection mechanisms (RPM) for trademark holders, in which a trademark owner may take any infringement concerns straight to the [[registry]], bypassing domain name holder and the [[registrar]]. It is meant to be used for cases in which the registry profits from bad faith registration; it is not intended for instances where an infringing domain name exists within a registry. PDDRP was recommended for use by various community participants, such as the World Intellectual Property Organization ([[WIPO]]) and Implementation Recommendation Team ([[IRT]]).<ref>[http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-04oct09-en.pdf icann.org]</ref> As per the Registry Agreement, a registry operator must participate in the procedure and is bounded by the resulting determinations. PDDRP is one of the most effective means to counter bad-faith domain name registrations.<ref>[http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-04oct09-en.pdf icann.org]</ref>
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The Trademark '''Post-Delegation Dispute Resolution Procedure''' ('''PDDRP''') is a [[Rights Protection Mechanisms|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.<ref name="pddrp">[https://www.icann.org/resources/pages/pddrp-2014-01-09-en ICANN.org - PDDRP Resources]</ref> 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]]).<ref>[http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-04oct09-en.pdf ICANN Archive - Draft Trademark PDDRP], October 4, 2009 (PDF)</ref> Under the [[Registry Agreement]], a registry operator must participate in the procedure and is bound by decisions under the procedure.  
  
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== Filing a complaint under PDDRP ==
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==Background==
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The PDDRP was first proposed by the IRT in its report to ICANN.<ref name="irt">[https://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf IRT Report to ICANN], May 29, 2009 (PDF)</ref> 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.<ref name="irt" />
  
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Under the PDDRP, the complaint has to be filed electronically. All submissions must be made in English, although supporting evidence may be submitted in the trademark holder's language, provided that an English translation accompanies all evidence. The parties in the dispute are the trademark holder (Complainant) and the registry operator (Provider). The appropriate administrative proceedings will begin once the complaint has been filed with the Provider and the Complainant has been verified as an injured trademark holder of either a registered or unregistered trademark.
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==Complaint Procedure & Standards==
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There are two available claims under the PDDRP:
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#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.<ref name="proc">[https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf ICANN.org - PDDRP Procedure (PDF)]</ref>
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#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.<ref name="proc" />
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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).<ref name="proc" /><ref>[https://www.law.cornell.edu/wex/clear_and_convincing_evidence Definition of "clear and convincing,"] Cornell Legal Information Institute</ref> At the second level, the procedure document takes pains to exonerate the registry operator of the actions of unaffiliated registrants:
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<blockquote>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.<br />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).<ref name="proc" /></blockquote>
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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.<ref name="proc" /> This process is somewhat comparable to a summary judgement proceeding<ref>[https://www.law.cornell.edu/wex/summary_judgment "Summary Judgement,"] Cornell Legal Information Institute</ref> 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.<ref>[https://www.wipo.int/export/sites/www/amc/en/docs/supplrulestmpddrp.pdf WIPO - PDDRP Supplemental Rules (PDF)]</ref>
  
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The complaint must include the following:
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==Adoption and Use==
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* The name and contact information of the Complainant
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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.<ref name="pddrp" /> 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.<ref name="pdpreport">[https://gnso.icann.org/en/issues/council-recommendations-rpm-pdp-phase-1-report-10feb21-en.pdf RPM PDP Phase 1 Report], February 10, 2021 (PDF)</ref> The GNSO recommended that it be made more clear that proceedings could be initiated by a group of claimants against a specific registry operator.<ref name="pdpreport" /> 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.<ref name="pdpreport" />
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* The name and contact information of anyone authorized to act on behalf of the Complainant
 
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* To the best of the Complainant's knowledge, the name and address of the current owner of the offending registration(s)
 
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* Why the Complainant feels they have the right to complain
 
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* A statement about the nature of the dispute, including explanations about the validity of the complaint and proof of perpetration.  
 
  
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Complaints are limited to the lesser of 5000 words or 20 pages, excluding attachments. When submitting the complaint, the Complainant must pay a non-refundable filing fee. If the fee is not paid within 10 days, the submission is dismissed.
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==Criticsm==
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During preparation of the [[Applicant Guidebook]], [[RySG]] argued that the PDDRP was unnecessary, and redundant to existing processes. <ref>[http://www.gtldregistries.org/sites/gtldregistries.org/files/RySG.Comments.PDDRP_.112209.VoteAmendment.112609.doc gTLDRegistries.org - RySG Comments on Trademark PDDRP]</ref>
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All complaints will be reviewed by the Provider within 10 days of submission, and a response will be filed within 20 days. A reply from the Complainant may be filed in response. Then all of these documents will be reviewed by an independent panel within 30 days of the response and/or reply. Costs are to be covered by the losing party.<ref>[http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-04oct09-en.pdf icann.org]</ref>
 
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== Criticism ==
 
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The [[RySG]] submitted comments on the possible addition of the PDDRP to the Draft Application Guidebook arguing that the additional process would be unnecessary, as it would create overlap with existing processes. They go on to argue that PDDRP unnecessarily shifts responsibility for trademark enforcement to registries and away from ICANN; RySG believes that it should remain ICANN's responsibility to address the disputes, as it provides the proper neutrality between the trademark owner who might be harmed by bad faith registration, and one who overzealously attacks a registry instead of solving the dispute with the bad faith domain name holder. They go on to recommend better ways in which bad faith domain registration might be deterred.<ref>[http://www.gtldregistries.org/sites/gtldregistries.org/files/RySG.Comments.PDDRP_.112209.VoteAmendment.112609.doc gtldregistries.org]</ref>
 
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The return argument is that the inclusion of the PDDRP process in the guidebook is not intended to remove responsibility from ICANN in the cases where ICANN's actions are required; rather, it is intended to enhance ICANN's contractual compliance responsibilities and provide ICANN with independent judgement when required.<ref>[http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-04oct09-en.pdf icann.org]</ref>
 
  
 
== References ==
 
== References ==

Revision as of 23:54, 19 March 2021

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

  1. ↑ 1.0 1.1 ICANN.org - PDDRP Resources
  2. ↑ ICANN Archive - Draft Trademark PDDRP, October 4, 2009 (PDF)
  3. ↑ 3.0 3.1 IRT Report to ICANN, May 29, 2009 (PDF)
  4. ↑ 4.0 4.1 4.2 4.3 4.4 ICANN.org - PDDRP Procedure (PDF)
  5. ↑ Definition of "clear and convincing," Cornell Legal Information Institute
  6. ↑ "Summary Judgement," Cornell Legal Information Institute
  7. ↑ WIPO - PDDRP Supplemental Rules (PDF)
  8. ↑ 8.0 8.1 8.2 RPM PDP Phase 1 Report, February 10, 2021 (PDF)
  9. ↑ gTLDRegistries.org - RySG Comments on Trademark PDDRP


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