Trademark Post-Delegation Dispute Resolution Procedure
Post Delegation Dispute Resolution Procedure (PDDRP) 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).[1] 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.[2]
Filing a complaint under PDDRP
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.
The complaint must include the following:
- The name and contact information of the Complainant
- The name and contact information of anyone authorized to act on behalf of the Complainant
- To the best of the Complainant's knowledge, the name and address of the current owner of the offending registration(s)
- Why the Complainant feels they have the right to complain
- A statement about the nature of the dispute, including explanations about the validity of the complaint and proof of perpetration.
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.
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.[3]
Criticism
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.[4]
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.[5]
References