WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes

Jane Lambert

On Monday 15 April, 2013 I chaired a meeting of the monthly arbitration forum of the Irish branch of the Chartered Institute of Arbitrators. The topic was "WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes." The speakers were my colleague, Joseph Dalby of the 4-5 Gray's Inn Square Intellectual Property and Technology Law Group and Kate Colleary, Head of Intellectual Property and Data Protection at the Dublin office of Eversheds.

The meeting took place at the Dublin Dispute Resolution Centre which is a joint venture of the Chartered Institute of Arbitrators and the Irish Bar. It is in the Distillery Building in Church Street, a few hundred yards from the Four Courts where the superior courts sit.  According to the Centre's website:

"The centre has four rooms designed specifically for holding arbitrations, in addition to five ancillary breakout / meeting rooms. All rooms have power and data direct to tables and are furnished to an extremely high standard. In addition to high-quality meeting space, the centre can also arrange a range of other services onsite, including:

• Videoconferencing

• Teleconferencing

• Stenography and transcription services

• Translation services 

• Catering

• Printing / faxing / copying"

In other words, everything that one could reasonably expect for arbitration, mediation and other forms of dispute resolution.  Some idea of the facilities can be obtained from the photos above and I can say that they are even more impressive in reality.

Ireland is a good place for arbitration.  Like Scotland (but unlike England and Wales) it has incorporated the UNCITRAL Model Law into its law (see s.6 of the Irish Arbitration Act 2010).   It has also established a Commercial List within its High Court which can support commercial arbitrations including those relating to intellectual property.

In her talk, Kate discussed WIPO, its Arbitration and Mediation Centre, its dispute resolution service for generic and many country code top level domain names and the elements that a complainant must prove to obtain the transfer of a domain name and she guided us through a typical dispute.  She quipped that the 26 April, the anniversary of the implementation of the WIPO Convention ("World Intellectual Property Day") was IP practitioners' St Patrick's Day and that she and her colleagues in Eversheds around the world will arrange special events to celebrate it.   One of the countries for which the WIPO provides domain name dispute resolution services is Ireland (the whole island and not just the Republic). Joseph had helped to draw up the Irish Dispute Resolution Policy which is significantly different from the ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP"). He highlighted some of those differences in his presentation and compared the Irish Policy to Nominet Dispute Resolution Service Policy for the ".uk" space and the Czech Court of Arbitration's Rules for the ".eu" space. He also mentioned the new top level domains and the dispute resolution procedures that are shortly to be introduced by the WIPO.

There were several distinguished lawyers in the audience.  After the meeting I managed to speak to some of them including Alistair Payne, who sits with Joseph and me on the WIPO panel, and Julie Shackleton of the Irish Law Society.  Meeting Julie was particularly fortuitous because earlier in the day I had visited Cruickshanks, one of the leading firms of patent and trade mark attorneys in the Republic of Ireland, and had discussed the possibility of an intellectual property workshop in Dublin with Mary Rose O'Connor and Seamus Doherty of that firm. Julie thought that such a workshop was a great idea.   We have each mentioned it to our respective colleagues  and have found support on both sides of the Irish sea.   We have pencilled in the first quarter of 2014 for the event.

Such a workshop will be a two way learning experience for businesses and professional advisers from both countries.   We in the United Kingdom have much to learn from Ireland as well as resources and experience to share.  Despite the currency crisis and the worldwide recession there is still plenty of innovation and enterprise in the country. Cruickshanks is in the Sandyford Business Centre on the outskirts of Dublin and is just across the road from Microsoft and many other high tech companies.   I described the area in my address to the meeting as "the powerhouse of the tiger economy." Incidentally, Dublin has an excellent transport system with trams that whisked me from Sandyford to the city centre in 20 minutes and bus stops that predict accurately the arrival of buses. Though most things in Ireland seem to be more expensive than here, intellectual property services are very reasonable. Cruickshanks, for instance, offer a joint UK and Ireland patent application package for the amount in euros that many firms here would charge in pounds for just the UK.

In the morning I visited Ms Justice Laffoy's court.   I had seen her in action on my last visit to Dublin shortly after she had been appointed,   She was dealing with company cases and seemed a very agreeable tribunal.   Afterwards I lunched with James Bridgeman, another WIPO panellist and  intellectual property lawyer and arbitrator, who gave me a tour of the Law Library and a good briefing on intellectual property, the legal services market and business in Ireland.   My last view of Dublin was of the new financial district along the banks of the Liffey from the airport bus.   Financial crisis or not, there are still a lot of big names in smart modern buildings there.

In a very long day I saw most of what I had come to see and did most of the things I had hoped to do  The only exception  was the National Leprechaun Museum but one always needs an excuse to come back.   I have a client in Belfast who has invented something wonderful which I hope will lead him to a crock of gold. Maybe inventors are modern day leprechauns.

If anyone wants to discuss this article, contact Joseph for advice on Irish law or representation in the Irish courts or other tribunals or any of us for advice on intellectual property law or arbitration, please call +44 (0)20 7404 5252 or complete our contact form. Remember you can also follow us on twitter.