WIPO Panellists Meeting

WIPO Head Office

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Jane Lambert

Last Wednesday I attended the annual domain name panellists' meeting at the World Intellectual Property Organization ("WIPO")'s head office in Geneva. The meeting normally takes place on the third Monday of October but this year it was postponed until December.

The WIPO is one of five domain name dispute resolution service providers that have been approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") for the resolution of disputes between trade mark owners and those who have registered domain names. The other service providers are the Arab Centre for Dispute Resolution, the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court Arbitration Centre for Internet Disputes and the National Arbitration Forum.

By a memorandum of understanding between the US Department of Commerce and ICANN dated 25 Nov 1998 the US government entrusted the oversight and management of the domain name system to ICANN. By paragraph C-3 of the memorandum ICANN agreed to:

"Collaborate on the design, development, and testing of a plan for introduction of competition in domain name registration services, including:

a. Development of procedures to designate third parties to participate in tests conducted pursuant to this Agreement.
b. Development of an accreditation procedure for registrars and procedures that subject registrars to consistent requirements designed to promote a stable and robustly competitive DNS, as set forth in the Statement of Policy.
c. Identification of the software, databases, know-how, intellectual property, and other equipment necessary to implement the plan for competition."

The accreditation process devised by ICANN pursuant to paragraph C-3 (b) of the memorandum requires registrars of generic top level domain names to enter an accreditation agreement with ICANN. Under the latest version of the agreement domain name registrars have to incorporate into their agreements with those seeking to register domain names dispute resolution procedure provisions known as the Uniform Domain Name Dispute Resolution Policy ("UDRP"), Under the UDRP, domain name holders have to agree to refer any dispute between themselves and a trade mark owner to a "mandatory administrative proceeding" before a panellist appointed by an accredited dispute resolution service provider.

The cost of the proceeding is born entirely by the complainant unless the respondent opts for the appointment of a panellist of his choice to sit with a panellist of the complainant's choice and a presiding panellist appointed by the service provider, in which case the respondent pays the extra cost. The WIPO's fee for the appointment of a single panellist is US$1,500 of which $1,000 goes to the panellist and the balance to the WIPO Arbitration and Mediation Centre ("the Centre"). The fee for a 3-member panel is US$4,000 of which $1,500 goes to the presiding panellist, $750 to each co-panellist and $1,000 to the Centre. A decision is rendered within a matter of weeks. If the panel finds for the complainant, the registrar is obliged to transfer the domain name to the complainant after 10 working days unless the respondent challenges the order to transfer the domain name in the courts.

The matters that a complainant must prove are as follows:
(i)  the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

There are in practice four probanda because the complainant has to prove that the domain name was registered and is being used in bad faith. Proceedings are almost always in writing though the panel has the power under rule 13 of the UDRP Rules to conduct a hearing in an exceptional matter.

There is no appeal against a panel's decision though a respondent may apply to a court for an order not to transfer the domain name. For that reason. complainants have to submit to the jurisdiction of the courts where the registrar is domiciled or those where the domain name appears to be domiciled when they bring a complaint (rule 3 (b) (xiii) of the Rules). Theoretically, the administrative proceeding is an interlocutory procedure that exists to assist the courts but in practice there are very few challenges to panels' decisions. Consequently, those decisions tend to be final.

I have been a panellist for the WIPO for just over 10 years. Most of the disputes that have come before me have been undefended.  Even in those uncontested cases panels have to examine the complaint and make sure that the three elements mentioned above have been established.  In several of the cases that have been contested I have served as a co-panellist on a 3-member panel.

The annual conference is one of the means by which the WIPO maintains the quality and consistency of its panellists' decisions. The conference begins at 09:00 and there is a full day of talks until 18:00 which are broken only by lunch in the WIPO canteen and short breaks for morning coffee and afternoon tea. Those talks discuss issues that have arisen in the course of the year. Most of them are given by members of the WIPO panel. The rest are by guest speakers or members of the Centre's staff. As at Chatham House, those attending the meeting are free to use any information that they may receive but they may not reveal the identity or affiliation of the speakers, or that of any other participant. The information that I have received in those talks has been useful not only in my work as a panellist but also whenever I have been asked to advise on a domain name dispute or a transaction involving domain names.

I enjoy the annual conferences very much. Over the years I have made the acquaintance of many of the panellists and several members of the WIPO's staff. It is always good to see them.  Although the focus is on domain name dispute resolution we touch on other aspects of WIPO's work. This year, for instance, we were shown WIPO's new conference hall which is capable of accommodating over 900 participants.

Should anyone wish to discuss this article or domain name matters in general, he or she may call me during office hours