PROPOSED GUIDELINES

CONCERNING

ADMINISTRATIVE DOMAIN NAME CHALLENGE PANELS 

I. INTRODUCTION

A. Background 

1.  One of the difficult problems in relation to domain names is the unauthorized registration, or "warehousing" of second-level domain names which correspond to existing intellectual property rights, for the purpose of trading off those rights or of selling those domain names to the owner of the intellectual property right. Litigation in national or regional courts does not provide a comprehensive solution to these problems because of the world-wide character of the use of domain names. Further, it would be inappropriate for Registrars in the new CORE gTLD spaces to resolve, or to administer procedures for the resolution of, domain name disputes. 

2.  Consequently, the ethics of the Internet and the stability of the DNS require a procedure in which an intellectual property holder may challenge a second-level domain name itself in a convenient international administrative forum, to determine if that domain name violates the basic policies of the CORE gTLD space. 

B. The gTLD-MoU Dispute Policy Regarding Trademarks  

3.  The gTLD-MoU contains the following policy: 

"SECTION 2. - Principles 

The following principles are adopted: 

... 
4.  Registrars shall not be obligated to apply this policy themselves. Rather, the policy will be implemented by administrative domain name challenge panels (ACPs) authorized under Section 8 of the gTLD-MoU. Procedures for forming these panels, and the procedures under which they will operate, will be administered by the WIPO Arbitration and Mediation Center (the "WIPO Center"). Disputes will not be decided by the WIPO Center. 

D. Legal Basis for the Decisions of an Administrative Challenge Panel 

5.  The legal basis for the decisions reached by administrative domain name challenge panels (ACPs) is the authority of the gTLD-MoU system to manage the domain name space in the public trust, including the gTLD-MoU policy mentioned above and incorporated into the charter for each CORE gTLD. 

6.  The jurisdiction of an ACP is over a second-level domain name only. The ACP does not constitute a legal authority, and does not have jurisdiction over persons, or over the interpretation and enforcement of national or regional intellectual property laws. Rather, it is an administrative function which evaluates the conformance of domain names with the above-mentioned policy. Since the ACP has jurisdiction only over challenges based on an assertion that a second-level domain name registered under a CORE-gTLD does not conform to the charter of that gTLD, the establishment of this procedure is not in any way the creation of an international law, nor the establishment of an international court.  

7.  In particular, and importantly, the challenge procedure cannot preclude resort to a national or regional court. 

II. INTERPRETATION OF THE gTLD-MoU POLICY  

8.  Each phrase of the gTLD-MoU policy is explained below.  
9.  This policy is adopted and is intended to be implemented to prohibit, in the new gTLDs, practices such as trademark piracy or warehousing (cyber-squatting) which are currently widespread, and which add nothing positive to the Internet, but rather result in instability, uncertainty and mis-direction of resources. 
10.  It is typically the second-level domain name which contains the name of a trademark for the purpose of piracy or warehousing: for example, "famoustrademark.firm." 
11.  This policy is binding only with respect to TLDs which fall within the purview of the gTLD-MoU. In particular, it does not apply to ISO3166 TLDs. Further it will not apply to .com, .org and .net until they are shared among CORE Registrars. Once existing gTLDs become CORE-gTLDs this policy will be binding on existing registrations upon renewal. 
12. This phrase was chosen, since it is recognized that a trademark may also be injured by use in commerce of a sign which is not identical to the trademark. 

13.  Objective standards and criteria for applying this phase are discussed in these guidelines, below. 
14.  This policy would apply in the case of rights relating to strings of alphanumeric characters only. For example, trademarks which comprise graphical representations would not be covered; however an alphanumeric string used in conjunction with a graphical representation may be covered. 

15.  The term "alphanumeric string" was adopted instead of the simpler "name" or "word," to account for trademarks which are not names but which are alphanumeric strings (for example, numbers or combinations of letters and numbers).  
16.  This phrase is intended to make it absolutely clear that the administration of this policy would not in any way usurp the role, the authority or the prerogative of national, regional or international authorities to adopt, apply or interpret standards relating to any intellectual property rights, including standards for determining whether or when a particular right is a "well-known" or a "famous" right, whether or when a given right is infringed under national or regional law, and what the relationship may be between domain names and intellectual property rights in the context of any national or regional legal system. 

17.  The determinations made under this policy are made for the purposes of the administration of the CORE-gTLD name space, and for no other purpose. 
18.  The wording of this standard was chosen to avoid any confusion with existing national, regional and international standards (which use words such as "well-known" and "famous"). 

19.  This standard is an "entry standard". That is, a showing must be made that the string meets this standard in order to qualify for the administrative challenge panel procedures.  

20.  The phrase "is deemed" means "is deemed by the Administrative Challenge Panel" which administers this policy in a given proceeding. 

21.  The phrase "internationally known" means that the alphanumeric string should be known beyond a local area only; this recognizes the inherently international character of administrative challenge panels. The purposes of this policy would probably require the string to be known in a number of countries, the exact number depending on the population and market size of the countries. 

22.  Objective standards and criteria for applying this phrase are discussed in these guidelines, below. 
23.  This determination would naturally require an examination of existing national or regional rights. However, the term "demonstrable" has been chosen to indicate that such rights must already be susceptible to documentary demonstration; the existence of such rights cannot be proven in the first place in these administrative proceedings.  

24.  Objective standards and criteria for making such a showing are described in these guidelines, below. 
25.  This is the basic policy statement. Once an alphanumeric string has been deemed, for the purposes of this policy, to be internationally known, and existing intellectual property rights have been demonstrated, an exclusion could be decided by an ACP, subject to consideration of rights held by others. 

26.  ACP procedures would allow for two types of exclusion. First, the second-level domain name which was challenged could be excluded (that is, from the particular gTLD in which it was registered by another party). Second, a broader exclusion from some or all of the CORE-gTLDs could be applied for, in "exceptional cases." Such cases would include at least trademarks which are globally known. 

27.  Objective standards and criteria for exclusions are discussed in these guidelines, below. 
28.  It is recognized that many intellectual property rights, even those which are internationally known, are not unique. A trademark may be known throughout the world, and still be legitimately held by another person, for example in a given country or in a different field of commerce. 

29.  This sentence of the policy makes it appropriate for an ACP to take such other rights (not limited to intellectual property rights) into account in deciding whether or not a third party should be able to obtain and use a domain name which is identical or closely similar to one which would otherwise be subject to an exclusion. 

30.  Objective standards and criteria for such considerations are discussed in these guidelines, below. 

III. PROCEDURAL GUIDELINES FOR ACPs 

A. Membership of Challenge Panels 

31.  Panel members shall be chosen from a list of international experts who are knowledgeable in both the fields of trademarks and Internet domain names. The list shall be maintained by the WIPO Center, and shall be accessible to the public. 

32.  Panels shall consist of one member. However, either party may request that a panel consist of three members, on condition that the requesting party shall, unless the parties agree otherwise, pay the fees for the additional panel members. Where a panel consists of more than one member, one of the members shall act as Chairman.  

B. Procedures for Bringing a Challenge 

(a) Initiating a Challenge Procedure 

33.  A challenge procedure shall be initiated by submitting a completed challenge form to the WIPO Center, and paying the appropriate fee (see below). The person (natural or legal) submitting the request form shall herein be referred to as the "challenger." Challenge forms shall be available on the publicly available web site of the WIPO Center, and may be submitted via the Internet, e-mail, fax, regular mail, or special courier (for example, FedEx or DHL). The "date of receipt of the challenge form" shall be the date that it arrives at the WIPO Center; if it arrives on a weekend or other non-working day, the date of receipt shall be considered to be the first working day following. 

(b) Notification of the Domain Name Holder and Public Notice 

34.  The WIPO Center shall take whatever steps are necessary to notify, as immediately as possible, the holder of the domain name in question. The domain name holder shall have the opportunity to participate fully in the challenge procedure. 

35.  The WIPO Center shall immediately post the fact that a challenge has been lodged on its publicly available web site. Any party may thereafter apply to the ACP to participate in the proceedings, giving the justification for desiring such participation. The ACP may decide that a third party may, upon payment of the appropriate fees, participate fully (on the same terms as the challenger and domain name holder), that it may have the opportunity to submit comments for consideration by the ACP, or that it may not be heard. A third party having significant rights which would be affected by a decision of the ACP would normally be given permission to participate fully. 

(c) Suspension of the Domain Name 

36.  If any challenge is lodged within [15] [30] days of the date on which the information concerning the registration of the domain name becomes publicly available, the domain name shall be automatically suspended, upon payment of a bond by the challenger, for the duration of the challenge procedure. In any such case, the domain name holder may apply to the ACP to cancel the suspension, based on a showing of the relative harm that will be suffered by the parties. 

C. Timing and Deliberations 

(a) Time Table 

37.  Challenges may be lodged at any time. A time-table for communications, submission of documents and deliberations shall be developed and published by the WIPO Center. 

(b) On-Line 

38.  Procedures shall be conducted on-line (that is, over Internet or by e-mail) whenever possible. A domain name holder is presumed to have the technical capability of participating on-line.  

39.  If a challenger does not have the technical capability of participating on-line, it may request other modes of communication. These shall be, in order of preference, facsimile, special courier, or priority mail. Telephone conferences may be arranged if necessary. The extra expenses for the WIPO Center and the domain name holder resulting from such procedures shall be borne by the challenger.  

40.  A third party which is allowed to participate must use the form of communication decided on, at its own expense. 

(c) Submission of Documents 

41.  Submission of written documents prepared by the challenger, the domain name holder or any third party which is allowed to participate or submit comments, shall be in the form of communication used for the procedures. 

42.  Other written documents (that is, documents which are not prepared by the submitter, such as certificates of registration) shall be submitted and distributed by facsimile. 

(d) "Hearings" 

43.  Most challenges will be conducted and decided on the basis of written material. However, at the request of the challenger or the domain name holder, or on its own initiative, an ACP may decide to hold one or more "hearings." Such hearings shall be conducted, in order of preference, via Internet chat software, e-mail, or telephone conference.  

(e) "Fast-track" Procedures 

44.  Either party may, at any time, subject to payment of the appropriate fee, request that the challenge be put on a "fast-track." A challenge which is placed on the "fast-track" shall be concluded (barring delaying actions on the part of the requesting party) within thirty (30) days of the date of receipt of the date on which the request for "fast-track" status is lodged. 

45.  Fast-track procedures must be conducted on-line.  

D. Determinations 

46.  An ACP shall communicate among itself in making a determination regarding a challenge. Upon reaching a determination, the Chairman of the ACP shall communicate the determination, in a short written document which includes the justification for the determination, to the WIPO Center. 

47.  The WIPO Center shall inform the parties of the determination, and shall post the written determination on its publicly available web site. There shall be a reasonable period for submission of comments by appropriate third parties before a final determination is made (this period will be determined by the time table to be established by the WIPO Center; see below). The determination shall become final three days after the conclusion of this period, unless otherwise decided by the ACP. 

48.  The WIPO Center shall communicate the substance of any determination to CORE, which shall notify all registrars and shall take any steps necessary to implement the determination. 

E. Petitions 

49.  Any person may file one or more of the following petitions by submitting a completed petition form to the WIPO Center, and paying the appropriate fee. Petition forms shall be available at least on the publicly available web site of the WIPO Center, and may be submitted according to the same procedures as a challenge form. 

(a) Petition for Pro-Active Exclusion 

50.  A person which would otherwise qualify for a general exclusion under the ACP procedures, under the guidelines below, may petition an ACP for a pro-active general exclusion; that is, it may request an ACP to consider a general exclusion before a conflict arises. 

51.  Any such request shall be posted on the WIPO Center's publicly available web site. Any party may apply to the ACP to participate in the proceedings, as in the case of a challenge.  

52.  The procedures concerning such a petition shall be the same as for a challenge. 

(b) Petition for Exception from Exclusion 

53.  Any person may petition an ACP for an exception from an exclusion already granted; that is, it may request an ACP to allow it to use a second-level domain name which had previously been excluded, based on the existence of sufficient rights owned by or for the benefit of the petitioner.  

54.  The procedures concerning such a petition shall be the same as for a challenge. The challenger in the original challenge which resulted in the exclusion, [and any prior petitioners for exception from exclusion,] shall be notified and shall have the opportunity to participate fully. 

(c) Petition for Modification or Cancellation of Exclusion 

55.  Any person may petition an ACP to modify or cancel an exclusion already granted, based on a material change of circumstances.  

56.  The procedures concerning such a petition shall be the same as for a challenge. The challenger in the original challenge which resulted in the exclusion shall be notified and shall have the opportunity to participate fully. 

F. Language 

57.  The language of the procedures shall be English, or any other language agreed unanimously by all the persons who are participating fully in the procedures before an ACP. 

IV. SUBSTANTIVE GUIDELINES FOR ACPs 

58.  The following objective standards and criteria shall be applied by ACPs. These initial standards are set at a certain level, to make the ACP process manageable. The standards could be modified in the future, after public comment, to include a broader range of conflicts. 

59.  There may be several criteria under which standards can be met. Some criteria are conclusive; if met, they automatically result in fulfillment of the standard. Others are presumptive; that is, if met, they result in fulfillment of the standard, subject to rebuttal. Still others are possible; that is, they may or may not result in fulfillment of the standard, depending on the circumstances. 

60.  The criteria in each section are in the alternative (not cumulative). That is, fulfillment of one of the criteria is enough in each category. However, ACPs shall ultimately decide challenges based on a comparison of the relative circumstances and rights of the persons involved. 

A. "Internationally Known" 

61.  Conclusive. An alphanumeric string shall be deemed, for the purposes of this policy, to be internationally known, if that alphanumeric string is the subject of trademark registrations, for the same goods or services, owned by or held for the benefit of the same party, with effect for [25] [50] or more countries in at least 4 geographical regions as defined in Section 4.1.1 of the gTLD-MoU. (Throughout these guidelines, a regional or international registration shall be considered as having effect for the number of countries in which that registration has effect.) 

62.  Presumptive. Subject to rebuttal, an alphanumeric string shall be deemed, for the purposes of this policy, to be internationally known, if  
  1. the challenger presents documentary evidence that the holder of the domain name had made a spontaneous offer to sell or rent the domain name, either to the challenger in particular or to the public at large; or 

  2. the challenger presents evidence that the holder of the domain name in question is also the holder of additional domain name registrations which are identical or closely similar to alphanumeric strings which are the subject of intellectual property rights of others, and in which the domain name holder has no demonstrable rights; or 

  3. the alphanumeric string is the subject of trademark registrations, for the same goods or services, owned by or held for the benefit of the same party, with effect for [10] [25] or more countries. 
63. Possible. An alphanumeric string may be deemed, for the purposes of this policy, to be internationally known, based on an appropriate combination of factors including some or all of the following: 
B. "Demonstrable intellectual property rights"  

64. Conclusive. An alphanumeric string shall be deemed to be the subject of demonstrable intellectual property rights based on the submission of documentary evidence of one or more of the following: 
65.  An assertion of existing rights which are not demonstrable in the context of this policy would be common-law rights which have not been established by authoritative government sources (and must therefore be proven under national legal principles); rights of unfair competition; tradename rights which are not the subject of registration with a governmental authority, etc. ACPs are not qualified to make such determinations. 

C. "Identical or closely similar"  

66.  Conclusive. The second-level domain name in question shall be deemed to be identical to the alphanumeric string in question if the second-level domain name and the alphanumeric string are made up of the identical alphanumeric characters and punctuation marks in the identical order. (Throughout these guidelines, the term "punctuation marks" shall include hyphens, underlinings, periods, etc.) "Identical" in this context is thus intended to mean identical character-by-character, such that another domain name would not be allotted in the same TLD under the "first-come-first-served" rule. Punctuation marks are taken into account in determining "identical." 

67.  Presumptive. Subject to rebuttal, the second-level domain name in question shall be deemed to be closely similar to the alphanumeric string in question if the second-level domain name (or the second-level domain name plus the top-level domain name) and the alphanumeric string would be made up of the identical alphanumeric characters in the identical order if punctuation marks were ignored. Thus, "famous-trademark" would be closely similar to "famoustrademark" for the purposes of this policy, and "famoustrademark" would be closely similar to "famoustrade.mark", if .mark were a TLD.  

68.  Presumptive. Subject to rebuttal, the a second-level domain name in question shall be deemed to be closely similar to the alphanumeric string in question if the second-level domain name and the alphanumeric string are made up of the same alphanumeric characters in the same order, but differ only by a minor change or minor changes of spelling (misspelling or homonyms), or similar character replacement. "Closely similar" thus should also include, in most proceedings, obvious misspellings (famustrademark), homonyms (famoustraidmark, if traid were a word), replacement of letters by similar numerals (fam0ustrademark), etc.  

69.  Possible. The second-level domain name in question may be deemed to be closely similar to the alphanumeric string in question if the second-level domain name and the alphanumeric string are made up of the same alphanumeric characters in the same order, but differ only in ways that would be [clearly misleading] to a user of the Internet. "Closely similar" thus could include, depending on the circumstances, modified versions, for example, "famousmark.firm" or "trademarkfamous.firm", phonetic variations, for example, "foryou.firm" v. "4u.firm", etc.  

D. Exceptional Cases 

70.  A proceeding shall be deemed to be an exceptional case qualifying for a general exclusion if the alphanumeric string in question is the subject of trademark registrations, for the same goods or services, owned by or held for the benefit of the same party, with effect for [50] [100] or more countries.  

71.  A proceeding may be deemed to be an exceptional case qualifying for suspension and general exclusion as referred to in the preceding paragraph, based on an appropriate combination of the factors set out in Section IV.A, last paragraph, above, which are deemed to amount to the equivalent of the standard set out in the preceding paragraph. 

E. Defenses 

72.  Under the gTLD-MoU policy, an ACP shall give appropriate consideration to possible use of the second-level domain name in question by a third party that, for the purposes of this policy, is deemed to have sufficient rights. 

73.  Rights that may be deemed to be "sufficient rights" may include, but are not limited to, the following:  
F. Determinations 

(a) Exclusions in Non-Exceptional Cases 

74.  The result of a typical successful challenge will be a decision that the allocation of the challenged domain name in question should be excluded, and transferred, upon request, to the challenger. This means that the domain name will not be available for use by any person other than the challenger (or someone authorized by the challenger). 

75.  Possible. An ACP may exclude the second-level domain name in question from the top-level domain in which it was registered, if it deems, according to the above guidelines, that  
  1. the alphanumeric string in question is deemed to be, for the purposes of this policy, internationally known; and

  2. the alphanumeric string in question is the subject of demonstrable intellectual property rights held by or for the benefit of the challenger; and 

  3. the second-level domain name in question is identical or closely similar to the alphanumeric string in question; and 

  4. the holder of the domain name does not have sufficient rights to use of the second-level domain name (see Section E); and 

  5. there is no credible evidence of third party rights to the alphanumeric string. 
76.  The following factors may also be taken into account in making a comparison of the relative circumstances and rights of the domain name holder and the challenger. 
(b) Exclusions in Exceptional Cases  

77.  Since the challenge panel has authority with respect to all CORE gTLDs, it may also decide that the SLD should be excluded from several, or all, of the CORE gTLDs. Exclusion from other CORE gTLDs will be appropriate in special cases (for example, in the case of trademarks which are exclusively held world-wide); in such cases it will eliminate the need for unmanageable policing and litigation in the CORE gTLDs. There shall be a publication period for comment before the SLD is excluded from other CORE gTLDs. 

78.  Possible. An ACP may exclude the second-level domain name in question from all of the CORE-gTLDs, if it deems, according to the above guidelines, that  
  1. the proceeding is deemed to be an exceptional case; and 

  2. the alphanumeric string in question is deemed to be, for the purposes of this policy, internationally known; and 

  3. the alphanumeric string in question is the subject of demonstrable intellectual property rights held by or for the benefit of the challenger; and 

  4. the second-level domain name in question is identical or closely similar to the alphanumeric string in question; and 

  5. the holder of the domain name does not have sufficient rights to use the second-level domain name; and 

  6. there are not sufficient third party rights in the alphanumeric string. 
79.  Where the domain name holder does have sufficient rights such that the use of the second-level domain name in question should not be excluded, an ACP may still decide that the second-level domain name is excluded from some or all other CORE-gTLDs. 

(c) Other Determinations 

80.  In addition to exclusions and general exclusions, an ACP may, in appropriate cases, adopt one of the following other determinations: 
  1. Modification of the second-level domain name held by the domain name holder, to avoid conflict with the rights of the challenger; 

  2. An exclusion from some, but not all, of the CORE-gTLDs, in an exceptional case; 

  3. A sufficient showing has not been made, for the purposes of the gTLD-MoU policy, to determine that an exclusion or modification should be effected; 

  4. The proceeding is not appropriate for an ACP. This determination would be appropriate, for example, in a proceeding which involved conflicting rights which were relatively evenly balanced. In such proceedings, an ACP may, if it chooses, recommend that the dispute be submitted to mediation, arbitration, or other means of dispute resolution. 
81.  No other determination may be made by an ACP.  

82.  Any determination of an ACP shall carry no precedential weight whatsoever in any later national or regional court proceeding.  

G. Petitions 

83.  In considering petitions filed in the following cases, the ACPs shall apply the following guidelines: 

(a) Petition for Pro-Active General Exclusion 

84.  ACPs shall consider a petition for a pro-active exclusion, in one, several or all CORE-gTLDs, utilizing the same criteria and standards as if the petition were filed as a challenge in an exceptional case. 

85.  Parties who contest the petition may be invited by the ACP to participate fully in the proceedings, or to submit comments. A determination shall be made utilizing the same standards as would be used in a challenge. 

(b) Petition for Exceptions 

86.  Where a second-level domain name has been excluded from any of the CORE gTLDs, future applicants may obtain that second-level domain name in one of those CORE gTLDs only upon petition to an ACP, based on a showing of some independent right to use the name; the original challenger will be given the full opportunity to be heard before a decision is made. 

87.  Parties who contest the petition may be invited by the ACP to participate fully in the proceedings, or to submit comments. ACPs shall consider a petition for an exception from an exclusion utilizing the same criteria and standards as would be used in a challenge. 

(c) Petition for Modification or Cancellation of Exclusion 

88.  A third party may bring a petition to have an exclusion modified or cancelled, based upon a showing that the circumstances on which the exclusion was granted have since materially changed (for example, lapse of the trademark registration(s)).  

89.  Parties who contest the petition may be invited by the ACP to participate fully in the proceedings, or to submit comments. Upon a showing of a material change of circumstances, ACPs shall consider the modification or cancellation of an exclusion based on the new circumstances utilizing the same criteria and standards as would be used for a challenge. 

H. Appeal 

90.  Any ACP decision may be appealed to an appeals panel to be made up of [two] [three] members to be appointed by the WIPO Center from the list of potential ACP members (excluding the members of the ACP in the proceeding that is being appealed), plus [one] [two] individuals to be appointed by POC.  

91.  Appeals shall be based on the same materials that were presented to the ACP in the proceeding that is being appealed, and shall be decided on the basis of whether there was an obvious mistake of fact, or that the decision of the ACP in that proceeding was, based on those materials, manifestly unreasonable. An appeal may be dismissed without examination if it is apparent that there were no obvious mistakes of fact and the decision of the ACP was not manifestly unreasonable. 

I. De Novo Hearing by National or Regional Courts  

92.  Any case may be brought, at any time before, during or after the administrative challenge procedure, to a national or regional court, which would hear the dispute under its normal jurisdictional and substantive rules. 

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