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les Nouvelles - December 2009


WIPO Domain Name Cases Offer Trademark Licensing Lessons

Hee-Eun Kim

Munich IP Law Center, Max Planck Inst. For IP, Competition & Tax Law, LLM Student, Munich, Germany

1. The Uniform Domain Name Dispute Resolution Policy

Avoiding jurisdictional and cost problems associated with the court system, the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by ICANN at the initiative and with the assistance of the World Intellectual Property Organization (WIPO), has proven to be an effective administrative mechanism against cybersquatting, the abusive registration of domain names that copy or play off trademarks. WIPO’s Arbitration and Mediation Center has administered close to 16,000 cases covering some 27,000 domain names, mostly in the .com domain and frequently involving trademarks in biotechnology and pharmaceuticals, banking and finance, the Internet and IT, retail, and entertainment. The two-month UDRP procedure, conducted largely online, results in easily implemented decisions by WIPO-appointed panelists.

Panelists will order transfer of the domain name if the complaint meets a three-part test: (1) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the respondent’s domain name has been registered and is being used in bad faith. For the second and third parts of this test, the UDRP provides actual (non-exhaustive) scenarios, which facilitate parties’ and panelists’ tasks. For example, the respondent is deemed to have rights or legitimate interests in the domain name if, before receiving notice of the dispute, it has used, or has made demonstrable preparations to use, the domain name or a name corresponding thereto in connection with a bona fide offering of goods or services.

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