Common concepts in International Intellectual Property Law

 

Abusive registration

This is a key concept under the Nominet Dispute Resolution Policy; there is no concept of an abusive registration under the UDRP. An abusive registration is one which was registered or acquired or has subsequently been used “in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

Anti-Cybersquatting Protection Act (ACPA)

A US law enacted on 29 November 1999. It amended the Lanham Act – the centrepiece of US trade mark legislation – and forms section 43d.

Arbitration

Domain name arbitration is the contractually based system of dispute resolution used to determine disputes about the proper ownership of domain names. It is distinct from traditional arbitration: a sophisticated system of private dispute resolution proceedings commonly used to determine international contractual disputes.

Bad faith

Under the UDRP a successful complainant must prove that the domain name was registered or is being used in bad faith. The concept of bad faith is not defined in the UDRP; however, four examples of circumstances which are evidence of bad faith are broadly summarised as follows. First, circumstances indicating that the respondent intended to sell the domain name to the complainant are evidence of bad faith. Second, so-called “blocking” registrations are evident of bad faith, providing they are part of a pattern of such registrations. Third, evidence of bad faith may be found in registrations intended to disrupt a competitor’s business. Finally, circumstances indicating the commercial use of a domain name which creates a likelihood of confusion between the domain name and the complainant’s mark are evidence of bad faith. The list is non-exhaustive.

Cancellation (Revocation)

One of the remedies permitted under the UDRP, Nominet Policy, and the .eu Regulation, but rarely employed. The usual remedy is transfer. Cancellation is also known as revocation.

ccTLD

This stands for country code top-level domain. Examples of ccTLDs include .us, .uk and .de.

Complainant

The person making a complaint via a domain name arbitration service about a domain name registration (analogous to a plaintiff or claimant in litigation).

Complaint

The document setting out the complainant’s case. There are detailed rules about what must go into a complaint. Typically, a complaint would include references to the provisions of the relevant policy document, a description of the factual circumstances of the case, arguments as to why the case should be found in the complaint’s favour, and references to previous decisions which support the arguments.

Cybersquatting

The practice of improperly registering or acquiring domain names in which others have rights.

Decision

The domain name dispute equivalent of a court judgment. There is no formal system of precedent in domain name arbitration. However, the arbitration bodies are loath to allow a diversity of interpretations of their rules, and in practice panellists will not usually depart from well-reasoned earlier decisions (or at least those that they know about).

Domain name holder

Another name for a registrant.

DRS

DRS stands for dispute resolution service. The acronym is commonly used to describe Nominet’s dispute resolution function, but is also useful outside the .uk context (e.g. to describe DRS providers generally).

Federal Trademark Dilution Act

US legislation providing a powerful remedy for the owners of famous trade marks. The FTDA was enacted in 1996. It was the first statutory amendment of the US Lanham Act to address the challenges presented by the Internet. Its main effect was to expand the protection available to famous marks by prohibiting dilution.

FTDA

Federal Trademark Dilution Act.

gTLD

This stands for generic top-level domain. Examples of gTLDs include .com, .net and .org. Compare ccTLDs.

IDNs (Internationalised Domain Names)

A domain name potentially containing non-ASCII characters, for example a domain name consisting of Arabic or Hebrew characters.

Legitimate Interests

To help defeat a complaint made under the URDP, a respondent should argue that he or she has legitimate interests in the domain name in dispute. A non-exhaustive list of ways of demonstrating a legitimate interest is set out in the UDRP. First, pre-dispute use of (or preparations for the use of) the domain name or a name corresponding to the domain name “in connection with a bona fide offering of goods or services” may constitute a legitimate interest. Second, respondents or their businesses being commonly known by the domain name may constitute a legitimate interest. Third, a legitimate non-commercial or fair use of the domain name may constitute a legitimate interest, providing that use does not misleadingly divert consumers of the complainant or tarnish the trade mark at issue.

NAF

The National Arbitration Forum is a major forum for the resolution of domain name disputes. NAF focuses upon North American domain name disputes. Arbitration proceedings using NAF are governed by the UDRP, the Rules and NAF’s Supplemental Rules. NAF also provides non-UDRP dispute resolution services, for example for disputes about .us and .kids.us domain names.

Nominet

The Nominet dispute resolution service deals with disputes involving .uk domain names (including .net.uk, .ltd.uk, .plc.uk, .co.uk, .org.uk and .me.uk). Nominet does not use the UDRP; instead, disputes are determined under Nominet’s own Policy and Procedure.

Panel

One or three panellists usually constitute the panel.

Panellists

The judges of the domain name dispute resolution system. Many are practising intellectual property lawyers; many NAF panellists are retired US judges.

Party

Legalese meaning a person who is involved in legal proceedings as a litigant. In the context of domain name arbitration proceedings, that means involvement as either a complainant or a respondent.

Passing off

The English-law tort of passing off has been inherited by many other common law jurisdictions. It is sometimes referred to (with some carelessness) as “unregistered trade mark infringement.” The registration and use of a domain name can constitute passing off.

Policy

The UDRP and the Nominet Policy are the most important documents in UDRP and Nominet arbitrations respectively. The equivalent rules in .eu Arbitrations are contained in the Regulation.

Procedure

The Nominet Procedure contains the detailed rules governing the conduct of Nominet domain name Arbitrations (for example, time limits for action).

Provider

The company or organisation that administers a domain name dispute resolution service. Some systems of domain name dispute resolution, such as the UDRP system, have more than one provider; others, such as the .eu system, have only one provider.

Registrar

A company or organisation that is accredited by a registry to register domain names.

Registrant

The person who “owns” (i.e. has the contractual right to use) the domain name. The registrant of a domain name can be found using a WHOIS service.

Registration agreement

The agreement entered into between a registrar and a registrant upon the registration or acquisition of a domain name. The registration agreement stipulates the manner of dispute resolution, and therefore underpins the whole domain name dispute resolution system.

Registration authority

The organisation administering the domain name extension in question. For example, Nominet it the .uk registry and EURid is the .eu registry. Sometimes called the registration authority.

Reply

The document in Nominet proceedings containing the complainant’s arguments in response to the respondent’s arguments in the response. It should not in general contain new arguments unrelated to points raised in the response. There is no equivalent in the UDRP or .eu procedures.

Response

The document containing the respondent’s arguments in response to the complaint.

Respondent

A person responding to a formal complaint about his or her domain name registration (analogous to a defendant in legal proceedings).

Reverse domain name hijacking

The improper use of domain name arbitration proceedings to dispossess a registrant of his or her domain name.

Rules

The Rules for UDRP supplement the UDRP itself. The Czech Arbitration Court also has a set of rules for .eu disputes.

Supplemental Rules

Under the UDRP, both NAF and the WIPO Mediation and Arbitration Centre issue their own Supplemental Rules, which supplement the UDRP and the Rules for UDRP, and include for example provisions about the costs of arbitration.

Trade Marks Act 1994

The centrepiece of the UK trade mark law regime, the 1994 Act has been frequently amended, usually to reflect developments in European law.

Transfer

The most important remedy in domain name arbitration proceedings. If the Panel determines that a complaint has been made out, the domain name will usually be transferred from the respondent to the complainant.

Typosquatting

The practice of improperly registering domain names which are very similar to names in which others have rights. A form of cybersquatting.

WHOIS

A directory service for looking up names and other details of domain name registrants.

WIPO

The World Intellectual Property Organization (WIPO) is an agency of the United Nations. WIPO’s Arbitration and Mediation Center was the first dispute resolution service accredited by ICANN. Arbitration proceedings using WIPO are governed by the UDRP, the Rules and WIPO’s Supplemental Rules. It is – along with NAF – one of the “big two” providers of dispute resolution services under the UDRP.

 

 

ajax loader

This site is protected by WP-CopyRightPro
Translate »
Copy Protected by Chetan's WP-Copyprotect.