RE: [gnso-sti] REVISED: STI- Special Trademark Issues mailing list subscribers

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

FYI, WIPO just announced that they will be proposing a fast track UDRP under 
their supplemental rules authority that will focus on default cases. This may 
be intended to substantially preempt the proposed URS, and should probably be 
taken into consideration as the STI considers its recommendations on that 
matter.


http://www.managingip.com//Popups/PrintArticle.aspx?ArticleID=2328845&issueID=73516&categoryID=



WEEKLY NEWS - NOVEMBER 02, 2009 WIPO to launch fast-track version of the UDRP

02 Nov 2009

Trade mark owners will be able to request fast-track UDRP hearings at WIPO’s 
Arbitration and Mediation Center from early next year

The Center is to launch an expedited version of the Uniform Domain Name Dispute 
Resolution Policy (UDRP), designed for simple cases and those where the 
respondent does not challenge the complaint.

Center director Erik Wilbers described the move as a “watershed” and predicted 
that the fast-track would be requested in at least 50% of cases once it is set 
up.

The fast-track will also be cheaper than a full proceeding, though WIPO has not 
yet decided what the fees will be. Speaking to Managing IP, Wilbers said the 
fee will be “substantially reduced”.

The UDRP provides an arbitration service for IP owners who believe their rights 
have been infringed in domain names. Disputes are resolved by panels of one or 
three domain name specialists and the procedure is seen as a cheaper 
alternative to litigation.

The Center is likely to publish changes to its supplemental UDRP rules before 
the end of this year. These will be open for a 30-day comment period, meaning 
the new fast-track version could be effective in the first quarter of 2010.

Wilbers explained that all the changes necessary can be made by WIPO without 
the need for Icann to amend the UDRP: “We are not proposing to change the UDRP 
policy or rules at all. Instead, using the existing framework, WIPO expects to 
offer a new and more efficient fast-track option based on adjustment to WIPO 
case practice under the UDRP.”

He said the fast-track has become necessary due to the fact that there are now 
180 million domain names worldwide and this has had an impact on the type of 
disputes arising under the UDRP: “The domain name system has evolved. We have 
seen automated registrations, parking and pay-per-click and privacy issues. In 
addition, we have seen vast increases in domain name registrations. The 
language rules have also been abused in some cases.”

WIPO, which handles the majority of UDRP disputes, has published more than 
16,000 decisions since the policy was launched 10 years ago.

Three other agencies are also accredited by Icann to handle UDRP complaints. 
They are not directly affected by these changes.

Wilbers insisted that the changes would not deny rights to respondents: “The 
UDRP has to offer a flexible framework for fast-tracking cases. But the safety 
valves of panel discretion and recourse to court will of course remain, in 
addition to fully preserving current respondent rights.”

He said the fast-track is designed for “obvious cases, and will leave fully 
intact party options to use the standard UDRP process”.

The expedited procedure, which WIPO has been consulting on for about nine 
months, takes account of the fact that 25% of UDRP cases are settled. In 75% of 
the remaining disputes the case is not defended.

If a complainant requests a fast-track proceeding, and the respondent does not 
respond within the allotted 20 days, then the dispute will be sent to a panel 
who will issue a decision. Panellists can also choose to fast-track the case 
even if there is a response.

As with the full UDRP, panellists can decide either to reject the complaint, 
transfer the domain name or cancel it.

The decision will include all the details of the dispute, as well as a short 
summary of the reasoning, but is expected to be completed in just a few days.

Wilbers said he expected half of cases to use the fast-track, adding that it 
will give trade mark owners a new option: “To inform their filing choices from 
among WIPO options, I expect trade mark owners will assess the likelihood of 
the respondent defaulting or not.”

He added that the fast-track could also lead to simplification for brand 
owners: “Our proposed fast track makes use of our discretion under the UDRP to 
set filing fees and word limits for filed pleadings. And in terms of WIPO 
observed filing trends, some trade mark lawyers may be over-lawyering their 
complaints in more obvious cases at the moment.”

In an unrelated development, last week the Icann Board approved a 
proposal<http://www.icann.org/correspondence/wilbers-to-jeffrey-17sep09-en.pdf> 
to amend the UDRP Rules to make the UDRP paperless. The proposal still requires 
the UDRP service provider to send a hard copy written notice to the respondent 
when a UDRP proceeding is commenced.

Managing IP is committed to increasing its coverage of internet/domain name 
issues. Please click here<http://www.managingip.com/internet_domain_names> to 
let us know what topics you are interested in and request more information.

Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

________________________________
From: owner-gnso-sti@xxxxxxxxx [owner-gnso-sti@xxxxxxxxx] On Behalf Of Robin 
Gross [robin@xxxxxxxxxxxxx]
Sent: Saturday, October 31, 2009 1:49 PM
To: Glen de Saint Géry
Cc: gnso-sti@xxxxxxxxx
Subject: Re: [gnso-sti] REVISED: STI- Special Trademark Issues mailing list 
subscribers

Thank you, Glen,

>From NCSG:

4 NCSG Representatives:

Wendy Seltzer -NCSG
Konstantinos Komaitis - NCSG
Kathy Kleiman - NCSG
Robin Gross- NCSG

2 NCSG Alternates:
Mary Wong - NCSG
Leslie Guanyuan - NCSG

Thank you!
Robin


On Oct 31, 2009, at 8:13 AM, Glen de Saint Géry wrote:


Dear All,

The following people are subscribed to the Special Trademark Issues mailing 
list:

Gnso-sti@xxxxxxxxx<mailto:Gnso-sti@xxxxxxxxx>

Public archives at:
http://forum.icann.org/lists/gnso-sti/

"1. A GNSO Review Team will be comprised of representatives designated as 
follows: the Registrar and Registry Stakeholder Groups with two (2) 
representatives each, the Commercial Stakeholder Groups and the Non-Commercial 
Stakeholder Groups with four (4) representatives each, At-Large with one (1) 
representative, one representative from the Nominating Committee Appointees(1) 
and the Government Advisory Committee (GAC) with one (1) observer. Alternate 
members may participate in case of absence of the designated representatives;"

gTLD Registries Stakeholder Group

Davis Maher - Chair
Jeff Neuman
Chuck Gomes  GNSO Council Chair - observer

Registrar Stakeholder Group

Please identify TWO (2) principle participants and the alternates:

Jon Nevett- Registrar
Jeff Eckhaus - Registrar
Stéphane van Gelder - GNSO Council vice chair
Jean Christophe Vignes- Registrar

Commercial Stakeholder Group

Mark Partridge - IPC
Paul McGrady - IPC
Kristina Rosette IPC - Alternate

Please identify the principle participants and the alternates:

Zahid Jamil- CBUC
Mike Rodenbaugh - CBUC
Phil Corwin - CBUC

Non Commercial Stakeholder Group

Please identify four (4) principle participants and the alternates:

Wendy Seltzer -NCSG
Mary Wong - NCSG
Kathy Kleiman - NCSG
Konstantinos Komaitis - NCSG
Leslie Guanyuan - NCSG
Robin Gross- NCSG

Nominating Committee Appointee (NCA)
Andrei Kolesnikov

Alan Greenberg - At Large
Olivier Crépin-Leblond - At Large alternate

Government Advisory Committee (GAC) observer
Maimouna Diop

ICANN Staff:
Denise Michel
Kurt Pritz
Rob Hoggarth
Liz Gasster
Margie Milam
Marika Konings
GNSO Secretariat

Let me know if you have any questions and if anyone has been left off the list.
Thank you.
Kind regards,
Glen

Glen de Saint Géry
GNSO Secretariat
gnso.secretariat@xxxxxxxxxxxxxx<mailto:gnso.secretariat@xxxxxxxxxxxxxx>
http://gnso.icann.org









IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA  94117  USA
p: +1-415-553-6261    f: +1-415-462-6451
w: http://www.ipjustice.org     e: 
robin@xxxxxxxxxxxxx<mailto:robin@xxxxxxxxxxxxx>