A Legal Technical Framework for the Online Resolution of Domain Name Disputes
Christopher GIBSON <email@example.com>
As Internet technologies and applications evolve, along with emerging e-commerce, the legal issues surrounding the use of intellectual property on the Internet have given rise to complex international disputes. An example of this phenomenon is the increasing number of disputes concerning Internet domain names.
The World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center is developing an online mechanism for the resolution of Internet domain name disputes. This facility is to be offered in connection with the new international system for the registration of domain. In this connection, the Center has been designated to administer certain procedures for the resolution of disputes arising out of the registration of Internet domain names registered under the new generic top-level domain names covered by the Memorandum of Understanding on the Generic Top-Level Domain Name Space of the Internet Domain Name System (gTLD-MoU).
The envisaged dispute-resolution mechanisms, which aim to avoid the inherent limitations of national judicial remedies in dealing with conflicts of global dimensions, are online Administrative Challenge Panel (ACP) Procedure, a special procedure to be administered by the Center; online WIPO Mediation; and, where mediation was unsuccessful, online WIPO Expedited Arbitration. Thus, a third party considering that its rights are violated by a domain name registration may, without prejudice to any applicable rights to initiate court litigation, call the domain name registrant to any of these procedures.
A groundbreaking feature of the three envisaged mechanisms, and one that may in the future prove useful also for other types of disputes, is their online character. Parties will be able to file requests by completing an electronic form. With the possible exception of original documentary evidence, all submissions may be exchanged online through dedicated lines. In addition, parties and neutrals will be able to communicate simultaneously (an electronic chat facility), reducing the need for time-consuming and expensive in-person hearings.
A major challenge is presented by the development of the technical infrastructure necessary to support the proposed system. Working with external contractors, the Center is developing the software and hardware requirements. The dispute-resolution system will be Web-based, meaning that users may access the procedures through the Internet site of the Center. The site is being redesigned to include such functions as automatic notifications, a password-protected facility for the online exchange of pleadings and real-time communication, an electronic fee payment system, and access to a database of ACP determinations.
The presentation at INET'98 will describe the legal and technical aspects of the WIPO online system, as well as its suitability for other online dispute-resolution procedures. Of course, if necessary, the presentation can be split into two separate presentations, but we believe that a more seamless approach might be quite interesting and innovative and cause the audience to stretch a bit in its knowledge and understanding.
The amount of intellectual input and components subject to intellectual property rights has increased dramatically over the last decade. As Internet technologies and applications evolve, the emergence of electronic commerce, a new means for the use and transfer of intellectual property, has begun to significantly influence the way companies do business. The legal and technical issues surrounding intellectual property on the Internet have proliferated, giving rise to complex disputes. As the current trend continues, the expansion of electronic commerce on the Internet may soon lead parties to prefer to settle disputes arising out of such commerce in the same manner as such commerce is conducted.
The World Intellectual Property Organization's Arbitration and Mediation Center is developing an online, Internet-based system for administering commercial disputes involving intellectual property. This mechanism is to be made available initially for disputes involving Internet domain names, where an immediate need is expected to arise and certain assumptions can be made about the technical sophistication of the parties. In particular, the WIPO Center's online facility will be available for disputes arising out of the registration of Internet domain names under two new systems:
While the Center plans to make its online dispute-resolution services for these domain name systems available in the first quarter of 1998, it is envisaged that the Center's online facility will be available in mid-1998 for other types of commercial disputes.
A novel feature of WIPO's new dispute-resolution mechanisms is their online character. Parties will use digital communications to the maximum extent possible in the dispute-settlement procedures. They will be able to file requests by completing an electronic form. With the exception of original documentary evidence, all submissions may be exchanged online through secure channels. In addition, parties and neutrals will be able to communicate simultaneously (using electronic "chat" as well as, when available, audio and televideo facilities), thereby reducing the need for other potentially time-consuming and expensive means of communication and in-person meetings and hearings. It is expected that the online mechanism will also increase speed in the procedures while reducing costs, so that parties will prefer this alternative "forum" for its overall efficiency.
The development of the technical infrastructure necessary to support the proposed system has presented a major challenge for the Center. The system is intended to be Internet-based, meaning that users may access the procedures through the Internet site of the WIPO Center. The site is currently being redesigned to include such functions as forms for filing cases, automatic notifications, an electronic fee system, secure facilities for the online exchange of documents, links to real-time communication tools, and back-end databases to support the proper logging and archiving of documents and transactions.
The legal infrastructure also needed to be drafted, to establish separate versions of WIPO's standard rules to accommodate the online character of the proceedings. While the existing WIPO rules will remain in effect, the Center has been engaged in an effort to produce adapted versions of these rules, as well as draft new ACP Rules for the administrative procedure supporting the gTLD-MoU system discussed below.
WIPO has been designated to administer dispute-resolution procedures for the new gTLD-MoU system. The planned dispute-resolution alternatives, which aim to avoid the inherent limitations of national judicial remedies in dealing with conflicts of international dimension, are as follows:
A third party considering that its rights are violated by a domain name registration may, without prejudice to any applicable rights to initiate court litigation, require the domain name registrant (who is bound by virtue of the registration terms and conditions) to submit to any of these procedures.
The ACP procedure, in particular, is an administrative function designed to focus efficiently on one critical issue: which party has superior rights with respect to a particular domain name. A key document drafted by the Policy Oversight Committee, the governing committee for the gTLD-MoU system, the Substantive Guidelines Concerning Administrative Domain Name Challenge Panels, so restricts the jurisdiction of the ACP panels and introduces several novel remedies and substantive provisions. The Guidelines include suggested criteria for the ACP panels to apply in resolving disputes and create an "exclusion," so that a party with significant intellectual property rights in a given name may, rather than registering its domain name in all gTLDs, register only in the gTLD that is relevant to its business purposes and seek to exclude others from creating confusion by improperly registering its name in other existing and future gTLDs.
Disputes, of course, will not be decided by the WIPO Center itself, but by the ACP panelist(s), mediator(s), or arbitrator(s) that will be constituted in accordance with WIPO procedures and on the basis of the WIPO List of Neutrals. Any decision resulting from these procedures will be directly implemented by the Council of Registrars (CORE) for the new system, by making appropriate changes in the CORE database. Thus, there is a built-in enforcement mechanism.
WIPO has also been designated to administer dispute-resolution procedures for the new INternet ONE domain name system. The INternet ONE system seeks to facilitate users' access to domain names by creating a shared domain name depository, enabling entities with identical names to co-exist on the Internet. When matching domain names have been registered by two or more parties, a "distinguishing information page" will appear, listing not only the domain name for each entity, but also providing associated text identifying and describing each party as well as hypertext links to their own Internet sites.
Unless a third party chooses litigation, online WIPO Expedited Arbitration procedures, tailored for the INternet ONE system, will be applied in case such a dispute arises. The dispute-resolution mechanism will be restricted to the issues of rights with respect to the domain name and the corresponding listing information. A decision resulting from these procedures will be implemented directly by INternet ONE.
The WIPO Center is planning a series of one-day training programs to examine implications concerning dispute resolution in the online context. The objective of the programs is to train neutrals on WIPO's list both in the use of the legal procedures and in the online tools that will be an essential part of the new procedures. The sessions will also explore, in particular, new techniques that may be applied to facilitate settlement procedures given that communications may take place primarily through the online medium. Those individuals interested in participating in these training sessions should contact the Center.
WIPO has taken the approach of being able to quickly respond to organizational needs for Web-based, online dispute-resolution services. The Center develops customized dispute-resolution packages based on two internally developed systems; the first of which can be customized and put online within a matter of days, followed with a more powerful, high-volume system which is tailored to the needs of the organization based on feedback from users of the initial system.
In general, both systems support the secure filing of electronic documents and correspondence into a docket. These documents and correspondence are date and time stamped and are made available simultaneously to all parties (including the neutral) in the dispute. Similarly, parties to a dispute can exchange secure, confidential correspondence through an internal mechanism. When documents or correspondence is added to the docket, all parties are notified by a preferred mechanism (usually electronic mail). Similarly, recipients are notified when private correspondence is entered into the system. All notifications are of a general nature that simply informs the recipient that new information is available for a given case.
From an administrative perspective, the Center can perform many operations needed to ensure the smooth, timely progression of a dispute-resolution activity. For example, the process of selection of neutrals by the parties can occur in a completely online fashion, as can the addition of neutrals or panels of neutrals to a case. The collection and administration of fees associated with the arbitration and mediation process is automated and can be performed in a completely online environment through the use of credit cards and deposit accounts.
Security is provided through flexible methods based on the needs of the users. Digital certificates are supported, as are more traditional username/password mechanisms.
Further information about the WIPO Arbitration and Mediation Center
can be found at http://www.wipo.int. For information about the
gTLD-MoU system, see its Internet site at http://www.gtld-mou.org.
Information on the INternet ONE system may be found at http://www.io.io.