Trademark Post-Delegation Dispute Resolution Procedure

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ICANN Policy
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Adopted: 2013
Summary: addresses trademark disputes when the registry is complicit
in trademark infringement
Addresses: Cybersquatting at the Registry Operator Level
Also addressed by U.S. Legislation: N
Related to: PICDRP, 2013 RA, Additional Rights Protection Mechanisms

The Trademark Post-Delegation Dispute Resolution Procedure (TM PDDRP) or PDDRP is aimed at preventing trademark abuse or infringement, like cybersquatting, at the registry level.[1] In other words, if registries actively engage in these abuses or facilitate them, they can be held accountable through PDDRP proceedings.[2]

Policy & Rules

  • There are two types of complaints covered under the PDDRP:[3]
  1. Top Level Complaints: this type of complaint would apply if the gTLD extension used by the registry operator was abusive or infringing on a trademark.
  2. Second Level Complaints: this type of complaint would apply if the registry was abusing well-known marks and actively benefiting from trademark infringement at the second level. Ways a registry can do this are consistently encouraging the purchase of trademarked domains by non-owners or acting as the registrant itself to directly benefit from cybersquatting activities. It is important to note that a "registry operator is not liable under the Trademark PDDRP solely because infringing names are in its registry."[4]
  • Complains must include specific information, such as proof that the complainant has rights to the trademarked name or is an agent of the rights holder, an explanation of the abuse, details about how the complainant has attempted to resolve the issue with the registry operator at least 30 days before issuing the complaint, and a declaration of harm.[3] Specific formatting and more detailed information about the necessary form and content of the complaint can be found in the PDDRP rules.[5]
  • The complainant must pay an initial fee within 10 days of filing the complaint; although, if the complainant prevails, he/she is later reimbursed.[3]
  • Monetary damages cannot be awarded in PDDRP cases.[3]
  • If a registry is found to have "acted with malice" by an expert panel, its RA can be terminated, or it can face other ICANN sanctions.[3]

Service Providers

ICANN approved service providers for PDDRP proceedings include:[6]

Note: these service providers also have their own supplemental rules for PDDRP cases.[1]

Procedural Timeline

This timeline is provided by the NAF as an outline of PDDRP proceedings:[7]

  • A complaint is filed with an approved service provider and initial fees are paid.
  • The Service Provider checks the complaint and sends it to the registry for a response.
  • Registry operator has the chance to respond.
  • The Complainant can then respond to the statements submitted by the registry.
  • A Threshold Panel of one person reviews the complaint and responses and decides whether the case should proceed or be dismissed.
  • The registry then has another chance to respond.
  • The Complainant can then submit a reply.
  • A one or three person expert panel is then appointed by the service provider to decide if the registry operator is at fault.
  • Once a determination is reached, the losing party can seek an appeal. Additionally, the expert panel can give a "false complaint" verdict in favor of the registry or a malice verdict in favor of the rights holder.[3]
  • Fees are paid by the losing party.

Additional Resources

Related Articles

References

  1. 1.0 1.1 http://newgtlds.icann.org/en/announcements-and-media/announcement-15oct13-en Internet Corporation for Assigned Names and Numbers (ICANN)
  2. http://newgtlds.icann.org/en/announcements-and-media/infographics/tm-protection Internet Corporation for Assigned Names and Numbers (ICANN)
  3. 3.0 3.1 3.2 3.3 3.4 3.5 http://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf (PDF download) PDDRP, Internet Corporation For Assigned Names and Numbers (ICANN)
  4. http://www.wipo.int/amc/en/domains/tmpddrp/guide/ World Intellectual Property Organization (WIPO)
  5. http://newgtlds.icann.org/en/announcements-and-media/announcement-15oct13-en PDF titled Trademark PPDRP Rules, Internet Corporation for Assigned Names and Numbers (ICANN)
  6. http://newgtlds.icann.org/en/program-status/pddrp Internet Corporation for Assigned Names and Numbers (ICANN)
  7. http://domains.adrforum.com/main.aspx?itemID=1945&hideBar=False&navID=524 National Arbitration Forum (NAF)