These are the slides of the presentation that my colleague, Joseph Dalby of the IP and Tech Law Group of 4-5 Gray's Inn Square, gave to the monthly arbitration forum of the Irish branch of the Chartered Institute of Arbitrators. Joseph had helped to set up the Irish domain name dispute resolution policy and he discussed it in some detail highlighting some of the differences between the Irish policy, the ICANN Universal Domain Name Dispute Resolution Policy ("UDRP"), the Nominet Dispute Resolution Service Policy and the Czech Court of Arbitration Rules for the resolution of disputes in the ".eu" top level domain name space. Joseph also discussed the legal issues likely to arise from the new generic top level domain names.

1. Chartered Institute of Arbitration
Irish Branch
Monthly Round Table
Arbitration Forum
“WIPO Arbitration: current trends with intellectual &
domain name disputes”
Domain Name Disputes
By Joseph Dalby BL
Monday 15 April 2013
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2. Chartered Institute of Arbitration
Irish Branch
Monthly Round Table
Arbitration Forum
“WIPO Arbitration: current trends with intellectual &
domain name disputes”
Domain Name Disputes
By Joseph Dalby BL
Monday 15 April 2013
2

3. Dispute Resolutions Procedures
for .ie, .com and .eu domains
Joseph Dalby BL
Law Library, Dublin
4-5 Gray's Inn Sq, London
3

4. Scope of Topic
Participants and policies
ICANN's Uniform Dispute Resolution Policy
.ie Dispute Resolution Policy
.ie DRP decisions
.eu Dispute Resolution Policy
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5. The Namespace
Generic Top Level Domains
- .com, .org., ..info
- sponsored domains, e.g. .aero,
.Brand/city/cause/TBA
Country-code Top Level Domains
- .ie, etc.
Left and right of the dot
www.joseph.dalby.ie/about
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6. Electronic Commerce Act 2000
Power to authorise, prohibit or regulate the
registration and use of the ie domain name in the
State.
“for the purpose of easy comprehension, fairness,
transparency, avoidance of deception, promotion
of fair competition and public confidence”
“after consultation with Minister and such persons
as appropriate” - Internet Corporation for
Assigned Names and Numbers?
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7. Comreg's Powers
(a) specify .ie registry
(b) prescribe registration policies, including revocation
(c) appeal procedures for refusal / revocation
(d) fees
(e) other matters
(none acted upon?)
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8. Dispute Resolution Model
ICANN / Registry Policy
Compulsory contractual submission to
“administrative procedure” by registrant
Registrar re-selling policy
Accredited dispute resolution providers
Neutrals
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9. .ie Dispute Resolution Policy
1.1 The Registrant agrees to submit to a mandatory
administrative proceeding
… before an independent and impartial panel (“the
Administrative Panel”).
The Administrative Panel shall be appointed by the
World Intellectual Property Organization (“WIPO”)
Arbitration and Mediation Center (“the Provider”)
… in accordance with the WIPO Dispute Resolution
Rules of Procedure for .ie Domain Name
Registrations
… in the event a Complainant claims that: 10

10. .ie DRP
1.1.1 a domain name is identical or
misleadingly similar to a Protected Identifier
in which the Complainant has rights; and
1.1.2 the Registrant has no rights in law or
legitimate interests in respect of a domain
name; and
1.1.3 a domain name has been registered
or is being used in bad faith. 11
.

11. Reasons for Adaptations
.ie is managed registry
Restrictions on registration
– Authentication and documentary proof
– Real and substantial connection with
Ireland
Cross-border reach (32 counties)
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Non-commercial and fair use - ?

12. Limitations on adaptations
1.1.3 registration or use in bad faith
1.2 Registration is not evidence of rights in law
1.3 Protected Identifiers include trade and service
marks protected in the island of Ireland.
6.1 A Panel decision to transfer a domain name
registration is subject to the prevailing party
meeting the registration conditions for .IE
.ie Whois does not show date of registration
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13. Decisions
36 in 10 years arising from facebook.ie
180,000+ registrations whatcar.ie
including
kelkoo.ie
cartridgeworld.ie
adidas.ie
groupon.ie
Buy-sell.ie
monsterfinance.ie
ikea.ie
todayfm.ie
three.ie
taxassist.ie
ebay.ie
fatboy.ie
champagne.ie
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14. Cross-border issues
Consistent with UDRP, the complainant must establish a
prima facie case of factors within the the knowledge and
control of the respondent.
Evidence of trade with Ireland suffices.
UK Trademarks is proof of protected identifier because
enforceable in N. Ireland, but not third countries (cf
Nominet). .
cf. If no trademark, businesses outside 32 counties must
demonstrate real and substantial connection. (e.g
shopelectric.ie)
Amount of turnover irrelevant / need for breakdown
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(asos.ie)

15. ICANN UDRP
(i) domain name is identical or confusingly
similar to a trademark or service mark in
which the complainant has rights; and
(ii) no rights or legitimate interests in respect
of the domain name; and
(iii) domain name has been registered and is
being used in bad faith.
“rock, paper, scissors?” 16

16. UDRP, Para 2
By applying to register a domain name, or by asking us to
maintain or renew a domain name registration, you hereby
represent and warrant to us that (a) the statements that
you made in your Registration Agreement are complete
and accurate; (b) to your knowledge, the registration of the
domain name will not infringe upon or otherwise violate
the rights of any third party; (c) you are not registering the
domain name for an unlawful purpose; and (d) you will not
knowingly use the domain name in violation of any
applicable laws or regulations. It is your responsibility to
determine whether your domain name registration
infringes or violates someone else's rights.
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17. Registration or Use
Ex ante registration system
Drawing away hits (assumed advertising revenue
Offers to sell / privilege
Incorporation for purposes of registration
(daftmotors.ie, monterfinance.ie
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18. Procedure
WIPO Dispute Resolution Rules of Procedure for .ie
Domain Name Registrations
No material differences
Any person or entity
Copy of the complaint to the Registrant and IEDR
Registry locks down domain name. 19

19. Features
Written – hearings possible
One or three panels
Panel regulates procedure
Subject to equitable treatment (“equity”?)
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Reasoned decision, which Registry accepts.

20. Judicial Control
WIPO Rules:
Panel has discretion to suspend or terminate or to
proceed to a decision
Party not precluded from initiating litigation
IEDR – a judicially reviewable body?
– body exercising statutory powers?
– Cyberbritain JR in UK
Does Arbitration Act 2010 apply?
– Is Ireland place of arbitration? 21

21. .eu Dispute Resolution
Commission Regulation (EC) No 874/2004
1. An ADR procedure may be initiated by any
party where:
(a) the registration is speculative or abusive
within the meaning of Article 21;
Thereafter adopts the same cadre of
principles as for UDRP
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22. .eu ADR
.eu Alternative Dispute Resolution Rules
Administered by Arbitration Court attached to
the Czech Chamber of Commerce
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23. ECJ Decisions

‘licensees of prior rights’ do not refer to a
person who has been authorised by the
proprietor of the trade mark concerned
solely to register, in his own name but on
behalf of that proprietor, the domain

bad faith can be established by
circumstances other than those listed in
Article 21(3)(a) to (e) of that regulation.
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24. Future
General trend is to liberalize availability
Sponsored and personalisation of names
What happens for Pages on Facebook, identities
on Skype, profiles on LinkedIn?
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25. Joseph Dalby BL
Law Library, Four Courts, Dublin 7
01 817 7700
Joseph@Dalby.ie
4-5 Gray's Inn Sq, Gray's Inn, London
020 7404 5252
www.4-5.co.uk
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