WIPO End Report on Case Administration under the Sunrise Challenge Policy for .mobi and the Premium Name Trademark Application Rules for .mobi
TABLE OF CONTENTS
Between September 2006 and March 2007, the WIPO Arbitration and Mediation Center (the "WIPO Center") processed 18 challenges under the Sunrise Challenge Policy for .mobi ("Sunrise Policy") and the Rules for Sunrise Challenge Policy ("Sunrise Rules"), and 105 applications under the Premium Name Trademark Application Rules for .mobi ("Premium Name Rules"). The present WIPO Report provides a resume of the WIPO Center's administration of challenges under the Sunrise Policy and Rules and of applications under the Premium Name Rules.
The purpose of this Report is first to provide a historical, legal and statistical overview of this experience and second, where relevant, to help inform future domain name dispute resolution policies and practices. To assist in the latter purpose, the Report also reviews policy and processing issues that were encountered in the course of the administration of the .mobi Sunrise challenges and Premium Name applications. This review may be taken into account in the development and implementation of future domain name dispute resolution policies.
The new "sponsored" generic Top-Level Domain ("gTLD") .mobi was launched in May 2006 by Mobile Top Level Domain Ltd. (the "Registry"), as a domain "dedicated to delivering the Internet to mobile devices". At the request of and in collaboration with the Registry, the WIPO Center created and administered two .mobi-specific procedures.
The first special procedure was based on the Sunrise Policy and Rules, which allowed interested parties to challenge abusive registrations of .mobi names registered during a set registration period that had been reserved for trademark owners under the Sunrise Policy.
The second special procedure was based on the Premium Name Rules, a novelty in the domain name system. This mechanism enabled trademark owners to reclaim so-called Premium Names, the generic value of which had led the Registry to reserve these for auction or other commercial allocation in accordance with procedures sanctioned by the Internet Corporation for Assigned Names and Numbers (ICANN).
Both .mobi procedures are discussed in further detail below.
The WIPO Center and the Registry maintained a close working relationship throughout the drafting and implementation phases of both .mobi processes. This facilitated the expedient processing and handling of all Sunrise challenges and Premium Name applications.
In particular in relation to the Sunrise challenges, the present Report may be read in conjunction with and as a supplement to the 2005 WIPO report "New Generic Top-Level Domains: Intellectual Property Considerations" (available at http://www.wipo.int/amc/en/domains/reports/newgtld-ip/index.html ), which notes the need for a uniform preventive process in the introductory phase of gTLDs.
As with all gTLDs, .mobi registrations are subject to the existing Uniform Domain Name Dispute Resolution Policy ("UDRP"). (As of July 31, 2007, 46 UDRP cases involving .mobi domain names had been filed with the WIPO Center.)
The drafting of the Sunrise Policy and Rules, as well as the practices used in administering the challenges filed thereunder, grew out of WIPO's previous experiences of administering Sunrise-style dispute resolution procedures for the .info and .biz gTLDs. As a result, the .mobi procedures were greatly streamlined.
The Registry implemented a Sunrise Registration Period (June 12 to September 22, 2006) during which trademark holders were given an early opportunity to register domain names subject to the Sunrise Registration Conditions (described in paragraph (b) below). The Sunrise Registration Period was followed by a Sunrise Challenge Period (August 28 to December 15, 2006) that allowed third parties to challenge Sunrise registrations for non-compliance with the Sunrise Registration Conditions.
(See Annex 1 – .mobi Rollout Schedule)
The Sunrise Policy was incorporated by reference into the .mobi Sunrise registration agreement (Sunrise Policy, paragraph 1). Under the Sunrise Policy, third parties could initiate challenge proceedings asserting that the domain name registration did not comply with the Sunrise Registration Conditions, namely that:
(i) at the time of the registration of the domain name, the registrant had no current (non-expired) trademark or service mark registration in its name, or
(ii) the registered domain name was not identical to the textual or word elements of the trademark or service mark registration on which the registration of the domain namewas based, or
(iii) the trademark or service mark registration on which the registration of the domain name was based was not of national effect, or
(iv) the trademark or service mark on which the registration of the domain name was based was not registered or applied for, prior to July 11, 2005, with the trademark authority with which the mark is registered.
(Sunrise Policy, paragraph 4(a)(i)-(iv))
The principal purpose of these Sunrise Registration Conditions was to help ensure that Sunrise registrations were made by genuine trademark right holders in the normal course of business, instead of by third parties for speculative or other purposes.
To prevent parties without relevant trademark rights from filing challenges and obtaining transfer decisions, the Sunrise Policy required challengers requesting transfer to prove their compliance with the Sunrise Registration Conditions by submitting an original or a certified copy of a trademark certificate (Sunrise Policy, paragraph 4(b)). This avoided the problems which were seen under the terms of the .info Sunrise Policy as originally adopted (subsequently revised), where a challenger could successfully challenge a registrant and obtain a decision of transfer without itself having to prove compliance with the .info registration conditions. (See WIPO End Report on Case Administration under the Afilias Sunrise Registration Challenge Policy for .info, "Policy and Rules", available at http://www.wipo.int/amc/en/domains/reports/info-sunrise/report/index.html .)
By comparison to the .info mechanism, the .mobi Sunrise Policy and Rules incorporated a number of additions and amendments designed to clarify their purpose and to avoid abusive registrations. In addition to elements of process, this notably concerned the wording of the Sunrise Registration Conditions.
For the first Condition, requiring proof that the registrant of the domain name does not have a current (non-expired) trademark or service mark registration in its name, the .mobi Sunrise Policy clarified, through the addition of footnote 1, that the trademark or service mark registration had to be in the name of the registrant and that licenses and unregistered trademarks or service marks were not sufficient to meet this Condition. The .mobi experience showed the importance for the Registry to properly publicize this Condition prior to and during the Sunrise Registration Period and to take into account this Condition in the Registry's pre-screening of such registrations.
The second Condition relating to the identity of the domain name and the trademark or service mark provided guidelines for the purpose of determining identity, in the event special characters were included in the trademark or service mark but not in the domain name. An example scenario is the comparison between the trademark "[FirstMarkElement] & [SecondMarkElement]" and the domain name "[FullMark].mobi". Although special characters did not present actual issues in the .mobi Sunrise challenges, consideration may be given in future policies to ways of avoiding potential abuse of such a scenario. This may involve, at least for this type of trademark or service mark, a showing by the challenged registrant that it has used such mark in a relevant manner in its registered form.
The fourth Condition contained a clarification by comparison to the .info Sunrise Policy. The latter phrased this condition as "the trademark or service mark registration on which the registration of the Respondent's Domain Name was based did not issue prior to October 2, 2000". (.info Sunrise Policy (revised), paragraph 3(c)(iv)) However, in some countries, the "effective" date of trademark registration is accepted as being the same as the date of filing of the application while in other countries, the "effective" registration date is normally subsequent to the application filing date. In light of this, the fourth .mobi Sunrise Registration Condition provided that "the trademark or service mark on which the registration of your Domain Name was based was not registered or applied for, prior to July 11, 2005, with the trademark authority with which the mark is registered". Footnote 4 to this Condition further clarified that "the trademark or service mark must have been registered in the name of the domain name registrant prior to July 11, 2005. It will also be considered sufficient if the Domain Name registrant had applied for the trademark or service mark before that date, provided that the mark is registered by the time of the Domain Name registration".
In its capacity as the dispute resolution service provider under the .mobi Sunrise Policy and Rules, the WIPO Center received 18 properly filed challenges during the Sunrise Challenge Period (August 28 to December 15, 2006). The fact that half of these were filed in December likely reflects the filing deadline for such challenges. Of the challenges filed, 12 requested transfer of the domain name registration and six requested cancellation.
As in the .info and .biz processes and in accordance with .mobi Sunrise Policy, paragraph 4(e), these Sunrise challenges were decided by the WIPO Center itself, i.e., without the appointment of external panelists. The WIPO Center's decisions were of an administrative nature and were based solely on a prima facie examination of any trademark or service mark certificate submitted by a respondent and/or by a challenger seeking transfer of the domain name.
Following notification to the parties, the outcomes of the decisions were posted on the WIPO Center's web site, together with the domain name and the names of the parties (available at http://www.wipo.int/amc/en/domains/cases-mobi.html ).
(See Annex 7 – Sunrise Challenges and Outcomes)
In addition to the 18 properly filed challenges, a number of challenges were filed in relation to domain names which had not been registered during the Sunrise Registration Period (June 12 to September 22, 2006). Because these domain names were registered on or after September 26, 2006 (the first day of the Land Rush Registration – see Annex 1), these challenges could not be processed under the Sunrise Policy and Rules. The challengers in those cases were referred to the UDRP option.
The geographical spread of the Sunrise challenges covered parties from nine countries. The following table shows the number of challenges received with respect to the domicile of each party.
|Challenger Domicile||Number of Challenges||Respondent Domicile||Number of Challenges|
|United States of America||9||China||8|
|China||4||United States of America||5|
|United Kingdom of Great Britain and Northern Ireland||2||United Kingdom of Great Britain and Northern Ireland||2|
Two of the challenger countries listed above (United States of America and United Kingdom) are also among the WIPO Center's top three filing complainant countries under the UDRP to date. Likewise, three of the respondent countries (United States of America, United Kingdom and China) are among the WIPO Center's top three respondent countries under the UDRP to date.
(See Annex 8 – Geographical Distribution of Parties in Sunrise Challenges)
Of the 18 Sunrise challenges filed with the WIPO Center, 11 were decided in favor of the challenger. Of the remaining seven, five challenges were terminated (two due to successful settlements) and two challenges were deemed withdrawn for non-payment. In the case of settlement, both parties to the challenge were required to submit and confirm a signed settlement agreement to the WIPO Center, and the challenger was required to prove its compliance with the Sunrise Registration Conditions prior to the termination of a challenge for the settlement to be implemented. (For further information on settlements, see section 2.7(e) below.)
Of the cases decided in favor of the challenger, nine resulted in the transfer of the domain name to the challenger, and two resulted in the cancellation of the domain name. In one of the two cancellations, the challenger requested a transfer, but neither party met the criteria for compliance with the Sunrise Registration Conditions. The other cancellation was requested by the challenger and was issued when the respondent defaulted.
Pursuant to Sunrise Rules, paragraph 5(e), in cases of respondent default, the WIPO Center did not issue an automatic default decision, but examined the challenger's trademark rights when the requested remedy was transfer. This was the case in seven challenges, all of which resulted in transfer to the challenger.
The low number of Sunrise challenges filed under the Sunrise Policy and Rules likely reflects the overall low number of Sunrise domain name registrations, which in turn was influenced not only by parties' anticipation of the Sunrise Registration Conditions, but also by a number of compliance measures employed by the Registry.
The Registry monitored compliance with the Sunrise Registration Conditions through internal and external partial audits for the purpose of validating Sunrise registrations. Other factors which may have had an impact on the numbers of Sunrise challenges include the positioning of .mobi as a domain, the technical requirements for a web site to be created under a .mobi domain name, and the prices charged for the initial registration of such a name.
Effective pre-screening of registrations was essential in order to avoid the type of abuses seen during the .info experience. (See .info Report, Annex 1, section 1.) The .mobi experience further indicated that the Registry's attention to potential abuse should not end with a party's registration, but should extend into the period for completion of the Sunrise process.
The .mobi experience again highlighted the need to give early notice of timelines for the various processes that accompany the introduction of a new gTLD. In particular, advance notice allows prospective stakeholders time for the proper planning of registrations and challenges, and the procurement of documentary evidence as may be required.
In accordance with Sunrise Policy, paragraph 4(f) and Sunrise Rules, paragraph 13, the challenger was required to pay a nonrefundable challenger's fee of 750 United States dollars to the WIPO Center at the time of the filing of the challenge. The respondent was not required to pay a fee.
All payment information in connection with the Sunrise challenges was submitted via the Online Challenge Form made available on the WIPO Center's web site, and all payments were made by credit card.
The following paragraphs summarize how the WIPO Center administered the Sunrise challenges.
A Sunrise challenge procedure consisted of the following stages:
(i) Receipt by the WIPO Center of an online challenge, including online payment by credit card of the challenger's fee.
(ii) Formality compliance review of challenge. Notification of challenge deficiency as applicable, with the challenger given ten days to cure such deficiency.
(iii) Notification of the challenge by email to the respondent requiring the filing of an online response within 45 days.
(iv) Receipt by the WIPO Center from challengers seeking transfer, no later than 45 days after the notification of the challenge, of an original or a certified copy of a trademark registration certificate proving their compliance with the Sunrise Registration Conditions.
(v) Review of challenge and any response; decision by the WIPO Center, normally within 30 days after receipt of response or respondent default, where applicable.
(vi) Notification of the decision to the parties and to the Registry.
Pursuant to Sunrise Rules, paragraphs 3(b) and 5(b), parties were required to make their filings electronically using the Online Challenge Form and Online Response Form created by the WIPO Center and made available on its web site.
(See Annex 4 – Sunrise Challenge and Response Online Forms)
In accordance with Sunrise Rules, paragraph 6(a) and (b), the language of proceedings for all challenges was English. Any trademark certificates submitted by a challenger or a respondent in a language other than English were required to be accompanied by a certified translation into English.
Under Sunrise Policy, paragraph 4(d), more than one challenge could be submitted by different parties concerning the same domain name. Such challenges were queued by date and time of receipt by the WIPO Center. The WIPO Center processed only the first challenge received and would process a queued challenge only if the first challenge was terminated without a determination by the WIPO Center regarding the compliance of the relevant parties with the Sunrise Registration Conditions.
The WIPO Center received multiple challenges for two domain names. In both cases, the further queued challenges were not reached.
The Sunrise Rules allowed parties the opportunity to reach a settlement agreement upon which the WIPO Center would terminate the challenge proceedings (Sunrise Rules, paragraph 12(a)). The Rules included safeguards to prevent abusive attempts to transfer the domain name based on settlement agreements that were not made at arm's length. To that end, as noted, the .mobi Sunrise Rules required 1) the challenger to show its compliance with the Sunrise Registration Conditions, and 2) the submission of the settlement agreement to the WIPO Center in hard copy with the signature of both parties. Upon receipt of such settlement agreement, the WIPO Center as appropriate undertook further communications with the parties to confirm their submission.
Two Sunrise challenges were terminated pursuant to settlement agreements reached by the parties.
In addition to the Online Challenge and Response Forms, the WIPO Center's web site provided the Sunrise Policy, the Sunrise Rules and Filing Guidelines to assist parties, as well as further information, including a list of all challenges and their outcomes.
In connection with the introduction of the .mobi gTLD, the Registry compiled a list of over 5,500 so-called Premium Names, consisting of "commonly used words and phrases" (available at http://mtld.mobi/domain/premium ). By using information such as that found in trademark databases, the Registry, in making its selection, attempted to avoid interference with third-party rights. However, it was deemed prudent to open up a process that would allow legitimate trademark owners to claim any Premium Name corresponding to their rights.
In addition, the Registry reserved certain names which cannot be registered, including Registry-related terms, emergency numbers and certain geographic names (available at http://mtld.mobi/domain/reserved ).
The Registry implemented a Premium Name Trademark Application Period (September 15 to October 13, 2006), during which trademark owners were given an opportunity to apply to register Premium Names appearing on the list by demonstrating to a WIPO Center-appointed Expert their compliance with the Premium Name Trademark Registration Conditions ("Premium Name Conditions").
Under the Premium Name Rules, a party could apply to register a Premium Name asserting that it was eligible for such registration due to its compliance with the Premium Name Conditions, namely that:
(i) at the time of the application, the applicant was the holder of a current (non-expired) trademark registration in its name; and
(ii) the Premium Name was identical to the textual or word elements of the trademark registration on which the application was based; and
(iii) the trademark registration on which the application was based was of national effect and its relevant textual or word elements had not been disclaimed; and
(iv) the trademark on which the application was based was registered or applied for in the name of the applicant, prior to July 11, 2005, with the trademark authority with which the trademark was registered; and
(v) the trademark had been used by the applicant or with its consent for a period of at least five years prior to the date of the Premium Name application.
(Premium Name Rules, paragraph 2(a)(i)–(v))
The .mobi Premium Name Conditions differed from the .mobi Sunrise Registration Conditions in that the Premium Name Conditions required that the applicant make a showing of use (for five years) of the trademark supporting the application (Premium Name Rules, paragraph 2(a)(v)), whereas the Sunrise Registration Conditions contained no use requirement.
The applicant had to show that such use of the trademark:
(i) was relevant to the advertising, promotion, distribution, offering or sale of all or some of the goods or services for which the trademark was registered; and
(ii) had led relevant sectors of the public to associate the textual or word elements of the trademark with the goods or services for which the trademark was used by the applicant or with its consent; and
(iii) took place in at least one of the countries or territories for which the trademark had been registered; and
(iv) was real, substantial and in good faith, and not merely a means to register the Premium Name.
(Premium Name Rules, paragraph 2(v)(1)–(4))
The applicant had to prove its compliance with the Premium Name Conditions by providing (i) originals or copies certified by the issuing trademark authority of trademark certificates, and (ii) documentary evidence showing use of the trademark in accordance with the Conditions.
(See Annex 9 – Premium Name Trademark Application Rules for .mobi)
A number of issues were seen in applications submitted under the Premium Name Rules.
The first Condition required that the applicant be the holder of a trademark registration "in its name". Two principal sources of questions emerged. One involved the case where a parent company held the trademark but a subsidiary company (whether or not recently acquired) filed the application, and the other way around. The second involved the case where the applicant had undergone a name change.
In some instances, the appointed Expert was able to make a determination based on the application and documentary evidence originally submitted by the applicant. In other instances, the Expert issued an order requesting clarification in the form of documentary evidence. In all, Expert determinations addressed whether the applicant was the legal owner of the trademark and any substantive implications of such ownership in terms of the remaining Conditions (in particular, use).
While not causing issues for Experts in the .mobi Premium Name applications, the second Condition potentially presents issues relating to the use of special characters in the trademark which are then eliminated for the purpose of domain name registration. For further discussion of such issues, see section 2.2(c) above in the context of Sunrise challenges.
The fifth Condition, a requirement not found in the Sunrise Registration Conditions, required that the trademark on which the application was based had been used by the applicant or with its consent for a period of at least five years prior to the date of the Premium Name application. Expert decisions clarified that if the applicant had acquired the trademark from a predecessor-in-interest, the rights so transferred included any rights following from such predecessor's use.
Other issues relating to use in this fifth Condition arose in connection with the further criteria listed under Premium Name Rules, paragraph 2(v)(1)-(4). The first such criterion required that the use be related to the goods or services for which the trademark was registered. Certain applications showed use that clearly exceeded the purposes for which the trademark was registered. Certain applications also failed to show use meeting the third criterion, namely occurring in at least one of the countries or territories for which the trademark had been registered.
As to the fourth criterion, given that the use needed to predate the application by five years, the second part of this criterion, "not merely a means to register a Premium Name", did not provide useful guidance. Consideration may be given to phrasing such a criterion in future policies in such a way as to avoid registry-related specificity, e.g., "not merely a means to register a domain name".
In its capacity as the administrator of the Premium Name Application Process for Trademark Holders, the WIPO Center received 105 applications covering 97 Premium Names during the Premium Name Trademark Application Period (September 15 to October 13, 2006). Over 90% of the applications were filed in October, with nearly 25% of applications submitted on October 13, 2006, the filing deadline.
Upon a formal compliance review, the WIPO Center issued deficiency notifications in 31% of the applications. In order of frequency, compliance issues related to the failure to submit trademark certificates or to the provision of uncertified or improperly certified copies of trademark certificates; the absence of cited or referred-to documentary evidence as a whole or an insufficient number of copies of the same; and the failure to provide translations of trademark certificates that were not in English. Applicants were able to cure notified deficiencies in all instances.
The geographical spread of the Premium Name Applications covered applicants from 18 countries. The following table shows the countries involved.
|Applicant Domicile||Number of Applications||Percentage of All Countries|
|United States of America||44||42%|
|United Kingdom of Great Britain and Northern Ireland||15||14%|
|Other (< 5 applications)||28||26%|
The five applicant countries listed above (United States of America, United Kingdom, Germany, Canada and France) are also among the WIPO Center's top ten filing complainant countries under the UDRP to date.
(See Annex 14 – Geographical Distribution of Applicants in Premium Name Applications)
Of the 105 applications received by the WIPO Center, 81 (77%) were found to comply with the Premium Name Conditions, thus making the applicant eligible to register the Premium Name applied for, and 23 (22%) were found to be non-compliant, thus making the applicant ineligible to register the Premium Name, with one withdrawn application.
Generally, the applicants that were found to be ineligible to register the Premium Name were unable to evidence use of the trademark for a period of at least five years prior to the date of the Premium Name application in accordance with the more substantive criteria, found in Premium Name Rules, paragraph 2(a)(v). The remainder of decisions finding ineligibility was based on the applicant's inability to provide valid trademark certification or other instances of non-compliance with one of the more formal Premium Name Conditions, found in Premium Name Rules, paragraphs 2(a)(i)-(iv).
The applicant was required to pay to the WIPO Center an applicant's fee of 1,500 United States dollars at the time of filing the Premium Name application. Of this fee, the WIPO Center retained 500 United States dollars as its administrative fee, while 1,000 United States dollars was paid to the Expert appointed to decide the application (but refunded if the application was terminated prior to Expert appointment). These arrangements were identical to those in place for WIPO UDRP cases.
Applicants submitted all payment information via the Online Application Form made available on the WIPO Center's web site. All payments were made by credit card.
The following paragraphs describe how the WIPO Center administered the Premium Name applications.
The main stages in the Premium Name application procedure were as follows:
(i) Receipt by the WIPO Center of an application, including online payment by credit card of the applicant's fee.
(ii) Formality compliance review of application. Notification of application deficiency as applicable, with the applicant given ten days to cure such deficiency. (See also section 3.3 above for more information about Premium Name application deficiencies notified by the WIPO Center.)
(iii) Appointment of an Expert, notification of Expert appointment to the applicant, and transmission of application to the Expert.
(iv) Application review and decision by the Expert, normally within 14 days of appointment. Issuance of an Expert order as applicable, requesting the submission of additional statements or documents.
(v) Notification of the decision to the applicant and to the Registry.
In accordance with Premium Name Rules, paragraph 3(a), application filings were required to be made electronically using the Online Application Form created by the WIPO Center and made available on its web site.
(See Annex 10 – Premium Name Application Online Form.)
Pursuant to the Premium Name Rules, paragraph 4(a), the language of proceedings for applications was English. Pursuant to Premium Name Rules, paragraph 4(b), any trademark certificates submitted by the applicant in a language other than English were required to be accompanied by a certified translation into English. Further, under the same paragraph, the Expert could order that any documents submitted by the applicant to demonstrate compliance with the Premium Name Conditions be accompanied by a complete or partial translation into English.
For five applications, the WIPO Center requested English translations of trademark certificates submitted in other languages.
The Premium Name Rules allowed for applications to be submitted by different parties concerning the same Premium Name. The WIPO Center received multiple applications for six Premium Names, and processed all such applications independently from one another. In four instances, this resulted in multiple successful applicants. Where more than one application regarding the same Premium Name was successful, the Registry would attribute the Premium Name to one of the successful applicants using a private auction or other mechanisms as apparently permitted by ICANN.
(See Annex 13 – Premium Names with Multiple Applications Filed and Results)
To determine the eligibility of an applicant to register a Premium Name based on the application's compliance with the Premium Name Conditions, the WIPO Center appointed an Expert from its published list of Premium Name Experts. The WIPO Center compiled this list of 58 Experts from 29 countries from its pool of UDRP panelists on the basis of considerations of jurisdiction, language and experience.
Prior to accepting appointment on a .mobi application, an Expert had to submit a statement as to his or her impartiality and independence from the applicant and from the Registry.
In determining an applicant's eligibility to register a Premium Name, the Expert relied on the facts and arguments provided in the application, including any documentary evidence. Each decision specifically addressed each of the Premium Name Conditions.
In a number of applications, the appointed Expert used its authority under Premium Name Rules, paragraph 10(d), to issue an order inviting the applicant to submit additional statements or documents. In seven such instances, the applicant ultimately prevailed, with three others being found ineligible to register the Premium Name. Most of these Expert orders required the applicant to further address the asserted use of the trademark, either as to duration or location or scope.
The WIPO Center notified the Expert decisions in full to the applicant and the Registry. Subsequently, the eligibility status of the applications was posted on the WIPO Center's web site, together with the Premium Name and the name of the applicant (available at http://www.wipo.int/amc/en/domains/cases-mobi-premium.html ).
(See Annex 15 – WIPO Premium Name Experts)
In addition to the Online Premium Name Application Form, the WIPO Center's web site provided the Premium Name Rules and Application Filing Guidelines to assist applicants, as well as further information, including a list of all applications and their outcome.