WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Practices and Precedents

David H. BERNSTEIN a national of the United States, is a partner with Debevoise & Plimpton LLP and a member of the firm’s Litigation Department, its Intellectual Property Practice Group and its International Dispute Resolution Practice Group. Mr. Bernstein’s practice focuses on a wide range of intellectual property and unfair competition matters including Internet and domain name law, false advertising, trademark infringement and dilution, counterfeiting, copyright infringement, right of publicity law, misappropriation, trade secret law, and patent infringement.

Mr. Bernstein is past Counsel to the International Trademark Association (INTA), is an adjunct professor of law at George Washington University Law School, and was a former Co Chair of the Internet Law Subcommittee of the Litigation Section of the American Bar Association (ABA). Mr. Bernstein has been a WIPO Domain Name Panelist since 2000.

Mr. Bernstein has a J.D. from Yale Law School, an M.Sc. from the London School of Economics and Political Science, and an A.B. from Princeton University.

Tony WILLOUGHBY, a national of the United Kingdom, is Consultant at Rouse Legal (formerly Willoughby & Partners), specializing in contentious and non-contentious intellectual property.

Mr. Willoughby has had the conduct of some patent infringement actions, but most of his work has been in the field of trade marks, passing off, copyright and confidential information. He has acted in many leading reported intellectual property cases and has been a WIPO Domain Name Panelist since 2000. He is also Chairman of Experts for Nominet UK.

Mr. Willoughby was admitted to the Roll of Solicitors in England and Wales, United Kingdom in 1970 and has mediation accreditation with WIPO and CIArb.

Luca BARBERO, a national of Italy, is a partner with Studio Barbero, in Turin, focusing on domain name issues and the protection of intellectual property on the Internet. He is also the Director of Barbero & Associates Ltd, in London, specialized in the registration, management and monitoring of domain names worldwide.

Mr. Barbero is advising multinational corporations operating in various fields including F1 racing and luxury cars, nutrition, health and water products, fashion and luxury goods, milk and food products, alcoholic beverages, industrial glass, candies, telephone directories and also international law firms on global domain name registration strategy and intellectual property protection on the web. He has negotiated and dealt with over 1200 cases of abusive registration and assisted clients in Internet related contentious matters in Italy and elsewhere since 1995.

Mr. Barbero has been a WIPO Domain Name Panelist since 2000, and serves on various other panels as Arbitrator and Mediator including WIPO and the Chamber of Commerce of Milan and Turin.

Mr. Barbero has a J.D. from Turin Law University and a Master in International Business from University of California at Los Angeles (UCLA). He is an Italian Trademark Attorney and European Trademark Attorney, admitted to practice before the Office for the Harmonization of the Internal Market. He is a Professor in programs organized by the WIPO Worldwide Academy with the Faculty of Law of the University of Turin, the University of Padova, and the University Institute of European Studies under the auspices of the University of Turin. Mr. Barbero is a regular speaker on domain name and mediation and arbitration issues, and is a member of INTA, ECTA and MARQUES.

M. Scott DONAHEY, a national of the United States of America based in Palo Alto, California, arbitrates and mediates disputes nationally and internationally, having sat as an arbitrator in more than 200 cases.

He has acted as arbitrator in arbitrations involving a genomic database joint development contract, a coronary stent patent, multiple patents involving a nanolens capable of directly reading the individual bases of DNA, a software distribution agreement in China, a patent for a balloon catheter, a patent for a total artificial knee implant, and Japanese patents on pharmaceutical products, among others. Mr. Donahey has acted as counsel in arbitrations involving a license for a monoclonal antibody assay patent, a contact lens chemical composition patent, and an automated sera analyzer, among others.

Mr. Donahey was appointed to decide the first UDRP case, which WIPO received in 1999. He is also on other domain name panels, including the Asian Domain Name Dispute Resolution Centre and the China Internet Network Information Center, and he has served as an expert witness on issues concerning domain names in the federal district court of the United States. He is on several arbitration and mediation panels, including the CPR Institute Technology Panel, the International Centre for Dispute Resolution, the American Arbitration Association IP/Technology, Patent, and Trademark Panels, as well as other national and regional panels around the world.

In 1999, Mr. Donahey received the President’s Award for Outstanding Service in ADR from the National Patent Council. He has been voted by his peers as a SuperLawyer in the field of ADR in every year that the award has been given. Mr. Donahey is a fellow of the College of Commercial Arbitrators.

Matthew HARRIS, a national of the United Kingdom, is a partner at Waterfront Solicitors. Prior to joining this firm, he was a partner in the intellectual property and IT department of Herbert Smith in 2000 and joined Norton Rose in 2003 where he subsequently became the head of Intellectual Property and Information Technology dispute resolution.

Mr. Harris is experienced in all aspects of intellectual property, information technology, internet law, data privacy and freedom of information work. He initially trained as a general commercial and intellectual property litigator and although he also has extensive experience in non-contentious intellectual property and IT work, his practice retains a contentious focus.

Mr. Harris is a recognized expert in domain name law and practice, has been appointed by WIPO, Nominet and the Czech Arbitration Court to decide domain name disputes and he also sits on the Czech Arbitration Court domain name advisory board.

He is a visiting lecturer in Intellectual Property Law at the Eidgenössische Technische Hochschule Zürich in Switzerland and is the UK contributor to, and a general editor of, the International Trademark Association’s Annual International Review of Trademark Jurisprudence and Volume II of its annual Trademark Law Handbook. Matthew also sits on INTA’s International Amicus Committee.

Richard G. LYON, a national of the United States, is Counsel in the Dallas office of the international law firm Spencer Crain Cubbage Healy & McNamara pllc.  Prior to joining Spencer Crain, Mr. Lyon was for twenty years a member of corporate and litigation departments of two large law firms.  Mr. Lyon also served as Vice President and General Counsel of the United States subsidiary of an international telecommunications company with the principal responsibility for legal and governmental affairs for U.S. and Canadian operations.

Mr. Lyon concentrates his corporate practice in the areas of technology and technology-driven transactions: outsourcing, structure and financing of the acquisition and exploitation of intellectual capital, such as licensing, outsourcing, joint ventures, and strategic alliances. He also advises U.S. and foreign clients on general corporate and finance transactions and distribution matters. Mr. Lyon assists clients in litigation involving intellectual property issues. Mr. Lyon has been a WIPO Domain Name Panelist since 2000.

Mr. Lyon is an active member of the Dallas Bar Association, State Bar of Texas, and The Association of the Bar of the City of New York. Mr. Lyon received his law degree from Harvard in 1971 and a bachelor of arts from Haverford College in 1968.

William R. TOWNS, a national of the United States, is a partner at Novak Druce + Quigg LLP, and also serves as the Firm’s General Counsel. Mr. Towns is a seasoned attorney and mediator. His litigation and dispute resolution practice concentrates principally on intellectual property, with an emphasis on trademarks, domain names, unfair competition, and copyrights, and encompasses commercial litigation and other international and transnational disputes.

Mr. Towns is a WIPO Arbitrator and Mediator, a Member of the Chartered Institute of Arbitrators, as well as other international, national and local dispute resolution organizations, including the Global Collaborative Law Council, the Association of Attorney-Mediators, and the Texas Association of Mediators. He has served as a WIPO Domain Name Dispute Resolution Panelist since 2003.

Mr. Towns received his J.D. degree from the University of Houston in 1980 and his undergraduate degree in Government from the University of Texas in 1977. He teaches courses in International Business Transactions and International Intellectual Property as an Adjunct Professor of Law at St. Mary’s University Law School in San Antonio, Texas.

Wolter WEFERS BETTINK, a national of the Netherlands, is a partner with Houthoff Buruma and the Head of its Information Technology Law Practice Group. Mr. Wefers Bettink’s practice focuses on a wide range of intellectual property, information technology, e-commerce, copyright, privacy, domain name and other Internet related issues.

Mr. Wefers Bettink has chaired the Implementation Project for .NL Domain Name Arbitration in the Netherlands. He has been a WIPO Domain Name Panelist since 2000 and regularly speaks at seminars and conferences on topics related to domain names.

Mr. Wefers Bettink was admitted to the Amsterdam Bar in 1987.

Caroline PERRIARD, a national of Switzerland, is Legal Counsel at Nestlé for trademark, design and copyright matters. In addition she manages the domain name portfolio and is in charge of the conflicts and other brand infringements on Internet. Caroline first worked at the Swiss Intellectual Property Institute in the examination and opposition team. Before joining Nestlé, she achieved a L.LM. in international commercial arbitration in Stockholm. Caroline is representing Nestlé in the Cyberspace team of MARQUES, the European Association of Brand Owners.