Note: The Sunrise Challenge Period ended on December 15, 2006.
This overview is presented for information purposes only. Parties are advised to consult the Sunrise Challenge Policy for <.mobi> ( https://www.wipo.int/amc/en/docs/mobisunrisechallengepolicy.pdf ) and the Rules for Sunrise Challenge Policy for <.mobi> ( https://www.wipo.int/amc/en/docs/mobisunrisechallengerules.pdf ) for the exact wording of the provisions referred to below (in particular Policy, Paragraph 4(a), including footnotes).
The Sunrise Challenge Policy for <.mobi> (the “Policy”) has been adopted by Mobile Top Level Domain, Ltd. (“mTLD”) and is incorporated by reference into all <.mobi> sunrise registration agreements. The Policy allows any person or entity to challenge registrations of <.mobi> domain names made during the Sunrise Registration Period (as specified by the Registry) on the basis of the registrant’s non-compliance with the Sunrise Registration Conditions. In accordance with Policy, Paragraph 4(a), all sunrise registrants are bound to submit to challenge proceedings in the event that a third-party (the “Challenger”) asserts that a condition for sunrise registration has not been met by the registrant.
Challenge proceedings are governed by the Rules for Sunrise Challenge Policy for <.mobi> (the “Rules”). The WIPO Arbitration and Mediation Center (the “Center”) is the sole dispute resolution provider empowered to administer Challenge proceedings under the Policy.
A. Disputes under the Policy
The Policy applies only to domain names registered during the Sunrise Registration Period (“ sunrise registrations”) and covers disputes over the compliance of such registrations with the Sunrise Registration Conditions, set out in the Sunrise Registration Agreement and reproduced in Paragraph 4(c) of the Policy.
The Policy (Paragraph 4(a)) requires sunrise registrants to submit to mandatory administrative proceedings in the event that the Challenger asserts that one or some of the Sunrise Registration Conditions are not met by the registrant, namely that either:
(i) at the time of the registration of the domain name, no current (non-expired) trademark or service mark registration was issued in the name of the registrant; or
(ii) the domain name is not identical to the textual or word elements of the trademark or service mark registration on which the registration of the domain name is based; or
(iii) the trademark or service mark registration on which the registration of the domain name is based is 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.
A sunrise registration will only meet criterion (i) if the trademark or service mark held by the sunrise registrant was registered in its exact name. The holder of a trademark license or of an unregistered trademark would therefore not be considered as meeting the Sunrise Registration Conditions. A registration in the supplemental register of the United States Patent and Trademark Office is also considered insufficient (Policy, Paragraph 4(a)(i), Footnote 1).
As to criterion (ii), if the trademark or service mark is not exactly identical to the domain name, identity is nevertheless deemed to exist where (Policy, Paragraph 4(a)(ii), Footnote 2) :
- there is a space between the textual or word elements of the mark (e.g. service mark) and such space is either eliminated from the domain name (e.g. <servicemark.mobi>) or replaced by a hyphen (e.g. <service-mark.mobi>) ;
- the mark is comprised of special characters (such as ~ @ # $ % ^ & * ( ) + = < > { } [ ] ¦ / \), spaces or punctuation (such as : ; “ ’ , .?) (e.g. service & mark) and such special characters, spaces or punctuation are either eliminated from the domain name (e.g. <servicemark.mobi>), replaced with hyphens (e.g. <service-mark.mobi>) or transcribed in a conventionally accepted way (e.g. <serviceandmark.mobi>);
- the mark includes letters which contain additional elements that, for technical reasons, cannot be reproduced in a domain name (such as ä, é or ñ), and the letters concerned are either reflected in the domain name without the additional elements (such as a, e, n) or replaced by conventionally accepted spellings (such as ae for ä).
Apart from the above exceptions, the domain name and the trademark or service mark must be exactly identical in order to meet the condition under Policy, Paragraph 4(a). The Policy allows no further exception to this rule.
With regard to criterion (iii), European Community trademarks are considered as meeting the condition of national effect, but United States state trademarks or service marks are not (Policy, Paragraph 4(a)(iii), Footnote 3).
As to criterion (iv), the date of registration of, or application for, the trademark or service mark upon which the sunrise registration is based must predate July 11, 2005, although in all instances the mark must necessarily be registered before the date of sunrise registration of the <.mobi> domain name (Policy, Paragraph 4(a)(iii), Footnote 4).
If one of the Sunrise Registration Conditions is not met by the holder of the <.mobi> sunrise registration, the Challenger may request either the cancellation of the sunrise registration or the transfer to its name. If transfer is sought, the Challenger further needs to demonstrate its own compliance with the Sunrise Registration Conditions. No monetary awards can be made under the Policy.
Challenges under the Policy can be submitted by any person or legal entity from August 28, 2006 at 12.00 noon GMT to December 15, 2006 at 12.00 noon GMT (Policy, Paragraph 4(a)). The Center will not accept Challenges filed before or after this period.
B. Overview of the Procedure
1. Submission of a Challenge and Priority Determination
The administrative proceeding is initiated through the submission of the Online Challenge Filing Form, available on the Center’s web site, and payment of a non-refundable Challenger’s fee in the amount of 750 US dollars in accordance with Rules, Paragraph 13.
Once a Challenge is received online by the Center, an electronic automatic acknowledgment is sent to the Challenger’s e-mail address indicated in the Challenge for the purpose of case communications.
If more than one Challenger files a Challenge regarding the same <.mobi> domain name, the Center will process only the first Challenge received. A later-filed Challenge will only be processed in the event that the earlier Challenge proceeding is terminated before a decision is rendered by the Center (Policy, Paragraph 4(d)), for example because the Challenger has failed to pay the Challenger’s Fee.
If a later-filed Challenge is not processed, that Challenger will not receive further communications from the Center and the Challenger’s fee will not be debited.
2. Notification of the Challenge and Commencement of the Proceeding
If the Center is satisfied that the Challenge complies with the Rules and the Policy and that the Challenger has duly completed payment of the required fees, the Center will formally notify the Challenge to the Respondent (Rules, Paragraph 4(a)). The date of notification of the Challenge will be considered as the commencement date of the proceeding.
If the Center finds the Challenge to be deficient in light of the Rules or the Policy, it will notify the Challenger of the nature of the formal deficiencies identified. The latter will then have ten (10) days to cure the deficiencies, failing which the administrative proceeding will be deemed terminated, without prejudice to the submission of another Challenge (Rules, Paragraph 4(b)).
Within forty-five (45) days of the commencement date, a Challenger seeking the transfer of the disputed domain name is required to submit the original or a certified copy of a trademark certificate establishing the Challenger’s own compliance with the Sunrise Registration Conditions (Rules, Paragraph 3(e)).
If the Challenger is seeking a cancellation of the sunrise registration, the Challenger is not required to make any further submissions.
3. Response
Within forty-five (45) days of the commencement date, in accordance with Rules, Paragraph 5, the Respondent is required to submit its Response to the Center, both in electronic form using the Online Response Filing Form, available on the Center’s web page, and in hard copies. For detailed requirements concerning the preparation and submission of a Response, please consult the Response Filing Guidelines.
Along with the hard copies of the Response, the Respondent is required to submit the original or a certified copy of a trademark certificate establishing its compliance with the Sunrise Registration Conditions.
After the filing of a Response, or after the Response due date, the Center will accept no further submissions from the Parties, unless specifically requested or agreed by the Center in exceptional circumstances (Rules, Paragraph 7).
4. Decision
The Center will use reasonable efforts to decide upon a Challenge within thirty (30) days of the receipt of all submissions to be made by the Parties, or of the expiry of the deadline for such submissions (Rules, Paragraph 11).
The Center can render one of the following decisions:
- if, within the time periods provided under the Rules, the Respondent establishes its compliance with the Sunrise Registration Conditions, the Center will dismiss the Challenge;
- if, within the time periods provided under the Rules, the Respondent fails to establish its compliance with the Sunrise Registration Conditions AND the Challenger requests cancellation of the disputed sunrise registration, the Center will order that the disputed sunrise registration be cancelled;
- if, within the time periods provided under the Rules, the Respondent fails to establish its compliance with the Sunrise Registration Conditions AND the Challenger requests transfer AND establishes its own compliance with the Sunrise Registration Conditions, the Center will order that the disputed sunrise registration be transferred to the Challenger;
- if, within the time periods provided under the Rules, the Respondent fails to establish its compliance with the Sunrise Registration Conditions AND the Challenger requests transfer AND fails to establish its own compliance with the Sunrise Registration Conditions, the Center will order that the disputed sunrise registration be cancelled.
The outcome of the case will be posted on the Center’s web page (Rules, Paragraph 11).
5. Settlements, Withdrawals
After the filing of a Challenge, the Parties may agree to settle the dispute. If such settlement is to the effect of a transfer, the settlement will only be implemented if the Center, on the basis of the documentation submitted by the Challenger, decides that the Challenger complies with the Sunrise Registration Conditions (Policy, Paragraph 5(a)). The Respondent may not transfer the disputed domain name registration to a party other than the Challenger (Policy, Paragraph 5(a)).
If a settlement is agreed upon, either party shall notify the Center accordingly and submit a copy of the settlement agreement signed by both the Challenger and the Respondent, either by fax (+41 22 740 3700) or courier.
If the settlement is communicated to the Center before the commencement of the proceeding (i.e. before the Challenge has been formally notified to the Respondent), the Challenger must, within forty-five (45) days from the date on which the settlement is communicated to the Center, submit the original or a certified copy of the trademark certificate(s) establishing its compliance with the Sunrise Registration Conditions. If the settlement is communicated to the Center after the commencement of the proceeding, the forty-five (45) days period shall run from the date of commencement, in accordance with Rules, Paragraph 3(e).
Alternatively, the Challenger may at any time, whether unilaterally or as a result of a settlement, withdraw its Challenge by notifying the Center of its intention to do so, by signed fax or letter (Rules, Paragraph 12(c)). Upon receipt of a withdrawal request, the Center will terminate the proceeding, without any transfer or cancellation of the sunrise registration.