Welcoming developments from WIPO for ‘.AC’, ‘.IO’ and ‘.SH’ policies
As of 1 June 2020, brand owners can use a new dispute resolution process for filing complaints against ‘.IO’ (British Indian Ocean Territory), ‘.SH’ (Saint Helena) and ‘.AC’ (Ascension Island), domain names which previously adopted the Expedited Arbitration Rules. What are the main differences compared to the Expedited Arbitration Rules? How do the policies differ from that of the more traditional Uniform Domain Name Dispute Resolution Policy (‘UDRP’)? This article aims to address these questions and more.
Expedited Arbitration Rules vs. UDRP
Through the Expedited Arbitration Rules, brand owners could rely on general principles adopted by the UDRP. However, the process for filing was often longer (3-4 months), compared to an average of 2 months for a UDRP. Furthermore, decisions related to disputing the above-mentioned extensions remained confidential between the parties, whereas decisions related to generic domain name complaints (e.g. for ‘.COM’ and ‘.NET’) and some country code top level domain names are published for public viewing.
The New Policies
As of June, brand owners will be able to file with relative ease using the new domain dispute resolution policy for each extension:
(iii) ‘.SH’ - https://www.wipo.int/amc/en/domains/cctld/sh/index.html
The above links provide a clear explanation of the new policies as well as a list of differences between each of them and the UDRP in relation to bad faith, mutual jurisdiction and language of proceedings.
The New Policies vs UDRP
In summary, with regards to the substantive elements of each policy, the process comprises of a similar three-part test to that of the UDRP, except for the following variations:
(i) No conjunctive requirement for ‘bad faith’ – unlike the UDRP, the policy for ‘.IO’, ‘.SH’ and ‘.AC’ extensions do not require the disputed domain name to be both registered and used in bad faith. This variation is adopted in other policies (e.g. ‘.UK’, ‘.US’ and ‘.EU’) and allows more flexibility for complaining parties in instances where domain names are being used in bad faith, but not necessarily registered with the same intent (an issue many brand owners face with the UDRP).
(ii) Language of the proceedings– the language of the complaint (and proceedings) for all three extensions will be filed in English. However, parties can opt for the language of the proceedings to be in a different language if it is mutually agreed upon.
(iii) Mutual jurisdiction – unlike the UDRP, which offers a choice between the location of the registrar and the location of the respondent, parties who wish to appeal a panel decision for the above extensions will have to go through the English court system.
In addition, the World Intellectual Property Organisation (‘WIPO’) now provides each prospective filer with model complaint forms for both the complaining party and the respondent. There is also a new set of rules and a list of published decisions. As readers will see, many brand owners have already started to make use of the revised policies, such as Facebook, Inc. (for <facebook.io>) and Carrefour SA (for <carrefourbank.io>). There are currently no published decisions for ‘.SH’ and ‘.AC’, but undoubtedly this will change soon.
The new changes are a welcoming development from WIPO, as it is difficult for brand owners to recover abusive domain names using their trade mark in a variety of top level extensions (be it a generic top level domain or a country code top level domain). This factor is particularly relevant when looking at meanings attached to certain extensions like ‘.IO’, which is commonly used as an abbreviation by technology companies to refer to ‘input/output’.
Overall, it is positive to see that the new policies provide a quicker and clearer way for disputing ‘.IO’, ‘.SH’ and ‘.AC’ domain names, compared to the previous Expedited Arbitration Rules. Although only a handful of brand owners have started to use the new process, it is highly likely that more will follow.
At Stobbs, we have had many years successfully recovering abusive domain names via the UDRP and other international domain dispute policies. If your brand has been affected by abusive registrations, please contact us via firstname.lastname@example.org or call our office at +44 1223 435240.