Alex Bajjon

February 2017

Criteria – Three-Step Test

In order for the disputed domain names to be either cancelled or transferred, a panellist/panel must find that the following three conditions are met:

1. The domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
2. The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
3. The domain name has been registered and is being used in bad faith

Examples of behaviour and circumstances that are considered bad faith are set out in the regulations that govern the domain dispute resolution service – this is, however, not an exhaustive list:

1. Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
2. The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
3. The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
4. By using the domain name, the domain name registrant intentionally attempted to attract Internet users to the registrant’s website, by creating a likelihood of confusion with the complainant’s mark.

Procedure

It is recommended that the complaint is made on the template complaint form that is available from WIPO.  The form requires details of the parties to the proceedings and the facts and evidence relied on by the complainant to establish that the criteria in the three-step test are met.

Copies of the completed form should be sent to WIPO, along with the domain name registrar of the concerned domain names (the organization that manages the reservation the domain name).

Once the application has been received by WIPO and it is determined that the complaint meets the necessary formal requirements, the Respondent (i.e. the Registrant) is formally notified of the Complaint by WIPO and then has 20 days to file a response.

Either the Complainant, the Respondent or both may request that the dispute is heard by a panel of 3 members, rather than a single panellist.  In the case, where the case is to be heard by 3 panellists, both the Complainant and Respondent nominate three panellists each. WIPO then selects one panellist from each of the Complainant’s and Respondent’s lists and draws up a list of 5 panellists to act as the third Panellist (Presiding Panellist).  Both the Complainant and Respondent may indicate their preferences as to the identity of the Presiding Panellist and WIPO will take these into account with its appointment.

Following the appointment of the Panel, a decision is usually issued within 14 days.

Typically, the procedure can be concluded within approximately 40 days from the filing of the complaint, offering a streamlined service to trade mark owners for cases of clear cybersquatting.

More information and guidance can be found regarding the Domain Dispute Resolution Service offered by WIPO at http://www.wipo.int/amc/en/domains/guide/

Example Timelines

Typical time lime for a case decided by a single panellist, assuming no deficiencies are noted in the complaint as filed.