Atlas Productions Lost WIPO’s Arbitration Case

Adaptation of novels and stories for movies is not a new concept. It has been in existence for decades. However, not all adaptations are free from disputes. In fact entertainment and media industry disputes are rising all over the world.

Such entertainment and media industry disputes are also increasing fast in India and other Asian countries. However, the disputes of entertainment and media industry in Asian countries, including India, are mostly settled in a court of law and not through alternative dispute resolution (ADR) or online dispute resolution (ODR) mechanisms.

Strangely, Asian countries are almost always “respondents” when it comes to fighting such disputes at international organisations like World Intellectual Property Organisation (WIPO). This is contrary to the position in developed countries where persons or institutions approaching international institutions are petitioners or complainants. WIPO follows the Uniform Domain-Name Dispute-Resolution Policy (UDRP) of ICANN for resolving various domain name related disputes.

One such entertainment industry case that has recently come before WIPO was filed by Atlas Productions. The case involved the movie adaptation of Atlas Shrugged novel. Last year its production began and Atlas Shrugged: Part 1 was showed in select theaters earlier this spring.

Shortly after the opening, Atlas Productions, a New Jersey company, filed for UDRP arbitration against the owner of the domain name AtlasShruggedMovie.com, claiming that it had acquired the exclusive movie rights to Atlas Shrugged by assignment in 1992. Unfortunately, the company, represented by Loeb & Loeb, LLP, was unable to provide never a copy of that assignment to the WIPO Panelist who arbitrated the dispute. Moreover, it was unable to prove that the owner had registered the domain in bad faith; notably, the domain was registered more than five years before Atlas Productions began to promote the movie.

Ultimately, the WIPO Panelist denied the complaint. The Panelist also held that “Evidence, not allegations, is necessary. And nothing is more fundamental to a Policy proceeding – or more within a complainant’s control – than its right to enforce the trademark upon which it bases its case. If Complainant did acquire trademark rights by contract, documentary or other evidence of such rights was surely available to it. Absence of such evidence raises real doubt about Complainant’s entitlement to bring this proceeding.”

This is a good decision as evidence is the core of any complaint and if evidence itself is missing the complaint is frivolous and deserves to be set aside. Since entertainment and media industry disputes would further increase in the future, Perry4Law and Perry4Law Techno Legal Base (PTLB) suggests that media houses must have a clear cut policy in this regard.

Uniform Domain Name Dispute Resolution Policy Of ICANN

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of Internet Domain Names. The UDRP currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains. It is supplemented by Rules for Uniform Domain Name Dispute Resolution Policy (Rules).

Now ICANN is planning to expand the list of generic top level domain names (gTLD) among other things. The same would be decided by ICANN through a vote at the second public meeting of the year on 19-20th June 2011 at Singapore.

Since domain name disputes are going to increase in near future, Perry4Law Techno Legal Base (PTLB), the premier techno legal segment of India’s exclusive techno legal ICT and IP Law Firm Perry4Law, is sharing the UDRP procedure with all interested person and institutions.

Readers are strongly advised to refer the original sources at ICANN as the UDRP and Rules may change from time to time. Further, the reference to ICANN may be considered to be the reference to concerned “Registrar” where the context so requires.

By applying to register a domain name or by asking the registrar to maintain or renew a domain name registration, the applicant represent and warrant to the registrar that:

(a) The statements that he made in his Registration Agreement are complete and accurate;

(b) To his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;

(c) He is not registering the domain name for an unlawful purpose; and

(d) He will not knowingly use the domain name in violation of any applicable laws or regulations.

Thus, it is the applicant’s responsibility to determine whether his domain name registration infringes or violates someone else's rights.

All registrars must follow the UDRP. Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.

Thus, to invoke the policy, a trademark owner should either

(a) File a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or

(b) In cases of abusive registration submit a complaint to an approved dispute-resolution service provider.

The registrar will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:

(a) Subject to the provisions of Paragraph 8, on receipt of written or appropriate electronic instructions by the registrar from a complainant or his authorised agent to take such action;

(b) On receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or

(c) On receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which the complainant was a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.)

The registrar may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of his Registration Agreement or other legal requirements.

Paragraph 4 of the UDRP mentions about the circumstance when administrative proceedings are mandatory. These proceedings will be conducted before one of the administrative-dispute-resolution service providers (each, a "Provider") listed at ICANN.

Paragraph 4(a) provides that the domain name holder must submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) Holder’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Holder has no rights or legitimate interests in respect of the domain name; and

(iii) Holder’s domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

Paragraph 4(b) provides that for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that holder has registered or holder has acquired the domain name 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 his documented out-of-pocket costs directly related to the domain name; or

(ii) Holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that holder has engaged in a pattern of such conduct; or

(iii) Holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.

Paragraph 4(c) provides that when the holder of a domain name receives a complaint, he should refer to Paragraph 5 of the Rules of Procedure in determining how his response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate his rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) Before any notice to the holder of the disputed domain name, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) The holder (as an individual, business, or other organisation) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) The holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 4(d) provides that the complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f).

Paragraph 4(e) provides that the Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the "Administrative Panel").

Paragraph 4(f) provides that in the event of multiple disputes between the holder and a complainant, either the holder or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN.

Paragraph 4(g) provides that all fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where the holder elects to expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by the holder and the complainant.

Paragraph 4(h) provides that the ICANN do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, ICANN will not be liable as a result of any decisions rendered by the Administrative Panel.

Paragraph 4(i) provides that the remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of holder’s domain name or the transfer of his domain name registration to the complainant.

Paragraph 4(j) provides that the Provider shall notify ICANN of any decision made by an Administrative Panel with respect to a domain name the holder has registered with ICANN. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.

Paragraph 4(k) provides that the mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either the holder or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that holder’s domain name registration should be canceled or transferred, ICANN will wait ten (10) business days (as observed in the location of ICANN’s principal office) after ICANN is informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. ICANN will then implement the decision unless it has received from the holder of a domain name during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that the holder has commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of ICANN’s principal office or of holder’s address as shown in ICANN’s Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If ICANN receives such documentation within the ten (10) business day period, it will not implement the Administrative Panel's decision, and it will take no further action, until it receives:

(i) Evidence satisfactory to ICANN of a resolution between the parties;

(ii) Evidence satisfactory to ICANN that holder’s lawsuit has been dismissed or withdrawn; or

(iii) A copy of an order from such court dismissing holder’s lawsuit or ordering that holder do not have the right to continue to use your domain name.

All other disputes between the holder of a domain name and any party other than ICANN regarding holder’s domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between the holder and such other party through any court, arbitration or other proceeding that may be available.

ICANN will not participate in any way in any dispute between holder and any party other than ICANN regarding the registration and use of holder’s domain name. Holder/Complainant shall not name ICANN as a party or otherwise include ICANN in any such proceeding. In the event that ICANN is named as a party in any such proceeding, ICANN reserves the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend itself.

ICANN will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above.

The holder may not transfer his domain name registration to another holder

(i) During a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of ICANN’s principal place of business) after such proceeding is concluded; or

(ii) During a pending court proceeding or arbitration commenced regarding holder’s domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. ICANN reserves the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.

The holder may not transfer his domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of ICANN’s principal place of business) after such proceeding is concluded. Holder may transfer administration of his domain name registration to another registrar during a pending court action or arbitration, provided that the domain name he has registered with ICANN shall continue to be subject to the proceedings commenced against him in accordance with the terms of this Policy. In the event that the holder transfers a domain name registration to ICANN during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred.

ICANN reserves the right to modify this Policy at any time. ICANN will post its revised Policy at at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to the holder until the dispute is over, all such changes will be binding upon the holder with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of ICANN’s change. In the event that the holder objects to a change in this Policy, his sole remedy is to cancel his domain name registration with ICANN, provided that he will not be entitled to a refund of any fees he paid to ICANN. The revised Policy will apply to the holder until he cancels his domain name registration.

Domain Names, Brands, Trademarks, Cybersquatting, ICANN And WIPO

The Internet Corporation for Assigned Names and Numbers (ICANN) would hold the Second Public Meeting of the year on 20th June 2011 at Singapore. ICANN administers the Internet’s Domain Name System. ICANN could vote to approve its proposed program to introduce an unlimited number of new Generic Top-Level Domain Names (GTLD ).

This proposal has far reaching consequences for Domain Name, Brands holders, Trademark owners and even for International Organisations like ICANN and World Intellectual Property Organisation (WIPO). This decision would give a new meaning to Domain Names Protection, Brands Protection, Trademarks Protection, Cybersquatting Disputes Resolution, Cyber Law Compliances, Cyber Security requirements, Cyber Due Diligence, etc.

Domain Name Protection would now require additional resources and efforts as the number of Cybersquatting cases would increase drastically. Even WIPO had confirmed in the past that Cybersquatting cases have increased significantly. This would increase the demand for Domain Name and Cyber Squatting Dispute Resolution Services at National and International level.

It would now be more difficult for Companies to protect their Brands. With an increased numbers of GTLDs, Brand Owners would be required to register, monitor and enforce their Trademarks across the Globe. International Institutions and Organisations like ICANN, WIPO, etc would require “Additional Experts” to resolves these Disputes.

Further, the introduction of large numbers of new GTLDs will also bring additional complexities and costs, raise additional Cyber Security Challenges for Organisations seeking to secure their online presence, maintain the integrity of their brands, and enhance their consumers’ online experience. The growing cyber attacks upon International Companies and Organisations like Gmail, Citicorp, etc proves this point. This is the reason why ICANN and INTERPOL are exploring methods to enhance Internet Security.

Right now, it would cost $185,000 US to apply, and Individuals or Organisations will have to show a “Legitimate Claim” to the name they are buying. This would significantly increase the workload of ICANN as “Claims” have to be “Formally Adjudicated” before being approved by ICANN.

Meanwhile, Companies, Brand holders and Trademark holders must start strengthening their in house legal capabilities or hire services of good law firms to meet the possible challenges that the new GTLDs would unleash. Failure to do so will put at risk their Brands and Trademarks and put at risk the trust, goodwill, and secure relationships with their consumers that these businesses have worked so hard to achieve.

WIPO Mediation and Expedited Arbitration For Film and Media

The World Intellectual Property Organisation (WIPO) has been providing world class Dispute Resolution Services for long. One such Service is known as WIPO Mediation and Expedited Arbitration for Film and Media.

To achieve this objective, the WIPO Mediation and Expedited Arbitration Rules for Film and Media have been specifically tailored to resolve disputes in the film and media sectors.

Developed by the WIPO Arbitration and Mediation Center in cooperation with industry experts, these Rules, as well as the special model contract clauses and submission agreements, are particularly appropriate for international film and media transactions where parties require an expedited dispute resolution process.

The present trend shows that Asian Film Companies had a lot to gain from the use of Alternative Dispute Resolution (ADR) and Online Dispute Resolution (ODR) Mechanisms instead of approaching the traditional litigation methods through Courts.

However, what is surprising is that fact that Asian Companies are mostly Respondents and are on the receiving end. This may be due to two reasons. Firstly, a majority of Respondents may be defending themselves against the Intellectual Property Rights (IPRs) violations cases. Secondly, Asian Companies may not be effectively using the ADR and ODR Dispute Resolution Services of International Organisations and Institutions.

A great deal of ADR and ODR Disputes are “Referred” by Law Firms and Practicing Legal Professionals. They incorporate suitable “ADR and ODR Clauses” in the Technology Agreements, Film and entertainment related Agreements, etc. If these Firms and Professionals do not incorporate proper Arbitration Clause, a Dispute can never reach to International Organisations and would land up in a Court of Law.

At Perry4Law we are very particular of these considerations and we Draft various Technology Related, Cross Border E-Commerce Disputes related, Cross Border Consumer Agreements related and many such more Agreement accordingly. Of course, this is done only after duly informing the Parties to the Agreement and respecting the “Party Autonomy” concept.

Further, while drafting and vetting Contractual Agreements involving Technology Transfers and Licensing, we specifically and consensually incorporate an ADR/ODR Clause mandating “Institutional Arbitration” through Institutions like WIPO Arbitration and Mediation Center or UNCITRAL based Arbitration Institutions, etc.

However, WIPO’s Mediation and Expedited Arbitration for Film and Media initiative cannot succeed till it is a part of “Holistic Effort” comprising of Law Firms and Professionals spread all over the globe.

Technology Dispute Resolution Providers Empanelment In India

Dispute resolution of cross border technology transactions have increased a lot. World over, individuals and organisations are working in the direction of use of online dispute resolution (ODR) for resolution of such technology related disputes.

Although this is good trend in the right direction yet there are no harmonised legal standards for use of ODR at international level. International harmonisation of ODR norms and principles is need of the hour.

In the Indian context we have very limited use of ODR for dispute resolutions. Neither the legal framework of India nor dispute resolution providers of India prefers ODR as a medium of dispute resolution.

At Perry4Law and Perry4Law Techno Legal Base (PTLB), we have suggested an international dispute resolution policy of India. This policy advocates active use of ODR in India and is the exclusive ODR policy of India.

PTLB is also in talks with national and international organisations to facilitate and encourage use of technology dispute resolutions and ODR in India and world wide. PTLB is looking forward for active national and international collaborations in this regard. Interested national and international organisations may contact us with their proposals in this regard.

Further, arbitrators, lawyers, mediators, conciliators, ODR experts, neutrals, etc that wish to work in association with PTLB may also empanel with it. Interested individuals must meet the prescribed procedure in order to be empanelled with PTLB.

A minimum five years experience in arbitration matters is required to be empanelled with PTLB. The empanelment would be for minimum of one year (1) and maximum of five (5) years. The empanelment may be renewed at the discretion of PTLB and Perry4Law. The requisite Performa for Individuals can be downloaded from “Here”. The Firms, Companies, Institutions, etc can download the Performa from “Here”.

The application form must be accompanies with proper fees in order to be analysed. Perry4Law and PTLB have the sole discretion to accept or reject the empanelment requests. It would be better if applicants seek an opinion of PTLB in this regard well in advance through an e-mail. Kindly do not remit any fees or money till a positive confirmation is given by PTLB for the possible inclusion of the applicant. Applicants are strongly advised to go through the “Empanelment Procedures” before applying.

Legal Standards For Online Dispute Resolution For Cross-Border Electronic Transactions

Online dispute resolution (ODR) is a cost effective and convenient method of dispute resolution. Rather than depending upon the traditional litigation method, ODR provides an alternative and effective dispute resolution mechanism.

Commercial Transactions and Cross Border E-Commerce Transactions can be greatly benefited if disputes arising out of same are redressed through use of ODR rather than traditional courts. Further, dispute resolution of Cross Border Technology Transactions can also be effectively resolved using ODR.

However, there is a need to clarify the categories of Technology, E-Commerce and Cross Border Disputes that might be solved by using ODR, appropriate Procedural Rules for ODR, the possibility or desirability to maintain a single database of ODR Service Providers, and the issue of Enforcement of Awards made through the ODR process under the relevant International Conventions.

Here lies the true problem. Conflict of Laws is the real issue that has to be addressed as different Jurisdictions may have different Legal and Regulatory Frameworks in this regard. International Legal Standards for ODR are still missing. This is preventing International Harmonisation of ODR that is missing till now.

Even United Nations Commission on International Trade Law (UNCITRAL) has not achieved this task so far. This is the main reason why there is no coordination between UNCITRA, ODR and India. International Organisations like World Intellectual Property Organisation (WIPO) must further strengthen its Technology Dispute Resolution Services. Even EU India ODR Development Dialogue must also be initiated by both countries. In fact, EU has already planned to use ODR for Cross Border Consumer Disputes.

In the Indian context, ODR is facing severe Legal Roadblocks in India. We have no dedicated Legal Framework for ODR in India. Even an ODR Policy of India is missing. ODR in Asian Countries is still not popular.

At Perry4Law and Perry4Law Techno Legal Base (PTLB) we have been providing Techno Legal Technology Dispute Resolution Policies and Strategies. We have suggested a Technology Dispute Resolution Policy of India and ODR Policy of India.

We are also in talk with International Organisations and Institutions working in this regard so that Harmonisation of ODR Framework may be possible. We hope our Initiatives would be helpful for the International and National ODR Community.

Dispute Resolution Of Cross Border Technology Transactions

By
Praveen Dalal

Dispute Resolution in Cross Border Technology Transactions is an area that has tremendous potential. There are diverse natures of Information and Communication Technology (ICT) related disputes that can be effective solved using Alternative Dispute Resolution (ADR) or Online Dispute Resolution Mechanisms.

However, the crucial question is whether India is ready for Dispute Resolution of Cross Border Technology Transactions and E-Commerce Transactions? I am not talking about use of traditional Litigation Methods for the same. Of course, they are sufficient to resolve these Technology Related Disputes. What I am discussing here is use of ADR and ODR by Individual Panelists and Institutional Arbitration Institutions of India.

The present ODR Regime of India is facing severe Legal Roadblocks. We have neither Legal Framework nor Technical Expertise to engage in high profile and highly technical Technological Disputes. We have no Domain Name Protection Law in India and even Cyber Squatting cases are decided under the Indian Trademark Act, 1999. Even Institutional Arbitration Framework has not been adequately developed by India to resolve such disputes.

Even Domain Name Dispute Resolution in India through ODR is not very popular in the absence of International Harmonisation of ODR Framework. International Harmonisation of ODR is required that is presently governed by different sets of Rules and Procedures.

Just like Uniform Domain Name Dispute Resolution Policy (UDRP) is a Standard for resolving Domain Name Disputes, similar Standards and Norms must be established for all Technology Related Disputes resolvable by using ODR mechanism. Institutions like WIPO, United Nations Commission on International Trade Law (UNCITRAL), etc must think and work in this direction. We must also either amend the Indian Trademark Act, 1999 or enact a separate Cyber Squatting Law of India.

With a pro active approach at both National and International Levels, Technology related disputes can be effectively and economically resolved. We at Perry4Law and Perry4Law Techno Legal Base (PTLB) are working in this direction. Collectively, the exclusive E-Courts Training and Consultancy Centre of India manage the issues of ADR, ODR, E-Courts, Domain Name Dispute Resolution in India, etc.

We hope our initiatives would prove useful to all concerned, especially to WIPO and UNCITRAL.