Domain Name Law and Practice

An International Handbook

Second Edition

Edited by Torsten Bettinger and Allegra Waddell

The leading work in international domain name law
In-depth analysis of the trade mark and domain name laws in 35 key jurisdictions
Includes thorough analysis of ICANN's new gTLD program including the complex application procedures, dispute resolution, and new rights protection mechanisms
Detailed review of current and anticipated dispute resolution procedures available in the major domain name spaces
The only work to provide a comprehensive picture of the different registration procedures for domain names, together with an analysis of the law that has developed in respect of domain name at both national and international level in 36 jurisdictions
Includes an examination of ICANNs organizational structure and Policy-Development Processes as well as ICANNs accountability and transparency frameworks and mechanisms
Detailed examination of the alternative dispute resolution procedure set out in the Uniform Domain Name Dispute Resolution Policy, and in depths analysis of a large number of key decisions from the over 8,000 panel decisions now rendered
Provides a critical exposition of the alternative dispute resolution procedure for ".EU" adopted in European Commission Regulation (EC) 874/2004 of April 28, 2004 and an analysis of EU panel decisions

New to this Edition:

Analysis of the trends and driving forces within the domain name industry in a new chapter including consideration of market structure and the evolution of a 'Domain Name Aftermarket'
New chapters on Corporate Domain Name Management, the Trademark Clearing House, Sunrise Procedures and the Trademark Claims Service; the Uniform Rapid Suspension System; and Trademark Post Delegation Dispute Resolution Procedure
New chapters on Colombia, Israel, Mexico, South Korea, Brazil, Egypt, Portugal, and South Africa

Domain Name Law and Practice

An International Handbook

Second Edition

Edited by Torsten Bettinger and Allegra Waddell

Description

An established authority in the field, this work provides comprehensive analysis of the law and practice relating to internet domain names at an international level, combined with a detailed survey of the 36 most important domain name jurisdictions worldwide, including the US, UK, Germany, France, Italy, Netherlands, Japan, China, Singapore, Russia, Canada, and Australia, and new chapters on Israel, Mexico, South Korea, Brazil, Colombia, Portugal, and South Africa. The survey includes extensive country-by-country analysis of how domain names relate to existing trade mark law, and upon the developing case law in the field, as well as the alternative dispute resolution procedures.

In its second edition, this work analyses, in depth, key developments in the field including ICANN's new gTLD program. The program, introducing more than 700 new top-level domains, will have far-reaching consequences for brand name industries worldwide and for usage of the internet. The complicated application process is considered in detail as well as filing and review procedures, the delegation process, the role and function of the Trademark Clearing House and the Sunrise and Trademark Claims Services, dispute resolution, and new rights protection mechanisms.

Other developments covered include new registration processes such as the use of privacy and proxy services, as well as the expansion of the scope of internationalized domain names, including the addition of a number of generic top-level domains such as ".tel" and ".travel". Also considered are developments relating to the Uniform Domain Name Dispute Resolution Policy (UDRP) in terms of the nature of cases seen under the Policy and the number of cases filed, as well as the recent paperless e-UDRP initiative. The Uniform Rapid Suspension System, working alongside the UDRP in the new gTLD space, is also discussed in a new chapter on this process.

Giving detailed information about the registration of domain names at national, regional and international levels, analysis of the dispute resolution processes at each of those levels, and strategic guidance on how to manage domain names as part of an overall brand strategy, this leading work in international domain name law is essential reading for practitioners in the field.

Domain Name Law and Practice

An International Handbook

Second Edition

Edited by Torsten Bettinger and Allegra Waddell

Preface, Torsten Bettinger
Part I - The Domain Name System
A:The Structure and Organization of the Domain Name System, Torsten Bettinger
B:Organizational structure and functions of the Internet Coporation for Assigned Names and Numbers (ICANN), Torsten Bettinger and Volker Griemann
C:Original gTLDs: Registration Procedures and Dispute Resolution, Torsten Bettinger
D:New gTLDs, Torsten Bettinger, Mike Rodenbaugh, Jannik Skou, and Volker Greimann
E:Country Code Top Level Domains (ccTLDs), Torsten Bettinger
F:The European Top Level Domain ".eu", Torsten Bettinger
G:Domain Name Industry, Jannik Skou
H:Statistics, Torsten Bettinger
Part II - National Law
Australia, Alistair Payne and David Fixler
Austria, Peter Burgstaller
Belgium, Alain Strowel and Benjamin Docquir
Brazil, Karin Grau-Kuntz, Bernardo Brauer
Canada, Eric Macramalla
China, Lian Yunze and Liu Yuping
Czech Republic, Radka MacGregor Pelikanova, Ladislav Jakl
Denmark, Knud Wallberg
France, David Taylor
Germany, Torsten Bettinger
Greece, Apostolos Chronopoulos
Hong Kong, Hong Xue
India, Pravin Anand
Ireland, James Bridgeman
Israel, Ellen Shankman
Italy, Philipp Fabbio
Japan, Makoto Hattori and Nodoka Nakamura
The Netherlands, Adonna Alkema
Norway, Kristine Celius
Poland, Justyna Ozegalski-Trybalska
Portugal, Alexandre Dias Pereira, Carla Valerio
Russian Federation, Iouri Kobiako von Gamm and Natalia Gulyaeva
Singapore, Tan Tee Jim
South Africa, Charne Le Roux
South Korea, Ho-Hyun Nahm
Spain, Albert Agustinoy
Sweden, Petter Rindforth
Switzerland, Gallus Joller
Turkey, Mustafa Aksu
United Kingdom, Steve Palmer, Dawn Osborne
United States, William R. Towns
Part III - Rights Protection Mechanisms
A. Rights Protection Mechanisms for new gTLDs
I:Rights Protection against Applications for a new gTLDs (Pre-Delegation Dispute Resolution)
1:New gTLD Dispute Resolution Procedure, Torsten Bettinger and Mike Rodenbaugh
2:String Confusion Objection, Torsten Bettinger
3:Legal Rights Obligation, Torsten Bettinger
4:Public Interest Objection, Torsten Bettinger
5:Community Based Objections, Torsten Bettinger
II:Rights Protection against the operation and use of new gTLDs by the Registry Operator (Post-Delegation Dispute Resolution), Torsten Bettinger, David Taylor, and Jane Seager
1:Trademark Post-Delegation Dispute Resolution Policy (PDDRP), David Taylor
2:Registry Restrictions Dispute Resolution Procedures (RRDRP), Torsten Bettinger
3:Public Interest Commitments Dispute Resolution Procedure (PICDRP), Torsten Bettinger
III:Rights Protection against the Registration and Use of Domain Names within a new gLTD
1:Trademark Clearing House, Sunrise Procedures and the Trademark Claims Service (TMCH), Hong Xue, Torsten Bettinger, and Allegra Waddell
2:Uniform Rapid Suspension System (URS), Torsten Bettinger and Allegra Waddell
3:Sunrise Dispute Resolution Policy, Torsten Bettinger
4:Registry Specific Rights Protection Mechanisms (DPML), Torsten Bettinger
B. Rights Protection Mechanisms for all gLTDs
I:Uniform Domain Name Dispute Resolution Policy and Procedure (UDRP), Torsten Bettinger and Allegra Waddell
II:Other Consensus Policies
III:gTLD Specific Dispute Resolution Procedures
C. Rights Protection Mechanisms for ccLTDs
I:Alternative Dispute Resolution for .EU, Torsten Bettinger and Allegra Waddell
II:Alternative Dispute Resolution Procedures for ccTLDs
1:UDRP for ccTLDs, Torsten Bettinger
2:ccTLD Specific Dispute Resolution, Torsten Bettinger
Part IV - Joint Recommendation
Table of Country Overviews, Torsten Bettinger
Table of Country Overviews, Torsten Bettinger and Allegra Waddell

Domain Name Law and Practice

An International Handbook

Second Edition

Edited by Torsten Bettinger and Allegra Waddell

Author Information

Edited by Torsten Bettinger, Attorney at Law, Munich, Germany, and Allegra Waddell, Attorney, Missouri

Torsten Bettinger is a partner with the patent attorneys and attorney-at law chambers of Bettinger Scheffelt Kobiako von Gamm in Munich. He advises in all fields of intellectual property and specializes in the creation of global trademark and branding strategies, programs to protect intellectual property rights against infringement, unfair competition and copyright. He has counseled clients on cutting-edge issues such as the new generic top-level domain (gTLD) program, including drafting and prosecuting new gTLD applications and developing advocacy and enforcement strategies in this space. As counsel and as WIPO Arbitration and Mediation Center panelist, Mr Bettinger has been involved in decisions on numerous domain name conflicts based on the Uniform Domain Name Dispute Resolution Policy and similar processes for country code top-level domains (ccTLDs).

Allegra Waddell is an intellectual property attorney. She is barred in Missouri, United States, and is registered to practice before the US Patent and Trademark Office. Before beginning work as a private legal consultant on UDRP-related matters, Allegra served several years on the Legal Staff of the Domain Name Dispute Resolution Section of WIPO's Arbitration and Mediation Center. During her time at WIPO, she was involved in the drafting of the electronic version of the UDRP Rules approved by ICANN in October 2009, served as the WIPO contact to the CentralNic registry regarding its third-level registration policy, and was heavily involved in the research for and drafting of the second edition of theWIPO Overview of WIPO Panel Views on Selected UDRP Decisions released in February 2011.

Contributors:

Pravin Anand - Senior Partner, Anand and Anand
Albert Agustinoy - Partner, Cuatre Casas
Mustafa Aksu
Adonna Alkema - Hofhuis Alkema Groen
Torsten Bettinger - Attorney-at-Law, Bettinger Scheffelt Kobiako von Gamm, Munich
Bernardo Guitton Brauer
James Bridgeman - Barrister at Law
Peter Brugstaller - Lawfirm
Kristine Celius - Associate, Thomessen
Apostolos Chronopoulos
Goncalo da Cunha Ferreira - Cunha Ferreira Advogados
Alexandre Dias Pereira
Benjamin Docquir - Simont Braun
Philipp Fabbio
David Fixler
Karin Grau-Kuntz - WürtenbergerKunze
Volker Alexander Greimann, Chief Legal Officer and General Counsel at Key-systems
Natalia Gulyaeva - Partner at Hogan Lovells
Makoto Hattori - Attorney at Law, Abe, Ikubo & Katayama
Jakl Ladislav Patentservis
Marie-Emmanuelle Haas - Attorney at Law, Casalonga Avocats
Gallus Joller - Partner, Troller Hitz Troller
Iouri Kobiako von Gamm - Partner at df-mp
Charné Le Roux - Partner, Adams & Adams
Eric Macramalla - Partner, Gowlings
Ho-Hyun Nahm - Lead Partner, Barun IP & Law
Nodoka Nakamura - Abe, Ikubo & Katayama
Dawn Osborne - Partner, Palmer Biggs Legal
Justyna Ozelgalski-Trybalska - Associate Professor, School of Law, Jagiellonian University
Steve Palmer - Palmer Biggs Legal
Alistair Payne - Partner, Matheson Ormsby Prentice
Radka MacGregor Pelikánová - Metropolitan University Prague
Petter Rindforth - Fenixlegal
Mike Rodenbaugh - Partner, Rodenbaugh Law
Jane Seager - Counsel in the Intellectual Property, Media and Technology Group of the Paris office of Hogan Lovells.
Ellen B. Shankman - Principle, Ellen B. Shankman & Associates
Jannik Skou - Partner, Thomsen Trampedach
Alain Strowel - of Counsel, Covington & Burling LLP
Tan Tee Jim - Partner, Lee & Lee
David Taylor - Hogan Lovells
William Towns - Partner - Novak Druce
Carla Valerio - Faculty of Law of the National University of Timor-Leste
Allegra Waddell - Consultant, Columbia, Missouri
Knud Wallberg - Partner, Wallberg IP Advice
Hong Xue - Beijing Normal University
Mohamed-Hossam Loutfi - University of Cairo
Lian Yunze - Attorney, Hylands Law Firm
Liu Yuping - Attorney-at-law, Trademark Attorney, Hylands IP Agency
Eduardo Magalhães Machado - Senior Partner, Montaury Pimenta, Machado & Vieira de Mello
Daniel Peña - Peña Mancero Abogados
George Souter - European Patent Attorney, European Trade Mark & Design Attorney, Lammi & Partners Oy
Kiyoshi Tsuru - Partner, Tsuru, Morales & Tsuru Abogados

Domain Name Law and Practice

An International Handbook

Second Edition

Edited by Torsten Bettinger and Allegra Waddell

Reviews and Awards

"This book is the leading authority on our contemporary domain name regime. There is no parallel book that provides such an extensive and illuminating inquiry into the procedural and legal aspects of protecting domain names ... This volume is of vital contribution to the study of domain name systems and the general development of law and procedure in interconnected environments." - Lior Zemer, European Intellectual Property Review.

"Systematically examined and clearly stated, the full scope of domain name law is comprehensively covered in this treatise. It is an excellent reference book." - Jane F. Collen, The Trademark Reporter (Vol. 106 No.3)

"In glorious, ministerial red linen with delicate gold embossing and navy accents, the traditional cover of this book belies the very modern topic it covers: Domain Names. If you've got a domain law question, this book likely has the answer." - Nicola Searle, IPKat blog

Domain Name Law and Practice

An International Handbook

Second Edition

Edited by Torsten Bettinger and Allegra Waddell

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