TM-PDDRP Recommendation #1 The Working Group recommends that Rule 3(g) of the Trademark Post-Delegation Dispute Resolution Procedure (TM-PDDRP) Rules be modified, to provide expressly that multiple disputes filed by unrelated entities against a Registry Operator[1] may be initially submitted as a joint Complaint, or may, at the discretion of the Panel, be consolidated upon request. This recommendation is intended to clarify the fact that the TM-PDDRP permits the joint filing of a Complaint and the consolidation of Complaints by several trademark owners, even if these are unrelated entities, against a Registry Operator in the case where: (a) that Registry Operator has engaged in conduct that has affected the Complainants’ rights in a similar fashion; and (b) it will be equitable and procedurally efficient to permit the consolidation. To the extent that a TM-PDDRP Provider’s current Supplemental Rules[2] may not permit the filing of a joint Complaint or the consolidation of several Complaints, the Working Group further recommends that those Providers amend their Supplemental Rules accordingly. For the avoidance of doubt, the Working Group notes that:
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Context:
This recommendation specifically concerns a proposed amendment to the TM-PDDRP Rule 3(g), and a reference to Article 9 of the TM-PDDRP:
- TM-PDDRP Rule 3(g): If a PDDRP Complaint is filed against a Registry Operator against whom another PDDRP is active, the parties to both disputes may agree to consolidate. See the Provider’s Supplemental Rules regarding consolidation.
- TM-PDDRP Article 9.1: Provider shall establish a Threshold Review Panel, consisting of one panelist selected by the Provider, for each proceeding within five (5) business days after completion of Administrative Review and the Complaint has been deemed compliant with procedural rules.[4]
The TM-PDDRP was designed to allow a trademark owner to file a complaint against a Registry Operator over certain forms of behavior claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the Registry Operator’s manner of operation or use of the gTLD.
At the top level of the gTLD, the requisite conduct by the Registry Operator must cause or materially contribute to either 1) taking unfair advantage of the distinctive character or the reputation of the Complainant's mark, 2) impairing the distinctive character or the reputation of the Complainant's mark, or 3) creating a likelihood of confusion with the Complainant's mark.
At the second level of the gTLD, the affirmative conduct by the Registry Operator must constitute a substantial pattern or practice of specific bad faith intent by the Registry Operator to profit from: (i) the sale of trademark infringing domain names; and (ii) the systematic registration of domain names in that gTLD that either 1) takes unfair advantage of the distinctive character or the reputation of the Complainant's mark, 2) impairs the distinctive character or the reputation of the Complainant's mark, or 3) creates a likelihood of confusion with the Complainant's mark.
Rule 3(g) of the TM-PDDRP Rules specifically allows for the consolidation of Complaints where, during an ongoing TM-PDDRP proceeding, a second Complaint is filed against the same Registry Operator. The Working Group’s recommendation[5], if approved, will clarify that joint Complaints filed in one single Complaint at first instance, or multiple Complaints by several trademark owners against the same Registry Operator are permitted to be consolidated, even when the Complainants are unrelated entities. However, the Complaints to be submitted jointly/consolidated must relate to conduct by that Registry Operator that affects all the Complainants similarly, and at the same level (i.e. top or second) of the gTLD, and must all have successfully passed the Threshold Review required under the procedure.
At the time the Working Group reviewed TM-PDDRP, and at the time of publication of this Initial Report, no Complaints had been brought under the procedure. Although the Working Group discussed a number of possible reasons why the procedure had not been used, as well as possible modifications to the criteria (e.g. whether a standard of willful blindness could be justified based on any observable conduct), it concluded that there was no evidence to clearly demonstrate a single or primary reason. It also concluded that, at this stage, there was insufficient agreement to make substantive changes to the TM-PDDRP.
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[1] Including those under common control, see definition at TM-PDDRP Article 6: “For purposes of these standards, “registry operator” shall include entities directly or indirectly controlling, controlled by or under common control with a registry operator, whether by ownership or control of voting securities, by contract or otherwise where ‘control’ means the possession, directly or indirectly, of the power to direct or cause the direction of the management and policies of an entity, whether by ownership or control of voting securities, by contract or otherwise.” More details of the TM-PDDRP can be found here: http://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf
[2] The Supplemental Rules of the three TM-PDDRP Providers can be found here - ADNDRC: https://www.adndrc.org/mten/img/pdf/Supplemental_Rules_TMPDDRP_10-03-2014.pdf; FORUM: https://www.adrforum.com/assets/resources/gTLD/Supplemental%20Rules-PDDRP.pdf; and World Intellectual Property Organization (WIPO): https://www.wipo.int/export/sites/www/amc/en/docs/supplrulestmpddrp.pdf
[3] See the Threshold Review criteria in Article 9 of TM-PDDRP on pp.5-6 here: http://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf
[4] Please see the complete text of Article 9 of TM-PDDRP on pp.5-6 here: http://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf
[5] WIPO, one of the dispute resolution providers that administer the TM-PDDRP, submitted a possible mark-up of the Rules that can be used as a starting point for the Implementation Review Team that will be convened if this recommendation is approved. See details here: http://www.wipo.int/export/sites/www/amc/en/docs/icann130309.pdf