Dispute Resolution Process Submission

From:		The International Trademark Association 
Received:	16 February 2005


The International Trademark Association (INTA) welcomes this opportunity to 
provide a response to DNC's Working Group Consultation Paper on the 
establishment of a dispute resolution process for the nzTLD. 


INTA is a not-for-profit membership association of more than 4,500 trademark 
owners and professionals from more than 180 countries, including New 
Zealand. It is dedicated to the support and advance of trademarks and 
related intellectual property as elements of fair and effective national and 
international commerce. For the last ten years, INTA has also been the 
leading voice of trademark owners within the Internet community, serving as 
a founding member of the Intellectual Property Constituency of the Internet 
Corporation for Assigned Names and Numbers (ICANN). In addition, INTA has 
provided commentary to numerous ccTLD operators, including .ca (Canada), .ie 
(Ireland), .sg (Singapore), and .uk (United Kingdom), concerning 
registration and dispute resolution practices. 


INTA supports the majority view of the Working Group, namely that a dispute 
resolution arbitration process should be established for the nzTLD. INTA 
recognizes that courts in New Zealand have been well equipped to effectively 
deal with trademark related domain name disputes which have come before 
them. However, as with the experience in other countries, all parties 
involved in a domain name dispute benefit greatly from a quick and cost 
effective arbitration system to deal with cases of bad faith domain name 
registrations. 


The consultation paper has identified two options for a dispute resolution 
process namely: 

1. A system based on the Nominet UK model; or 

2. A modified ICANN Uniform Dispute Resolution (UDRP) 
model. 


The paper clearly identifies advantages and disadvantages of both models. 
However, the paper at times appears to assume that the form of the rules 
adopted dictates the organization that that will run the dispute resolution 
process. We believe that greater flexibility exists. For example, the 
section dealing with disadvantages of the UDRP appears to assume that it is 
necessary to utilize the WIPO Arbitration and Mediation Centre and hence 
WIPO panellists. INTA wishes to highlight that the DNC may appoint its own 
arbiters outside the WIPO centre. As such, many of the stated disadvantages 
or concerns of the UDRP model may be avoided. Moreover, further customizing 
to meet local conditions may be implemented. Conversely, WIPO is both 
willing and able to operate disputes resolution processes for domain names 
which differ from the UDRP. 


In deciding which model to adopt, regard may be had to the experience of 
Australia, which introduced a modified UDRP type process in August 2002 - 
the auDRP (see http://www.auda.org.au/policies/auda-2002-22/). The auDRP was 
customized to take account of unique eligibility criteria applicable in .au 
and also to remedy a number of perceived ambiguities or uncertainties in the 
UDRP. (For example, the auDRP was amended to make it clear that registration 
or subsequent use in bad faith would be sufficient.) A similar approach 
could be adopted for .nz. By all accounts, the auDRP has been a success and 
has addressed the need for a cost effective and expedient means to resolve 
bad faith domain name registrations. Since adoption of the auDRP, 29 
complaints have been filed. 


INTA's view is that the UDRP is not radically different from the Nominet UK 
model for resolving domain name disputes. For example, both are expedited, 
relatively inexpensive systems in which expert arbitrators apply 
multi-factor tests to assess the presence or absence of bad faith. INTA 
would support the introduction of either model for the nzTLD. However, on 
balance, INTA's preference would be the adoption of a UDRP model. This 
model is likely to be more expedient and cost effective and, given that the 
number of disputes which is likely to be received is unlikely to be high, 
INTA questions whether the expense of setting up a Nominet type system would 
be warranted. In addition, INTA is a strong proponent of harmonization in 
the field of trademark law. The UDRP model has been adopted across numerous 
gTLDs and ccTLDs with great success and the requirements under the model are 
well understood by trademark owners and advisors worldwide. 


INTA appreciates the opportunity to offer its comments concerning the 
dispute resolution procedure for the nzTLD. We look forward to answering 
any questions that DNC has with respect to our submission. 


Sincerely, 
Michael E. Heltzer 

External Relations Manager 
International Trademark Association