WIPO and dispute settlement: the WIPO ADR mechanism, the UDRP and the INDRP

1. WIPO and the settlement of IP disputes

The World Intellectual Property Organization was established by the Convention signed at Stockholm in 1967, which came into force in 1970, and became a specialised agency of the United Nations in 1974. It succeeded BIRPI, the joint bureaux of the Paris and Berne Unions. It administers the main IP treaties, including the Paris and Berne Conventions, the PCT, the Madrid and Hague systems, and the WCT and WPPT.

Disputes between States. The Paris and Berne Conventions allow disputes to be taken to the International Court of Justice, but no case was ever brought. A WIPO treaty on settlement of disputes between States was negotiated in the early 1990s but abandoned once TRIPS (Article 64) brought IP disputes under the WTO Dispute Settlement Understanding, which has binding rulings and trade sanctions. WTO panels interpret Berne and Paris as incorporated into TRIPS, for example in US – Section 110(5) of the Copyright Act (2000) on the three-step test.

Disputes between private parties. This is where WIPO acts, through the WIPO Arbitration and Mediation Center, set up in Geneva in 1994, with an office in Singapore.

2. Why ADR suits IP and technology disputes

The WIPO publication on the KSLU reading list, Resolving IP and Technology Disputes Through WIPO ADR (2016), gives the usual reasons:

• One procedure for many countries. A licence or patent dispute covering ten countries would otherwise need ten national suits, with the risk of inconsistent results.
• Neutrality of forum, law, language and nationality of the decision maker.
• Expertise. The parties can choose a mediator or arbitrator who understands the technology.
• Confidentiality of trade secrets and of the existence of the dispute.
• Speed and cost, especially under expedited rules.
• Finality and enforceability. Arbitral awards are enforceable in over 170 States under the New York Convention, 1958.
• Preserving relationships between licensors and licensees or research partners.

3. The WIPO procedures

The Center also runs mediation schemes in cooperation with national IP offices for disputes pending before them, and offers model clauses for contracts.

4. Arbitrability of IP disputes in India

In Booz Allen & Hamilton v. SBI Home Finance, 2011 INSC 301, the Supreme Court said that disputes about rights in rem are generally not arbitrable, while disputes about rights in personam are. In Vidya Drolia v. Durga Trading Corporation, 2020 INSC 697, it set out a fourfold test, including whether the dispute relates to actions in rem that do not arise from subordinate rights in personam, and whether it affects third-party rights or needs centralised adjudication. Applying this, grant, registration and validity of patents and trade marks, which bind the world, are for the statutory authorities and courts. Disputes between parties about licences, royalties, assignment and infringement arising from a contract are arbitrable, as the Bombay High Court held for copyright in Eros International v. Telemax Links (2016).

Mediation is now part of the IP court process. Section 12A of the Commercial Courts Act, 2015 requires pre-institution mediation for commercial suits, including IP suits, unless urgent interim relief is sought; the Supreme Court held this mandatory in Patil Automation v. Rakheja Engineers, 2022 INSC 841. The Mediation Act, 2023 gives a general framework, and India signed the Singapore Convention on Mediation in 2019.

5. Domain name disputes: the UDRP

The Uniform Domain-Name Dispute-Resolution Policy was adopted by ICANN in 1999 on the basis of the WIPO Internet Domain Name Process report. Every registrant of a gTLD name accepts it in the registration agreement. The first case decided under it was World Wrestling Federation v. Bosman (WIPO, 2000), in which worldwrestlingfederation.com, offered for sale to the complainant three days after registration, was transferred.

The three elements (paragraph 4(a))

1. The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights.
2. The registrant has no rights or legitimate interests in respect of the domain name.
3. The domain name has been registered and is being used in bad faith.

Evidence of bad faith (paragraph 4(b)), non-exhaustive

• registration primarily to sell, rent or transfer the name to the mark owner or a competitor for more than out-of-pocket costs;
• registration to prevent the owner from reflecting its mark in a domain name, where there is a pattern of such conduct;
• registration primarily to disrupt a competitor’s business;
• intentional attempt to attract users for commercial gain by creating a likelihood of confusion with the mark as to source, sponsorship or affiliation.

Rights or legitimate interests (paragraph 4(c))

• use, or demonstrable preparation to use, the name for a bona fide offering of goods or services before notice of the dispute;
• being commonly known by the name;
• legitimate non-commercial or fair use without intent to mislead consumers or tarnish the mark.

Leading decisions

• Telstra v. Nuclear Marshmallows (WIPO, 2000): passive holding of a name can be use in bad faith where the mark is well known, the registrant hid its identity and no good-faith use is conceivable.
• Madonna Ciccone v. Parisi (WIPO, 2000): madonna.com, used for an adult site, transferred to the singer.
• Bruce Springsteen v. Burgar (WIPO, 2001): the complaint over brucespringsteen.com failed because bad faith was not proved, showing that fame alone does not entitle a celebrity to the name.

Procedure and limits

The complaint is filed with an approved provider (WIPO handles the largest share). The panel of one or three decides on the papers within a few weeks. The only remedies are cancellation or transfer; no damages or costs. Either party may go to a court of competent jurisdiction; the registrar waits ten business days after a transfer decision for proof of a court filing before implementing it (paragraph 4(k)). A panel may declare a complaint brought in bad faith to be reverse domain name hijacking. WIPO publishes an overview of panel views to keep decisions consistent.

6. The INDRP

The .IN Domain Name Dispute Resolution Policy, with its Rules of Procedure, is administered by NIXI and applies to all .in names. It follows the UDRP with these differences:

• The complainant may rely on rights in a name, trade mark or service mark.
• The third element is framed as registration or use in bad faith, which is easier to satisfy than the UDRP’s conjunctive test.
• The dispute is decided by a sole arbitrator appointed by NIXI from its panel, and the proceeding is an arbitration under the Arbitration and Conciliation Act, 1996, so the award can be challenged under section 34 before a court.
• Remedies are cancellation or transfer, and arbitrators have in some cases awarded costs.

How this is examined

Likely long questions: “Discuss the role of WIPO in the settlement of IP disputes, with reference to the WIPO Arbitration and Mediation Center.” “Explain the Uniform Domain Name Dispute Resolution Policy. How does the INDRP differ?” “Examine the advantages of ADR in IP and technology disputes.”

Likely short notes: WIPO Arbitration and Mediation Center; UDRP; INDRP; bad faith under the UDRP; passive holding; reverse domain name hijacking; expert determination.