Internet Corporation for Assigned Names and Numbers

Rules for Intellectual Property Defensive Registration Challenge Policy

Administrative proceedings for the resolution of disputes under the Intellectual Property Defensive Registration Challenge Policy adopted by ICANN shall be governed by these Intellectual Property Defensive Registration Challenge Rules and also the Supplemental Rules of the Intellectual Property Defensive Registration Challenge Provider administering the proceedings, as posted on its site.

1. Definitions. In these Rules:

"Center" refers to the World Intellectual Property Organization Arbitration and Mediation Center.

"Challenged Name" means an IP Defensive Registration.

"Challenger" means a party which is challenging an IP Defensive Registration under the Intellectual Property Defensive Registration Challenge Policy for .PRO.

"ICANN" refers to the Internet Corporation for Assigned Names and Numbers.

"IP Defensive Registration" means an intellectual property defensive registration registered under the .Pro top-level domain either during a Sunrise Registration Period or during the registry live period even if such registrations have been converted to resolving domain names or are not held by the original registrant at the time they are challenged.

"IP Defensive Registration Conditions" refers to the conditions set forth in the Registration Agreement that must be met as a precondition for the registration of an IP Defensive Registration.

"Party" means a Challenger or a Respondent.

"Policy" means the Intellectual Property Defensive Registration Challenge Policy for .PRO that is incorporated by reference and made a part of the Registration Agreement.

"Registrar" means the entity with which the Respondent currently has registered an IP Defensive Registration that is the subject of a challenge.

"Registration Agreement" means the agreement between the Registrar and the Respondent.

"Registry Challenge" refers to a challenge initiated by RegistryPro during or after the conclusion of the IP Defensive Challenge Period in connection with IP Defensive Registrations that RegistryPro reasonably believes did not satisfy the IP Defensive Registration Conditions. Such Registry Challenges may be administered pursuant to this Policy or other policies and procedures approved by ICANN.

"RegistryPro" means RegistryPro, Inc., the registry operator for the .pro top-level domain.

"Respondent" means the holder of an IP Defensive Registration against which a challenge is initiated under the Policy and the Rules.

"Rules" refers to these Rules for Intellectual Property Defensive Registration Challenge Policy for .PRO.

"Sunrise Registration Period" refers to the period during which trademark owners could pre-register IP Defensive Registrations subject to the IP Defensive Registration Conditions.

2. Communications.

a. Except as otherwise provided in these Rules, any communication required under these Rules shall be made by electronic mail via the Internet.

b. For the purposes of any communications to the Center, the following addresses should be used:

i. electronic mail: sunrise.pro@wipo.int

ii. facsimile transmission: (+41 22) 740 3700

iii. postal or courier service:
WIPO Arbitration and Mediation Center
34 chemin des Colombettes
1211 Geneva 20
Switzerland

c. All communications shall be made in the language prescribed in Paragraph 6.

d. Either Party may update its contact details by notifying the other Party, the Center, the Registrar, and RegistryPro.

e. Except as otherwise provided in these Rules, all communications provided for under these Rules shall be deemed to have been made:

(i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable; or

(ii) if by postal or courier service, on the date of mailing marked on the receipt; or

(iii) if delivered by facsimile transmission, on the date shown on the confirmation of transmission.

f. Except as otherwise provided in these Rules, all time periods calculated under these Rules shall commence on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(e).

g. Except as otherwise provided in these Rules, any communication by

(i) the Center, following the commencement of an administrative proceeding pursuant to Paragraph 4(c), to any Party shall be copied to the other Party; and

(ii) a Party shall be copied to the other Party and the Center.

h. It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes.

i. In the event that a Party sending a communication receives notification of non-delivery of the communication, that Party shall promptly notify the Center of the circumstances of the notification.

j. When a paper submission is to be made to the Center by a Party, it shall be submitted in three (3) sets, including the original of such submission.

3. The Complaint.

a. Any person or entity may initiate an administrative proceeding by submitting a challenge to the Center in accordance with the Policy and Rules.

b. The challenge shall be submitted in electronic form via the Internet using the Online Challenge Form made available by the Center.

c. The challenge shall:

(i) Request that the challenge be submitted for decision in accordance with the Policy and Rules and describe why the Challenged Name should be considered subject to the Policy;

(ii) Provide the full name, postal and e-mail addresses, and the telephone and telefax numbers of the Challenger and of any representative authorized to act for the Challenger in the administrative proceeding;

(iii) Provide the full name of the Respondent and, if different from the contact details available in the Whois database for the IP Defensive Registration, all information known to the Challenger regarding how to contact the Respondent or any representative of the Respondent, including contact information based on pre-challenge dealings;

(iv) Specify the IP Defensive Registration that is the subject of the challenge;

(v) Identify the Registrar with whom the Challenged Name is registered at the time the challenge is filed;

(vi) Describe, in accordance with the Policy, the grounds on which the challenge is made including, in particular, why the IP Defensive Registration that is the subject of the dispute should be considered to have been registered in violation of the IP Defensive Registration Conditions, with specific reference to the IP Defensive Registration Conditions:

(1) at the time of the Respondent's registration of the Challenged Name, no current (non-expired) trademark or service mark registration on which the IP Defensive Registration is based was issued in the Respondent's name; or

(2) the Challenged Name is not identical to the textual or word elements of the trademark or service mark registration on which the registration of the Respondent's IP Defensive Registration is based; or

(3) the trademark or service mark registration on which the registration of the Challenged Name is based is not of national effect; or

(4) in the case of an IP Defensive Registration submitted during the Sunrise Registration Period only, the trademark or service mark on which the registration of the Respondent's IP Defensive Registration is based was not registered with the trademark authority with which the mark is registered prior to September 30, 2002.

The above description should not exceed 2,000 words;

(vii)Specify, in accordance with the Policy, the remedies sought, i.e. transfer or cancellation of the Challenged Name;

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(viii)Identify any other proceedings that have been commenced or terminated in connection with or relating to the Challenged Name that is the subject of the challenge;

(ix) Include the following statement (for Challengers seeking transfer of the IP Defensive Registration):

"Challenger certifies that the trademark or service mark registration forming the basis of this challenge and potential registration of the Challenged Name in question was current (non-expired) at the time of the registration of the IP Defensive Registration, and, in the case of IP Defensive Registrations made during the Sunrise Period, was already registered with the trademark authority with which the mark is registered prior to September 30, 2002";

(x) Include the following statement (for all Challengers):

"Challenger agrees that its claims and remedies concerning the registration of the defensive registration or domain name, the dispute, or the dispute's resolution shall be solely against the Respondent and waives all such claims and remedies against (a) the Center, (b) the Registrar, (c) RegistryPro, and (d) ICANN, as well as their directors, officers, employees, and agents.

Challenger certifies that the information contained in this challenge is to the best of Challenger's knowledge complete and accurate, that this challenge is not being presented for any improper purpose, such as to harass, and that the assertions in this challenge are warranted under the Intellectual Property Defensive Registration Challenge Policy for .PRO, the Rules for Intellectual Property Defensive Registration Challenge Policy for .PRO, and under applicable law, as it now exists or as it may be extended by good-faith and reasonable argument."

(xi) Specify, on the Online Challenger Payment Form made available by the Center, the credit card (American Express, Visa, or MasterCard), together with the name of the cardholder as it appears on the card, the card number and the card expiration date for purposes of payment of the Challenger's fee in accordance with Paragraph 13(a).

d. The challenge may not relate to more than one IP Defensive Registration.

e. Challengers seeking transfer of the Challenged Name shall submit to the Center the originals or copies, certified by the issuing trademark authority, of any trademark or service mark certificates in Challenger's name and meeting the IP Defensive Registration Conditions within thirty (30) days of the commencement of the administrative proceeding.

4. Notification of Complaint.

a. The Center shall review the challenge for formal compliance with the Policy and the Rules. If the challenge is found to be in compliance with the Policy and the Rules and the Center is satisfied that the Challenger's fee has been paid in accordance with Paragraph 13(a), the Center shall notify the Respondent of the challenge by sending it to the e-mail addresses and telefax numbers of the registrant and the administrative contact for the IP Defensive Registration, as shown in the Whois database at the time of the notification of the challenge by the Center to the Respondent. In addition, the Center shall send notice of the challenge to the e-mail addresses and telefax numbers of the Respondent, or of any representative of the Respondent, as provided by the Challenger in accordance with Paragraph 3(c)(iii).

b. If the Center finds the challenge to be formally deficient, it shall notify the Challenger of the nature of the deficiencies identified. The Challenger shall have ten (10) days after such notification within which to correct any such deficiencies, after which the administrative proceeding will be deemed terminated without prejudice to the submission of another challenge by the Challenger.

c. The date of commencement of the administrative proceeding shall be the date on which the Center notifies the Respondent of the challenge.

d. The Center shall notify the Challenger, the Respondent, the Registrar, and RegistryPro of the date of commencement of the administrative proceeding.

e. If the Challenger fails to remedy any deficiencies identified by the Center within the ten (10) day time period provided for in Paragraph 4(b), the Center shall notify the Challenger, the Respondent, the Registrar, and RegistryPro of the deemed termination of the challenge, and the fee of USD 500 paid by the Challenger pursuant to Paragraph 13(a) of the Rules shall be deemed forfeited.

5. The Response.

a. Within sixty (60) days after the date of commencement of the administrative proceeding, the Respondent shall submit a response to the Center.

b. The response shall be submitted in hard copy (with annexes) by postal or courier service (postage pre-paid and return receipt requested) and in electronic form (without annexes) via the Internet using the Online Response Form made available by the Center.

c. The response shall:

(i) Annex the originals or copies, certified by the trademark authority with which the mark is registered, of any trademark or service mark certificates required to be submitted by the Respondent under Paragraph 4(c) of the Policy;

(ii) Respond specifically to the statements and allegations contained in the challenge and include any and all bases for the Respondent to retain registration of the disputed IP Defensive Registration with specific reference to the IP Defensive Registration Conditions. Such description should not exceed 2,000 words;

(iii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent and of any representative authorized to act for the Respondent in the administrative proceeding;

(iv)) Identify any other proceedings that have been commenced or terminated in connection with or relating to the IP Defensive Registration that is the subject of the challenge;

(v) Include the following statement:

"Respondent certifies that the trademark or service mark registration forming the basis for the registration of the Challenged Name was current (non-expired) at the time of the registration of the IP Defensive Registration, and, in the case of IP Defensive Registrations made during the Sunrise Period, was already registered with the trademark authority with which the mark is registered prior to September 30, 2002";

(vi) Include the following statement followed by the signature of the Respondent or its authorized representative:

"Respondent certifies that the information contained in this response is to the best of Respondent's knowledge complete and accurate, that this response is not being presented for any improper purpose and that the assertions in this response are warranted under the Intellectual Property Defensive Registration Challenge Policy for .PRO, the Rules for Intellectual Property Defensive Registration Challenge Policy for .PRO, and under applicable law, as it now exists or as it may be extended by good-faith and reasonable argument."

d. At the written request of the Respondent, the Center may, in exceptional cases, extend, in writing, the period of time for filing the response.

6. Language of Proceedings

a. Unless otherwise agreed by the Center in exceptional circumstances, the language of the administrative proceeding shall be English.

b. Any trademark or service mark certificates in a language other than English, submitted by the Challenger in accordance with Paragraph 3(e) or the Respondent in accordance with Paragraph 5(d)(i), must be accompanied by a certified translation into English.

7. Further Statements

Unless otherwise requested or agreed by the Center in exceptional circumstances, no further statements or documents from either of the Parties are to be submitted.

8. In-Person Hearings

There shall be no in-person hearings.

9. Default

a. In the event that a Respondent does not comply with any of the time periods established by the Rules or the Center, the Center, unless it finds exceptional circumstances apply, shall proceed to a decision on the challenge.

b. If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Center, the Center may draw such inferences therefrom and may undertake such procedural steps as it considers appropriate.

10. Center Decisions

a. The Center's decision on whether the IP Defensive Registration Conditions are met will be based on an examination of any trademark or service mark certificates submitted as compared with the information contained in the relevant RegistryPro Whois database, and an examination of the validity of such trademark registration using any available electronic databases of current trademark registrations. The Center's decision is of an administrative nature and shall be final. The Center shall not be required to state reasons for its decision.

b. The Center will use reasonable efforts to decide upon a challenge within twenty (20) days (as observed at the Center's place of business) of the receipt of all submissions to be made under the Policy and the Rules or of the expiry of the deadline for such submissions. The Center will also use reasonable efforts to decide any Registry Challenge as soon as possible under the circumstances.

c. The Center, in its sole discretion, may, prior to rendering the decision, consult relevant intellectual property offices in the context of reaching its determination.

11. Communication of Decision

a. The Center shall communicate the decision to each Party, the Registrar, and RegistryPro. In cases where the decision provides for cancellation of the Challenged Name, the concerned Registrar shall immediately communicate to each Party, the Center and RegistryPro the date for the implementation of the decision in accordance with the Policy.

b. If the Challenger has requested a transfer of the Challenged Name in accordance with Paragraph 4 of the Policy, the Registry or Registrar shall provide the Challenger with an authorization code which will allow the Challenger to register a domain name or IP Defensive Registration corresponding to the Challenged Name and to update all Challenger Whois information, at the Registrar of its choice, within 21 days of the date on which the notification of the authorization is sent to the Challenger, provided that the Challenger meets all other applicable requirements for registering the domain name or IP Defensive Registration.

c. The Center shall publish the outcome of the case together with the names of the Challenger and the Respondent on a publicly accessible web site.

12. Termination of Administrative Proceeding

a. If the Challenger notifies the Center that the Parties have agreed on a settlement, the Center may suspend or terminate the administrative proceeding, subject to any conditions that may apply under Paragraph 6(a) of the Policy. Such notification must be submitted in hard copy and signed by the Challenger.

b. If it becomes unnecessary or impossible to continue the administrative proceeding for any other reason, the Center shall terminate the administrative proceeding.

c. If the Challenger notifies the Center of its intention to withdraw the challenge, the Center shall terminate the administrative proceeding. Such notification must be submitted in hard copy and signed by the Challenger.

d. In case of a termination of the administrative proceeding in accordance with subparagraph (a) or (b), any fees paid by the Parties in accordance with Paragraph 13 shall be deemed forfeited. In case of a termination of the administrative proceeding in accordance with subparagraph (c), the Challenger's fees shall be deemed forfeited.

13. Fees

a. The filing of a challenge is subject to the payment of a Challenger's fee in the amount of USD 500. This fee is to be paid by credit card, via the Online Challenger Payment Form, at the time of the submission of the challenge in accordance with Paragraph 3(c)(xi). If the Center is not satisfied that the Challenger's fee has been paid within 15 days of the filing of the challenge, the Center will dismiss the challenge on the basis of the Challenger's failure to pay the Challenger's fee. Other arrangements may apply to the submission of Registry Challenges.

b. Under no other circumstances will a Challenger's fee be reimbursed by the Center.

14. Exclusion of Liability

The Center and any intellectual property office consulted by the Center shall not be liable to a Party for any act or omission in connection with any administrative proceeding under the Policy and the Rules.

15. Amendments

The version of these Rules that are in effect at the time of the submission of the challenge to the Center shall apply to the administrative proceeding commenced thereby. RegistryPro reserves the right to modify the Rules at any time.

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