Domain Name Disputes

ICANN Head Office in Los Angeles
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Source Wikipedia

Jane Lambert

15 July 2017

Cybersquatting is registering a domain name that is the same as or similar to a trade mark or business name with a view to ransoming it to the owner of the mark or business. It is, of course, actionable but it is not always easy to identify let alone serve the squatter particularly if he or she is in another jurisdiction. Moreover, litigation is not always successful. Not surprisingly, many businesses opted to pay up rather than to take proceedings against those speculators. In the early days of the Internet, cybersquatting threatened investment in the development of the worldwide web.

In response to that threat, the Internet Corporation for Assigned Names and Numbers ("ICANN"), the body charged with managing the domain name system, adopted a quick, cheap and effective policy for resolving disputes between trade mark owners and domain names known as the Uniform Domain Name Dispute Resolution Policy ("UDRP"). ICANN requires registrars (businesses that register domain names) to insert the UDRP into their agreements for the registration of generic top level domain names ("gTLD"), that is to say, domain names ending in ".com", ".net", ".org" or some other non-geographic identifier.

Every person who applies to register a domain name must represent and warrant to the registrar that:
  • The statements that he or she makes in his or her agreement to register a domain name are complete and accurate;
  • To the applicant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; 
  • The applicant is not registering the domain name for an unlawful purpose; and
  • The applicant will not knowingly use the domain name in violation of any applicable laws or regulations.
It is the applicant’s responsibility to determine whether the domain name registration infringes or violates someone else's rights.

The registrar is required to reserve the right to cancel, transfer or otherwise make changes to domain name registrations under several circumstances. One of those circumstances is where a decision maker known as an “Administrative Panel”, in an alternative dispute resolution procedure known as an “administrative proceeding” to which the applicant is a party, orders the transfer of the domain name or cancellation of the registration.

Paragraph 4 of the UDRP requires an applicant for registration to agree to submit to an administrative proceeding if a third party complains that:
  • The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
  • The person who applied for registration has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.
The administrative proceeding is started by a complaint to any of the following dispute resolution service providers:
The complaint is made on a form known as a "Complaint" an example of which can be seen here. If the form is completed correctly and the appropriate fee is paid, the dispute resolution service provider will send the Complaint to the person who registered the disputed domain name (now known as"the respondent") and invite him or her to respond.

The respondent has 20 days in which to respond.  An example of the form upon which he or she would be expected to use is here. In practice, relatively few respondents do respond but that does not entitle the complainant to judgment by default. It is still necessary for the Administrative Panel to consider the Complaint and rule upon it.

In the Complaint, the complainant is asked to choose between a single member or a three member Administrative Panel. If he or she chooses a single member panel, the dispute resolution service provider appoints a single panellist from its list of neutrals. I am a member of the WIPO list. If the complainant chooses three, he or she must nominate up to three members who can serve as his or her appointee. If the complainant has elected a single member panel but the respondent prefers a panel of three, the respondent can have a three member panel but he or she has to pay for the extra panellists and nominate up to three members who can act as the respondent's appointee.

The panel determines the case entirely on written evidence and arguments. There is no oral procedure at all. The panel has up to 14 days in which to make a decision. The draft decision is proofed and a fair copy prepared for the panel's approval and signature.  Most of the cases that have been decided by UDRP panels have resulted in an order for the transfer or cancellation of the domain name. 

The registrar is bound by its registrar accreditation agreement with ICANN to give effect to the panel's order unless it receives within 10 days of the decision a claim form or other evidence that the respondent has launched proceedings against the complainant in a court to whose jurisdiction the complainant has submitted. In view of the decisions in Patel v Allos Therapeutics Inc [2008] E.T.M.R. 75. Toth v Emirates [2012] EWHC 517, [2012] F.S.R. 26, Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509, [2016] F.S.R and Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) (13 June 2016) it is hard to see any circumstances in which an English court would overturn a panel's decision.

Although the UDRP applies only to registrars accredited by ICANN, many national domain name authorities have adopted the Policy either verbatim or with adjustments for disputes within their domain name spaces (see WIPO's Domain Name Dispute Resolution Service for Country Code Top Level Domains (ccTLDs)). Nominet, the British domain name authority, has a different policy for the ".uk" domain space that includes mediation, summary decisions where there is no response and appeals. There is also a different policy for the resolution of ".eu" domain name disputes though it is closer to the UDRP than Nominet's.

All these domain name dispute resolution policies resolve disputes more rapidly and much more cost-effectively than litigation. For example, WIPO's fee for referring a dispute involving up to 5 domain names to a single panellist is US $1,500. Those fees are irrecoverable from the other side but then a successful claimant would be much more out of pocket even if he or she were awarded costs in civil litigation.

Further Reading

Jane Lambert
Jane Lambert
Jane Lambert

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