Domain name disputes
Domain name disputes and the Uniform Dispute Resolution Policy
The following 15 tips are not meant to substitute for legal advice from a suitable qualified lawyer. They are however a starting point for small and medium sized enterprises and consumers on UDRP and domain name disputes.
The 15 Tips
1.ICANN and the UDRP – Due to the international nature of the Internet a method of dealing with disputes over domain names that would apply internationally was needed. The Internet Corporation for Assigned Names and Numbers (ICANN) devised the Uniform Dispute Resolution Policy (the Policy) to allow a quick, affordable way to resolve domain name disputes without the cost and delays of Court litigation. The Policy is numbered from Paragraphs 1 to 9. In addition there are the Uniform Dispute Resolution Rules (the Rules). The Rules are numbered 1 to 21. The Policy sets out the legal rationale behind the Rules. The Rules set out the actual procedure of uniform domain name resolution. The 2 are to be read in conjunction. In addition each ICANN approved dispute resolution provider has its own rules.
2. Contractual relationship – All registrants of a .TLD domain name enter into a non-negotiable contract with the registrar consenting to the UDRP procedure. Like any contract national Courts will not intervene between what has been agreed between parties. However Courts have the power to review administrative decisions. UDRP providers are not courts of law and their decisions carry no weight in a Court of Law.
3. Resolution providers – There are currently 4 ICANN approved dispute resolution providers. (i) Asian Domain Name Dispute Resolution Centre; (ii) National Arbitration Forum; (iii) WIPO; and (iv) The Czech Arbitration Court Arbitration Centre for Internet Disputes. The best known provider is probably WIPO or World Intellectual Property Organization.
4. The procedure – Although each provider has its rules generally the procedure is as follows: (i) There is a Complaint regarding a domain name set out in a specific format; (ii) There is a Response to the Complaint by the Respondent, also set out in a specific format; (iii) There may be further submissions by the Parties; and a decision is eventually made to transfer, cancel or refuse the complaint.
5. The panelists – There are either 1 or 3 panellists. There is a fee retained by the provider for administration and an amount to be paid to each panellist. It is the Complainant that pays the fee if it is a single member panel. A Respondent can opt for a three member panel and split the fees with a Complainant, to participate in the process.
6. National courts – The Policy expressly permits recourse to national courts at any stage during the procedure.
7.Reverse hi-jacking – The Respondent may allege reverse domain name hi-jacking.
8. Secondary market – Although ICANN has imposed uniform pricing in the primary domain name market, the secondary market for a domain name can still command significantly higher prices.
9. Intellectual property – There is currently a legal argument as to whether domain names are intangible property and have a value separate from a trademark or if they are simply online extensions of trademarks. How a UDRP provider views the legal status of a domain name will influence strongly its decisions.
10. Domain names and trademarks – There have been very few cases on domain names in the UK Courts. Most cases have been trademark infringement cases where domain names have been involved.
11. US law – There have been significantly more cases where the US Courts have been asked to deliberate on critical questions concerning the legal nature of domain names. The law with respect to domain names is more developed in the US. There is the Anticybersquatting Consumer Protection Act 1999. The case concerning the domain name <Barcelona.com> in June 2003 sets out the definitive ruling in reverse domain name hijacking cases in the US.
12. UDRP law – The law of the UDRP is very basic. Paragraph 4(a); 4(a)(i) and 4(a)(ii) of the Policy lists the circumstances in which the Complainant will be successful. Essentially, the Complainant must prove bad faith registration and illegitimate use of the domain name. There is a list of examples that might indicate bad faith in paragraph 4(b) of the Policy but they are very wide ranging and there is no detailed guidance as to what constitutes bad faith or illegitimate use. There is no mention of a presumption of good faith or legitimate use. Bad faith have been held to be inter alia passive holding; providing false or inaccurate information on the WHOIS; failing to respond to a trademark owners enquiries; and defaulting on the UDRP procedure.
13. The Complainant – The Complainant is not bound by the contract to initiate a Complaint whilst the Respondent has no choice but to Respond to a Complaint.
14. Estoppel – There is no estoppel. Nothing prohibits Complainants from bringing multiple actions until they get a favourable result.
15. Mutual jurisdiction – There is a 10 day period, after the panel has reached a decision, before the decision is enforced. Respondents have successfully used the US Courts to review decisions under the UDRP. There is a mutual jurisdiction provision under Rule 1 of the Policy. The Policy allows the losing party to initiate litigation in a Court of “mutual jurisdiction” as follows:
“Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name holders address as shown for the registration of the domain name in Registrars WHOIS database at the time the complaint is submitted to the provider.”
PAIL Solicitors is a law firm based in London specialising in New Media (Websites), Media, Entertainment and Intellectual Property Law.