Introduction to Domain Name Dispute Resolution

World Intellectual Property Organization
Author Melaatron
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This is the first of  series of articles on domain name disputes. Schemes for the rapid resolution of domain name disputes such as ICANN's UDRP (Uniform Domain Name Dispute Resolution Policy), Nominet's Dispute Resolution Service ("DRS") and the Czech Court of Arbitration's ".euADR" are probably the most successful use of alternative dispute resolution ("ADR") on the planet and the topic is important for that reason alone. It is also important because such schemes are probably indispensable for the rapid development of the Internet.  It is inconceivable that businesses would have invested anything that the that they have on the development of on-line platforms for the delivery of many sorts of services without a quick and cheap method of domain name dispute resolution.

My Qualifications and Experience

I have been interested in this topic for nearly 20 years.  My interest was sparked by instructions that I received in the early days of the Internet to advise what if anything could be done when someone registered a domain name that was the same as or similar to a trade mark or the name of a company. I followed the cases in this country and abroad and noticed that they were not always decided in favour of the trade mark owner. I also followed the negotiations between the US government and the Internet community to privatize the domain name system and wrote about them at the time. I was in one of the first barristers to settle a complaint under the UDRP. I was invited by the WIPO (World Intellectual Property Organization) to become a domain name panellist in 2003 and have decided a large number of domain name disputes either as a sole panellist or as a member of a panel of three. As counsel I have advised on and challenged a number of domain name decisions in the English courts.

What is a Domain Name?

At the risk of over-simplification, a domain name is a mnemonic for a string of numbers that identify a website or other resource on the Internet. Domain names typically split into three parts:
  • a top level domain ("TLD") such as ".com" or ".uk" which appears at the far right;
  • a second level domain ("SLD") such as "4-5" or "nipclaw" in the middle; and 
  • the server designator such as "www" for a web server at the far left.
 TLDs fall into two groups:
  • generic top level domains ("gTLD") such as ".com", ",org" or ",net" which are not associated with any particular country or group of countries, and 
  • country code top level domains ("ccTLD") such as ".uk", ".fr", ".de", ".cn" and so on.
ICANN

By a memorandum of understanding dated 25 Nov 1998 the management of the domain name system has been delegated to a California company known as ICANN (Internet Corporation for Assigned Names and Numbers). ICANN supervises the gTLD space directly and collaborates with national domain name authorities such as Nominet in the management of the ccTLD spaces. The terms upon which ICANN collaborates with Nominet are set out in an exchange of letters dated 2 May 2006 between Paul Twomey of ICANN and Lesley Cowley of Nominet.  ICANN has exchanged similar correspondence with other national domain name authorities.

Registrars

Neither ICANN nor Nominet registers domain names directly. That task is undertaken by businesses called "registrars".  Each registrar that wishes to register domain names in the gTLD space must obtain accreditation from ICANN and each registrar which wishes to register domain names in the ".uk" ccTLD space must obtain accreditation from Nominet. Other ccTLD authorities have established their own registration policies.

Registrar Accreditation Agreements

ICANN accredits registrars under its standard registrar accreditation agreement ("RAA"). Clause 3.8 of RAA provides:
"Domain-Name Dispute Resolution. During the Term of this Agreement, Registrar shall have in place a policy and procedures for resolution of disputes concerning Registered Names. Until ICANNadopts an alternative Consensus Policy or other Specification or Policy with respect to the resolution of disputes concerning Registered Names, Registrar shall comply with the Uniform Domain NameDispute Resolution Policy ("UDRP") identified on ICANN's website (www.icann.org/general/consensus-policies.htm), as may be modified from time to time. Registrar shall also comply with the Uniform Rapid Suspension ("URS") procedure or its replacement, as well as with any other applicable dispute resolution procedure as required by a Registry Operator for which Registrar is providing Registrar Services."
That provision requires every accredited registrar to incorporate the UDRP into its domain name registration agreements. Thus every agreement to register a domain name requires the person seeking registration ("the registrant") to submit any dispute with a trade mark owner over whether he or she is entitled to the domain name to a type of ADR known as a "mandatory administrative proceeding." If a registrar fails to incorporate the UDRP into its registration agreements or to comply with an order made in a mandatory administrative proceeding for the transfer or cancellation of a domain name, ICANN can suspend or revoke the registrar's accreditation.

It is those RAA that make the UDRP and similar country code domain name dispute resolution schemes so effective.  They enable a dispute between a trade mark owner and a registrant to be resolved at least as effectively but in a fraction of the time and cost of the resolution of the same dispute in the courts.

Nominet has a similar accreditation agreement with its registrars (see "the Registrar Agreement" page).  So do the domain name authorities of several other countries.  Many of those authorities incorporate the UDRP into their registrar accreditation agreements.  Nominet, however, has its own Dispute Resolution Service Policy which resembles the UDRP in essentials but differs from it in a number of important respects.

Relationship with the Courts

Neither the UDRP nor the DRS seeks to oust the jurisdiction of the civil courts.

Paragraph 4 (k) of the UDRP provides:
"The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded."
The vast majority of domain name disputes are decided without recourse to the courts.  Very few decisions are challenged.  However, ICANN accredited registrars are bound to wait for 10 business days to allow a challenge to be mounted before they can transfer or cancel a domain name registration.

Paragraph 4 (k) continues:
"If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name."
I discussed the procedure for challenging UDRP decisions in the English courts in How to challenge a UDRP Decision 25 Oct 2015 4-5 IP.

Paragraphs 10 (d) and 13 (a) (ii) of the DRS Policy make similar provision in respect of disputes in the ".uk" domain name space.

It would not be wrong to characterize UDRP and DRS proceedings as analogous to interim injunction proceedings in civil litigation as their purpose is also to preserve the status quo.   As I noted elsewhere, the UDRP has been described aptly as an interim custody arrangement for domain names.

What sort of Domain Names Disputes are suitable for this Procedure? 

It is important to note that not all domain name disputes are suitable for resolution under the UDRP, DRS or similar scheme.

Paragraph 4 (a) of the UDRP provides:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
For the purposes of the UDRP  a "trade mark" or "service mark" includes a registered trade mark in any jurisdiction or an action for passing off in any country.

It is worth emphasizing that the complainant must prove that all three elements are present and that the third is proved only if the domain name was registered and is used in bad faith. Moreover,  paragraph 15 (e) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") enables a panellist to  declare that a complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Incidentally, the equivalent provision in paragraph 16 (d) of the DRS Procedure actually carries a sanction of exclusion from the DRS for up to 2 years if there are three or more such declarations within 2 years.

The jurisdiction to bring a complaint under the DRS is slightly wider than the UDRP as paragraph 2 (a) (i) requires a complainant to prove that he or she has Rights.  "Rights" is defined as
"rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning."
A complainant must also prove that the domain name in the hands of the respondent was an "Abusive Registration", that is to say one that
"i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
ii. has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant’s Rights;"
It follows that the UDRP, DRS and similar schemes should be invoked only in clear cases.   If a complainant is in any doubt as to whether a case is suitable for the UDRP, DRS or an equivalent scheme he or she should seek specialist legal advice first.

Dispute Resolution Service Providers

Applications for the transfer or cancellation of a generic top level domain name can be made to any one of the following dispute resolution service providers:
Nominet has its own panel of experts for the resolution of disputes in the ".uk" ccTLD space. The Czech Court of Arbitration Center for Internet Disputes resolves disputes in the ".eu" domain. Other countries have their own schemes many of which incorporate the UDRP.  The WIPO keeps a database of national domain name authorities, registration agreements and dispute resolution policies.

How Domain Name Dispute Resolution Works

Although there are many variations between different TLDs and different dispute resolution service providers most schemes work as follows:

  1. A trade mark owner files a complaint either on-line or by email on  a form downloaded from the service provider's website and pays a prescribed non-refundable and irrecoverable fee of around US$1,500.
  2. The service provider checks whether the complaint is in order. If it is, it sends it to the person who registered the disputed domain name ("the respondent") and invites him or her to respond within a specified time.
  3. The respondent may respond on-line or on a prescribed form.  If he or she wants the case to be determined by a three member panel, he or she will pay a non-refundable and irrecoverable fee of around US$1,500.
  4. Once the time for responding expires, the service provider appoints a panel.
  5. The panel considers the complaint and response (if any) and delivers his or her (or in the case of a three person panel their) decision within a few days.
  6. The service provider waits a number of days for a court challenge to be mounted.   If there is none, it orders the registrar to implement the panel's decision.
Conclusion

Should anyone wish to discuss this article or domain name disputes in general, he or she should call me on 020 7404 5252 during office hours or email me through my contact form.

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