Domain name disputes

ICANN’s Uniform Dispute Resolution Policy (“UDRP”) has been adopted by all accredited domain name registrars for .com, .net and .org domain names as well as the new generic top level domains (“gTLD’s”) such as .biz, .info and .name. Nominet‘s dispute resolution service (as modified in September 2001) deals with disputes involving .uk names.

ICANN

Under the UDRP3 the domain name holder agrees to submit disputes to a mandatory administrative proceeding. The proceedings are conducted before one of the administrative-dispute-resolution service providers. Disputes are heard in accordance with the Rules for Uniform Dispute Resolution Policy (the “Rules”)4 and the selected dispute resolution service provider’s supplemental rules (the Supplemental Rules”). As at 30th November 2001 there were 4 providers5. One of the most high profile is the World Intellectual Property Organisation (“WIPO”)6 which was involved in drafting the UDRP. Another, eResolution, has recently announced that it is ending its service amid allegations of bias in favour of the interests of IP owners. By November 2001 over 3262 cases had been filed with WIPO. Of these the overwhelming majority (1897) saw the name transferred7.

Under the Rules, the Complainant selects an approved provider who keeps a publicly available list of its panellists and their qualifications. The Complainant elects to have the dispute resolved by a single or a three-member panel. Fees vary (currently from US$950 – US$3,000) depending on the provider, the number of domain names and the number of panellists. Fees are payable by the Complainant unless the domain name holder (the “Respondent”) elects to expand the panel from one to three in which case they are split evenly between the parties. The remedies available under the UDRP are cancellation or transfer of the name – not damages.

The mandatory proceedings do not prevent either the Respondent or the Complainant from submitting the dispute to a court either before the mandatory proceeding is commenced or after it is concluded. If a decision is taken to cancel or transfer the domain name the panel will wait 10 days before implementing the decision. If during that time a court action is not commenced the panel’s decision will be implemented. As part of the UDRP the Complainant agrees to submit any challenges to the decision to the court jurisdiction of either the domain name holder’s address (as set out in the Registrar’s Whois database) or the principal office of the Registrar (the principle of “Mutual Jurisdiction”).

The complaint sets out the name and address of the Respondent, the domain name, trade mark and the Registrar. It must specify,

• the manner in which the domain name is identical/confusingly similar to the trade mark
• why the Respondent should be considered as having no rights or legitimate interests to the domain name
• why the name should be considered as having been registered and used in bad faith

The UDRP lists 4 non-exclusive illustrations of bad faith registration and use;

• registration primarily for the purpose of selling renting or otherwise transferring the name to the complainant or to a competitor for consideration in excess of out of pocket costs
• registration to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct
• registration primarily for the purpose of disrupting the business of a competitor
• use of the domain name with the intention to attract for commercial gain users to the domain holder’s site by creating a likelihood of confusion with the complainant’s mark as to source sponsorship affiliation or endorsement of the site or a product or service on it.

Cases are dealt with speedily – the total timeframe for the procedure is 45-60 days. Costs depend on the number of panellists but are likely to be less than court costs.

Nominet

Nominet Uk operate a dispute resolution service (DRS)8. The Respondent has to submit to proceedings under the DRS. Under the DRS Nominet has the power to transfer, suspend or cancel a domain name – not to make an award of damages.

The Complainant must prove that:

• they have rights in a name or mark identical or similar to the domain name
• the domain name in the hands of the Respondent is an Abusive Registration

An Abusive Registration is a name which was registered or otherwise acquired in a manner which at the time took unfair advantage of or was unfairly detrimental to the Complainant’s rights, or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. The DRS Policy gives a non-exhaustive list of some factors, which might show an Abusive Registration. They include

• circumstances indicating that the Respondent has registered or acquired the name (i) primarily for the purpose of selling renting or otherwise transferring the name to the Complainant or a competitor for valuable consideration in excess of out of pocket costs (ii) as a blocking registration against a name or mark in which the Complainant has rights or (iii) primarily for the purpose of unfairly disrupting the business of the Complainant
• circumstances indicating that the Respondent is using the name in a way which has confused people into believing that the name is registered to, operated or authorised by, or otherwise connected with the Complainant
• the Complainant can demonstrate that the Respondent is engaged in making a pattern of Abusive Registrations
• where the Respondent has given false contact details.

Failure to use the name is not of itself evidence of an Abusive Registration. The illustrative factors are similar to those under the UDRP, but false contact details are unique to Nominet. No reference is made to applicable law (cf. UDRP) and unlike UDRP the procedure involves an informal mediation.

Upon receipt of the Complaint Nominet contacts the Respondent, who is asked to demonstrate why it is not an Abusive Registration. The Complainant may file a reply. In each case the written submissions are limited to 2000 words (a shorter limit than ICANN). Model submissions are available from Nominet if required. Mediation by DRS staff follows for 10 days. In the absence of resolution the matter is referred to an independent expert. A fee of £750 is payable by

the Complainant. The experts appointed by Nominet are consulted in a strict rotation. A written determination is required within 10 days. Decisions are published9. Appeals to a panel of 3 other experts are possible on payment of a £3,000 fee.

The time and expense involved under the DRS is likely to be less than that offered by a court (unless the action proceeds as undefended or is settled at an early stage in proceedings). Even so, if the Complainant does not like the results there is nothing to prevent them initiating court proceedings for a second bite at the cherry.

Lisa and Pauline head up Brechin Tindal Oatts’ Intellectual Property Consultancy. For more information visit www.bto.co.uk.