How to handle a generic top level domain name dispute

I’ve just blogged a case note on Lifestyle Management Ltd. v Frater [2010] EWHC 3258 (TCC) (10 Dec 2010). This is a very rare domain name case in the civil courts. Most domain disputes are settled by a documents only dispute resolution procedure like the Uniform Domain Name Dispute Resolution Policy for generic top level domains disputes (“gTLD”) and Nominet’s DRS (Dispute Resolution Service) for disputes over UK country code top level domains (“ccTLD”).

What’s a Generic Top Level Domain Name?

A gTLD is a domain name that is not associated with any particular country. In other words, a domain name that ends with the suffix “.aero”, “.asia”, “.biz”, “.cat”, “.com”, “.coop”, “.info, .jobs”, “.mobi”, “.museum”, “.name”, “.net”, “.org”, “.pro”, “.tel” and “.travel” as opposed to one that ends in a 2 letter country code such as “.au” for Australia, “.cn” for China, “.de” for Germany”, “.fr” for France, “.lp” for Japan and of course “.uk” for the UK.   Our chambers domain name “.nipclaw.com” is an example of a .gTLD name.   Our domain name website “nipc-domains.co.uk” is an example of a ccTLD.   If you are getting confused and want some definitions have a look at our glossary and our information pages. You’ll find everything you ever wanted to know about domain names on www.nipc-domains.co.uk.

Some History

Domains have always been registered on the basis of first come, first served.     In the early days of the internet that did not matter because nearly all users were universities or government departments and agencies.    From the middle of the 1990s the worldwide web opened the internet to commerce and domain names began to acquire value.    Speculators, known as “cyber-squatters”, began to register domain names that were similar to the trade names or trade marks of well known businesses and offered them for sale to those businesses or their competitors at an enormous profit.    A few businesses brought trade mark infringement or passing off claims against cyber-squatters in the civil courts but not all of those actions were successful.   Even businesses that were successful often had difficulty in enforcing judgments against defendants who were located overseas or who concealed their identity and whereabouts.   Most companies found it cheaper and easier simply to pay the ransom or use some other domain name.   Recognizing that effective regulation of domain names would be vital for the development of electronic commerce, the US government contracted with a California company called ICANN (the Internet Corporation for Assigned Names and Numbers) to oversee  the domain name system.  ICANN requires every company that wishes to register domain names (“registrars”) to incorporate into their registration agreement a procedure for determining disputes between their customers and third parties.

The Registration Agreement

Every agreement to register a generic top level domain name with an ICANN accredited registrar contains the following clause:

Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

The last sentence is to be taken very seriously. Applicants for registration, particularly companies that deal in domain names, are expected to make serious efforts to search trade mark registration databases and other online resources to ascertain whether there are any adverse intellectual property rights.

The registration agreement also requires customers to submit to a “mandatory administrative proceeding” if a third party complains that a domain name does infringe his or her rights.

What is a “Mandatory Administrative Proceeding”?

A “mandatory administrative proceeding” is a dispute resolution process closely resembling arbitration.   A tribunal consisting of one or three members decides whether the domain name registration should be cancelled or transferred to the complainant on written submissions and evidence.    The tribunal is called a “panel” and a member of a panel a “panellist”.

Who appoints those panels?

ICANN has accredited the following arbitration services to appoint panellists for mandatory administrative proceedings:

-       The Asian Domain Name Dispute Resolution Centre

-       The Czech Arbitration Court

-       The National Arbitration Forum, and

-       The World Intellectual Property Organization (“WIPO”).

Each of these arbitration services is referred to as a dispute resolution service provider or “provider” for short.   Each provider keeps a list of panellists who have experience of domain name disputes.   Most of them are lawyers but there are also patent and trade mark attorneys and individuals from the domain name registration industry who are sometimes referred to as “domainers”.   I am a member of the WIPO domain name dispute resolution list and am occasionally appointed to decide domain name disputes.  You will find my domain name decisions listed here.   I was also one of the first – if not the first counsel – to settle proceedings under the UDRP on 7 Sep 2000.

If a complainant is content for his dispute to be decided by a single panellist, the panel is appointed by the provider.    If either party wants three panellists the provider appoints the chair and each of the parties selects a panellist from the dispute resolution service provider’s list.

The Legal Framework

ICANN requires every provider to require its determine disputes in accordance with its Uniform Domain Name Dispute Resolution Policy (“UDRP”).   The UDRP is supplemented by the ICANN Rules for Uniform Domain Name Dispute Resolution Policy known as “the Rules”.   In addition to the UDRP and the Rules, each provider has its own supplemental rules.   These are WIPO’s.   Although there is no doctrine of stare decisis as such, panellists do tend to consult and follow previous decisions of which there are now many thousands.   The WIPO Arbitration and Mediation Centre has helpfully condensed produced an Overview of WIPO Panel Views on Selected UDRP Questions.

What sort of dispute can be referred to administrative proceedings?

The panel’s jurisdiction is not unlimited.   It can only resolve disputes that fall within paragraph 4 (a) of the UDRP:

“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.”

One of the differences between administrative proceedings and arbitration is that administrative proceedings are intended to supplement than provide an alternative to the courts.

What is meant by a “trademark or service mark in which the complainant has rights”?

The word “trademark” includes registered trade marks and rights to restrain the use of a trade mark such as the English action of “passing off”. The complainant must show that he or she has registered a trade mark somewhere in the world or that he or she can bring a claim to restrain the use of a trade mark somewhere in the world.   A registered trade mark can be for any goods or services in any class in any trade marks registry.

What does a complainant have to prove?

A complainant has to prove each of the following:

-       He or she has a trade or service mark somewhere in the world that is the same as or confusingly similar to the disputed domain name.

-       The person who has registered the disputed domain name (“the respondent”) has no rights or legitimate interests in the domain name.

-       The respondent registered the domain name in bad faith.

-       The respondent is using the domain name in bad faith.

If the complainant fails to prove any of those elements, the claim for transfer or cancellation of the domain name is dismissed.

How does the complainant prove that the respondent has no rights or legitimate interests in the domain name?

All a complainant is expected to do in most cases is make a search of the trade marks registry and maybe one or more of the common search engines of the respondent’s domicile as well as his or her own country, and confirm that he has not granted the respondents a licence or other right to use the domain name.

Once the complainant has done that, the burden shifts to the respondent to show that he has rights or legitimate interests in the domain name.   Paragraph 4 (c) of the UDRP provides:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

How does the complainant prove that that the domain name has been registered and is used in bad faith?

The complainant is assisted by paragraph 4 (b) of the UDRP:

“For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Remember that it is the respondent’s responsibility to determine whether his or her domain name registration infringes or violates someone else’s rights and that he or she is expected to make a real effort to find out whether there are adverse intellectual property rights.   A failure to make such efforts is regarded by many panellists as “wilful blindness” and evidence of faith in itself.

How do I use this procedure?

First, you find out as much as you can about the respondent by doing a “whois” search.   If you don’t know what a “whois” search is consult our glossary for the definition.  That is not always straightforward because the domain name may be registered in the name of a nominee.   The way round that is to email the nominee and ask it to notify the owner of the domain name that you have a claim against the owner under paragraph 4 (a) of the UDRP.   Many nominees will disclose their client’s identity at that point but if not you can join the nominee as the respondent.

Next, you choose your dispute resolution service provider.   Check out their fees, terms and conditions, lists of panellists and reported cases on their websites and choose the service you like best.

Thirdly, read the UDRP, Rules and provider’s supplemental rules very carefully.   It is also worth reading the information section of our website at www.nipc-domains.co.uk.    The WIPO produces a very useful WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP) and FAQ.   You should read those too.   If you select the WIPO as your provider download and read the model complaint.   You can either complete it in Word and email it to WIPO’s Arbitration and Mediation Centre as an attachment or you can file the complaint online.   If you have any difficulty with this you can call us on 0800 862 00055 or complete a request an estimate as we can draft a complaint for you at a very competitive fee.

Finally, you must send the provider its fee.   WIPO charges US$1,500 for up to 5 domains.

What happens next?

The provider checks the application to make sure that is in order.   If there is a difficulty you may be asked to amend your application.   Once the provider is satisfied with the application it sends it to the respondent.

What happens if I am a respondent?

Read the UDP, Rules, supplemental rules and other guidance mentioned above very carefully.   Visit our website at www.nipc-domains.co.uk.    Download a copy of the model response and complete it in accordance with the Rules.   If the complainant has chosen a single panellist tribunal and you want three panellists you should say so in your response.   Remember that you have to pay your share of a three panellist tribunal.

If you need any help we can draft a response for you at a very competitive fee.    Call us on 0800 862 0055 or complete our request an estimate form.

Then what?

After the response as been filed or the time for filing a response has expired, the provider selects a panellist.   He or she is asked to state whether there are any factors that affect his or her impartiality.   If the panellist declares that there are none, he or she is sent the papers and asked to submit his or her draft decision within 10 days.   The draft is then checked and a fair copy sent to the panellist for his or her approval.   Once the text has been agreed, the panel signs the decision which is communicated to the parties and the registrar.

Can a party appeal?

There is no machinery for an appeal in the UDRP but a dissatisfied party can apply to the courts of the respondent or registrar’s domicile.   He or she is allowed 10 days to make the application.   If he or she fails to make that application the registrar gives effect to the panel’s decision.

This is a vast topic and one that cannot reasonably be covered in a short article.   If you need further information please contact us on 0800 962 0055 or through our online form.

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About Jane Lambert

I am a barrister specializing in intellectual property, technology, media and entertainment and competition law. I specialize in helping SME (small and medium enterprises) protect and exploit their investment in brands, design, technology and the arts. SME require intellectual property (legal protection for their intellectual assets) at least as much as big business but their limited means restrict the way they can use it. Looking after such clients wisely requires skills and knowledge which have taken me years to learn.
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