"ICANN" stands for The Internet Corporation for Assigned Names and Numbers.  The management of the Internet domain name system is the primary service of ICANN.

As part of its jurisdiction, ICANN developed a policy to resolve disputes over domain name registrations, the "UDRP".  UDRP stands for Uniform Domain Name Dispute Resolution Policy, adopted by ICANN on August 26, 1999.  This policy has been adopted by all accredited domain-name registrars for domain names ending in the global top-level domains: .aero, .biz, .com, .coop, .info, .museum, .name, .net, and .org. The UDRP does not apply to country-code top-level domains, except in a few cases where the local administrator has decided to adopt it. The UDRP is incorporated in the registration agreement between registrar and registrant. Thus, if you register a domain name, you are subject to the provisions of the UDRP. 

Provisions of and proceedings under the UDRP

The UDRP covers disputes between the registrant and any party other than the registrar over the registration and use of an Internet domain name registered by the registrant.  Most often the dispute will occur between the registrant of the domain name and a trademark owner. Disputes are resolved through a mandatory administrative proceeding, conducted before one of the administrative-dispute-resolution service providers.  At this moment there are five accredited providers/panels. One of these providers is the "WIPO", or the World Intellectual Property Organization Arbitration and Mediation Center.

The proceedings are conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy and the selected administrative-dispute-resolution service provider's supplemental rules.

Paragraph 4 (a) of the UDRP sets forth the types of disputes which are required to be submitted to a mandatory administrative proceeding: 

In the administrative proceeding, the complainant must prove that each of these three elements are present.

Paragraph 5 provides that all other disputes shall be resolved between the registrant and such other party through any court, arbitration or other proceeding that may be available.

For the later criterium of paragraph 4(a), bad faith registration or use, paragraph 4(b) contains the particular, but non-exhausting circumstances, which can serve as evidence of the registration and use of a domain name in bad faith:

 
If the complainant can prove one of these four factors, he will win. The domain name registration will be transferred to him or cancelled. However, paragraph 4(c) sets forth the particular but non-exhausting circumstances the registrant can use to prove that he has legitimate rights and interests in maintaining the domain name. If he can prove this, than the complainant’s request to transfer or cancel the registration will be denied. Paragraph 4 (c) lists 3 factors as evidence of legitimate interests:

For the full text of the UDRP, go to: http://www.icann.org/udrp/udrp-policy-24oct99.htm

Why choose for a proceeding under the UDRP?

Why would a trademark owner opt for a procedure before a UDRP-panel in stead of going to court? A UDRP-proceeding has several of benefits:

a. Fast: administrative proceedings under the UDRP generally progress faster than a regular court lawsuit.  A decision is typically rendered in about two months. The accredited domain name registrars, which have agreed to abide by the UDRP, implement a decision after a period of ten days, unless the decision is appealed in court in that time. Thus, if a trademark owner’s main concern is the transfer of the domain name, the fastness and the relative inexpensiveness (see below) make the UDRP-proceeding an efficient option.

b. Inexpensive: the providers have their own fees, which generally start in the range of $1,000 to $2,000 for a single panelist proceeding, The amount due depends on two criteria: the number of domains included in the dispute, and the number of panelists (one or three).  

c. Burden shifting approach: the UDRP provisions state that the complainant has the burden of proving the three elements of dispute are present, in order to have the domain name transferred or cancelled. However, some panels uphold a burden shifting approach (e.g. WIPO), meaning that not the trademark owner, but the registrant of the domain name has to prove that no reasonable alternative exists other than use of the mark in the domain name to fully exercise his free speech rights. See the case National Collegiate Athletic Association v. Dusty Brown under "examples of cases under the UDRP".     

It should be noted that decisions by UDRP-panels can be overruled by courts.  UDRP provision 4(k) states that the administrative proceeding shall not prevent either the registrant or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such proceeding is commenced or after such proceeding is concluded, however, this does not happen often. 

Furthermore, the remedies before an administrative panel is limited to the cancellation of the domain name or the transfer of the domain name registration to the complainant. There are no monetary damages applied in UDRP domain name disputes, and no injunctive relief is available.

If we take a look at the case filing results until 10 March 2005 (www.wipo.int), it can be concluded that the numbers speak in favor of the complainant. From a total of 6867 cases, 4522 cases ended in a transfer decision. The rest of the cases included 47 cancellations, 1389 withdrawals/terminations of proceedings and 892 complaint denials.  

Examples of cases under the UDRP

In this section, we will give some examples of cases brought before one of the five panels under the UDRP, the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO"). The examples will make clear how the mentioned UDRP-criteria are applied to the facts of the case.  For trademark owners, in their battle against gripesites,  we refer specifically to National Collegiate Athletic Association (case no. 4). In this case, WIPO applies the burden of proof shifting.

1.  The first case brought before the WIPO:  Word Wrestling Federation Entertainment, Inc. v. Micahel Bosman, No. D99-0001:  defining "using of the domain name" as part of the bad faith factor.

The complainant, World Wrestling Federation Entertainment, Inc., filed a complaint against respondent Michael Bosman. Bosman registered the domain name "worldwrestlingfederation.com".  He was not in any way a licensee of complainant, nor was he otherwise authorized to use complainant's marks. 

Three days after registering the domain name at issue, respondent contacted complainant and stated that his primary purpose in registering the domain name was to sell, rent, or otherwise transfer it to complainant for a valuable consideration in excess of respondent's "out-of-pocket expenses".

Applying the three UDRP-criteria, the WIPO panel first concluded that it was clear that the domain name "worldwrestlingfederation.com" was identical or confusingly similar to the trademark of the World Wrestling Federation.  The second factor, the existence of legitimate interests, was no problem; Respondent had none. The most interesting part of the panel’s decision is the consideration of the bad faith factor. The issue to be determined was whether the respondent used the domain name in bad faith. The UDRP namely states that the name must not only be registered in bad faith, but it must also be used in bad faith. Respondent had not developed a website using the domain name at issue or made any other good faith use of the domain name.  However, this did not matter. The panel stated that, "because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent had 'used' the domain name in bad faith as defined in the policy". The Panel required that the registration of the domain name "worldwrestlingfederation.com" be transferred to the complainant.

2.  Telstra Corporation Limited v. Nuclear Marshmallows, No. D2000-0003:  application of bad faith circumstances, not mentioned in the UDRP.

Complainant, Telstra Corporation Limited, a company incorporated in Australia, started a UDRP-procedure against respondent, Nuclear Marshmallows. The domain name that was the subject of this complaint was "telstra.org". The complainant is the registrant of the following domain names containing the word "telstra": telstra.com, telstra.net, telstra.com.au, telstra-inc.com and telstrainc.com. The panel concluded that the domain name was confusingly similar to Telstra’s trademark registrations.  Also, the panel held that the respondent had no rights or legitimate interests in the domain name. What’s special about this case is the panel’s finding that "the circumstances identified in paragraph 4(b) are 'without limitation', that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith." The WIPO-panel found that other case-specific circumstances than mentioned in paragraph 4(b) were present to conclude there was bad faith on respondent’s side, namely: 

1. the complainant’s trademark had a strong reputation and was widely known, as evidenced by its substantial use in Australia and in other countries,

2. the respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

3. the respondent took active steps to conceal its true identity, by operating under a name that is not a registered business name,

4. the respondent  actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

5. taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law. The panel held that the domain name telstra.org should be transferred to the complainant.

3.  Dr. Ing. h.c. F. Prorsche AG v. El Fabbro Laurent, No. D2004-0481:  a denial of complaint due to legitimate interests of the respondent.

Complainant was Dr. Ing. h.c. F. Porsche AG, respondent was Del Fabbro Laurent, of the British Virgin Islands. The disputed domain names were ‘porsche-buy.com’ and  ‘porschebuy.com’. Complainant is well known for the manufacturing of sport cars under the trademark ‘PORSCHE’.  

The panel concluded that the domain name and the trademark were confusingly similar. However, the main issue was whether the respondent had rights and legitimate interests to use the disputed domain names in connection with a bona fide offering of goods or a noncommercial or fair use without the intent for commercial gain.

The panel concluded that "to be bona fide", the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).  These included the following:

a. A respondent must actually be offering the goods or services at issue;

b. A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;

c. A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;

d. A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.

Applying these factors to this case, the panel held:

a. Respondent used the websites under the domain names as a market place for used PORSCHE cars only.

b. Respondent did disclose on the entry websites by a disclaimer that he is neither affiliated to nor authorized by the complainant itself.

c. Respondent failed to use the distinctive characters, the logo, nor the drawing of the “PORSCHE” trademark, but used a different calligraphic presentation. Therefore, considering that the websites contained advertisements for used PORSCHE cars, Internet users were not misled to assume that the respondent’s websites are run by the trademark owner itself, an affiliate or an official sales agent of the complainant. On the contrary, it was clear that under the domain names used, Porsche cars are offered for sale by third parties.

d. The complainant failed to produce evidence that the respondent  registered domain names consisting of famous trademarks to corner the market for such products or to deprive the trademark owner of reflecting its own mark in a domain name.

Therefore, in this case, complainant did not present evidence that undermined the bona fide use of rhe respondent; respondent’s conduct met all the above mentioned requirements of a bona fide offering.  Accordingly, the panel held that the respondent had a legitimate interest (under the Policy) in using the domain names. The panel denied the complainant’s request that the domain names ‘porsche-buy.com’ and ‘porschebuy.com’ be transferred.

4.  National Collegiate Athletic Association v. Dusty Brown, No. D2004-0491:  an example of the shifting burden of proof in a gripesite, recognition of initial interest confusion.

Complainant, The National Collegiate Athletic Association filed a complaint against respondent Dusty Brown. The complainant owns numerous United States trademark registrations for the mark “NCAA”. Also, the NCAA owns and operates ‘ncaafootball.com’ and ‘www.ncaa.org’. Kaldenberg Domain Brokerage (KDB) transferred the contested domain name "ncaafootball2005.com" to the respondent, Dusty Brown. Respondent altered the content located at “www.ncaafootball2005.com.” As of that date, that domain name resolved to an “NCAA Football 2005 Gripe Site.”

Initial interest confusion
Looking at  the panel’s findings concerning the similarity factor, it can be concluded that the panel recognizes the initial interest confusion. The panel stated:


Shifting of burden of proof
In deciding that respondent hasd no right or legitimate interest, the most important part of the panel’s finding was the rejection of the respondent’s claim of free speech by making a shift of burden of proof:
Is the respondent’s claim of exercising his rights to free speech through the contested domain names absolute so as to mandate his retention of both names in conjunction with his web (gripe) site regardless of any conduct that may be imputed to him?

The panel ruled he does not.  Here, the evidence unmistakably showed that the respondent’s primary motive in registering and using the contested domain names was manifestly commercial and not to provide criticism.  Further, neither Mr. Kaldenberg nor the respondent  proffered any evidence, let alone persuasive, as to why the later could not achieve their goal of providing their gripesite through domain names, other than those at issue.

In that regard, see Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001)  where the Panel, in evaluating a claim made by the respondent that its use of the contested domain name in conjunction with its “fan site” was free speech and hence protected under the First Amendment, stated:

Since the respondent is arguing to retain a contested
domain name for use with its fan site, it makes clear sense
 to impose a burden on the respondent to show why it
could not maintain its fan site, hence exercise its right
of free speech, but for use of the contested domain
name. In essence, the respondent is charged with
showing that no other reasonable alternatives were
then available to him (her) but to use that name in
order to fully exercise its rights of free speech to
present a fan site. Here, the Respondent made no such
showing.

Such was the conclusion in the present case.

5.  CBS Broadcasting, Inc., f/k/a CBS Inc. v. Naivi Rodriguez a/k/a Naivi R., No. D2005-0005:  adding a word to a mark does not take away similarity.

The complainant was CBS Broadcasting Inc., respondent was Naivi Rodriguez. The complainant federally registered the mark "CBS CARES." Three months later, respondent registered the disputed domain name "cbs-cares.com."  The WIPO-panel concluded that  similarity existedbetween the trademark "CBS"’ and the domain name cbs-cares.com.  The panel stated, "the fact that the word ‘cares’ is added to the complainant’s trademark does not eliminate the similarity between the complainant’s trademark and the disputed domain name, and consequently, the risk of confusion in any ordinary consumer’s mind, particularly since the complainant uses 'CBS Cares' in connection with its public service announcements."

Conclusion:  the advantage of shifting burden of proof

Most of the cases brought before a UDRP-panel are standard and represent typical cybersquatting cases, resulting in a transfer of the domain name registration to the trademark holder. The same can be said to proceedings before the WIPO.  However, some cases result in more interesting outcomes and conclusions of law.  When we talk about gripesites, National Collegiate Athletic Association is the most interesting.  In this case, the WIPO-panel not only recognized the problem of initial interest confusion, it also created the possibility of shifting the burden of proof: the respondent, not the complainant, must show that no reasonable alternative exists other than use of the mark in the domain name to fully exercise his free speech rights.

This shifting rule is not applied in US Courts, therefore a UDRP-proceeding can be more beneficial for trademark owners. Until now, US Courts have not addressed the problem of initial interest confusion in suckcases and in cases in which no bad faith or likelihood of confusion could be found. For trademark owners, this fact is not a pleasant situation, given the fact that such websites can harm the reputation of the trademark owner.  In order to cope with this, Viriginia Richards suggests to follow the practice of WIPO panels in shifting the burden of proof. She states:


Although the decisions of UDRP-panels are not binding for US Courts, trademark owners should advocate that US Courts adopt this shifting of burden of proof practice.

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Virginia R. Richards, Owners’ Battles with Gripe Sites Continues, New York Law Journal, Jan. 24, 2005, available at http://www.law.com/jsp/nylj/PubArticleNY.jsp?id=1105968938943.