Perhaps the most genuine conflict that arises out of Cyberspace is a domain name dispute. There is nothing similar to a domain name dispute in the off-line world (though it bears resemblance to Intellectual Property disputes). It is therefore not surprising that domain name disputes are a field where ADR is extensively used. Domain name Disputes are a bright example for successfull use of ADR to resolve disputes that are unique to cyberspace and is a good example of how ADR can adapt to the special needs of Cyberspace disputes.
The Internet Corporation for Assigned Names (ICANN) and Numbers was formed in 1998. Although based out of the United States, ICANN was formed as not-for-profit corporation in order to help facilitate the registration of domain names. Just as two houses sharing the same address would confuse the mailman attempting to find your particular house, so would be the same effect if domain names were registered to multiple parties. ICANN attempts to avoid this result by working with each Top Level Domain (e.g., .com, .org, etc.) to ensure that each domain name is registered only once.
Under the leadership of ICANN, The Uniform Domain Name Dispute Resolution Policy (UDRP) was created in 1999. In short, UDRP ensures that trademark owners are able to obtain the transfer of such a domain name which has been registered by another in bad faith. Although all decisions by UDRP panels may be appealed, the process has the many of the benefits of traditional ADR in that it is quick, efficient, and cost effective.
The WIPO is perhaps best known for its role in implementing UDRP. In this role, WIPO has successfully presided over thousands of cases. In fact, from the United States alone, 7,871 complaints have been filed. In each of these cases, the parties in contention each seek to gain or retain ownership of a domain name. As will be discussed further, many factors are considered by a WIPO panel when making this decision. Read more about the WIPO.
A trademark owner files a complaint with an ICANN approved resolution center seeking to contend the registration of a domain name (since WIPO is the most well known of these resolution centers, we will presume its use in the remaining discussion). In keeping with the spirit of the dispute, filings are handled by online filing. The filing form is quite simplistic and takes relatively little expertise or time to complete. The associated fees must be included with the complaint.
Upon filing, the current domain name owner is notified that a complaint has been filed against him or her (respondent). As a result of the agreement made when the respondent registered the disputed domain name, respondent must answer the complaint. In order to keep the proceedings short, the respondent has only twenty days to answer the challenger’s complaint. If the respondent does not submit a response, a panel is appointed and decides the matter only on the information provided by the complainant. To do so, however, it quite an easy process and a simple form may be found here.
Upon receipt of the response, the selection of the panel begins. Unlike mediation, panelists are appointed. However, much like arbitration, parties may have either one or three panelists presiding over the dispute. The panel is typically five days if one panelist is requested, or fifteen days if three panelists are requested.
After panelists are appointed, all deliberations must be completed within fourteen days of commencement. Upon conclusion, the panel has three days to alert the parties, ICANN, and the domain name registrar.
After notification, the domain name must be transferred within ten days and the process is complete, unless the losing party notifies the domain name registrar that it has already filed a lawsuit in a mutual jurisdiction. If no appeal is filed, however, most challenges are completed within sixty days of the initial complaint.
The hallmark of ADR is that it is less expensive than traditional litigation. In UDRP proceedings this is exceptionally true. WIPO schedules fees according to the amount of domain names under dispute and panelists requested. In all cases, the complainant shoulders these fees unless the respondent requests three panelists when complaint merely requests one.
The fees for one panelist are as follows:
|Number of Domains||Cost|
|10+||Varies based upon Mediation Center decision.|
The fees for three panelist are as follows:
|Number of Domains||Cost|
|10+||Varies based upon Mediation Center decision.|
There is no discovery, no oral presentation. The whole process is Quick and informal.
Panels often cite cases. The most cited case is telstra.org. Telstra stands for the proposition even those who passively register names without utilizing them may be acting in bad faith. read more about the telstra case.
Unlike traditional courts, administrative panels have very limited remedial powers. In fact, only three remedies are explicitly available, although panels have been known to take liberties in exercising powers which might be beyond UDRP’s scope as will be discussed later. The remedies available are limited to:
WIPO panels derive their power to enforce such decisions from the agreements web users sign when they attempt to purchase and register top-level domain names.
All WIPO/UDRP determinations may be appealed within ten days of a determination. As stated by WIPO:
Paragraph 4(k) of the UDRP Policy provides that the mandatory administrative proceeding requirement shall not prevent either the domain name registrant (Respondent) or the third party (Complainant) from submitting the dispute to a court of competent jurisdiction for independent resolution. It is possible for a party to start a lawsuit in court before an administrative proceeding is commenced. A party can also commence a lawsuit after the administrative proceeding is concluded if it is not satisfied with the outcome,”WIPO Guide to the Uniform Domain Name Dispute Resolution Policy.
Parties may also turn to traditional litigation before or during a UDRP tribunal. According to Rule 18 of the Rules for Uniform Dispute Policy, the panel may decide, it its discretion, whether to continue, suspend or abandon the proceedings.
Jurisdiction is always an issue in cyberspace disputes. The UDRP has a unique way to handle this ever-present problem, however. WIPO requires that appeals be lodged in “mutual jurisdiction.” WIPO describes this “mutual jurisdiction” as:
“The location of either (a) the principal office of the registrar (provided that the domain name registrant has submitted in the 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 registrant's address as shown for the registration of the domain name in the concerned registrar's WHOIS database at the time the Complaint is submitted to a dispute resolution service provider.” WIPO Guide to the Uniform Domain Name Dispute Resolution Policy
Although this typically means the complainant is the trademark, this is not always the case. Panelists have differed on whether or not trademark registration is requisite to satisfying this element. However, most complainants who are successful contend that own a trademark, even if unregistered. See e.g., August Storck KG v. Unimetal Sanayi ve Tic A.S., No. D2001-1125 (2001) (transferring ownership to “merci.com” to an alleged trademark owner); But see X/Open Company Limited v. Expeditious Investments, Case No. D2002-0294 (2002) (refusing to transfer unix.com to an unregistered trademark holder).
As is the case with traditional trademark disputes, the complainant must show that the name in dispute is identical or confusingly similar to the trademark owner’s mark. Often times the mark will be the exact same, making the case easy for the panel. However, a significant portion of cases involve names which simply use the complainant’s trademark and the inquiry is whether or not a consumer would find it confusingly similar. As one might imagine, such a subjective test leads to unpredictable results at times. Many disputes have arisen over domain names which feature “’inserttrademarkhere’sucks’.” Although unlikely to cause confusion for any consumer as to the source, panels have been divided as whether to transfer names or not.
Like other elements of a UDRP analysis, determination of a legitimate right is difficult and, often times, far from clear. Disputes arise from what it means to “have a legitimate right.” Unfortunately for those seeking panel determinations, boards are often split on the question when same or similar disputes arise. For example, panels are in disagreement about whether a distributor may use a trademark when distributing goods which carry that name. According to established Intellectual Property law, the question is an unequivocal yes thanks to the principles found in the first-sale and nominative use doctrines, however, panels are split since trademark use may deprive its owner of the very valuable domain name (e.g., a sporting good distributor who registers Louisvilleslugger.com or Louisesvillesluggersales.com). In other cases, people with famous names or, even trickier, famous nicknames often find themselves in hot water with trademark owners (see e.g., University of Oxford v. Seagle, No. D2001-7046 (2001)).
In determining whether bad faith exists, panels rely on a variety of factors. One which appears to be most damning is the demand of money for the transfer of the domain name. When this is done, the panel almost always sides with the complainant if the other UDRP elements are satisfied. However, panelists also consider whether the domain name holder registered several other similar domain names and whether the domain name holder supplied falsified contact information to the registrar.
Typosquatting is a practice where domain names are registered using common variations of popular trademarks in an attempt to divert traffic to the typosquatter’s website. The web-traffic which results leads to advertisement revenue from the links which are commonly found on the typosquatting pages. The test panelists employ when determining typosquatting cases typically involves a comparison of the alleged typosquatting name and the trademark. If the name is phonetically and visually similar, the typosquatting domain name is typically transferred. Furthermore, in a significant amount of cases there is no response from the respondent, since registrants typically do so as a large scale practice in order to profit off of consumer confusion.
For an illustrative case, see “espnnews.com”.
Typosquatting remains extremely prevelant, despite the UDRP resolution method. Although we don’t recommend visiting these sites, current examples include: “nytt.com”-which plays off of the popular home address “nyt.com” for the New York Times and “facebok.com” which plays off of the popular home address “facebook.com” for Thefacebook.
15 U.S.C. § 1125(d)(1)(A) provides protection for personal names in cyberspace. In this spirit, WIPO has transferred names to alleged trademark owners in the past. Interestingly, however, if the name is not registered, WIPO should have no authority to do so, although such has been the case in the past. See e.g., Roberts v. Boyd, No. D2000-0210 (2000)