Domain Name Dispute Resolution

Terminology

A domain name is an identification tool that represents an Internet Protocol (“IP”) address of a website. It is an easier way to identify a website than IP addresses, which are numbers. Domain names consist of three parts: top level domain, domain name and subdomain.

Top-level domains come in two different forms. One form is generic top-level domains (“gTLDs”) which are .com, .org, .net, .info etc. The second form is country code top-level domains (“ccTLDs”) such as .tr for Turkey, .nl for the Netherlands, .de for Germany, .my for Malaysia, etc. These are administered by the respective national registration authorities.

Regulatory Framework of Domain Name Disputes

A person wishing to register a gTLD (“Registrant”) applies to registrars accredited by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The registration agreement offered by these registrars includes the Uniform Dispute Resolution Policy^[1] (“UDRP”), Rules for Uniform Domain Name Dispute Resolution Policy^[2] (“UDRP Rules”), and supplemental rules of the chosen dispute resolution service provider.

From the moment a Registrant registers a domain name, the Registrant is bound by the legal framework and special dispute resolution feature that applies to all gTLDs and certain ccTLDs.

Arise of a Domain Name Dispute

Various methods (such as cybersquatting, typosquatting, and phishing) are used to register domain names in bad faith. These registrations have a common feature: the creation of confusing similarities with an existing trademark or service mark in bad faith, without legitimate interest.

When a trademark or service mark holder becomes aware that a domain name has been registered to take advantage of a confusing similarity, it submits a standard complaint form to an ICANN-approved dispute resolution service provider.^[3]

The complaint must meet the following criteria:

1. the domain name registered by the Registrant is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. the domain name Registrant has no rights or legitimate interests in respect of the domain name in question; and
3. the registered domain name is being used in bad faith.

The trademark or service mark holder requests the dispute resolution service provider to cancel, transfer or change the confusingly similar domain. This procedure is called a mandatory administrative proceeding.

Once the complaint is filed, the dispute resolution service provider brings it before a single- or three-member panel for dispute resolution.

The Registrant may file a standard response to the complaint. One of the following proves the right or legitimate interest of the Registrant to register the domain name:

1. Prior any notice of the dispute, the Registrant was using, or demonstrably preparing 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
2. the Registrant has become commonly known by the domain name, even if the Registrant has not acquired trademark or service mark rights; or
3. the Registrant is making a legitimate non-commercial or fair use of the domain name, without intent to mislead consumers for commercial gain or to tarnish the trademark or service mark at issue.

Dispute Resolution by the Panel

Shortly after the response is filed, panelists with expertise in trademarks, domain names, and e-commerce are appointed to the panel.

The panel may only order one of the following: transfer of the disputed domain name to the complainant; cancellation of the domain name, change of the domain name, or denial of the complaint. The panel is not authorized to make a monetary award.

This decision-making procedure takes a maximum of 45 days^[4], and the panel’s decision must be implemented within 10 business days by the Registrar that previously registered the disputed domain name.

One feature of this dispute resolution method raises concerns beyond its efficiency and professionalism. The UDRP recognizes a “mutual jurisdiction”, which allows the dispute to be litigated in some state courts.^[5] In addition, it is possible to challenge the panel’s decision in the state courts. This could lead to parallel proceedings and undue delays in reaching a final decision.

Conclusion

The ever-growing e-commerce sector brings with it domain name disputes, which arise when a domain name is registered in bad faith to benefit from confusing similarity to an existing trademark or service mark.

UDRP and its supplementary rules are the prominent method for resolving domain name disputes. The speed of the procedure, which ends within 45 days, meets the needs of the parties and the use of standard complaint and reply forms makes it practical. As the dispute is resolved by a panel of experts in technology, trademarks and domain names, the results are satisfactory. The mutual jurisdiction aspect raises some concerns, but it is understandable given the special features of the method.