The ICANN Dispute Resolution Policy Application
to Domain Names

A persistant problem on the Internet is the 'theft' of trade marks. Cybersquatters register domain names which are similar or identical to trade marks and then use the domain name to extort money from legitimate proprietors or generate revenue by using affiliate programs.

In response to this problem, the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organisation (WIPO) and national courts have means for the lawful owner to recover or obtain an assignment of the relevant domain name.

There are a number of ways in which this problem can and is being dealt with. At the international level both ICANN and WIPO have standing dispute resolution methods in place to ensure that trade mark owners are protected. At the national level the courts have employed both trade mark law and the common law of passing off to frustrate cybersquatters.

ICANN & WIPO Disputes Resolution System

The 'UDRP'

Both ICANN and WIPO have in place the Uniform Domain Name Dispute Resolution Policy (UDRP). It has an approved list of dispute-resolution service providers ('Provider/s'). In order to hear complaints, Providers have appointed individuals to be members of a panel, which will hear and determine complaints. When a complainant makes a complaint that he has proprietary interest in a domain name which has been registered by a respondent, he may initiate an administrative proceeding by submitting a complaint to a Provider whether in writing or in electronic form. The complainant must also serve the complaint on the respondent. The complainant can decide on whether he wants the matter to be dealt with by a panel of one or three. He must include the particulars of the respondent, the domain name, the registrar who obtained the registration, and most importantly, 'specify the trade mark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used'.

Critically, it is also necessary for the complainant to describe the grounds on which the complaint is made, including:

• the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
• why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
• why the domain name(s) should be considered as having been registered and being used in bad faith.

Thus, so long as a trade mark or brand owner can demonstrate that the domain name held by the respondent is identical or confusingly similar to his trade mark, that the respondent has no rights or legitimate interests in the domain name, and that it was registered and is being used in bad faith, a domain name can be cancelled, transferred or otherwise changed.

When this process is satisfactorily completed, the Provider sets down the commencement date of the administrative proceedings. Within 20 days of the date of the commencement of the proceedings the respondent is given an opportunity to respond. If there is no response, 'in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.' The cost of the panel must be borne by the complainant, unless it is the respondent who asks for a three-man panel, in which case, the fees must be shared equally.

The panel determines the admissibility, relevance, materiality and weight of evidence. The whole proceeding is documentary and, as a general rule, there are no 'in-person hearings'. The decision of the panel must be rendered to the Provider within 14 days of the appointment of the panel. The panel has the power to order the transfer of the domain name to the trade mark holder or cancel it altogether. However, if the panel finds that the complaint was made in bad faith, for example in an attempt at Reverse Domain Name Hijacking (i.e. 'using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name') or was brought primarily to harass the domain name holder, the panel can declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceedings.

Establishing Trade Marks under UDRP

If a trade mark is registered, it is fairly easy to show its existence in an UDRP proceeding. However, if it is not registered there could be difficulties. Be that as it may, in a WIPO arbitrator's decision in Jeannette Winterson v Mark Hogarth (Case No D2000-0235) where the name of the complainant, a famous English writer, was registered under various categories by the respondent, it was held that the lack of registration did not matter because trade marks in the context of the UDRP are 'not to be construed by reference to the criteria of registrability under English law, but more broadly in terms of the distinctive features of a person's activities'. There are, unfortunately, contradictory decisions (see, for example, Gordon Sumner, aka Sting v Urvan [Case D2000-0596]).

Identical or Confusingly Similar

Aside from establishing the existence of the trade mark, whether registered or not, the complainant in a UDRP proceeding must also demonstrate that the domain name is identical or confusingly similar to the complainant's trade mark. This may not be as easy as it sounds if the decision of the English High Court in Avnet Inc v Isoact Ltd [1998] FSR 16 is anything go by. In that case the defendant was an ISP that used the domain name 'avnet.co.uk' and the plaintiff was the owner of the trade mark 'Avnet' and was involved in the software and electronic components business. The plaintiff argued that search engines would send potential customers to the defendant's website thereby causing confusion and loss of potential customers. However, the court disagreed and ruled that a customer could immediately see that the defendant's website was the wrong site because it offered different goods and services and so there should be no confusion.

No Rights or Legitimate Interests

It also falls on the complainant to prove that the domain name holder has no rights or legitimate interests in respect of the domain name. However, under the UDRP, a domain name holder can show that he has rights or legitimate interests in the domain name by establishing one of the following:

• that he used or prepared for use the domain name in connection to some bona fide goods or services before notice of the dispute; or
• that he has been commonly known by the domain name, despite the acquisition trade mark rights by the complainant; or
• that he is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark.

Bad Faith Registration & Use

Moreover, the complainant must prove that the domain name was registered and is being used in bad faith. Under the UDRP evidence of bad faith may be shown, among others, in the following ways:

• where the circumstances indicate that the domain name holder had registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or to a competitor, for valuable consideration in excess of his costs directly related to the domain name; or
• where the domain name holder had registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that he had engaged in a pattern of such conduct; or
• where he had registered the domain name primarily for the purpose of disrupting the business of a competitor; or
• where he used the domain name, intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the trade mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his web site or location.

This is not an exhaustive list.

As to the question of using the domain name and what it means, the leading case on point is the famous 'One in a Million' case ([1998] FSR 265; The Times, December 2, 1997, at 8). In that case the English Court of Appeal rejected the argument of the defendant that since it had merely registered certain famous trade marks as domain names without more, it had not used them. It was held that the mere fact that the defendant (domain name holder) had sought to sell the domain names that are confusingly similar to the registered trade marks, was enough to establish threats to infringe, albeit in respect of the UK Trade Marks Act 1994, and therefore could be construed as sufficient use.

That same point was reiterated by an UDRP panel in the case of World Wrestling Federation Inc v Bosman [Case No D99-0001], namely that the mere attempt to sell a domain name to the registered trade mark owner reveals bad faith use. Accordingly, it was held that the domain name holder was a 'cybersquatter' who had "used" the domain name in bad faith.

In another UDRP case, Telstra Corp Ltd v Nuclear Marshmallows [Case No D2000-0003], the panel was faced with a domain name registrant who did not even offer to sell it to the trade mark owner of a well-known trade mark. Nevertheless, it was held that the question was whether it can be said that the domain name holder, in all the circumstances, even without positive action, can be said to have acted in bad faith. Therefore, under certain circumstances the inactivity of the domain name holder can amount to bad faith use.