• E-TRADE MARKS

    ICANN Domain Name Dispute Resolution

    The exponential growth of the Internet has seen a commensurate growth in cybersquatting, the bad faith registration and use of a domain name that is identical or confusingly similar to an unrelated third party’s trade mark. For some time, the means for resolving domain name disputes were many and varied. In the UK, for example, the only truly effective way was to bring a trade mark action before the Courts (see Make Your Mark 98, Marks & Spencer plc v. One in a Million).

    In December 1999, ICANN (the Internet Corporation for Assigned Names and Numbers), the organisation that administers the generic top level domains (.com, .net and .org) introduced a uniform dispute resolution policy to standardise the procedures for resolving allegations of cybersquatting. The uniform policy sets out an arbitration procedure under which a domain name can be cancelled or transferred to the trade mark owner. Under the arbitration procedure, which all those registering .com, .net or .org (gtld) domain names must agree to adhere to, a complainant can have its case heard by either a single person or a three-member panel, who must reach a decision in two months. In either case, the party complaining selects an ICANN approved arbitration provider to administer the decision making procedure. The most widely used arbitration provider to date is the WIPO Arbitration and Mediation Centre in Geneva. Details of the WIPO run procedure can be found at http://www.wipo.int/amc/en/index.html.

    • The domain name must be identical or confusingly similar to a trade mark (or service mark) in which the complainant has rights,

    • The registrant has no rights or legitimate interests in respect of the domain name, and

    • The domain name has been registered and is being used in bad faith.

    The Policy sets out a non-exhaustive list of circumstances which point towards the bad faith registration of a domain name. They include:

    • Registering or acquiring the domain name primarily to sell it for profit on to the complainant or one of his competitors.

    • The domain name registrant has been systematically registering third party trade marks as domain names.

    • The domain name was registered primarily to disrupt the business of a competitor.

    • Using the domain name to cause trade mark confusion amongst Internet users and, as a result of that confusion, attracting such users to the registrant’s website and thereby increasing the registrant’s income.

    On the other hand, if the domain name owner can show a legitimate interest in the domain name, he may be able to resist the complaint.

    For example, if he can show

    • Bona fide prior use of the domain name to offer goods or services,

    • That he is commonly known by the disputed name, or

    • That he is using the domain name in a legitimate non-commercial manner with no intention of making commercial use that could mislead the complainant’s customers or tarnish the complainant’s mark the complaint should not succeed.

    Under the procedure, there is no right of appeal against an arbitrator’s decision. However, a Registrar must suspend any action on a decision to cancel or transfer the domain name if, within ten working days of the decision, the present owner commences appropriate legal proceedings.

    Comment

    The introduction of this uniform policy is a significant step forward in the fight against cybersquatting. The large number of cases that have already been filed (and heard) by WIPO and the other dispute resolution providers shows that a standardised, simple and reliable procedure was desperately required.

    As we shall see below, the procedure has already been used by well known personalities (e.g. Julia Roberts) to win back domains featuring their own names in the absence of a trade mark registration covering those personal names. It is likely, however, that the ICANN policy will be officially expanded in the future to cover the Julia Roberts type case explicitly as well as cases involving geographical indications and international organisations.

    Further, it is to be hoped that the uniform policy or a close variation of it will soon be adopted by country code top level domains, such as .co.uk and .de. At the present time, the dispute resolution procedure in the UK, for example, is entirely unsatisfactory. Whilst the English Courts have, on the whole, taken an enlightened approach to these matters (see the One in a Million case), a simple, reliable and cheap procedure along ICANN lines would, in many cases, be much preferred. This is particularly the case when the bad faith of the domain name registrant is abundantly clear and therefore the need for the discovery of documents (which is possible in an English Court case but not under the ICANN procedure) is not crucial to the eventual outcome.