Internet Domain Name Disputes: Some Questions and Answers
A domain name is the address of a web site that is intended to be easily identifiable and easy to remember, such as yahoo.com, or wipo.int. These user-friendly addresses for websites help connect computers - and people - on the Internet. Because they are easy to remember and use, domain names have become business identifiers and, increasingly, even trademarks themselves, such as amazon.com. By using existing trademarks for domain names - sony.com, for example - businesses attract potential customers to their websites.
Domain name disputes arise largely from the practice of cybersquatting, which involves the pre-emptive registration of trademarks by third parties as domain names. Cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Since registration of domain names is relatively simple and inexpensive - less than US$100 in most cases - cybersquatters often register hundreds of such names as domain names.
As the holders of these registrations, cybersquatters often then put the domain names up for auction, or offer them for sale directly to the company or person involved, at prices far beyond the cost of registration. Alternatively, they often keep the registration and use the good name of the person or business associated with that domain name to attract business for their own sites.
There is no agreement within the Internet community that would allow organizations that register domain names to pre-screen the filing of potentially problematic names. The reasons vary, ranging from allowing easy registrations to stimulate business, to the practical difficulties involved in determining who holds the rights to a name, to the principle of freedom of expression. Furthermore, the increasing business value of domain names on the Internet has led to more cybersquatting, which results in more disputes and litigation between the cybersquatters and the businesses or individuals whose names have been registered in bad faith.
The Internet grew rapidly over the last decade as a place to do business, although no international legal standards existed to resolve domain name disputes. The Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for, among other things, management of the generic top level domains such as .com, .net and .org, was in urgent need of a solution to the dispute resolution problem. The process of negotiating a new international treaty was considered too slow, and new national laws would most likely be too diverse. What was needed were internationally uniform and mandatory procedures to deal with what are frequently cross-border disputes.
With the support of its member States, WIPO - which is mandated to promote the protection of intellectual property worldwide - conducted extensive consultations with members of the Internet community around the world, after which it prepared and published a report containing recommendations dealing with domain name issues. Based on the report's recommendations, ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP went into effect on December 1, 1999, for all ICANN-accredited registrars of Internet domain names.
Under the UDRP, WIPO is the leading ICANN-accredited domain name dispute resolution service providers. As of the end of 2000, some 65 percent (about 1,850) of all the cases filed under the UDRP were filed with WIPO. Additionally, a growing number of registrars of country code top-level domains have designated WIPO as a dispute resolution service provider.
The UDRP permits complainants to file a case with a resolution service provider, specifying:
- the domain name in question,
- the respondent or holder of the domain name,
- the registrar with whom the domain name was registered,
- the grounds for the complaint.
Such grounds include, as their central criteria, the way in which the domain name is identical or similar to a trademark to which the complainant has rights; why the respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and why the domain name should be considered as having been registered and used in bad faith.
Taking into account the specific circumstances of each dispute, such as the nationality of the parties, WIPO appoints an expert "neutral" or panelist (from a roster of some 200 independent individuals qualified for deciding such cases) to review the dispute and issue a decision. Either party to the dispute may opt to have one or three panelists assigned to the case.
Panelists must confirm to WIPO the absence of any potential conflict of interest before taking a case, as well as disclose in a written statement any and all facts that should be considered prior to appointment. In the event that one of the parties involved in a case raises a specific objection to a panelist, WIPO will consider offering a replacement.
- Whether the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
- Whether the respondent has any rights or legitimate interests in the domain name (for example, the legitimate offering of goods and services under the same name).
- Whether the domain name was registered and is being used in bad faith .
WIPO's resolution service offers highly qualified neutral panelists, thorough and expeditious administrative procedures, and overall impartiality and credibility.
Dispute resolution at WIPO is much faster than normal litigation in the courts. A domain name case filed with WIPO is normally concluded within two months, using on-line procedures, whereas litigation can take much longer.
Fees are also much lower than normal litigation. There are no in-person hearings, except in extraordinary cases. Minimal filing requirements also help reduce costs. For resolution of a case involving one to five domain names, with a single panelist, the cost is US$ 1,500; for three panelists, the total cost is US$ 3,000. For six to ten domain names, the cost is US$ 2,000 for a single panelist and US$ 4,000 for three panelists.
A domain name is either cancelled, transferred, or sustained (i.e., the complaint is denied and the respondent keeps the domain name). Some examples of cases that received significant media attention include juliaroberts.com and jimihendrix.com , which were transferred to the individuals or their families. A complaint involving sting.com , filed by the singer known as Sting, was denied for a variety of reasons, principally that the domain name registrant was also known by the same nickname, as well as the fact that the name is a common word in the English language and is not necessarily an exclusive trademark.
There are no monetary damages applied in UDRP domain name disputes, and no injunctive relief is available. 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 that time.
The resolutions offered by WIPO are mandatory in the sense that accredited registrars are bound to take the necessary steps to enforce a decision, such as transferring the name concerned. However, under the UDRP, either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution.
On the contrary, domain name registration procedures remain flexible and open to everyone. In fact, the number of disputes - just under 2,000 cases were filed with WIPO by year-end 2000 - represent a mere fraction of the more than 33 million domain names in use on the Internet today. With the success and reputation of WIPO's dispute resolution services, awareness is increasing among Internet users that abusive practices regarding domain names will no longer go uncontested, and that a quick and simple recourse exists. This helps assure a general reliability of domain names on the Internet.
The UDRP was originally designed for settling disputes in generic top-level domains such as .com, .net, and .org. However, some country code domain name registrars also have started to adopt the UDRP or similar policies, and WIPO has begun providing dispute resolution services for country code top-level domains - for example, .VE for Venezuela and .TV for Tuvalu - further increasing reliability among domain names on the Internet.
WIPO is now addressing the question of protection for identifiers other than trademarks, such as geographical indications - for wine-producing regions, for example -personal names (considering protection other than as a recognized trademark, for which they may already qualify under the UDRP), trade names, and names or acronyms of international intergovernmental organizations.
Developments in the field of domain names and related dispute resolution are extremely dynamic. Continuously updated information on this subject is available on the Internet at http://arbiter.wipo.int/domains.
The WIPO Arbitration and Mediation Center can be reached via the sites listed above or by email at email@example.com