INTERNET DOMAIN NAME DISPUTE RESOLUTION

A PRIMER

All internet domain names are regulated by the Internet Corporation for Assigned Names and Numbers (ICANN). Anyone who wishes to register a domain name, irrespective of its suffix (.com, .net., .uk, .biz, etc.) signs an agreement through its registrar to conform to, comply with and be bound by all of ICANN’s policies and rules. Among those are the Uniform Domain Name Dispute Resolution Policy and its attendant Rules which provide for the arbitration of all domain name disputes through one of four designated providers, i.e., World Intellectual Property Organization (Geneva, Switzerland), National Arbitration Forum (Minnesota, USA), CPR International Institute For Conflict Prevention and Resolution (New York, USA) and Asian Domain Name Dispute Resolution Centre (Hong Kong/Beijing, PRC).

All domain name owners must agree, as a condition to registration, to submit to non-binding arbitration with respect to any claim that the registered name violates the trademark rights of a third party. The process is a very streamlined one, almost always determined on document submissions only without in person hearings, and can be concluded within two months. If successful, the result will be an order to cancel the domain name or transfer it to the complainant. This can be a rather effective, cost efficient and expeditious way to achieve at least a partial objective. However, there are several material caveats, i.e., (a) the standard and the consequent burden of proof are rather high, (b) even if successful the non-binding decision will not be implemented if an action in any competent court is initiated within 10 business days (no injunction or stay of the decision is needed, rather only evidence that the court action was started), and (c) irrespective of the outcome, either party may proceed in court

To be successful, the complainant must prove each of the following elements prescribed by Rule 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and (ii) the domain name owner has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Although these elements seem clear, the third element has an inherent anomaly withn the Rules. While it is appears on its face that there is to be proven not only a bad faith use of the domain name, but also a bad faith registration, the immediately following Rule 4(b) provides, in pertinent part, as follows: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: . . . (iv) by using the domain name, [the respondent has] intentionally attempted to attract,

We had a situation recently wherein a formerly authorized distributor of trademarked products under a written distribution agreement, originally operated a website with the trademark owner’s consent. However, when the distribution agreement expired, and despite the protests (and litigation) by the trademark owner, the domain name owner defiantly continued to operate its website and sell the trademarked goods, violating both the owner’s and the new distributor’s rights. We were inexplicably unsuccessful in the proceeding when the arbitrator clung to the precise language in Rule 4(a)(iii) and apparently ignored Rule 4(b).

It should be noted that the complainant can chose the arbitration forum from the four above identified. Each has supplemental rules which must be followed, and each has an independent list of panelists from which it selects a Panel. Of note is the fact that decisions are published in various places, including the provider’s website, but, as in most arbitration, neither previous awards nor judicial decisions in any jurisdiction will mandate the result in any proceeding. Clearly it would be prudent to avoid a provider which has administered a case very similar to the one to be initiated and which resulted in a contrary result.

In summary, ICANN provides a useful though somewhat problematic tool in seeking to resolve domain name disputes. If successful, the aggrieved complainant becomes the owner of the domain name and the attendant benefits of its links, listings on search engines, etc. This is a very positive accomplishment. However, before undertaking any such proceeding the facts need to be thoroughly analyzed to be certain the essential elements are clearly sustainable, and the efficacy of proceeding under the Policy must be considered carefully after evaluating the nature and intentions of the domain name owner.

Sidney D. Bluming


Bluming Freiman Franco LLP

Attorneys at Law

140 East 45th Street
19th Floor
New York, NY 10017
USA

Telephone: 001 212 655 35 64
Fax: 001 212 655 35 29
eMail: sbluming@bff-law.com
Internet: www.bff-law.com