Uniform Domain-Name Dispute-Resolution Policy

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The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP currently applies to all generic top level domains (.com, .net, .org, etc.), some country code top-level domains, and to all new generic top-level domains (.xyz, .online, .top, etc.).

Contents

Historical background

When ICANN was first set up, one of the core tasks assigned to it was "The Trademark Dilemma", [1] the use of trade marks as domain names without the trademark owner's consent. By the late 1990s, such use was identified as problematic and likely to lead to consumers being misled. In the United Kingdom, the Court of Appeal described such domain names as "an instrument of fraud". [2]

One of the first steps was that Member States commissioned the United Nations World Intellectual Property Organization (WIPO) to produce a report on the tension between trademarks and domain names. Published on 30 April 1999, the WIPO Report recommended the establishment of a "mandatory administrative procedure concerning abusive registrations", [3] which would allow for a "neutral venue in the context of disputes that are often international in nature." The procedure was not intended to deal with cases with competing rights, nor would it exclude the jurisdiction of the courts. It would, however, be mandatory in the sense that "each domain name application would, in the domain name agreement, be required to submit to the procedure if a claim was initiated against it by a third party. [4] The WIPO Report also set out the current three-stage test of the UDRP.

At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN Board of Directors adopted the UDRP Policy, [5] based on the recommendations contained in the Report of the WIPO Internet Domain Name Process, [6] as well as comments submitted by registrars and other interested parties. [7]

On October 24, 1999, the ICANN Board adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules [8] ) setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure is administered by dispute resolution service providers accredited by ICANN.

Following adoption by ICANN, the UDRP was launched on 1 December 1999, and the first case determined under it by WIPO was World Wrestling Federation Entertainment, Inc v. Michael Bosman, involving the domain name worldwrestlingfederation.com. [9] Since then WIPO provides a globally-used Jurisprudential Overview to summarize case law on a range of common and important substantive and procedural issues under the UDRP. [10]

Adoption

The policy has been adopted by all ICANN-accredited registrars. It has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws).

The policy is then applicable due to the contract between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). When a registrant chooses a domain name, the registrant must "represent and warrant", among other things, that registering the domain name "will not infringe upon or otherwise violate the rights of any third party", and agree to participate in an arbitration-like proceeding should any third party assert such a claim. [5]

The policy itself sets forth the terms and conditions in connection with a dispute between the registrant and any party (other than the registrar) over the registration and use of the Internet domain name registered by the registrant. [5]

In case of a dispute, the complainant shall select one of the administrative-dispute-resolution service providers from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding. Proceedings under this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy, [8] as well as the selected administrative-dispute-resolution service provider's supplemental rules. [11]

Providers of the UDRP are:

Process

A complainant in a UDRP proceeding must establish three elements to succeed:

In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:

The goal of the UDRP is to create a streamlined process for resolving such disputes. It was envisioned that this process would be quicker and less expensive than a standard legal challenge in a national or foreign court. In addition, the procedures are more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located.

In order to file a UDRP complaint with a UDRP provider, the costs often start around US$1,000 to $2,000. [18] The costs of the case will depend on the number of domain names involved and whether the case is decided by a single or by 3 panelists. For example, a case handled by the WIPO Arbitration and Mediation Center, involving between 6 and 10 domain names and decided by 3 panelists would cost US$ 5,000. [19] Those fees do not include any payment that might have to be made to a lawyer representing a party in the administrative proceeding. Fees are available in Providers supplemental rules. [20] In order to assist parties in filing their pleadings, WIPO provides a guide of case law called the WIPO Overview; this resource summarizes almost 1,000 UDRP decisions from hundreds of expert panelists. [10]

If a party loses a UDRP proceeding, in many jurisdictions they may still bring a lawsuit against the domain name registrant under local law. For example, the administrative panel's UDRP decision can be challenged and in effect “overturned” in a U.S. court of law by means of e.g. the Anticybersquatting Consumer Protection Act. If a domain name registrant loses a UDRP proceeding, they can file a lawsuit against the trademark holder within ten business days to prevent a registrar from transferring the domain name in the relevant jurisdiction (either the location of the registrar's principal office or the registrant's location). [5] [21]

Examples

The UDRP process has been used in a number of well-known cases.

In the Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" case (2000), the panel found against the defendant registrant based on all three of the above factors and ordered the domain name turned over to Madonna. [22] On the other hand, in the Gordon Sumner p/k/a Sting v Michael Urvan on the same year, American gamer Michael Urvan retained the right to domain name "sting.com" against the complaint of Sting, since the panel found that 'sting' was a common dictionary word, it was not registered as a trademark, and that Urvan was using the name in good faith rather than holding it to ransom. [23]

In the Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale case (2000), [24] the decision describes the practice of cybersquatting. The UDRP was adopted to prevent such behavior where a domain name registrant tries to extort money from trademark owners. In this case, the expert found that the evidence showed the registrant was not using the domain name “wal-martsucks.com” for a criticism site but instead try to get a payout from Walmart.

The Oki Data Americas, Inc. v. ASD, Inc. case (2001) [25] is one of the most cited [26] "fair use" decisions under the UDRP, it raises the question of whether an authorized (and non-authorized) sales or service agent of trademarked goods can use the trademark in a domain name.

The Commissioners for HM Revenue and Customs v. Adil Khasanov case (2020) [27] provides an example of the impact of the Covid-19 crisis in the Domain Name System, and the increasing number of fraudulent domain name registrations.

Domain name disputes under new generic top-level domains

In 2012, ICANN launched a process to create new generic top-level domains (gTLDs). Over 1,900 applications were made. [28] As part of the expansion of the domain name system, ICANN introduced a number of new brand protection mechanisms. Opinions differ as to whether or not these new processes will be effective. Industry commentators predict that the UDRP will continue to be used, and that there will be a "substantial increase in cybersquatting". [29] Evidence from previous expansions of the namespace, however, indicates the continued dominance of .com both in size and as the first-choice domain for cybersquatting (based on number of disputes). [30]

The WIPO Arbitration and Mediation Center was appointed by ICANN as the exclusive provider of dispute resolution services for trademark based "pre-delegation" Legal Rights Objections (LRO) under ICANN New gTLD Program. [31] The WIPO Center 2013 Report provides a resume and analysis in relation to the Legal Rights Objection (LRO) procedure where trademark owners could object to a new gTLD application they worried might infringe their rights. [32]

See also

Related Research Articles

<span class="mw-page-title-main">ICANN</span> American nonprofit organization that coordinates several Internet address databases

The Internet Corporation for Assigned Names and Numbers is a global multistakeholder group and nonprofit organization head-quartered in the United States responsible for coordinating the maintenance and procedures of several databases related to the namespaces and numerical spaces of the Internet, ensuring the Internet's stable and secure operation. ICANN performs the actual technical maintenance work of the Central Internet Address pools and DNS root zone registries pursuant to the Internet Assigned Numbers Authority (IANA) function contract. The contract regarding the IANA stewardship functions between ICANN and the National Telecommunications and Information Administration (NTIA) of the United States Department of Commerce ended on October 1, 2016, formally transitioning the functions to the global multistakeholder community.

A domain name registry is a database of all domain names and the associated registrant information in the top level domains of the Domain Name System (DNS) of the Internet that enables third party entities to request administrative control of a domain name. Most registries operate on the top-level and second-level of the DNS.

Reverse domain name hijacking, occurs where a rightful trademark owner attempts to secure a domain name by making cybersquatting claims against a domain name’s "cybersquatter" owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly enacted by larger corporations and famous individuals, in defense of their rightful trademark or to prevent libel or slander.

Domain hijacking or domain theft is the act of changing the registration of a domain name without the permission of its original registrant, or by abuse of privileges on domain hosting and registrar software systems.

Domain name speculation, popular as domaining in professional jargon, is the practice of identifying and registering or acquiring generic Internet domain names as an investment with the intent of selling them later for a profit.

Online dispute resolution (ODR) is a form of dispute resolution which uses technology to facilitate the resolution of disputes between parties. It primarily involves negotiation, mediation or arbitration, or a combination of all three. In this respect it is often seen as being the online equivalent of alternative dispute resolution (ADR). However, ODR can also augment these traditional means of resolving disputes by applying innovative techniques and online technologies to the process.

<span class="mw-page-title-main">.au</span> Internet country-code top level domain for Australia

.au is the Internet country code top-level domain (ccTLD) for Australia. It was created on 5 March 1986. Domain name policy is managed by .au Domain Administration (auDA). As of July 2018, the registry is operated by Afilias.

The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of Pub. L.Tooltip Public Law  106–113 ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart "cybersquatters" who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party. Critics of the ACPA complain about the non-global scope of the Act and its potential to restrict free speech, while others dispute these complaints. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with the intent to curb domain name abuses. The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act. Senator Leahy stated that "it is my hope that this anti-dilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others".

<span class="mw-page-title-main">.ke</span> Internet country-code top level domain for Kenya

.ke is the Internet country code top-level domain (ccTLD) for Kenya.

Gordon Sumner, p/k/a Sting v Michael Urvan was the 2000 dispute before World Intellectual Property Organization between Sting, a prominent English musician and actor, and Michael Urvan, an American gamer, about ownership rights on the domain name "sting.com". The domain name was registered in 1995 by Urvan, who used the monikers "Stingray" and "Sting", to support his gaming activities. Urvan was the first individual to successfully defend against a domain name dispute brought against an individual by a celebrity.

<span class="mw-page-title-main">.me</span> Internet country-code top level domain for Montenegro

.me is the Internet country code top-level domain (ccTLD) for Montenegro.

Prior to the globalization of the Internet, its assignment of domain names was administered within the research and academic communities through the Internet Assigned Numbers Authority (IANA). As the Internet grew to a global service, in the 1990s, there was increasing pressure to add more "generic" top-level domain names, beyond the initial set, such as .com and .org and the two-letter country codes. Extensive debate within the Internet operational community did not resolve this. Finally, a composite group was formed, to create a proposal for the enhancement. The International Ad Hoc Committee (IAHC) was composed of members named by a variety of Internet and International sponsoring organizations.

Typosquatting, also called URL hijacking, a sting site, a cousin domain, or a fake URL, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typos made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to any URL.

Cybersquatting is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.

<i>Lamparello v. Falwell</i>

Lamparello v. Falwell, 420 F.3d 309, was a legal case heard by the United States Court of Appeals for the Fourth Circuit concerning allegations of cybersquatting and trademark infringement. The dispute centered on the right to use the domain name fallwell.com, and provides discussion on cybersquatting as it applies to criticism of a trademark.

<span class="mw-page-title-main">.au Domain Administration</span> Manager of the .au domain

.au Domain Administration (auDA) is the policy authority and industry self-regulatory body for the .au domain, which is the country-code top-level domain (ccTLD) for Australia. It was formed in 1999 to manage the .au ccTLD with the endorsement of the Australian Government and the authority of the Internet Corporation for Assigned Names and Numbers (ICANN). It is a not-for-profit membership organisation that promotes and protects the .au domain space.

<span class="mw-page-title-main">.biz</span>

.biz is a generic top-level domain (gTLD) in the Domain Name System of the Internet. It is intended for registration of domains to be used by businesses. The name is a phonetic spelling of the first syllable of business.

<i>Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.</i>

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. was the first case to be decided by the Supreme Court of India on the issue of domain name protection, and dealt with two businesses employing variations on the same mark ("Sify") in their respective domain names.

<span class="mw-page-title-main">Zak Muscovitch</span> Canadian intellectual property lawyer (born 1971)

Zak Muscovitch is a Canadian intellectual property lawyer. He is the founder of Domain Name Law Reports and has represented clients before domain name arbitrations in cases against companies like Google, Torstar, and Molson.

<span class="mw-page-title-main">Trademark Clearinghouse</span> Database of trademarks for gTLDs

The Trademark Clearinghouse is a database of validated and registered trademarks established by ICANN to assist trademark holders prevent infringing behavior in the Domain Name System. In combination with the Uniform Rapid Suspension System (URS), it is the second significant attempt by ICANN to handle the "Trademark Dilemma". The first attempt was the Uniform Domain-Name Dispute-Resolution Policy.

References

  1. ↑ "Management of Internet Names and Addresses". United States Department of Commerce – via ICANN.org.
  2. ↑ British Telecommunications plc v One in a Million Ltd [1999] 1 WLR 903, Aldous LJ at 920.
  3. ↑ "The Management of Internet Names and Addresses: Intellectual Property Issues, 30 April 1999" (PDF).
  4. ↑ "WIPO Internet Domain Name Process". www.wipo.int.
  5. 1 2 3 4 "Uniform Domain Name Dispute Resolution Policy". ICANN.
  6. ↑ "Final Report of the WIPO Internet Domain Name Process" (PDF). WIPO.
  7. ↑ "WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP)". WIPO.
  8. 1 2 "Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules")". ICANN.
  9. ↑ WIPO Domain Name Decision: D1999-0001. Wipo.int. Retrieved on 2014-04-28.
  10. 1 2 "WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0")". 2017.
  11. ↑ "List of Approved Dispute Resolution Service Providers and supplemental rules". ICANN.
  12. ↑ "Arab Center for Dispute Resolution(ACDR)". acdr.aipmas.org.
  13. ↑ "Asian Domain Name Dispute Resolution Centre".
  14. ↑ "Canadian International Internet Dispute Resolution Center".
  15. ↑ http://www.adr.eu/index.php(CAC) [ dead link ]
  16. ↑ "Alternative Dispute Resolution – ADR Forum". www.adrforum.com.
  17. ↑ "WIPO Portal page". WIPO .
  18. ↑ InterNIC | FAQs on the UDRP , retrieved 2009-10-09
  19. ↑ "WIPO Guide to the Uniform Domain Name Dispute Resolution Policy". WIPO.
  20. ↑ "CAC's UDRP Supplemental Rules of the Czech Arbitration Court". UDRP.
  21. ↑ "An Informational Website About Cybersquatting Law".
  22. ↑ "WIPO Administrative Panel Decision: D2000-0847, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"". www.wipo.int. October 12, 2000.
  23. ↑ "WIPO Administrative Panel Decision: d2000-0596, Gordon Sumner p/k/a Sting v Michael Urvan". ICANN. July 20, 2000.
  24. ↑ "WIPO Administrative Panel Decision: D2000-0662". www.wipo.int.
  25. ↑ "WIPO Administrative Panel Decision: D2001-0903". www.wipo.int.
  26. ↑ "25 Most Cited Decisions in Complaint". WIPO .
  27. ↑ "WIPO Administrative Panel Decision: D2020-1074". www.wipo.int.
  28. ↑ "New Generic Top-Level Domain Program History". ICANN.
  29. ↑ O'Toole, Thomas (January 2, 2013). "Cyberlaw Predictions 2013". Bloomberg BNA. Archived from the original on 2013-06-05.
  30. ↑ "Online brand protection, what to expect in 2013". Emily Taylor — Internet Law and Governance. January 4, 2013. Archived from the original on 2013-01-08. Previous expansions of the namespace have failed to capture the public imagination or to pose a competitive threat to the gorilla in the market, .com. According to WIPO, of 42,000 UDRP filings to date, 80% were for .com domains, and of the new gTLDs, only .info has attracted any volume of UDRP disputes (3% of cases filed)
  31. ↑ "Legal Rights Objections under ICANN's New gTLD Program". WIPO .
  32. ↑ "WIPO Arbitration and Mediation Center End Report on Legal Rights Objection Procedure 2013" (PDF). 2013.
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