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Archived updates for Sunday, January 21, 2007

Basic Information About Domain Name Disputes

A trademark holder that considers a domain name registration to infringe on its trademark rights may initiate a proceeding under the Internet Corporation for Assigned Names and Numbers ("ICANN") Uniform Domain Name Dispute Resolution Policy ("UDRP"). Some countries also have specific laws against cybersquatting beyond the normal rules of trademark law. The United States, for example, has the U.S. Anticybersquatting Consumer Protection Act (ACPA) of 1999.

"ICANN" is a non-profit, private sector corporation formed in November 1998 under an agreement with the National Telecommunications and Information Administration of the U.S. Department of Commerce. ICANN has been gradually assuming responsibility for coordinating the assignment of various Internet protocol (IP) parameters, the management of the domain name system, the allocation of IP addresses, and the management of the root name server system which was formerly performed by the U.S. Government, its contractors, and volunteers.

ICANN adopted its UDRP in August 1999 and implemented the "Rules for Uniform Domain Name Dispute Policy" (the "Rules") approved in October 1999. Copies of these documents are available on the Internet at www.icann.org/udrp/udrp.htm. In general terms, the policy requires a domain name registrar to cancel, transfer, or otherwise make changes to a domain name registration only when it receives instructions from the registrant, an order from a court or other tribunal of competent jurisdiction, or a decision of and administrative panel.

Under the standard dispute clause of the Terms and Conditions for the registration of a generic top-level domain, or "gTLD," name, the registrant must submit to such proceedings.The UDRP permits complainants to file a case with a resolution service provider (typically WIPO, or the National Arbitration Foundation, NAF), specifying, mainly, the domain name in question, the respondent or holder of the domain name, the registrar with whom the domain name was registered and 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. The respondent is offered the opportunity to defend itself against the allegations. The provider (eg: WIPO or NAF) then appoints one or more panelists who decide whether or not the domain(s) should be transferred.

Additional information about domain name dispute resolution is available at the WIPO domain name dispute resources area.

Paragraph 4(a) of the UDRP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
  1. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
  2. the Respondent has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.
The burden is on the complainant to prove that each of these three elements are present.
Some of the circumstances that may be considered by an arbitration panel as evidence of bad faith include:


(i) circumstances indicating that the domain name was registered or acquired
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark or service mark (or to a competitor of that complainant), for valuable consideration in excess of the documented out-of pocket costs directly related to the domain name; or

(ii) a pattern of conduct indicating that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name; or

(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant intentionally attempted to attract for
commercial gain, Internet users to its web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product or service on the registrant's web site or location.

On the other hand, a registrant's legitimate interest in a domain name may be demonstrated by circumstances including

(i) before receiving any notice of the dispute, the registrant made use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.


For example, as noted in their "Overview of WIPO Panel Views on Selected UDRP Questions," even a distributor/reseller can have a legitimate interest in the domain name if it is making a bona fide offering of goods and services, and the use fits certain other requirements, including the use of the site to actually sell only the supplier's goods

  • the site accurately disclosing the registrant's relationship with the trademark owner,
  • the respondent not trying to corner the market in domain names that reflect the trademark.

Numerous arbitration panel decisions support this proposition, including

Oki Data Americas, Inc. v. ASD, Inc. D2001-0903 and (transfer denied);
Experian Information Solutions, Inc. v. Credit Research, Inc. D2002-0095 (transfer ordered);
DaimlerChrysler A.G. v. Donald Drummonds D2001-0160 (transfer denied with dissent);
Philip Morris Incorporated v. Alex Tsypkin D2002-0946 (transfer);
Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent D2004-0481 (transfer denied). and
Motorola, Inc. v. NewGate Internet, Inc. D2000-0079 (transfer with dissenting 0pinion involving adult content).
Inter-Tel, Inc. v. Michael Marcus NAF Claim Number: FA0606000727697 (transfer denied)

Keep in mind that evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show the requisite bad faith. Thus you should not make any offers to sell the domain name, as they could be construed against your firm. There are basically two forums that are available for the resolution of domain name disputes - public courts and a private arbitration services that are approved by the Internet Corporation for Assigned Names and Numbers.

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3 Comments:

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