In an effort to provide less costly and more streamlined resolutions to cybersquatting cases, ICANN - the entity that is now responsible for governing the domain name system - has adopted a new Uniform Dispute Resolution Policy (UDRP). Besides expediting the process and decreasing the costs of disputes, one of the goals of the policy is to address the gaps in trademark law that the courts have been stretching to fill. The Policy will now be a part of the contract between all registrars of domain names in the gTLDs and each domain name registrant. The policy requires domain name holders to submit to third-party arbitration if they are accused of registering a name in "bad faith." The UDRP went into effect on December 1, 1999 for domain names registered with most of the newly accredited registrars. The policy went into effect January 3, 2000 for domain names registered with Network Solutions and two other registrars. The policy that has been adopted combines suggestions from the World Intellectual Property Organization (WIPO) in their Final Report on Internet Domain Name Process, the gTLD registrars who adopt the policies into their contracts, and the public via comments.
The policy provides that all domain name registrants must submit to mandatory administrative proceedings if:
There are four factors in the policy listed as evidence of bad faith registration and use:
- the domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
- the domain name holder has no rights or legitimate interests in the domain name; and
- the domain name has been registered and is being used in bad faith.
If any of these apply, then the registration is in bad faith. However, if the domain name holder has a legitimate interest, then a trademark holder will not win under the UDRP. The policy lists 3 factors as evidence of legitimate interests:
- circumstances indicating that the primary purpose is to sell or transfer the name to the trademark owner or competitor for consideration in excess of direct costs related to the domain name; or
- history of registration in order to prevent the IP owner from reflecting their mark in a domain name; or
- registration primarily for the purpose of disrupting the business of a competitor; or
- intentional attempts to attract users to your site for commercial gain, by creating a likelihood of confusion as to source or endorsement.
Remedies under the UDRP are limited to cancellation or transfer of the domain name.
The process: If a trademark holder believes that a domain name registrant has registered a domain name in bad faith, then the Trademark holder must choose a UDRP provider and submit a complaint with the appropriate allegations. The Provider has thee days to get a copy of the complaint to the domain name registrant. The domain name holder then has 20 days to respond - specifically addressing all of the allegations in the complaint and including any bases for the retention of the domain name. Within 5 days of the domain name holder's response, the provider will appoint a panelist. The panelist will render a decision within 14 days thereafter and will notify the parties within 3 days of the decision. In total, the maximum time that may elapse between the filing of the complaint and a decision should be 42 days. Either party may bring the dispute to court at any time.
Issues or concerns with the policy:
At least one decision has found bad faith "use" through mere registration even when the registrant did not meet one of the four factors listed as evidence of bad faith in the policy. The policy lists these four factors, not as an exclusive list, but as examples of bad faith registration and use. Because three of these four factors did not require active use in order to meet the bad faith registration and use requirement, the panelist in the telstra.org decision determined that passive holding in certain circumstances could constitute bad faith use sufficient to justify transfer according to the policy. Although the registrant's behavior was not captured within the listed factors for bad faith, the panelist found that the following facts demonstrated bad faith registration and use: 1) the strong reputation of the trademark, 2) lack of evidence provided by the respondent as to actual or intended good faith use, 3) respondent took active steps to conceal its true identity, 4) respondent provided, and failed to correct, false contact information in breach of its registration agreement. All this led to an inability of the panelist to conceive of any plausible or actual contemplated active use that would not be illegitimate.
A key difference between this policy and the previous dispute resolution policy that NSI had adopted is that this one attempts to resolve the dispute rather than simply putting the domain name on hold until the parties settle the dispute by themselves or through litigation. Under this regime, domain names will no longer be put on hold. Trademark owners will no longer immediately be able to stop the domain name holder from any potentially objectionable practices. They will have to go to court if they want to enjoin the use of a name before a decision is rendered under the UDRP. Of course for domain name holders operating web sites, this policy means that their site will not be unfairly shut down absent their ability to sue to enjoin such action. NSI had indicated that it will release holds on the 1,300 domain names that were disputed under its previous policy unless an action over the disputed name is filed under the UDRP or in court. The names will be released over the next three months in order to prevent a flood of the new UDRP system.
A list of current proceedings and links to decisions can be accessed at the ICANN site. The full text of the UDRP and related documents is available on the ICANN web site. You can access a general page with links to all of the documents or you can access the UDRP Policy, the Rules for UDRP Policy, and the ICANN list of approved providers directly.