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CHAPTER 4:
ROLE OF THE UDRP AND
OTHER ADR MECHANISMS
IN THE DOMAIN NAME-
TRADEMARK CONFLICTS
RESOLUTION
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4.1 Introduction
There cannot be any denial of the fact that the domain name-
trademark conflicts have phenomenal growth within a relatively short span
of time all over the world. This growth took place despite the national
responses to solve the problems, which is reflected in the analysis made in
the previous chapter. Though the national responses were significant in the
initial phase of the developments to cater to the emergency, they could not
continue as the sole means of solution to the problem due to the
international characters of domain names coupled with the varying national
laws, which resulted in the controversy on applicable law. In addition, the
cumbersome process of court litigations and the lack of expertise in the
judiciary to appreciate the nuances of highly technical domain name-
trademark litigations have deterred the victims to approach the doors of
justice. As a result, an attempt has been made in the international level to
resolve the conflicts in the form of Uniform Domain Name Dispute
Resolution Policy (UDRP).
Since its inception, the UDRP has been extensively used for the
settlement of domain name-trademark disputes. However, how far the
litmus test of achieving a defect free system of dispute resolution has been
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achieved through UDRP is a debated issue.1 In line with the UDRP, the
domain name registries in different parts of the world have also developed
their own alternative dispute settlement mechanisms to address the conflicts
arising under their respective registries. The present chapter addresses the
relevance of UDRP in the resolution of domain name-trademark disputes,
points out the areas of concern in the UDRP, briefly looks into the efforts
made by the domain name registries to share the burden of dispute
settlement and finally probes into the use of other alternative dispute
resolution mechanisms in the resolution of domain name-trademark
disputes.
4.2 Origin of the UDRP
As already outlined, the national responses to domain name-
trademark conflicts are scattered and varying. They range from enacting
separate legislation2 to banking on already existing trademark laws for
solving the disputes.3 Over the period of time, they have been found grossly
1 See generally D. Shyamala, „Domain Name-Trademark Conflict Resolution: An Evaluation of
UDRP‟, Australian Intellectual Property Journal, Vol. 21, No. 1, 2010, pp. 42 - 51.
2 As has been done by the United States.
3 The list includes United Kingdom, Austria, India etc.
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insufficient to deal with the domain name-trademark disputes, which
involve transnational elements.4 In response to this, the National
Telecommunications and Information Administration of the US Department
of Commerce took the first step in the direction of having an international
domain name disputes resolution system. The White Paper5 issued by the
National Telecommunications and Information Administration has asked
the US government to call upon the World Intellectual Property
Organization (WIPO) to initiate a process to resolve domain name-
trademark disputes.6
Acting upon the US call, WIPO conducted a study involving
international consultations, wherein seventeen consultative meetings were
4 Violation of trademark registered in one country can take place in another country by way of bad
faith domain name registration. Such a situation would bring forward the problem of determination
of jurisdiction and applicable law for solving the dispute.
5 A policy statement on the Management of Internet Names and Addresses issued on 5 June 1998,
available at <http://www.icann.org/en/udrp/udrp-schedule.htm> Last visited, 08 August 2009.
6 Andrew Christie, „The ICANN Domain Name Dispute Resolution System as a Model for
Resolving Other Intellectual Property Disputes on the Internet‟, in David Vaver (ed.), Intellectual
Property Rights - Critical Concepts in Law, Vol. V, (London: Routledge, 2006) pp. 180 - 193 at p.
181.
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held in fifteen different cities throughout the world. It received 334 written
submissions from governments, inter-governmental organizations,
professional associations, corporations and individuals during this
comprehensive study. Finally, WIPO prepared a report on the Management
of Internet Names and Addresses: Intellectual Property Issues, which was
published on 30 April 1999.7 It led the way for establishing Internet
Corporation for Assigned Numbers and Names (ICANN) to administer the
domain name system.8 The ICANN in consultation with World Intellectual
Property Organization (WIPO) has provided a policy for domain name
dispute resolution, which is known as Uniform Dispute Resolution Policy
(UDRP).9
The UDRP provides for the resolution of domain name disputes
through mandatory administrative proceedings, which are to some extent
similar to arbitration proceedings. The administrative proceedings under the
7 Available at <http://archive.icann.org/en/wipo/FinalReport_1.html> Last visited, 27 September
2013.
8 Catherine Colston and Kirsty Middleton, Modern Intellectual Property Law, Second edition,
(London: Cavendish Publishing Ltd., 2005) p. 619.
9 The Policy was approved by ICANN on 24 October 1999. <http;//www.icann.org/en/udrp/udrp-
policy-24oct99.htm> Last visited, 23 July 2009.
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UDRP are mandatory, since the registering of domain names is conditioned
by the requirement of subjecting the registrant to the administrative
proceedings in case of disputes. ICANN has approved different
administrative dispute resolution service providers for conducting the
mandatory administrative proceedings. Four such service providers, which
are currently working are the Asian Domain Name Dispute Resolution
Centre (ADNDRC), the National Arbitration Forum (NAF), the WIPO
Arbitration and Mediation Centre and the Czech Arbitration Court (CAC).10
Among these, the most widely used adjudication service is that of WIPO.
International Institute for Conflict Prevention and Resolution (CPR) and
eResolution are the two former service providers associated with ICANN.11
At present, the UDRP is increasingly resorted to settle the domain
name disputes, especially involving bad faith registration.12
However the
existence of UDRP in the international level does not bar the states from
10
See <http://www.icann.org/dndr/udrp/approved-providers.htm> Last visited, 23 July 2009.
11 See <http://www.icann.org/en/dndr/udrp/former-providers.htm> Last visited, 20 August 2009.
12 See David Bainbridge, Intellectual Property, Fifth edition, (Delhi: Pearson Education, 2002) p.
678.
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applying their own law to resolve domain name-trademark conflicts.13
While some national domain name registration authorities have adopted
UDRP,14
others, like Nominet (the UK‟s official registry for domain
names), .IN Registry (Indian official registry) etc. have adopted their own
adjudicatory policy and Panels. Though these Panels decide mainly on the
lines of UDRP, some variance can be seen, especially with regard to
grounds for intervention.
4.3 An Insight into the UDRP
The novel objective behind the UDRP was to provide a uniform
mechanism to combat the problems associated with the domain name
registrations in a cost-effective and speedy manner.15
The UDRP is said to
be the first truly global approach in the policy determination on the issues
13
Laurence R. Helfer, „Whither the UDRP: Autonomous, Americanized, or Cosmopolitan?‟,
Cardozo Journal of International & Comparative Law, Vol. 12, 2004, pp. 493 - 505 at p. 494.
14 Marlene Agmata-Tucker, „Squatters in Cyberspace: Netreprenuers or Piratesdotcom?‟, Journal
of Law and Information Science, Vol. 11, No. 2, 2000 - 2001, pp. 254 - 278 at p. 277.
15 WIPO Arbitration and Mediation Center - „New Generic Top-Level Domains: Intellectual
Property Considerations‟ (2005 Report), para 38, available at
<http://www.wipo.int/amc/en/domains/reports/newgtld-ip/> Last visited, 27 September 2013.
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relating to the use of Internet and the intellectual property concerns flowing
there from.16
The UDRP applies to all registrants in the three major gTLDs: .com,
.net and .org top-level domains as well as to the subsequently introduced
gTLDs such as .aero, .asia, .biz, .coop, .info, .jobs, .cat, .mobi, .museum,
.name, .pro, .tel, .travel and .xxx.17
Anyone who registers a domain name in
these gTLDs must agree to abide by the UDRP. The Policy applies to both
registered trademarks as well as unregistered marks. The drafters felt that
denying protection to common law marks would be favoring those legal
systems which provide rights only through registration.18
Thus, the Policy
permits any owner of a trademark to bring a complaint against any alleged
cybersquatter.19
The UDRP is described as a “contractually-mandated
16
Rahul Matthan, The Law Relating to Computers and the Internet, (New Delhi: Butterworths,
2000) p. 379.
17 See <http://www.icann.org/registrar-reports/accredited-list.html> Last visited, 27 September
2013.
18 David Lindsay, International Domain Name Law – ICANN and the UDRP (USA: Hart
Publishing, 2007) p. 190.
19 Paragraph 4 of the UDRP. See generally Supra note 16, p. 378.
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private system for the benefit of non-contracting parties”20
, since the
complaining trademark owners are not in contract with the domain name
registration system or UDRP. However, under UDRP, there is no scope for
initiation of action by the domain name holders against trademark owners.
The mandatory administrative proceedings under the UDRP are akin
to arbitration proceedings. It consists of private adjudicators enlisted by the
recognized adjudicatory bodies deciding the cases. However, unlike
arbitration, the UDRP decisions are not final.21
Either of the parties can start
fresh proceedings before the court of competent jurisdiction after the UDRP
panel has made the decision. The administrative proceedings under UDRP
are governed by the UDRP Rules and also by the supplemental Rules of the
service provider administering the proceedings, which are to be posted in
the website of the service provider. In case of conflict between the UDRP
Rules and the Rules of the service provider, the former shall prevail over the
latter.
20
E. Thornburg, „Fast, Cheap and Out of Control: Lessons from the ICANN Dispute Resolution
Process‟, Journal of Small and Emerging Business Law, Vol. 6, 2002, pp. 191 - 233 at p. 197.
21 Julia Hornle, Cross-Border internet Dispute Resolution, (Cambridge: Cambridge University
Press, 2009) p. 187.
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The UDRP encourages the use of online medium in the process of
dispute resolution, which helps in speedier disposal. Various dispute
resolution providers have their own standard method for the parties to file
the submissions. However, the UDRP does not promote the online hearing,
since Rule 13 of the UDRP Rules doesn‟t allow any in-person hearing,
unless the panel determines it to be essential. The UDRP also has the
advantage of being transparent on the decisions, since all the decisions
under the UDRP are published in full in the websites of the dispute
resolution service providers.22
This helps in subjecting the decisions under
the UDRP to a system of peer review by the scholars across the globe in
their writings. Such openness in the decisions leading to the constructive
criticisms by the scholars is useful in rectifying the mistakes done and
strengthening the system of dispute settlement.
In order to successfully invoke the administrative proceedings under
UDRP, three requirements need to be satisfied. Firstly, the domain name in
question must be identical or confusingly similar to a trademark or service
22
Para 4 (j) of the UDRP.
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mark, which righteously belongs to the complainant.23
Secondly, the
domain name holder must have no right or legitimate interest whatsoever in
the domain name, trademark or service mark. Lastly, the challenged domain
name must be registered by the respondent and he must also be using it in
bad faith.24
Under the UDRP, the complainant need only to make a facile
comparison to establish that the disputed domain name is confusingly
similar or identical to the trademark. Thus, the burden of proving the
confusion is significantly less when compared to the municipal laws, where
other additional factors are considered before arriving at the conclusion.
Essentially, the complainant under the UDRP needs to demonstrate only
that the domain name includes his trademark and nothing more. Soon the
23
This requirement, in accordance with the recommendation of the WIPO Report, limits the scope
of administrative proceedings under UDRP to the disputes involving trademarks or service marks
and thereby, excludes the disputes involving other IPRs. See World Intellectual Property
Organization, „The Management of Internet Names and Address: Intellectual Property Issues‟,
Report of the WIPO Internet Domain Name Process (30 April 1999), available at
<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html /> Last visited, 05
December 2013.
24 Paragraph 4 (a) (i) to (iii) of UDRP.
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burden shifts to the respondent to prove that he has legitimate rights and
interests in the domain name.
In Kirkbi AG v. Michele Dinoia25
, the complainant was registered
owner of famous trademark LEGO and other marks incorporating the term
LEGO. He also owned the domain name, www.lego.com. The repondant
registered a domain name www.legoclub.com in December 2002 with a
view to have a chat and discussion forum regarding LEGO products. The
complainant challenged the registration on the ground of violation of
trademark rights before the WIPO panel.
One of the major contentions of the respondant was that the
complainant cannot have any trademark right in LEGO CLUB, since its is
based on the generic word „club‟, which is not suggestive of the service of
the complainant. In addition, it was argued that where there is a relience on
an unregistered trademark for any action, there exists a heavy burden of
proof on the complainant to provide sufficient evidences of rights and
reputation attached with the mark. Such a proof is much more required in
the instances wherein the trademark consists of a generic or descriptive
terms. 25
WIPO Case No. D2003-0038 (9 March 2003).
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While rejecting this argument of the respondant, the WIPO Panel
held that “The test of confusing similarity under the Policy is confined to a
comparison of the disputed domain name and the trademark alone,
independent of the other marketing and use factors usually considered in
trademark infringement or unfair competition cases”.26
It also observed that
the trademark LEGO is the dominant and distinctive feature of the disputed
domain name. Mere addition of a generic word, club, does not detract the
instant identification with complainant conveyed by the mark.
The determination of absence of right or legitimate interest of the
domain name holder is crucial to avoid the hardship to legitimate small
entrepreneurs due to the presence of famous trademarks of large businesses.
However, again the burden of proof of the complainant is relatively low,
26
In arriving at this conclusion, a reference was made to BWT Brands, Inc. and British Am.
Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480 (26 March 2002); Britannia
Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (06 July 2001);
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (19
September 2000); Koninklijke Philips Elecs. N.V. v. In Seo Kim, WIPO Case No. D2001-1195 (12
November 2001); Energy Source Inc. v. Your Energy Source, NAF Case No. FA0101000096364
(12 February 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO
Case No. D2001-1121 (07 November 2001).
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since it is difficult for the complainant to prove the negative (that is to
establish the absence of right or legitimate interest) when compared to the
respondent‟s capability of proving the positive (that is to establish his right
or legitimate interest in the domain name). Respondent, rather than the
complainant, would be having best knowledge of such right or interest.27
The WIPO Panel‟s decision in Croatia Airlines d.d. v. Modern
Empire Internet Ltd.28
throws further light on the aspect of right or
legitimate interest of the domain name registrant. The complainant in this
case was a Croatian national air carrier with ten years of experience in the
air carriage business. It had registered the trademark „CROATIA
AIRLINES‟ and also the domain name „www.croatiaairlines.com‟.
However, on the expiry of the domain name registration, the respondent, a
Hong Kong based company, registered www.croatiaairlines.com and
offered various goods and services including air tickets.
Upon the receipt of the complaint, the Panel found that the
complainant discharged its initial burden of proving the absence of
respondent‟s right or interest in the domain name. The respondent merely
27
De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005 (09 September 2002).
28 WIPO Case No. D2003-0455 (21 August 2003).
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wanted to use the goodwill of the complainant, which is evident from the
fact that the respondent is involved in the business of selling the air tickets.
In the absence of any response from the respondent in this case, the Panel
held that the respondent had no right or interest in the domain name. It
supplemented its reasoning on three counts. First, complainant had no
relationship with the respondent and has never authorized the respondent to
use the domain name. Second, complainant‟s service and trademarks are
known, since it is a national carrier having substantial years of standing.
Third, there is no indication of respondent being known by the same name
prior to the registration.
In Research in Motion Limited v. Zag Media Corporation29
, the
WIPO Panel observed that the use of a domain name consisting of
descriptive expression for bona fide descriptive purposes may be permitted
under the UDRP. If the domain names are registered not because of their
trademark values but because of their attraction as dictionary words, the
UDRP does not prohibit such acts. The right or the legitimate interest of the
registrant is presumed in such cases. The moot question in such cases is the
29
WIPO Case No. D2008-0848 (22 October 2008).
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determination of state of mind of the registrant at the time of the
registration.
The bad faith under UDRP needs to be proved not only in
registration but also in use of the domain name. The UDRP stipulates some
of the key factors to be considered in determining the bad faith intent of the
respondent. Paragraph 4 (b) enlists the following circumstances as depicting
the evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that domain name is 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) when the domain name is registered in order to prevent the owner
of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that registrant is engaged in a
pattern of such conduct; or
(iii) when the domain name is registered primarily for the purpose of
disrupting the business of a competitor; or
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(iv) by using the domain name, the registrant has intentionally
attempted to attract, for commercial gain, Internet users to his 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 registrant‟s web site or location or of a product or
service on his web site or location.
The UDRP panels had discussed and detailed out the above elements
in great details in a number of disputes. For example, in Hollywood Casino
Corporation v. Global Interactive30
, hollywood-casino.com and hollywood-
casino.net were transferred to the complainants, and
hollywoodgoldcasino.com and hollywoodcasino.net were cancelled on the
ground of intentionally creating confusion in the mind of consumers. In
Telstra Corporation Limited v. Nuclear Marshmallows31
, the WIPO Panel
found bad faith on several counts. They included, the widely popular
character of trademark, respondent‟s attempt to conceal his identity, failure
to correct the address and absence of any evidence regarding the actual or
intended good faith use of domain name. The Panel not only used these
30
National Arbitration Forum File No. FA0002000094107 (30 March 2000).
31 WIPO Case No. D2000-0003 (18 February 2000).
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factors to determine the bad faith registration but also went on to use them
to arrive at a conclusion that the respondent could not have intended the fair
use of the domain name.
The above-mentioned list of circumstances is not exhaustive, and the
Panel may thus consider any other circumstance/s for deciding the bad faith
intent. However, the key guideline as laid down in the above indicative
factors in considering additional circumstance/s is the abusive registration.
Over the period of time, a number of factors are emerging for the
determination of the bad faith, depending on the differing circumstances. In
Entercolor Technologies Corporation v. Gigantor Software Development
Inc.32
, for example, the Panel came to the conclusion that the failure to use a
domain name counts against the respondent as an element of bad faith,
unless countered with proper evidences. Similarly, in America Online Inc.
v. iDomainNames.com33
, the National Arbitration Forum held that the
failure to defend against the allegations of the abusive registration counts
against the respondent, since it results in the necessary implication of
registering the domain names in bad faith.
32
National Arbitration Forum File No. FA0002000093635 (21 March 2000).
33 National Arbitration Forum File No. FA0002000093766 (24 March 2000).
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In Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc /
Rich Sanders and Octogen34
, the Panel advocated the view that if the
legitimacy of a registration is contingent on the compliance of certain
conditions, a subsequent non-compliance with those conditions may make it
a registration in bad faith, even if the registrant was intending to comply
with the conditions when he registered the domain name. Thus, there is a
possibility of post facto attraction of bad faith by the domain name
registrants. Despite the above developments, it is always to be kept in mind
that the bad faith determination is a factual determination, which has to be
done on case by case basis. There is no straitjacket formula; rather the
decision-making authority must tailor one suitable in the given set of
circumstances.
There are some well-established defenses available to the registrant
of domain names.35
Firstly, he can contend that before getting the notice, he
had used, or made 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. Secondly, that he has been commonly known
34
WIPO Case No. D2009-0786 (19 August 2009).
35 Paragraph 4 (c) (i) to (iii) of UDRP Policy.
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169
by that same name, even if it has not acquired any trademark or service
mark rights. Thirdly, the domain name is used for legitimate noncommercial
or fair use and he has no intention for commercial gain to mislead
consumers or to tarnish the trademark or service which is in question.
The above defenses depict that the use of trademark of a company in
the registration of domain name by anyone is not completely prohibited.
Domain name registrations are not considered abusive, if they are justified
by legitimate free speech rights. In Standard Chartered PLC v. Purge I.T.36
,
the WIPO Arbitration and Mediation Centre elaborates the free speech
rights in the following terms.
Those who have genuine grievances against others or wish to express
criticisms of them - whether the objections are against commercial or
financial institutions, against governments, against charitable,
sporting or cultural institutions, or whatever - must be at liberty,
within the confines set by the laws of relevant jurisdictions, to
express their views. If today they use a website or an email address
for the purpose, they are entitled to select a Domain Name which
leads others easily to them, if the name is still available. 36
WIPO Case No. D2000-0681 (13 August 2000).
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Thus, what is prohibited is only the bad faith registration of
trademarks as domain names with an intention to get some unlawful
benefits. In Prestonettes Inc. v. Coty,37
Holmes J. has aptly observed, “A
trademark does not confer a right to prohibit the use of the word or words. It
is not a copyright…. A trademark only gives the right to prohibit the use of
it so far as it protects the owner‟s goodwill against the sale of another‟s
product as his.”
In simple terms, mere registration of a domain name covering the
trademark would not confer any right to the trademark owner. Moreover,
offering the registered domain name for sale is also not the conclusive
evidence of abusive registration.38
Rather, the burden of proof is on the
complainant to prove that all the prerequisites of the dispute resolution
policy are complied with. There are also instances of the UDRP panels
recognizing the legitimacy of buying and selling of domain names,
37
264 U.S. 359, 368 (1924).
38 Charlotte Waelde, „Trademarks and Domain Names: There‟s lot in a name‟, available at
<http://www.law.ed.ac.uk/ahrb/publications/online/Trademarks.htm> Last visited, 21 October
2011.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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especially of descriptive nature, provided the registrants are acting in good
faith.
In Car Toys Inc. v. Informa Unlimited Inc.39
, the complainants
demanded to relinquish the respondents‟ registered domain name
cartoys.net in their favour. The UDRP Panel, while holding the Car Toys
Inc.‟s trademark in the words as irrelevant, recognized that Informa was
involved in the business of buying and developing descriptive domain
names for sale. Such an activity of informa did not solely constitute abusive
registration. The Panel concluded that the complainant had not proven that
the respondent had no legitimate interest in the domain name in dispute;
hence the domain name remains with Informa.
Similarly, in the recent PJS International SA v. Vertical Axis Inc. /
Whois Privacy Services Pty Ltd.40
, the WIPO Arbitration and Mediation
Centre observed that
There is no evidence that the Respondent acted in bad faith when it
registered the disputed domain name, among the several thousand
domain names that it claims to own. The mere fact of registering a
39
National Arbitration Forum File No. FA0002000093682 (20 March 2000).
40 WIPO Case No. D2013-0805 (08 August 2013).
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172
large number of domain names is not proof by itself of bad faith, as
there may exist a legitimate purpose in appropriating many domain
names in the hope that some of them will enjoy commercial value.
The situation is similar to that of the acquirer of many mining rights
or oil concessions in the hope that some of them will be really
worthy of development…. The mere fact of offering the disputed
domain name for sale is not in itself indicative of bad faith.
Generally, one person tribunal is established under UDRP to
adjudicate the dispute. However there is a scope for three person tribunal, if
requested by either party. Since the proceedings take place online, there is
little scope for in-person hearing, unless the Panel considers such hearing is
necessary.41
Interestingly, UDRP also allows the parties to submit the
dispute to a court of competent jurisdiction before the mandatory
proceedings under UDRP commences or after it is concluded.42
41
Paragraph 13 of the UDRP Rules – There shall be no in-person hearings (including hearings by
teleconference, videoconference, and web conference), unless the panel determines, in its sole
discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.
42 Paragraph 4 (k) of the UDRP. See generally Vivek Sood, Cyber Law Simplified, (New Delhi:
Tata McGraw-Hill Publishing Company, 2001) p. 236.
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The domain name disputes brought under the UDRP are governed by
the said policy read with the accompanying Rules of Procedure and
Supplemental Rules of the respective approved dispute resolution service
provider. The jurisdiction of the service providers arises out of the
registration agreement between the registrant and the registrar at the time of
the registration of the domain name. The registrant, if has any problem
relating to the domain name, is mandated to invoke the jurisdiction of the
agreed service provider to settle the problem.
The Panel deciding the case is also authorized under the Rules to
take into account any rules and principles of law that it deems applicable in
addition to the UDRP Rules.43
The initial trend in the dispute resolutions
under UDRP clearly demonstrates the heavy reliance on this provision. In
the World Wrestling Federation Inc. v. Michael Bosman44
, the first UDRP
case, the dispute was on the worldwrestlingfederation.com, which was
registered by the respondent. As discussed above, one of the essential
requirements of proving the abusive registration is to show that the domain
name is registered and used in bad faith. Since both the parties involved
43
Rule 15, UDRP Rules.
44 WIPO Case No. D99-0001 (14 January 2000).
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were domiciled in the United States (US), the Arbitrator looked into the
decisions in two leading US cases, Panavision International L P v. Dennis
Toeppen45
and Intermatic Inc. v. Toeppen46
, for the determination of what is
meant by „use‟.
While referring to the decisions of the above US cases, the Arbitrator
concluded that the act of registering the domain name and offering it for
sale to the complainant was sufficient to constitute „use‟. The argument of
legitimate use by Michael Bosman was found baseless, since he had not
developed the website, and the name was neither in any way identified with
nor related to any legitimate interest he had. Thus, the US decisions
provided guidelines to the Arbitrator to order the transfer of domain name
from the respondent to complainant.
In the second case before WIPO, Robert Ellenbogen v. Mike
Pearson47
, the domain name musicweb.com was in question. The Arbitrator
made reference to UDRP Rules and the WIPO Final Report48
. More
45
141 F3d 1316 (9th
Cir 1998).
46 947 F Supp 1227 (ND Ill, 1996).
47 WIPO Case No. D00-0001 (17 February 2000).
48 See supra note 7.
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specifically, the latter stated “if the parties to the procedure were resident in
one country, the domain name was registered through a registrant in that
country and the evidence of bad faith registration and use of the domain
name related to activity in the same country, it would be appropriate for the
decision-maker to refer to the law of the country concerned.” Since all the
above requirements have coincided at the US in the present case, the
Arbitrator once again referred Intermatic Inc. v. Toeppen to clarify the word
„use‟ and ordered the transfer of domain name.
In juliaroberts.com case49
, the respondent, who had registered many
celebrity names as domain names, registered juliaroberts.com and put up for
auction. Interestingly, the complainant celebrity, Julia Roberts, did not
posses any registered trademark. In light of this, one of the crucial issues
was about the trademark rights of the complainant in her name. On behalf of
the complainant, the argument was based on the common law trademark
rights, which was acquired by her name in the form of „secondary
meaning‟50
. So the question before the Panel was, whether – when someone
49
Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (29 May 2000).
50 Secondary meaning implies that even though a name (whether of a person, product or service) or
a design is not registered mark, the public has come to associate that name or design with a
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hears the name „Julia Roberts‟ or logs on to „juliaroberts.com‟, such a
person identifies that name or site with the complainant, and whether the
respondent‟s use of the name would likely to confuse the public that the
celebrity actress was related to such use?
The Panel recognized the common law concept of „secondary
meaning‟ and observed that the complainant possessed the required
trademark rights in her name. Panel also noted that there was nothing on the
website that related to the complainant, which makes clear that it was not a
fan site. The domain name was registered with the sole intention of selling,
which was also evident from the respondent‟s established pattern of conduct
of registering many other celebrity names. All these reflected the requisite
bad faith and therefore, the Panel ordered the transfer of domain name to
Julia Roberts.
particular person / company / good / service. Thus, the crucial question in the determination of
such a common law right is, whether there is a likelihood of confusion in the minds of the public
by the use of the name by others that the use is related to the owner of secondary meaning?
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The UDRP also contains provisions relating to reverse domain name
hijacking (RDNH).51
The misuse of the position by the large and powerful
companies by using the trademark violation as a tool against the small
players having a legitimate trademark registration is taken care of by the
RDNH actions. Though the UDRP doesn‟t provide any sanction against the
RDNH, the panels are authorized to discard such complaints with a
warning. It is also an established fact that whether the RDNH occurs is a
matter of Panel to consider even if the respondent does not request a finding
of RDNH.52
The existing practice of the UDRP panels show that the grounds of
RDNH are found on three major categories. (a) The complainant‟s
knowledge of bona fideness before filing the complaint. (b) The little
51
Rule 15 (e) of UDRP Rules – If after considering the submissions, the Panel finds that the
complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking
or was brought primarily to harass the domain name holder, the Panel shall declare in its decision
that the complaint was brought in bad faith and constitutes an abuse of the administrative
proceeding.
52 See, for example, Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (06
June 2006); Spy Optic, Inc. v. James Lee, WIPO Case No. D2013-1411 (01 October 2013).
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prospect of success of the complaint. (c) The malicious and reckless attitude
of the complainant.
In Deutsche Welle v. Diamond Ware Ltd.53
, for example, the
defendant used its DW mark as the domain name dw.com for promoting its
business. It was connected to an active website and used for bona fide
offering of goods and services. The complainant brought a case despite the
above facts. The WIPO Panel had no hesitation in finding that it is a fit case
of RDNH, since the complainant had / should have had the prior knowledge
of the bona fideness.
Similarly in Smart Design LLC v. Carolyn Hughes54
, the
complainant registered the domain name „smartnyc.com‟ and sought for the
registration of „smartdesign.com‟ in August 1996 and found that the latter
was not available for registration at that time. Subsequently, when it became
available for registration, the respondent registered the said domain name on
26 May 1997. The complainant made a Whois search in April 1999, and
after finding the respondent as the registrant of smartdesign.com, wrote a
letter asking about the intention of respondent to retain the domain name
53
WIPO Case No. D2000-1202 (02 January 2001).
54 WIPO Case No. D2000-0993 (18 October 2000).
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indefinitely or temporarily. To be noted, the complainant did not challenge
the registration of the domain name by the respondent. There was no
response from the respondent.
Subsequently, the complainant found that the domain name
registration was due to expire (unless renewed) on 27 May 2000. According
to the complainant, he hoped that the domain name would not be renewed
and he would be able to get the registration. On 25 July 2000, the
complainant found that the domain name registration was renewed by the
respondent. On these factual grounds coupled with the fact that the
respondent did not operate a website and also did not run any business by
the said name, the complainant brought a claim against the respondent for
the bad faith registration.
The WIPO Panel made a finding that the complainant committed
RDNH on the basis of several factors. First, the Panel found that the name
„Smart Design‟ was so common that anyone may use it and the complainant
must be aware of it. Second, the complainant did not raise any complaint
when he first found that the name was not available for registration in
August 1996. When he had no objection against the first registrant, he
should also not have against the subsequent registrant. Third, when the
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complainant first wrote the letter to the respondent, there was no mention of
respondent doing anything wrong. On the contrary, the letter impliedly
acknowledges the right of the respondent in the domain name. Fourth, if the
complainant believed that the respondent was wrong, he should have
followed up the letter and could have made every attempt to obtain the
reply.
Fifth, the complainant‟s contention that he was waiting for the
renewal date so that he can get it registered before the renewal by the
respondent is also not acceptable. It was found evident from the fact that he
waited for more than eight weeks before checking the position of the
domain name.55
Thus, the Panel concluded that the complainant is guilty of
RDNH when it “advanced arguments that were tortuously artificial in the
extreme, reckless both as to the justification for making those arguments
and the seriousness of the overall charge against respondent, who was
manifestly no cybersquatter.”
4.4 UDRP vis-à-vis National Responses: Finding the Differences
The national responses in almost all the states, except the US, have
been on the basis of their traditional trademark laws. They, being trademark 55
27 May 2000 to 25 July 2000.
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centric, undoubtedly differ from the domain name centric approach of the
UDRP. Though the UDRP derives heavily from the US negotiation of the
ACPA56
, there are certain differences between the two. These differences
can be seen in the structure, procedure, substantive provisions and also in
the sphere of application. The striking differences between the UDRP and
ACPA are as follows.
One of the differences between the UDRP and ACPA is that the
UDRP‟s treatment of living individual‟s names is different from treatment
under ACPA. While ACPA provides cause of action to any living individual
whose name has been registered, the UDRP protects only names that are
sufficiently prominent so as to possess trademark rights.57
In other words,
the famous names are the only protected under the UDRP as against any
name under the ACPA.
Secondly, the ACPA allows the statutory damages to be paid to the
winning party, which is not seen in the UDRP. Thirdly, the UDRP‟s
56
See David E. Sorkin, „Judicial Review of ICANN Domain Name Disputes Decisions‟, Computer
and High technology Law Journal, Vol. 18, 2001 - 2002, pp. 35 - 55 at p. 50.
57 Jason H. Kaplan, „The Anticybersquatting Consumer Protection Act: Will it End the Reign of
the Cybersquatter?‟, UCLA Entertainment Law Review, Vol. 8, 2000, pp. 43 - 86 at p. 81.
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decision can be subject to challenge before the national courts of competent
jurisdiction, which cannot be done with the final decision of the US court.
Fourthly, the injunctive relief, pending the final determination of the case, is
not available under UDRP. However, ACPA on the other hand provides
injunctive relief.
Fifthly, the dilution of the mark is a cause of action under ACPA, but
not under UDRP. Sixthly, the ACPA recognizes the criteria of intellectual
property rights in the domain names as one of the criteria for the
determination of bad faith. The UDRP doesn‟t incorporate it in the
determination of bad faith. Seventhly, the UDRP is based on the online
dispute resolution mechanism, and ACPA, being the court litigation,
requires the physical presence of the parties and their representatives.
Eighthly, while the ACPA requires „bad faith intent to profit‟, the UDRP
requires only „bad faith‟ on the part of the domain name registrant.
In addition to the above listed differences, the dissimilarity can also
be seen in the dispute settlement forums, jurisdiction, procedures to be
followed by the forums etc. These differences, coupled with other factors,
have resulted in both advantages and disadvantages in resorting to UDRP
for dispute resolution.
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4.5 Relative Advantages of the UDRP
UDRP has certain unique advantages over the municipal dispute
resolution systems, which are found grossly insufficient due to the trans-
border nature of domain name-trademark disputes. Therefore, resorting to
UDRP has been found beneficial by many. The advantages of UDRP can be
summed up as follows.
One of the advantages of UDRP is that all the proceedings take place
online; thereby the inconvenience caused by the requirement of physical
presence, which is seen in court proceedings, is avoided. The procedure
followed by the adjudicatory bodies in the resolution of disputes is quite
simple. The complaints are also usually dealt within three months from
submission. This has been possible because of the obligation imposed on
the Panelists under Paragraph 15 of the Rules to forward the decision to
Service Provider within 14 days of the appointment of the Panel. Thus,
resorting to UDRP for the resolution of domain name disputes would help
the parties to have quick disposal of disputes58
and to avoid the cumbersome
and lengthy court proceedings. Moreover, the resolution of conflict under
58
Jonathan H. Anschell and John J. Lucas, „What‟s in a Name: Dealing with Cybersquatting‟,
Entertainment and Sports Lawyer, Vol. 21, No. 1, Spring 2003, pp. 3 - 7 at p. 5.
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UDRP is cost effective when compared to the traditional judicial
settlement.59
A striking feature of UDRP is the transparency in the proceedings.
All details relating to the cases are provided in the website, so that neither of
the parties can contend bias in the decision making. The online service of
„guidance and help information‟ is also a significant feature of UDRP,
which is also subject to periodic review for updating. These features of
UDRP have been instrumental in bringing certainty, predictability and
clarity of language as well as in increasing popularity of the system.60
Another meritorious aspect of UDRP to the complainant is that it
shifts the burden of proof on the respondent once an initial acceptance of
presence of abuse is established. Therefore, the trademark holders are often
tempted to invoke the UDRP proceedings to enjoy the relatively lesser
burden of proof. The decisions of the adjudicatory bodies recognized under
59
Stephen J. Ware, „Domain Name Arbitration in the Arbitration-Law Context: Consent to, and
Fairness in, the UDRP‟, Journal of Small & Emerging Business Law, Vol. 6, 2002, pp. 129 - 165 at
p. 151.
60 Warren B. Chik, „Lord of Your Domain, but Master of None: The Need to Harmonize and
Recalibrate the Domain Name Regime of Ownership and Control‟, International Journal of Law
and Information Technology, Spring 2008. <www.westlaw.com>
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UDRP are also enforceable, though subject to the losing party‟s right to
resort to court proceedings.61
Thus, the UDRP proceedings quite often result
in binding decisions.
One of the reasons for the increased popularity of UDRP is the
jurisdictional convenience. UDRP proceedings help in overcoming
jurisdictional hurdles, since it has international jurisdiction. The trademark
owners from any state can file complaint under UDRP merely by
establishing their trademark rights. No other existing alternative provides
this convenience to the aggrieved trademark owner. Moreover, even in the
cases where the domain name holder cannot be identified,62
the UDRP can
be invoked, since it provides for an equivalent of in rem63
legal
proceedings.64
61
Paragraph 4 (k) of UDRP.
62 May be because of the improper address given by the registrant.
63 In rem jurisdiction involves taking action against the domain name as against the in personam
jurisdiction involving taking action against the domain name holder.
64 Robert A. Badgley, „Internet Domain Names and ICANN Arbitration: The Emerging “Law” of
Domain Name Custody Disputes‟, Texas Review of Law & Politics, Vol. 5, No. 2, 2000 - 2001, pp.
343 - 392 at p. 349.
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The protection granted to trademark holders by ICANN in the form
of UDRP also boosts the confidence of web users, especially the online
purchasers. The chances of they being deceived by the cybersquatters is less
since UDRP acts as a guardian of domain names in the international level.65
In the absence of such an international mechanism, the web users would be
skeptical about the trustworthiness of the domain names, as the national
legal systems, due to their inherent limitation, are incapable of handling the
problems arising from the international domain name system.
4.6 Areas of Concern in the UDRP
Though the UDRP is hailed by many for its achievements in the
resolution of domain name-trademark disputes,66
it is not completely free
from defects. In the areas of concern, we can note that the panelists are
65
Ned Branthover, „UDRP - A Success Story: A Rebuttal to the Analysis and Conclusions of
Professor Milton Mueller in “Rough Justice”‟, available at
<http://www.inta.org/downloads/tap_udrp_1paper2002.pdf> Last visited, 30 June 2009.
66 The study conducted by the Max-Planck Institute concludes that “as a matter of principle, the
UDRP is functioning satisfactorily. No major flaws have been identified in the course of the
evaluation.” Annette Kur, „UDRP: A Study by the Max-Planck Institute for Foreign and
International patent, Copyright and Competition Law‟, Vol. 72, 2002, available at
<http://www.zar.kit.edu/DATA/projekte/udrp_705937a.pdf> Last visited, 02 October 2013.
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often seen unduly ready to accept the complainants‟ grounds and in some
cases they have even stretched the terms of the Policy to entertain the cases
of the complainants.67
This is the direct consequence of the complainant‟s
right to choose among different dispute resolution service providers
recognized by UDRP. The service providers have turned complainant-
friendly in order to get much share of future cases on domain names.68
It is
revealed by the fact that more than 75% of cases decided by the panels were
in favour of the complainants.69
This phenomenon is helped by the absence
of clarity on the burden of proof, which allows the panelists to shift the
burden of proof from the party they favour to the other party.70
Even on
67
A study reveals that WIPO and NAF have decided majority of cases in complainant-friendly
manner. See Parul Kumar, „Domain Name Disputes and Cybersquatting: Can Arbitration Suffice
as a Way of Resolution?‟, available at <www.students.indlaw.com/display.aspx?4314> Last
visited, 30 July 2009.
68 Robert P. Merges, Peter S. Menell and Mark A. Lemley, Intellectual Property in the New
Technological Age, Fourth edition (New York: Aspen Publishers, 2007) p. 776.
69 According to Helfer‟s study, average percentage of complainants winning the cases across all
domain name dispute resolution service providers is 84 percent. Supra note 21, p. 190.
70 Victoria Holstein-Childress, „Lex Cyberus: The UDRP as a Gatekeeper to Judicial Resolution of
Competing Rights to Domain Names‟, Penn State Law Review, Vol. 109, No. 2, 2004, pp. 565 -
607 at p. 582.
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other matters, UDRP provides lesser guidelines and more discretion to the
arbitrators.71
Added to this, there is no provision in the UDRP for
challenging the appointment of an arbitrator, if the party suspects him to be
biased.72
Thus, the UDRP promotes forum-shopping, and it ultimately gives
an impression that justice can be bought and sold under UDRP.73
This is
certainly an unhealthy development, which might result in the respondents‟
loss of confidence in the UDRP.74
In response to the above problem of forum shopping, Milton Mueller
recommends that instead of complainant choosing the dispute resolution
71
Ann Bartow, „Exporting Trademark Confusion‟, in Richard A. Spinello and Herman T. Tavani
(eds.), Intellectual Property Rights in a Networked World: Theory and Practice, (London:
Information Science Publishing, 2005) pp. 113 - 160 at p. 132.
72 Refer barcelona.com case. Under Paragraph 7 of the UDRP the Service Provider may appoint a
substitute Panelist in case he discloses any circumstance that could give rise to justifiable doubt as
to the impartiality or independence of the Panelist.
73 Michael Geist, „Fair.com?: An Examination of the Allegations of Systematic Unfairness in the
ICANN UDRP‟, Brooklyn Journal of International Law, Vol. XXVII: 3, 2001 - 2002, pp. 903 -
938 at p. 906.
74 Closure of eResolution, the most registrant friendly dispute resolution service provider, has
made most of the scholars suspicious about the ICANN‟s bias towards the trademark owners and
service providers‟ support for trademark owners.
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service provider, the registrar of the domain name concerned should do the
same.75
Such a practice, according to him, would provide a fair opportunity
to both the parties. However, Michael Froomkin on the other hand, opposes
such a proposition in his scholarly paper, since it would tilt the balance in
favour of the domain name registrants (respondents in the disputes).
According to him, such a change would warrant the domain name registrars
to opt for a registrant-friendly forum, which would be created due to the
practical reason of competition between the registrars.76
The element of bias towards the complainants is furthered by the fact
that trademark attorneys are quite often found in the panels. It has been
argued as one of the major reasons for the high success rate of the
complainants in the domain name dispute resolutions. The frequent resort to
the WIPO dispute resolution system strengthens such suspicion, since it
75
Milton Mueller, „Rogue Justice‟, available at <http://ccent.syr.edu/PDF/roughjustice.pdf> Last
visited, 28 September 2013.
76 Michael Froomkin, „ICANN‟s “Uniform Dispute Resolution Policy” ; Causes and (Partial)
cures‟, Brooklyn Law Review, Vol. 67, No. 3, 2002, pp. 605 - 718 at p. 673.
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primarily consists of trademark attorneys77
. Even in the absence of practical
element of bias, the mere fact that the trademark attorneys are deciding the
case would give an impression to the common man that the trademark
owners would be favoured in a domain name dispute. This would go against
the very foundation of the justice delivery system; “justice should not only
be done, but should manifestly and undoubtedly be seen to be done”.78
Thus, the scholars suggest for the panelists from different background, and
random picking of them in different cases.79
The absence of system of appeal in the UDRP proceedings adds on
to the problem of bias towards the complainant. The only remedy available
in such cases is to move to an appropriate national court of mutual
77
See Stacey H. King, „The “Law that it Deems Applicable”: ICANN, Dispute Resolution, and the
Problem of Cybersquatting‟, Hastings Commercial and Entertainment Law Journal, Vol. 22, 2000,
pp. 453 - 507 at p. 477.
78 Lord Denning, while laying down the principle on the determination of bias in Metropolitan
Properties Co (FGC) Ltd. v. Lannon [1969] 1 Q.B. 577, remarks: “The court will not inquire
whether he did in fact, favour one side unfairly. Suffice in that reasonable people might think he
did. The reason is plain enough. Justice must be rooted in confidence: and confidence is destroyed
when right-minded people go away thinking: „The judge was biased‟.”
79 Supra note 21, p. 214.
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jurisdiction80
after the decision is made by the adjudicatory panel. However,
this right is again qualified by the fact that the appeal to national court has
to be done within ten days from the decision of the Panel. This period has
been found insufficient by many aggrieved parties,81
since it is difficult to
arrange an appropriate attorney and prepare for the proceedings within such
limited time period. Though this self-enforcing character of UDRP
decisions is significant in making UDRP effective, it runs the risk of
violating the due process in the dispensation of justice.
In light of the above factors, Froomkin argues for the incorporation
of a provision allowing either party to challenge the appointment of the
panelist/s before an independent appeals body. This right, according to
80
See UDRP Rule 3(xiii). UDRP Rule 1 defines “mutual jurisdiction” as: [A] Court jurisdiction at
the location of either (a) the principal office of the Registrar (provided the domain name holder has
submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes
concerning or arising from the use of the domain name) or (b) the domain name holder‟s address as
shown for the registration of the domain name in Registrar‟s Whois database at the time the
complaint is submitted to the Provider.
81 See Russ Smith, „Comments on alternate dispute policy‟, available at
<http:/www.icann.org/en/comments-mail/comment-udrp/current/maillist.html> Last visited, 30
June 2009.
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Froomkin, must be available both before and after the decision has been
made.82
Donahey provides for an alternative solution of establishing an
appeals body for hearing the appeals from the UDRP panels, which would
lay UDRP in a greater legal certainty area by eliminating the possible bias.
Appeals could be heard by three or five special appeals panelists who have
long-standing experience in hearing UDRP disputes, and should be a time
bound process to avoid delay.83
The provisions relating to the availability of court proceedings under
UDRP and UDRP Rules differ from each other, giving rise to the question
of possibility of Rules going beyond the express stipulation of the UDRP.
The UDRP clearly stipulates under Paragraph 4 (k) that the parties can
move to the court of competent jurisdiction before84
the mandatory
administrative proceeding is commenced or after85
such proceeding is
concluded. This gives an implied understanding that the parties cannot
82
Supra note 76, p. 689.
83 M. Scott Donahey, „A Proposal for an Appellate Panel for the Uniform Domain Name Dispute
Resolution Policy‟, Journal of International Arbitration, Vol. 18, Issue 1, 2001, pp. 131 - 134 at p.
133.
84 Emphasis added.
85 Ibid.
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move to national courts during the pendency of administrative proceedings.
However, this bar on concurrent proceedings, one before the UDRP Panel
and other before the national court, has been breached by Paragraph 18 of
the UDRP Rules, which provides that there is a possibility of initiating legal
proceedings during the pendency of administrative proceedings.
The US District Court in BroadBridge Media, L.L.C. v.
Hypercd.com86
, observed that even during the pendency of administrative
proceedings one can move to the court of competent jurisdiction. The two
major reasons put forward by the Court were that firstly, the UDRP does not
state that a complainant gives up the right to proceed to court and secondly,
UDRP states that the dispute proceedings are to be conducted under the
Rules. The reasoning of the Court in this case seems to be fallacious. On the
one hand, the express stipulation under the UDRP to give up the right to
proceed to court during the pendency of proceedings is unnecessary, since it
is well-known that the pendency of proceeding before one forum is a bar on
approaching another forum for the settlement of any dispute. On the other
hand, the second reason put forward by the Court is the result of
misinterpretation of Paragraph 1 of the UDRP. Paragraph 1 stipulates that 86
106 F. Supp. 2d 505, 508-09 (S.D.N.Y. 2000).
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only the dispute proceedings are to be conducted according to the Rules and
it does not say that the substantive provisions, like the one in question, can
be modified under the Rules. In addition, the established rules of
administrative law clearly stipulate that the rules framed under a parent
statute (UDRP in this instance) cannot override the parent statute rather
must be within the four corners of the parent statute.
The limited procedural filings involved under UDRP, while on the
one hand advantageous, creates doubt about its efficacy in solving complex
cases, especially involving the issue of fair use, acquiescence, commercial
relationship between the parties or other important factual matters. Since
there is no mechanism for evidentiary review, the parties may find difficulty
in establishing their case by disproving the evidence provided by the
opposite party. Complicated cases always require a thorough study of facts
before making a just and equitable decision. However, it is hindered by the
fact that the panels generally do not permit in-person hearings, cross
examination of parties, testimony, arguments and rebuttals. Therefore, the
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expanded process of litigation, and not the hasty decision, is better suited to
solve such cases.87
Further, when the domain name holder is disentitled under UDRP,
either he would be asked to transfer the domain name to the complainant or
the registration of domain name would be cancelled by ICANN.88
On the
negative note, UDRP does not provide remedy in the form of damages.89
Therefore, there is no scope for getting any remedy for loss suffered by the
trademark holder, due to others‟ bad faith registration of domain name,
before the decision. The absence of monetary compensation and other
punishments have resulted in the frequent violation of law in cyberspace. It
is also worth to note here that in certain circumstances the complainant‟s
request for transfer of domain names is also turned down on the ground that
cancellation of registration is a more appropriate remedy. This basically
happens in the cases where the challenged domain name consists of two
trademarks owned by two different persons. In such cases, the UDRP panels
87
Sharon K. Black, Telecommunications Law in the Internet Age, (San Francisco: Morgan
Kaufmann, 2002) p. 411.
88 Article 3 of UDRP.
89 Supra note 87, p. 410.
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have found it inappropriate to transfer the domain name to the successful
complainant in the absence of permission by the other trademark owner.90
Thus, the remedies available to the successful complainant under UDRP are
very much limited.
The existence of multiple adjudicatory panels under UDRP brings
forward the problem of multiple jurisdictions. There is a possibility of two
or more complainants bringing action with respect to same domain name
either before the different adjudicatory service providers or before the same
adjudicatory panel.91
Where the complaints are filed before different panels,
the decisions of the panels may be conflicting. This would result in a
deadlock, allowing the cybersquatter to enjoy the time period he gets
because of the delay in settling the conflicting jurisdictions / decisions.
Quite often, such delay costs dearly to the trademark holders. This problem
is furthered by the fact that the UDRP does not provide any interim relief by
90
See Dr Ing hc F Prosche AG v. Automotive Parts Solutions WIPO Case No D 2003-0725 (17
November 2003) and Lilly ICOS LLC v. Tudor Burden WIPO Case No D 2004-0794 (20
December 2004).
91 This happened in ipx.com, wherein two persons filed complaints on the domain name; one
before WIPO and other before CPR.
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way of temporary restraining orders. In light of this, a US litigant, who is in
need of immediate remedy, would be more inclined to move under the
ACPA to avail some temporary relief available under the Act.92
The ambiguity in the UDRP over certain definitional aspects has
resulted in contradictory interpretations by different service providers. One
of the most striking examples of such contradiction relates to the
interpretation of „bad faith registration‟. On the one hand, in Telstra
Corporation Limited v. Nuclear Marshmallows,93
WIPO Panel observed
that the mere registration of domain name alone may be sufficient to
establish bad faith in particular circumstances, despite the lack of any other
overt action. On the other hand, in Loblaws Inc v. Yogeninternational,94
the
eResolution Panel held that the inactive use of the domain name was
insufficient evidence of bad faith and thus, it allowed the respondent to
retain the domain name.
92
Supra note 57, p. 80.
93 Supra note 31.
94 eResoluation Case No. AF- 0164 (09 June 2000).
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198
Another good illustration of capricious nature of UDRP decisions
can be witnessed in Ayuntamiento de Barcelona v. Barcelona.com Inc.95
In
this case, the respondent company registered barcelona.com to promote link
between Europe, US and South America, where there are several towns by
name “Barcelona”. Upon the complaint by Barcelona, Spain, the WIPO
Panel ordered the transfer of the domain name, but on dubious grounds. The
Panel‟s bad faith determination watered-down a number of factors
mentioned under paragraph 4(b). In addition, on the question of legitimate
interest in the domain name, the Panel controversially found that the
claimant had “better rights and more legitimate interests” than the registrant,
despite the respondent‟s existing application for a trademark in
barcelona.com. The critics are of the view that this is unwarranted, since the
Panel made its conclusions on extrinsic factors outside the realm of the
strict provisions of UDRP.96
The inconsistency in the decisions may be attributed to the fact that
the UDRP panelists hail from different countries and have different
95
WIPO Case No. D2000-0505 (04 August 2000).
96 John Magee, „Domain Name Disputes: An Assessment of the UDRP as Against Traditional
Litigation‟, Journal of Law, Technology and Policy, Vol. 2003, pp. 203 - 216 at pp. 209 & 210.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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background. Consequently, they have a different understanding of
substantive trademark laws as well as procedural issues.97
Moreover, the
doctrine of precedent, which is applicable in the judicial decision making,
has no relevance in the decision making under UDRP. As it is well-known,
one of the essential requirements of a sound system of administration of
justice is the predictability of the decisions, which is not possible under the
UDRP. These factors make both the trademark owners and the domain
name holders skeptical about their position under the UDRP.98
The UDRP is also having a narrow scope, since its coverage includes
only the trademark infringements.99
Even in the trademark infringements,
the Policy is directed to prevent only extortionate and abusive practices
97
H. Brian Holland, „Tempest in a Teapot or Tidal Wave? Cybersquatting Rights and Remedies
Run Amok‟, Journal of Technology Law & Policy, Vol. 10, 2005, pp. 301 - 351 at p. 327.
98 Benjamin D. Silbert, „Trademark Law, ICANN, and Domain Name Expiration‟, AIPLA
Quarterly Journal, Summer, 2008. <www.westlaw.com>
99 Even in the cases of trademark infringements, the disputes arising between two or more
legitimate trademark owners are not addressed by the UDRP. Universal Tube and Rollform
Equipment Corp. v. YouTube Inc. is one of the cases unveiling the existing gap in UDRP. See
Jacqueline D. Lipton, „A Winning Solution for YOUTUBE and UTUBE? Corresponding
Trademarks and Domain Name Sharing‟, Harvard Journal of Law and Technology, Spring 2008.
<www.westlaw.com>
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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consequent to the registration of domain names.100
The other cases
involving personal damage caused to the individuals and enterprises by the
websites similar to their names is not addressed under UDRP. This has left
sufficient scope for mischief in the form of uploading defamatory and
indecent materials over the Internet.101
The UDRP also has the limit of not
addressing the conflicts between the two trademark owners as well as
between a trademark owner and a registrant having legitimate interests.
In addition to above, the provisions relating to RDNH are not
deterrent enough, and any person can dare to violate them frequently.102
In
light of this, the critics point out that the finding of RDNH by the UDRP
panels would only amount to „slap on the wrist‟ and nothing more.103
This is
100
Supra note 18, p 129.
101 Louis Altman and Malla Pollack, „Trade Identity Infringement‟, Callmann on Unfair
Competition, Trademarks and Monopolies, Fourth edition, August 2008. <www.westlaw.com>
102 See Wayde Brooks, „Wrestling Over the World Wide Web: ICANN‟s Uniform Dispute
Resolution Policy for Domain Name Disputes‟, Hamline Journal of Public Law & Policy, Vol. 22,
2000 - 2001, pp. 297 - 333 at p. 309.
103 Sheldon W. Halpern, Craig Allen Nard and Kenneth Port, „Scope of Exclusive Rights‟, in H.
Vanhees (ed.), International Encyclopedia of Laws - Intellectual Property, Vol. 5, (New Delhi:
Wolters Kluwer (India) Pvt. Ltd., 2000) Suppl. 31 (Jan, 2006), pp. 382 - 393 at p. 393.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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attributable to the failure of WIPO to make recommendations during the
drafting of UDRP to solve such problems. WIPO‟s approach was in terms
of protection of trademarks and not in terms of protection against trademark
abuses.104
This approach coupled with the complainant‟s low burden of
proof and panel‟s limited discovery powers has resulted in serious concern
of deceptive complaints by the trademark holders. The panel‟s tendency of
leaning towards the complainants may hard hit the low profile users of
legitimately registered domain names.
The conflicting decisions on the RDNH by the UDRP panels and the
national courts is also a matter of international concern. General Media
Communications Inc. v. Crazy Troll, LLC105
stands as classic example of
such conflicts. The plaintiff in this case published the magazine,
„Penthouse‟ and used the penthouse mark in various ways including
registered trademark, PENTHOUSE BOUTIQUE, and several e-commerce
sites. The defendant registered the domain name „penthouseboutique.com‟
after the plaintiff‟s registration of the domain name was allowed to lapse by
its bankruptcy trustee. When the plaintiff filed a complaint against the
104
Supra note 76, p. 649.
105 2007 WL 102988 (S.D.N.Y. 16 January 2007).
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defendant‟s use before the UDRP Panel, the Panel rejected the transfer on
the ground of RDNH. However, the decision was reversed by the US court
when it was latter referred to it by the plaintiff. This clearly indicates that
the evaluation of the criteria for the RDNH also varies with the perception
of the forum.
4.7 Use of Other ADR Mechanisms in the Domain Name-Trademark
Conflicts Resolution
The ADR mechanisms are rapidly growing in the international level
to reduce the burden of the ordinary courts of law and also to bring the
justice to the doorsteps of the victims. As outlined in the previous and
present chapters, both the court settlement and the UDRP settlement of the
domain name-trademark disputes have inherent limitations. Consequently,
there is a search for other ADR mechanisms that may address the wide
variety of disputes including the ones that are neither addressed by the
national laws nor by the UDRP. In the wake of this development, an
analysis of the attempts made by the domain name registries to develop
their own indigenous systems as well as the probe into the possibility of
applying the traditional means of the ADR mechanisms for finding the
solution are very significant.
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Though almost all the domain name registries have come forward
with their own mechanism, analysis of all of them is neither feasible nor
prudent under the present research work. Thus, the researcher confines
herself in this part to analyze the Nominet Dispute Resolution Service
Policy (Nominet DRS Policy) and United States Dispute Resolution Policy
(usDRP), which are leading dispute resolution policies in United Kingdom
(UK) and US respectively. In addition, a reference to .IN Domain Name
Dispute Resolution Policy (INDRP), which is the Indian counterpart, would
be made in the next Chapter.
4.7.1 Nominet Dispute Resolution Service Policy
Nominet is the authority established in UK to manage the „.uk‟
domain and the major commercial sub-domains.106
Any registration of the
.uk domain name under the management of Nominet is subject to the
Nominet‟s terms and conditions for registration.107
The disputes arising out
106
The six major sub-domains under Nominet are .net, .ltd, .plc, .co, .org and .me. It is worthy to
note that .ac, .gov, .nhs, .police and .mod are managed by others. Tony Willoughby, „United
Kingdom‟, in Torsten Bettinger (ed.), Domain Name Law and Practice - An International
Handbook, (Oxford: Oxford University Press, 2005) pp. 811 - 887 at p. 820.
107 See <http://www.nominet.org.uk/uk-domain-names/registering-uk-domain/legal-details/terms-
and-conditions-domain-name-registration> Last visited, 03 December 2013.
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of .uk domain names in the .net.uk, .ltd.uk, .plc.uk, .co.uk, .org.uk and
.me.uk sub-domains are resolved through Nominet DRS Policy, which
started its operation since September 2001.108
The deviation from the UDRP
is preferred by the Nominet, since it believes that the UDRP is not based on
the sound principle of neutrality.109
The procedure for the settlement of disputes under Nominet DRS
Policy is strikingly different from UDRP. The process starts with the
complaint, a response and a reply by the parties. It is interesting to note that
the disputes first go through the process of an informal mediation110
, which
108
The second version of the Policy and Rules came into force on 25 October 2004, which
operated till July 2008. For details, see Steve Hedley, The Law of Electronic Commerce and the
Internet in the UK and Ireland, (London: Cavendish Publishing Ltd., 2006) pp. 189 & 190. The
most recent version of the Policy came into force on 29 July 2008. Available at
<http://www.nominet.org.uk/disputes/when-use-drs/policy-and-procedure/drs-policy> Last visited,
03 December 2013.
109 Faye Fangfei Wang, „Domain Names Management and Dispute Resolutions: A Comparative
Legal Study in the UK, US and China‟, The Icfai University Journal of Cyber Law, Vol. VII, No.
3, August 2008, pp. 8 - 24 at p. 20.
110 Para 5, Nominet DRS Policy. It is equally interesting to note that the Nominet does not charge
for mediation services. Melissa Beaumont, „Let Go of my Dot-CA: Using the CDRP in the Fight
Against Cybersquatting‟, Asper Review, Vol. 7, 2007, pp. 257 - 292 at p. 289.
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Conflicts Resolution
205
is kept confidential. If the mediation fails to produce an amicable settlement
within ten working days, the complainant has the option of bringing the
issue before an independent expert appointed by Nominet for adjudication
after paying the prescribed fee. The Nominet system provides for an appeal
from the decision of the expert to a panel of three experts. The Nominet
may itself initiate the appeal where there is no appeal by the parties.
Significantly, the operation of DRS under Nominet does not prevent the
complainant or the respondent from moving to the court of competent
jurisdiction.111
The cases are heard by the experts strictly on rotational basis. The
system utilizes the services of not only the legal experts but also that of
others. The Policy has a strict word limit of 2000 words (excluding the
annexes) on the submission of complaint and responses. Any deviation of
this norm would result in the return of submissions to the parties for
compliance with the norm. If the parties fail to resubmit within three days of
return, the default procedure is applied to them. In case of appeal, the
submission of the parties should not exceed 1000 words (including the
annexes). 111
Para 10(d), Nominet DRS Policy.
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206
The complainants‟ rights under the Nominet DRS Policy are not
confined to the trademarks or service marks, but extend to contractual
rights. There is no requirement for showing confusing similarity between
the domain name and the name or mark in which the complainant has rights.
Just the proof of similarity between the two is enough. The Nominet DRS
Policy attracts the trademark owners also because of the fact that it deals not
only with the registrants who had bad faith intention at the time of the
registration of the domain name but also with those who make abusive use
of the domain name after the registration.
The complainant can bring an action under the Nominet DRS Policy
if; (i) the complainant has rights in respect of name or mark, which is
identical or similar to the domain name, and (ii) the registration of domain
name was abusive. The understanding of what constitutes abusive
registration under the Nominet DRS Policy is similar to the one under the
UDRP. Paragraph 3 of the Nominet DRS Policy provides the non-
exhaustive list of evidences of abusive registration. It includes the
following;
(a) the registrant having bad faith intention at the time of registration;
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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(b) the registration being primarily aimed at selling the domain name to
the complainant or to his competitor;
(c) the registration made to block the complainant from using the mark
or name;
(d) the registration made primarily to disrupt the business of the
complainant;
(e) registrant providing the false contact information to the Nominet at
the time of registration of the domain name;
(f) the respondent having the history of cybersquatting;
(g) the respondent‟s use or threat of using the domain name to confuse
the people or business to believe that the domain name is connected
to complainant; and
(h) the name being registered as a result of relationship between the
complainant and the respondent but has now been taken over
exclusively by the respondent.
The experts in the Panel have significant measure of independence in
the determination of abusive registration. A number of other factors may be
considered against the respondents as evidence of abusive registration, since
the above list is only indicative. However, the mere failure of the
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208
respondent to use the domain name for e-mail or as a website is not to be
concluded as the evidence of abusive registration. In addition, neither the
trading in domain names for profit and holding large portfolio of domain
names for trading112
nor the sale of traffic113
is per se prohibited under the
Policy.
There are also certain well-established defenses available to the
respondents. First, that the respondent is using the domain name before he
came across the complainant‟s cause. Second, that the respondent has made
the legitimate non-commercial and fair use of the domain name. Third, that
the respondent was commonly known by the said name before being aware
of the complainant‟s cause. Forth, the name is generic and the respondent is
involved in the fair use of it. Fifth, that the websites genuinely operate as
tribute or criticism of a person or business.
With the zeal to punish the habitual offenders, the Nominet DRS
Policy incorporates a novel approach of shifting the initial burden of proof
on the respondent. Usually, the party asserting the claim (complainant) has
112
Para 4(d), Ibid.
113 Sale of traffic means connecting domain names to parking pages and earning click-per-view
revenue. Para 4(e), Ibid.
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to discharge the initial burden of proving the violation. However, if a
respondent is found to have made abusive registration of domain names in
three or more cases in two years preceding the complaint, he would be
subject to reverse burden of proof. In other words, the registration of
domain name by such respondent is prima facie presumed to be abusive,
unless he proves otherwise.
The dispute resolution service of the Nominet is overwhelmingly
popular in UK. It has contributed immensely in the amicable settlement of
the disputes, and thereby avoiding the trade frictions. By 2004, 56% of the
cases that reached the informal mediation stage itself were compromised.114
Understandably, in 2004, the Nominet also received the CEDR Industry
Award of Excellence in ADR on account of its success. However, the high
rate of success of complainants under the Nominet DRS Policy has been
one of the major concerns of the critics, who are of the view that the Policy
tilts in favour of the trademark holders.115
114
David Kitchin, et al, Kerly’s Law of Trademarks and Trade Names, Fourteenth edition,
(London: Sweet & Maxwell, 2005) p. 733.
115 Supra note 106, p. 840.
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4.7.2 United States Dispute Resolution Policy (usDRP)
The usDRP is the dispute resolution policy of the NeuStar, which
administers the „.us‟ top level domain. The usDRP was adopted by the US
Department of Commerce on 21 February 2002 and it became fully
operational from 24 April 2004.116
Though the „.us‟ top level domain is
operating from 1980s, its commercial operation was minimum until the
beginning of the twenty first century. With the opening of „.us‟ registration
to user-friendly open registration, the commercial uses increased, and
consequently, a dispute resolution policy was found essential.117
The usDRP is quite similar to ICANN‟s UDRP in its policies,
structure, substance and the rules. usDRP, like UDRP, is quick and cost
effective in deciding the domain name disputes arising out of bad faith
registrations in „.us‟ top level domain. However, there are two major
differences between the two. First, the UDRP requires the proof of both bad
faith registration and use of the domain name by the respondent, but the
usDRP needs only one of them to be proved. Second, the UDRP stipulates
116
<http://www.neustar.us/usdrp-approval-process/> Last visited, 03 December 2013.
117 Robert A. Badgley, Domain Name Disputes, (New York: Aspen Publishers, 2003) pp. 1-23 &
1-24.
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three major defenses available to the respondent, but the usDRP adds one
more to the list, that is, the respondent being the owner or beneficiary of a
trade or service mark identical to the domain name.118
The complaint under usDRP is handled by a dispute resolution
service provider approved by the Department of Commerce. A complainant
has the task of proving three factors to succeed in usDRP proceedings. First,
the challenged domain name is „identical or confusingly similar‟ to a
trademark or service mark in which the complainant has rights. Second, the
domain name registrant has no right or legitimate interest in the domain
name. Third, the domain name has been registered in bad faith or is being
used in bad faith.119
The Policy also provides four non-exclusive factors to be considered
primarily as evidence of registration or use in bad faith. They are; (a) the
respondent‟s acquisition of domain name for selling, renting or otherwise
transferring the domain name registration to the complainant or to his
competitor; (b) registration of domain name to prevent the owner of a
trademark or service mark from reflecting his mark in a domain name; (c)
118
Ibid., 1-24.
119 Para 4(a), usDRP.
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the registration of domain name to disrupt the business of a competitor; and
(d) creating the consumer confusion by using the domain name that the
complainant‟s mark is connected to the respondent‟s domain name.120
The respondent may establish his right and legitimate interest in the
domain name by proving any of the following factors provided under
Paragraph 4(c).
(i) The ownership or beneficial rights in a trademark or service mark,
which is identical to the domain name.
(ii) Use or demonstrable preparation to use the domain name in respect
of a bona fide offering of goods or services before receiving the
notice of dispute.
(iii) The respondent has been commonly known by the domain name,
even if no trademark or service mark right is acquired.
(iv) 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.
The selection of the (DRS) Provider is done at the discretion of the
complainant. Usually, one impartial expert would deal with the case, but if 120
Para 4(b), Ibid.
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either of the parties request, a three member Panel would be established to
settle the disputes. All the proceedings are conducted online and decision is
rendered in fourteen days. The remedies available under usDRP are limited
to cancellation or transfer of domain names. After the decision, a ten days
window is available to domain name holder to bring a court action.
4.7.3 Use of Traditional ADR Mechanisms
The ADR mechanisms are rapidly growing to settle the disputes
especially in the commercial field. The obvious reason for this is that ADR
is viewed as litigant friendly system in any kind of economic setup.121
Since
it actively involves parties themselves to settle their disputes, it results in the
amicable settlement of disputes, which is crucial in maintaining business
relationships. The four major types of ADR that are relevant for discussion
here are arbitration, negotiation, mediation and conciliation.
Arbitration is a process for settlement of disputes fairly and equitably
through a person or persons or an institutional body without recourse to
121
Georgios Zekos, „The Role of Courts and ADR in the Rule of Law‟, Icfai University Journal of
Alternative Dispute Resolution, Vol. VII, No. 3, 2008, pp. 11 - 36 at p. 11.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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214
litigation by the disputing parties pursuant to an agreement.122
It may be ad-
hoc, contractual, institutional or statutory123
. It exists with the established
judicial process and it is quite useful in resolving different kinds of disputes
including international commercial disputes. At present, arbitration is the
only legally binding and enforceable alternative to ordinary court
proceedings.124
The voluntary arbitration also differs from mandatory administrative
proceedings under the UDRP. The most significant distinction between the
two can be seen in the enforceability of the decisions. While the UDRP
allows the parties to appeal against the decisions, the binding arbitration
does not give scope for appeal. The arbitral award can be enforced just like
the court decisions. In addition, distinction also lies in the parties‟ autonomy
122
H. K. Saharay, Law of Arbitration and Conciliation, (Kolkata: Eastern Law House, 2001) p 3.
Phillip Capper, International Arbitration: A Handbook, Third edition, (London: Lovells, 2004) p.
2.
123 Nomita Aggarwal, „Alternative Dispute Resolution: Concept and Concerns‟, Nyaya Deep, Vol.
VII, Issue 1, January 2006, pp 68-81 at p 73.
124 G. K. Kwatra, Arbitration and Alternative Dispute Resolution: How to Settle International
Business Disputes with Supplement on Indian Arbitration Law, (New Delhi: Lexis Nexis
Butterworths, 2004) p. 2.
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215
of choosing the applicable law. The arbitration, subject to certain
limitations, allows the parties to choose the applicable law, which is not
possible under the UDRP. Similarly, parties also enjoy autonomy in the
choice of procedure and forum under arbitration, but they find such options
to be limited under UDRP.
Negotiation is a process by which the parties to the dispute
themselves communicate directly with each other to arrive at an amicable
settlement. It may also involve a group of agents facilitating or doing
communication in the disputes involving technical elements.125
Thus,
negotiation mainly entails communication for the purpose of persuasion of
the parties.126
In the ultra-sophisticated domain name trademark disputes the
negotiation to be successful requires the assistance of agents having both
legal and technical background.
Mediation again lays emphasis on the parties‟ own responsibilities
for making decisions that affect their lives. Mediation, in simple, is assisted
125
Supra note 123, p 74.
126 Stephen Goldberg, Frank Sander and Nancy Rogers, Dispute Resolution: Negotiation,
Mediation and Other Process, Second edition, (London: Little, Brown and Company, 1992) p. 17.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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negotiation,127
wherein the mediator, by virtue of his influence, brings the
parties to negotiating table and assists in the settlement of their disputes.128
The mediator often arranges for face-to-face meetings of the parties, and
helps them to clarify the disputed issues. He tries to eliminate the
misunderstandings and identifies the possible options to the parties for
settlement of their disputes. Thus, the mediator is not there to impose a
binding decision on the parties, but to dig out the suitable options for the
parties. Mediator does not provide any legal advise to the parties.
Since mediation is not an adjudicative procedure, there is no definite
applicable law to settle the disputes. The disputing parties have complete
autonomy to choose their own reference points for arriving at a mutually
acceptable solution. Such reference points may typically include the
commercial interests of the parties, legal merits and cost of resorting to
other means of dispute resolution. The mediation would be of great
127
Stephen J. Ware, Alternative Dispute Resolution, (St. Paul: West Group, 2001) p. 6.
128 Abraham P. Ordover, G. Michael Flores and Andrea Doneff, Alternatives to Litigation:
Mediation, Arbitration and the Art of Dispute Resolution, (Notre Dame: National Institute for Trial
Advocacy, 1993) p. 6.
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217
significance in the cases wherein the parties are willing to cooperate and
sort out their differences through compromise.
Conciliation is a private, informal process in which a neutral third
person helps disputing parties to reach an agreement.129
It is a process
whereby the parties, together with the assistance of the neutral third person
or persons, systematically isolate the issues involved in the dispute, develop
options, consider alternatives and reach a consensual settlement that will
accommodate their needs. The conciliator independently investigates into
the disputes and makes written proposal forming his opinion. Though the
decision of the conciliator is not binding on the parties, they are free to
settle their disputes in light of the conciliator‟s verdict.
The negotiation, mediation and conciliation have significant
applications and advantages in the domain name-trademark disputes‟
resolution. All the three are capable of resolving the disputes with an
outcome satisfying both the parties to the dispute. While the court litigations
or UDRP proceedings result in win-lose situation, the negotiation,
mediation and conciliation would result in a win-win situation with both the
parties gaining something. Given their significance, many states are 129
Supra note 123.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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218
pressing for the reference of suitable civil cases to the negotiators,
mediators and conciliators, instead of ordinary courts of law.130
In UK, the courts have often taken the stand that the parties who
unreasonably refuse the offer of mediation and pursue litigation are
deprived of their costs even if they succeed in litigation.131
As discussed
above, the Nominet DRS Policy uses mediation as the first step for the
settlement of domain name disputes. This process is speedy and cost-
effective, since it usually doesn‟t exceed more than a day and provided free
of cost. In the UK, even the registrar of trademarks can recommend the
ADR in the case of any trademark dispute referred to him. As a result,
several law firms and barristers‟ chamber in UK have a dedicated wing of
ADR.
However, the situation in many parts of the world is still different.
They either depend on the courtroom resolution or on the UDRP
proceedings and their variants adopted by different registries for the
resolution of domain name-trademark disputes. These existing mechanisms
130
The UK and Japan are the classic examples of such trends.
131 Reference can be made to Dunnett v. Railtrack (2002) 2 All E R 850; Halsey v. Milton Keynes
General NHS Trust (2004) EWCA (civ) 576.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
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219
to deal with the trademark infringements are directed towards prevention of
only extortionate and abusive practices consequent to the registration of
domain names. The cases arising from two or more legitimate holders of
same trademark claiming right over a domain name are not addressed under
UDRP or national systems.132
Thus, under the current legal system, both
national and international, the conflicts between the domain name holders
and trademark owners are irreconcilable when both parties act in good
faith.133
The above discussion clearly indicates that there is sufficient scope
for the use of other types of ADR in the settlement of domain name-
trademark disputes. The paradoxical situation arising from good faith of
both parties can be best resolved by using negotiation, mediation or
conciliation. Since this kind of conflicts involve both the parties having
legitimate right and interests, the negotiation, mediation or conciliation
would help in bringing an agreement between them either to share the
domain name or to share the benefit derived out of the use of domain name.
132
Supra note 99.
133 Chris Reed, Internet Law - Text and Materials, Second edition, (New Delhi: Universal Law
Publishing Co. Ltd., 2004) p. 65.
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Conflicts Resolution
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There may also be any other creative solution to the dispute catering to the
business interests of both the parties, which might not be possible with the
application of law. A neutral negotiator, mediator or conciliator may be very
useful in pointing out the different grounds for the settlement of disputes.134
4.8 Chapter Conclusion
The international nature of domain names has made it impossible to
address the domain name-trademark conflicts exclusively at the national
level with the territorial national laws. In light of this factor, the purpose for
which UDRP was formulated seems to be justified. The importance of
UDRP is undisputable and the great number of disputes solved by its
application is the evidence of its importance as well as its popularity.135
Thus, it stands as a step forward in the domain name dispute resolution
mechanism. However, bringing Internet, which does not respect the national
boundaries, in conformity with the national trademark laws has never been
134
Abu Bakar Munir, Cyber Law - Policies and Challenges, (Singapore: Butterworths Asia, 1999)
p. 96.
135 After the UDRP has been formulated, less than one percent of all the domain name disputes
have continued in the courts. Stephen Kinsey, „Implications of Trading on the Web‟, in Adam Jolly
and Jeremy Philpott (eds.), A Handbook of Intellectual Property Management - Protecting,
Developing and Exploiting Your IP Assets, (London: Kogan Pages, 2004) pp. 86 - 90 at p. 89.
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Conflicts Resolution
221
an easy task for UDRP. UDRP has achieved little in this vast area of
conflict and much need to be done in order to see it work effectively.
The efforts made by the domain name registries to evolve their own
dispute resolution mechanisms are also of significant impact in the domain
name dispute resolution. However, they, being similar to UDRP, are not
free from loopholes. In addition, the multiplication of forums with the
growing number of dispute resolution systems may also be a concern in the
days to come. Yet another fallout of these developments can be witnessed in
the form of growing casual attitude towards some of the traditional means
of ADRs that are capable of handling great portion of domain name
disputes.
Though most of the bad faith registrations are taken care of by
UDRP and dispute resolution systems of the domain name registries, most
other forms of domain name problems are not addressed by them. A special
attention needs to be given to the problem arising from same or identical
trademarks. The only possible solution to such a problem can be arrived
through the non-adversarial means of ADR mechanisms like negotiation,
mediation and conciliation.
Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark
Conflicts Resolution
222
Having said that, the researcher is not advocating for the substitution
of the current mechanism with that of the traditional ADR mechanisms.
Both the systems are equally important for dealing with the different kinds
of disputes relating to domain names. While the bad faith registrations of
domain name require the applicability of UDRP or the domain name
registries‟ dispute resolution system, the good faith registrations need
amicable settlement through other ADR mechanisms. In light of this, on the
one hand, some internal reforms in UDRP are called for in the issues like
evidentiary review, determination of bad faith and legitimate interests,
forum shopping, panel selection and possible bias involved in the decision
making. On the other hand, the traditional ADR mechanisms, especially
negotiation, mediation and conciliation, need to be popularized by building
confidence in the disputing parties.